SORAA, INC.

Patent Trials and Appeals Board

Mar 30, 2021

2019006972 (P.T.A.B. Mar. 30, 2021)

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 03/30/2021
FisherBroyles LLP - Ecosense
1650 Market Street
36th FLoor
Philadelphia, PA 19103
EXAMINER
ANYA, IGWE U
ART UNIT PAPER NUMBER
2891
NOTIFICATION DATE DELIVERY MODE
03/30/2021 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 REHEARING
Appellant requests rehearing of a Decision on Appeal mailed
December 17, 2020 (hereafter “Decision”), affirming the Examiner’s
decision rejecting claims 15 and 27.
A Request for Rehearing (hereafter “Req. Rehrg.”) must state with
particularity the points believed to have been misapprehended or overlooked
by the Board. Arguments not raised and evidence not previously relied upon
in the briefs before the Board are not permitted in a Request except as
permitted by 37 C.F.R. §§ 41.52(a)(2) and (a)(3). See 37 C.F.R.
§ 41.52(a)(1) (2018).
Appeal 2019–006972
Application 15/270,928

2
We have reconsidered the Decision in light of Appellant’s comments
in the Request for Rehearing filed February 22, 2021, and find no error in
the disposition of the affirmed rejection. We remain of the opinion that the
subject matter of the claims is unpatentable.
Beginning on page 2 of the Request, Appellant submits that the Board
did not address the propriety of the Examiner’s rejection based on official
notice that breaking GaN in the a-plane inherently creates a textured surface.
Appellant argues that such official notice is not proper because the Examiner
failed to show that the inherent characteristic (a textured surface to enhance
light extraction) necessarily and unquestionably follows from cleaving on
the a-plane. Appeal Br. 5, Req. Rehrg. 2. Appellant argues that Morita (the
primary reference) teaches that breaking GaN in the a-plane creates a
smooth surface, and therefore questions the Examiner’s official notice of
inherency. Appeal Br. 6, Req. Rehrg. 2. Appellant also argues that
Appellant’s own disclosure in US 2011/0315999 indicates that “in some
embodiments” a textured surface will result from breaking on the a-plane.
Appeal Br. 6. Req. Rehrg. 2–3.
Appellant also submits that the Board sidestepped the inherency issue
and instead based the affirmance on Appellant’s failure to demonstrate that
the prior art product does not necessarily possess the characteristics of the
claimed invention, and submits that this represents new grounds for
rejection. Req. Rehrg. 3.
With regard to the argument that Morita contradicts the inherency
argument, we refer to the paragraph bridging pages 3–4 of the Decision.
Therein, we referred to the Examiner’s findings made with regard to Morita.
We then stated that in making the rejection, the Examiner also relied upon
Appeal 2019–006972
Application 15/270,928

3
paragraph 17 of US 2011/0315999 A1 for teaching that breaking GaN in the
a-plane inherently creates a textured surface. Decision 4–5. We then noted
that because the starting material and processing therein is the same or
substantially the same as that set forth in Appellant’s Specification, the
burden of proof shifts to Appellant to prove that the prior art products do not
necessarily possess the characteristics of the claimed product. Decision 4–5.
We noted that where patentability rests upon a property of the claimed
material not disclosed within the art, the USPTO 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
(CCPA1977). Therefore, where the claimed and prior art products are
identical or substantially identical, or are produced by identical or
substantially identical processes, the USPTO can require an applicant to
prove that the prior art products do not necessarily possess the characteristics
of his claimed product. Id. Decision 5. Appellant incorrectly understands this
as sidestepping the inherency issue. To the contrary, the Decision directly
addresses the inherency issue by applying fundamental legal principals
applicable to the facts of the present case, in support of the Examiner’s
decision. Under these circumstances, no remand is warranted as Appellant
suggests on page 3 of the Request for Rehearing.
The Decision has been reconsidered in light of Appellant’s arguments.
However, the Request to modify our Decision is denied.
This Decision on the Request incorporates our Decision, mailed
December 17, 2020, and is final for the purposes of judicial review. See 37
C.F.R. § 41.52(a)(1).
Appeal 2019–006972
Application 15/270,928

4
Outcome of Decision on Rehearing:

Claims 35 U.S.C
§
Reference(s)/Basis Denied Granted
15, 27 103(a) Motoki,
Zimmerman,
Morita
15, 27
Overall
Outcome
15, 27

Final Outcome of Appeal after Rehearing:

Claims 35 U.S.C.
§
Reference(s)/Basi
s
Affirmed Reversed
15, 27 103(a) Motoki,
Zimmerman,
Morita
15, 27
Overall
Outcome
15, 27

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

REHEARING DENIED