SORAA, INC.

Patent Trials and Appeals Board

Dec 17, 2020

2019006972 (P.T.A.B. Dec. 17, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/270,928 09/20/2016 RAJAT SHARMA 014151.117US3 1099
132877 7590 12/17/2020
FisherBroyles LLP - Ecosense
1650 Market Street
36th FLoor
Philadelphia, PA 19103
EXAMINER
ANYA, IGWE U
ART UNIT PAPER NUMBER
2891
NOTIFICATION DATE DELIVERY MODE
12/17/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
Stephen.Driscoll@fisherbroyles.com
docketing@fisherbroyles.com
jennifer.chungo@fisherbroyles.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAJAT SHARMA, ANDREW FELKER, and AURELIEN J.F.
DAVID
Appeal 2019–006972
Application 15/270,928
Technology Center 2800
BEFORE CATHERINE Q. TIMM, BEVERLY A. FRANKLIN, and
JAMES C. HOUSEL, Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 15 and 27.2 We have jurisdiction under
35 U.S.C. § 6(b).

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Soraa Inc.
Appeal Br. 2.
2 In the Advisory Action of January 31, 2019, the Examiner entered
Appellant’s Amendment of December 28, 2018, which cancelled claims 1–
14, 16–26, and 28–34. Claims 15 and 27 remain pending and rejected in this
application.
Appeal 2019-006972
Application 15/270,928

2
We AFFIRM.
CLAIMED SUBJECT MATTER
Claim 15 is illustrative of Appellant’s subject matter on appeal
and is set forth below (with text in bold for emphasis):
15. A light emitting diode (LED) device made from the process
comprising:
(a) overlaying an epitaxial structure on a substrate having planes to
form a processed wafer;
(b) scribing said processed wafer to form scribe lines along at least a
portion of said planes to define a plurality of triangular portions of said
processed wafer; and
(c) singulating said triangular portions by breaking along said scribe
lines to define an LED device having three sides along at least a portion of
said planes of said substrate, wherein breaking creates a textured surface
on one or more of said sides, said textured surface being configured to
improve light extraction compared to a smooth surface.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Morita US 5,821,568 Oct. 13, 1998
Motoki US 2002/0063258 A1 May 30, 2002
Zimmerman US 2010/0264452 A1 Oct. 21, 2010

Appeal 2019-006972
Application 15/270,928

3
THE REJECTION
Claims 15 and 27 are rejected under pre-AIA 35 U.S.C §103(a) as
being unpatentable over Motoki, Zimmerman, and Morita.3
OPINION
Our Decision addresses the claims separately to the extent they are so
argued by Appellants. 37 C.F.R. § 41.37(c)(1)(iv).
We review the appealed rejections for error based upon the issues
Appellant identifies, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)
(cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections.”). After considering the
argued claims and each of Appellant’s arguments, we are not persuaded of
reversible error in the appealed rejections.
We refer to pages 3–9 of the Non-final Action mailed June 28, 2018
(from which this appeal is taken) regarding the Examiner’s statement of the
rejection. Therein, the Examiner states that the combination of Motoki in
view of Zimmerman suggests the claimed subject matter but lacks a teaching
for the claim element of “wherein breaking creates a textured surface on one
or more of said sides, said textured surface being configured to improve
light extraction compared to a smooth surface”. Non-final Act. 3–4. The
Examiner relies upon Morita for teaching wherein breaking in the a-plane
improves light extraction compared to a smooth surface for the benefit of

3 We note that because claims 1–14, 16–26, and 28–34 have been canceled
as mentioned in footnote 2, these claims are not included here.
Appeal 2019-006972
Application 15/270,928

4
promoting light transmission, and refers to column 2, lines 11–28 of Morita
in this regard. Non-final Act. 4. The Examiner concludes that it would have
been obvious to have incorporated the teachings of Morita for the benefit of
promoting light transmission. Non-final Act. 4. The Examiner also refers to
paragraph 17 of the pre-grant patent publication, US 2011/0315999 A1, for
teaching that breaking GaN in the a-plane inherently creates a textured
surface. Non-final Act. 4.
Appellant disagrees with the Examiner’s stated understanding of
Morita. Appellant argues that Morita does not disclose breaking on the a-
plane to form a textured surface for light extraction. Appeal Br. 4. Appellant
argues that Morita teaches the need for forming perfectly smooth facets for a
laser. Specifically, referring to Figure 6, Appellant points out that Morita
states (in column 5, at lines 21–28) the following:
The facet 3 thus formed along the {11-20} plane is easy to cleave, and
therefore assures that an optically superior flat surface is formed.
Nevertheless, as shown in FIG. 6 with a schematic sectional plan view
of the semiconductor layer 2, a minute unevenness may occur due to
atomic steps. Thus, to achieve a smooth mirror face of the surface by
filling the minute irregularities 3a, the insulating surface layer 21 is
clad and formed on the facet.

Appellant argues that the above disclosure of Morita indicates that an
objective of Morita is to form smooth facets (flat surface) upon cleaving, and
not a textured surface as required by the instant claims. Appellant states that
Morita indicates that under some circumstances, minute unevenness may
occur, and this is remedied by filling with an insulating layer. Appeal Br. 4.
We are unpersuaded by this line of argument. As discussed above, the
Examiner relies also upon paragraph 17 of US 2011/0315999 A1
Appeal 2019-006972
Application 15/270,928

5
(publication date: Dec. 29, 2011) for teaching that breaking GaN in the a-
plane inherently creates a textured surface.4 Notably, the starting material
and processing therein is the same or substantially the same as that set forth
in Appellant’s Specification. We note that where patentability rests upon a
property of the claimed material not disclosed within the art, the PTO has no
reasonable method of determining whether there is, in fact, a patentable
difference between the prior art materials and the claimed material. In re
Best, 562 F.2d 1252, 1255 (CCPA 1977). Therefore, where the claimed and
prior art products are identical or substantially identical, or are produced by
identical or substantially identical processes, the PTO can require an
applicant to prove that the prior art products do not necessarily possess the
characteristics of his claimed product. Id. In the instant case, Appellant has
not shown that the prior art product does not necessarily possess the
characteristics of claims 15 and 27.
In view of the above, we affirm the rejection. We need not discuss the
article provided by Appellant in Exhibit A in making this determination.

CONCLUSION

4 Whether or not US 2011/0315999 A1 is prior art, the Examiner’s cite to
the 999 publication is appropriate because it is only to provide evidence in
support of the Examiner’s Official Notice of what inherently occurs when a
GaN wafer breaks along the a-plane. The Examiner uses the 999 publication
as extrinsic evidence. This use is permissible as “recourse to extrinsic
evidence is proper to determine whether a feature, while not explicitly
discussed, is necessarily present in a reference.” Telemac Cellular Corp. v.
Topp Telecom, Inc., 247 F.3d 1316, 1328 (Fed. Cir. 2001).

Appeal 2019-006972
Application 15/270,928

6
We affirm the Examiner’s decision.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
15, 27
103(a)
Motoki,
Zimmerman,
Morita
15, 27

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED