www.uspto.gov
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`17/141,635
`
`01/05/2021
`
`WEI-TE CHENG
`
`106P000904US.CIP
`
`9373
`
`Li & CaiIntellectual Property(USA)office
`3057 Nutley Street
`Suite 818
`Fairfax, VA 22031
`
`KIM, SU C
`
`2899
`
`01/16/2024
`
`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):
`
`Icipus @li-cai.com.tw
`wangxuzhuo@ yahoo.com
`zxu @li-cai.com.tw
`
`PTOL-90A (Rev. 04/07)
`
`

`

`Office Action Summary
`
`Application No.
`171141,635
`Examiner
`SUC KIM
`
`Applicant(s)
`CHENG etal.
`Art Unit
`2899
`
`AIA (FITF) Status
`Yes
`
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORYPERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensionsof time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom the mailing
`date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHSfrom the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`
`
`1) Responsive to communication(s)filed on 11/24/2023.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`2a)[¥) This action is FINAL.
`2b) (J This action is non-final.
`3) An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
`4)(2) Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`Disposition of Claims*
`1-20 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) _ is/are withdrawn from consideration.
`C} Claim(s)__ is/are allowed.
`Claim(s) 1-20 is/are rejected.
`(] Claim(s)__ is/are objectedto.
`C] Claim(s
`are subjectto restriction and/or election requirement
`)
`* If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http://www.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) ) ) )
`
`Application Papers
`10)( The specification is objected to by the Examiner.
`11) The drawing(s) filed on 1/5/2021 is/are: a)() accepted or b)( objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121(d).
`
`Priority under 35 U.S.C. § 119
`12)£) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`_—_c)L) None ofthe:
`b)L) Some**
`a)Q) All
`1.1) Certified copies of the priority documents have been received.
`2.1.) Certified copies of the priority documents have been received in Application No. |
`3.2.) Copies of the certified copies of the priority documents have been receivedin this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`*“ See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1)
`
`Notice of References Cited (PTO-892)
`
`2) (J Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date
`U.S. Patent and Trademark Office
`
`3)
`
`4)
`
`(LJ Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20240109
`
`

`

`Application/Control Number: 17/141,635
`Art Unit: 2899
`
`Page 2
`
`DETAILED ACTION
`
`Notice of Pre-AlA or AIA Status
`
`The present application, filed on or after March 16, 2013, is being examined under the
`
`first inventor to file provisions of the AIA.
`
`Claim Rejections - 35 USC § 103
`
`The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness
`
`rejections set forth in this Office action:
`
`A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is
`not identically disclosed as set forth in section 102, if the differences between the claimed invention
`and the prior art are such that the claimed invention as a whole would have been obvious before the
`effective filing date of the claimed invention to a person having ordinaryskill in the art to which the
`claimed invention pertains. Patentability shall not be negated by the manner in which the invention
`was made.
`
`The factual inquiries for establishing a background for determining obviousness under
`
`35 U.S.C. 103 are summarized as follows:
`
`1. Determining the scope and contents of the prior art.
`
`2. Ascertaining the differences between the prior art and the claims at issue.
`
`3. Resolving the level of ordinary skill in the pertinent art.
`
`4. Considering objective evidence present in the application indicating obviousnessor
`
`nonobviousness.
`
`Claim(s) 1-11, 14, & 18-20 is/are rejected under 35 U.S.C. 103 as being unpatentable
`
`over Yoo etal. (US 20140071689) in view of Nichia (JP 2009-170825).
`
`Regarding claim 1, Yoo discloses that a package structure, comprising:
`
`a substrate 13;
`
`an electrode layer 11A disposed on the substrate 13 (Fig. 1);
`
`

`

`Application/Control Number: 17/141,635
`Art Unit: 2899
`
`Page 3
`
`a lighting unit 19 disposed on the substrate and electrically connected to the electrode
`
`layer, wherein the lighting unit 19 has a top surface and a surrounding lateral surface
`
`connected to a peripheral edgeof the top surface (Fig. 8);
`
`a wall 1 & 2 disposed on the substrate, wherein the wall and the substrate jointly define
`
`an accommodating space 41a, and the lighting unit 19 is disposed in the accommodating space;
`
`and
`
`a package compound disposed in the accommodating space, wherein the package
`
`compound allow light generated by the lighting unit to pass there-through, wherein the
`
`package compound 36 & 44-45 covers the electrode layer, and the lighting unit, and wherein
`
`the package compound includes (Fig. 8);
`
`an attaching portion 36 adhering to a top surface of the lighting unit 19; and
`
`a surrounding portion arranged around the attaching portion and having an inner
`
`annular part and an outer annular part, wherein the inner annular part is arranged adjacent to
`
`the attaching portion, the surrounding portion is connected to an inner surface of the wall 1 &
`
`2, the surrounding portion has an annular slot formed on a top surface thereof, and a bottom
`
`end of the annular slot is located at a position aligning with 25%~90% of a thickness of the
`
`lighting unit along a height direction (para. 0093-0095), and wherein the lighting unit is
`
`arranged at a center of the package compound and the surrounding portion is formed
`
`symmetrically about the attaching portion (Fig. 8).
`
`Yoo fails to teach that a surrounding portion integrally connected to the attaching
`
`portion, wherein the surrounding portion contacts the surrounding lateral surface of the
`
`

`

`Application/Control Number: 17/141,635
`Art Unit: 2899
`
`Page 4
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`lighting unit, so to allow light from the surrounding lateral surface of the lighting unit to enter,
`
`wherein the surrounding portion is arranged around the attaching portion.
`
`However, Nichia suggests that a surrounding portion 30ab integrally connected to the
`
`attaching portion, wherein the surrounding portion contacts the surrounding lateral surface of
`
`the lighting unit, so to allow light from the surrounding lateral surface of the lighting unit to
`
`enter, wherein the surrounding portion is arranged around the attaching portion (Fig. 10 & 11).
`
`Therefore, it would have been obvious to one of ordinary skill in the art before effective
`
`filing date of applicant(s) claimed invention was made to provide Yoo with a surrounding
`
`portion 30ab integrally connected to the attaching portion, wherein the surrounding portion
`
`contacts the surrounding lateral surface of the lighting unit, so to allow light from the
`
`surrounding lateral surface of the lighting unit to enter, wherein the surrounding portion is
`
`arranged around the attaching portion as taught by Nichia in order to improve light extraction
`
`efficiency of the semiconductor light-emitting device (see PTAB decision on 6/26/2023 and on
`
`S/N 16009005) and also, the claim would have been obvious becausea particular know
`
`technique was recognized as part of the ordinary capabilities of one skilled in the art.
`
`Reclaim 2, Yoo & Nichia disclose that a reflective layer disposed in the accommodating
`
`space and at least covering a part of the electrode layer and being covered by the package
`
`compound (Fig. 8, par. 0063).
`
`Reclaim 3, Yoo & Nichia disclose that the reflective layer contains a plurality of reflective
`
`particles that are within a range within from 30 to 50 wt % based on a weight of the reflective
`
`layer (para. 0050).
`
`

`

`Application/Control Number: 17/141,635
`Art Unit: 2899
`
`Page 5
`
`Reclaim 4, Yoo & Nichia disclose that the reflective layer has a first curved surface thatis
`
`formed along an inner side of the wall and a part of the substrate adjacent to the wall; wherein
`
`the first curved surface has a center of a curvature that is defined by a circle and the center of
`
`the curvature is arranged outside of the accommodating space (Fig. 8 in view of Nichia Fig. 1).
`
`Reclaim 5, Yoo & Nichia disclose that a height of the first curved surface relative to the
`
`substrate is less than or equal to a height of the top surface of the lighting unit relative to the
`
`substrate (Fig . 8).
`
`Reclaim 6, Yoo & Nichia disclose that a top surface of the surrounding portion is ina
`
`curved shapeso as to define as a second curved surface, the second curved surface has a center
`
`of a curvaturethat is defined by a circle and the center of the is arranged outside of the
`
`accommodating space (Fig. 8 in view of Nichia Fig. 1).
`
`Reclaim 7, Yoo & Nichia disclose that the curvature of the first curved surface is greater
`
`than the curvature of the second curved surface(Fig. 8).
`
`Reclaim 8, Yoo & Nichia disclose that the reflective layer has an inclined surface that is
`
`formed along an inner side of the wall and a part of the substrate adjacent to the wall (Fig. 8).
`
`Reclaim 9, Yoo & Nichia disclose that a height of the inclined surface of the reflective
`
`layer relative to the substrate is less than or equal to a height of the top surface of the lighting
`
`unit relative to the substrate.
`
`Reclaim 10, Yoo & Nichia fail to specify that a diameter of each ofthe reflective particles
`
`is within a range from 10 micrometers to 20 micrometers.
`
`However, notwithstanding, one of ordinary skill in the art would have been led to the
`
`recited dimensions through routine experimentation and optimization.
`
`

`

`Application/Control Number: 17/141,635
`Art Unit: 2899
`
`Page 6
`
`Before effective filing date of the invention it would have been obvious to a person of
`
`ordinary skill in the art to use a certain diameter of the reflective particle, because it would
`
`have been to obtain a certain diameter of the reflective particle to achieve suitable reflective
`
`property.
`
`Reclaim 11, Yoo & Nichia disclose that a the reflective particles are selected from the
`
`group consisting of Teflon®, aluminum, and zirconium dioxide (ZrO2) (PARA. 0068).
`
`Reclaim 14, Yoo & Nichia disclose that a top end of the package compound has a cross
`
`section that is in a substantial W shape (Fig. 8).
`
`Reclaim 18, Yoo & Nichia disclose that the reflective adhesive layer completely covers
`
`the electrode layer (Fig. 8).
`
`Reclaim 19, Yoo & Nichia disclose that a height of the outer annular part with respect to
`
`the substrate is greater than a height of the top surface of the lighting unit with respect to the
`
`substrate (Fig. 8).
`
`Regarding claim 20, Yoo & Nichia disclose that a package structure, comprising:
`
`a substrate 13;
`
`an electrode layer 11A disposed on the substrate 13 (Fig. 1-2);
`
`a lighting unit 19 disposed on the substrate and electrically connected to the electrode
`
`layer (Fig. 1), wherein the lighting unit has a top surface and a surrounding lateral surface
`
`connected to a peripheral edge of the top surface; a wall disposed on the substrate, wherein
`
`the wall and the substrate jointly define an accommodating space, and the lighting unitis
`
`disposed in the accommodating space;
`
`

`

`Application/Control Number: 17/141,635
`Art Unit: 2899
`
`Page 7
`
`a reflective layer 5 disposed in the accommodating spaceand at least covering a part of
`
`the electrode layer; and
`
`a package compound 36, 44-45 disposed in the accommodating space, wherein the
`
`package compound allow light generated by the lighting unit to pass there-through, wherein
`
`the package compound coversthe reflective layer, the electrode layer, and the lighting unit,
`
`and wherein the package compound includes:
`
`an attaching portion 36 adhering to a top surface of the lighting unit; and
`
`a surrounding portion a surrounding portion integrally connected to the attaching
`
`portion, wherein the surrounding portion contacts the surrounding lateral surface of the
`
`lighting unit, so to allow light from the surrounding lateral surface of the lighting unit to enter,
`
`wherein the surrounding portion is arranged around the attaching portion(Nichia, Fig. 1),
`
`wherein the surrounding portion is connected to an inner surface of the wall, the surrounding
`
`portion has an annular slot formed on a top surface thereof, and a bottom end of the annular
`
`slot is located at a position aligning with 25%~90% ofa thickness of the lighting unit (para.
`
`0056) along a height direction, and wherein the lighting unit is arranged at a center of the
`
`package compound and the surrounding portion is formed symmetrically about the attaching
`
`portion (Fig. 8).
`
`Claim(s) 12 & 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yoo et
`
`al. (US 20140071689) in view of Nichia (JP 2009-170825) and further in view of KNEISSL etal.
`
`(US 20130105853).
`
`Reclaim 12, Yoo & Nichia fail to teach that a submount disposed on the electrode layer;
`
`wherein the lighting unit is electrically connected to two electrodes of the submount, and an
`
`

`

`Application/Control Number: 17/141,635
`Art Unit: 2899
`
`Page 8
`
`electrical connection between the lighting unit and the electrode layer is established by wiring
`
`the two electrodes of the submountto the electrode layer.
`
`However, KNEISSL suggests that a submount 20 disposed on the electrode layer 16 & 14
`
`(Fig. 2);
`
`wherein the lighting unit is electrically connected to two electrodes of the submount,
`
`and an electrical connection between the lighting unit and the electrode layer is established by
`
`wiring the two electrodes of the submountto the electrode layer (Fig. 2).
`
`Therefore, it would have been obvious to one of ordinary skill in the art before effective
`
`filing date of applicant(s) claimed invention was made to provide Yoo & Nichia with a submount
`
`disposed on the electrode layer; wherein the lighting unit is electrically connected to two
`
`electrodes of the submount, and an electrical connection between the lighting unit and the
`
`electrode layer is established by wiring the two electrodes of the submountto the electrode
`
`layer as taught by KNEISSL in order to protect from overvoltage protection and also, the claim
`
`would have been obvious because a particular know technique was recognized as part of the
`
`ordinary capabilities of one skilled in the art.
`
`Reclaim 13, Yoo, Nichia & KNEISSL a material of the package compound includes a
`
`polydimethylsiloxane (PDMS) or a fluoropolymer (para. 0011).
`
`Claim(s) 15-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yooetal.
`
`(US 20140071689) in view of Nichia (JP 2009-170825) and further in view Toita et al. (US
`
`20150287894).
`
`

`

`Application/Control Number: 17/141,635
`Art Unit: 2899
`
`Page 9
`
`Reclaim 15, Yoo & Nichia fail to teach that a lens unit; wherein the lens unit is disposed
`
`on a top end of the wall so as to close the accommodating space; wherein the accommodating
`
`Space is vacuum.
`
`However, Toita suggests that a lens unit; wherein the lens unit is disposed on a top end
`
`of the wall so as to close the accommodating space; wherein the accommodating spaceis
`
`vacuum (Fig. 2).
`
`Therefore, it would have been obvious to one of ordinary skill in the art before effective
`
`filing date of applicant(s) claimed invention was made to provide Yoo & Nichia with a lens unit;
`
`wherein the lens unit is disposed on a top end of the wall so as to close the accommodating
`
`space; wherein the accommodating space is vacuum as taught by Toita in order to enhance
`
`light transmission, efficiency of LED device and also, the claim would have been obvious
`
`because a particular know technique was recognized as part of the ordinary capabilities of one
`
`skilled in the art.
`
`Reclaim 16, Yoo, Nichia & Toita discloses that the lens unit includes a body and an
`
`antireflection layer (transparentlens).
`
`Reclaim 17, Yoo , Nichia & Toita discloses that the body has a base portion and a
`
`bending portion connected to the base portion; wherein the base portion is disposed on the
`
`top end of the wall, the bending portion corresponds in position to the lighting unit, and two
`
`ends of the bending portion correspond in position to the annular slot; wherein the
`
`antireflection layer is arranged on a side surface of the lens unit away from the substrate (Yoo
`
`in view of Toita’s Fig. 2).
`
`Response to Arguments
`
`

`

`Application/Control Number: 17/141,635
`Art Unit: 2899
`
`Page 10
`
`Applicant’s arguments with respect to claim(s) have been considered but are moot
`
`because the new ground of rejection does not rely on any reference applied in the prior
`
`rejection of record for any teaching or matter specifically challenged in the argument.
`
`Terminal Disclaimer
`
`The terminal disclaimer filed on 11/24/2023 disclaiming the terminal portion of any
`
`patent granted on this application which would extend beyond the expiration date of US
`
`10916685 has been reviewed and is accepted. The terminal disclaimer has been recorded.
`
`Conclusion
`
`Applicant's amendmentnecessitated the new ground(s) of rejection presented in this
`
`Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicantis
`
`reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
`
`A shortened statutory period for reply to this final action is set to expire THREE MONTHS
`
`from the mailing date of this action.
`
`In the eventa first reply is filed within TWO MONTHS of
`
`the mailing date of this final action and the advisory action is not mailed until after the end of
`
`the THREE-MONTH shortened statutory period, then the shortened statutory period will expire
`
`on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a)
`
`will be calculated from the mailing date of the advisory action.
`
`In no event, however, will the
`
`statutory period for reply expire later than SIX MONTHS from the date ofthis final action.
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to SU C KIM whose telephone number is (571)272-5972. The
`
`examiner can normally be reached M-F 9:00 to 5:00.
`
`

`

`Application/Control Number: 17/141,635
`Art Unit: 2899
`
`Page 11
`
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`
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`
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`
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`
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`
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`
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`
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`
`/SU C KIM/
`Primary Examiner, Art Unit 2899
`
`