Application Serial No. 17/141,635
`Response Dated July 31, 2024
`Reply to Office Action of May 3, 2024
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`Status of the Claims
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`REMARKS
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`Claims 1, 3-7, 10-19 and 21-24 are pending in the present application before this
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`amendment as set forth above. By this amendment, claims 1 and 24 are amended. No new
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`matter is introduced.
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`Summary of Office Action and Claim Amendments
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`In the May 3, 2024 Office Action, claims 1, 3-7, 10-11, 14, 18, 19, and 21-24 are rejected
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`under 35 U.S.C. § 103 as being unpatentable over Yoo (US 20140071689) in view of Nichia (JP
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`2009-170825) and further in view of Yamadaet al. (US 20130037842).
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`Claims 12 and 13 are rejected under 35 U.S.C. § 103 as being unpatentable over Yoo (US
`
`20140071689) in view of Nichia (JP 2009-170825) and further in view of Yamadaet al. (US
`
`20130037842) and KNEISSLet al (US 20130105853).
`
`Claims 15-17 are rejected under 35 U.S.C. § 103 as being unpatentable over Yoo (US
`
`20140071689) in view of Nichia (JP 2009-170825) and further in view of Yamadaet al. (US
`
`20130037842) and Toita et al (US 20150287894).
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`Telephone Interview
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`Applicant appreciates the courtesy extended by Examiner Kim for the telephone interview
`
`dated 03 July, 2024, as well as the helpful feedback provided during the interview session.
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`Applicant particularly appreciates Examiner’s Kim’s
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`clarification on several prior art
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`interpretation issues that seemed confusing, e.g., the alleged “electrode layer 11A” from the
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`primary reference Yoo (Office Action, p.3), the analogy of “light-permeable package compound”
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`(Office Action, p.3), the alleged “surrounding portion 30ab” from the secondary reference Nichia
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`(Office Action, p.4), etc.
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`Based on the valuable feedback obtained during the interview discussion, claims 1 and 24
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`have been amendedto recite the mutually recognized distinguishing features overthe prior arts of
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`record.
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`For instance, independent claim 1 is amendedto recite “a surrounding portion being a
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`one-piece continuous layer with the attaching portion” (which corresponds to Issue I of the
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`6
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`Response Dated July 31, 2024
`Reply to Office Action of May 3, 2024
`
`Status of the Claims
`
`REMARKS
`
`Claims 1, 3-7, 10-19 and 21-24 are pending in the present application before this
`
`amendment as set forth above. By this amendment, claims 1 and 24 are amended. No new
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`matter is introduced.
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`Summary of Office Action and Claim Amendments
`
`In the May 3, 2024 Office Action, claims 1, 3-7, 10-11, 14, 18, 19, and 21-24 are rejected
`
`under 35 U.S.C. § 103 as being unpatentable over Yoo (US 20140071689) in view of Nichia (JP
`
`2009-170825) and further in view of Yamadaet al. (US 20130037842).
`
`Claims 12 and 13 are rejected under 35 U.S.C. § 103 as being unpatentable over Yoo (US
`
`20140071689) in view of Nichia (JP 2009-170825) and further in view of Yamadaet al. (US
`
`20130037842) and KNEISSLet al (US 20130105853).
`
`Claims 15-17 are rejected under 35 U.S.C. § 103 as being unpatentable over Yoo (US
`
`20140071689) in view of Nichia (JP 2009-170825) and further in view of Yamadaet al. (US
`
`20130037842) and Toita et al (US 20150287894).
`
`Telephone Interview
`
`Applicant appreciates the courtesy extended by Examiner Kim for the telephone interview
`
`dated 03 July, 2024, as well as the helpful feedback provided during the interview session.
`
`Applicant particularly appreciates Examiner’s Kim’s
`
`clarification on several prior art
`
`interpretation issues that seemed confusing, e.g., the alleged “electrode layer 11A” from the
`
`primary reference Yoo (Office Action, p.3), the analogy of “light-permeable package compound”
`
`(Office Action, p.3), the alleged “surrounding portion 30ab” from the secondary reference Nichia
`
`(Office Action, p.4), etc.
`
`Based on the valuable feedback obtained during the interview discussion, claims 1 and 24
`
`have been amendedto recite the mutually recognized distinguishing features overthe prior arts of
`
`record.
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`For instance, independent claim 1 is amendedto recite “a surrounding portion being a
`
`one-piece continuous layer with the attaching portion” (which corresponds to Issue I of the
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`6
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`
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`Application Serial No. 17/141,635
`Response Dated July 31, 2024
`Reply to Office Action of May 3, 2024
`
`Interview Agenda).
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`Likewise, claim 24 to recite the contents of “a top surface ofthe light-permeable package
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`compound being in contact with air above the light-permeable package compound ” (which
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`correspondsto Issue II of the Interview Agenda).
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`Any amendmentto the claims not specifically referred to herein as being included for the
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`purpose of distinguishing the claims from cited references are included for the purpose of
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`clarification, consistence and/or grammatical correction only.
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`No new matter is added.
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`Claim Rejections Under 35 U.S.C. § 103
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`In the Office Action, claims 1, 3-7, 10-11, 14, 18, 19, and 21-24 are rejected under 35
`
`U.S.C. § 103 as being unpatentable over Yoo in view of Nichia and further in view of Yamada et
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`al. These rejections are respectfully traversed as follows.
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`Independent Claim 1
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`It is respectfully submitted that claim 1, as amended,recites features that are neither taught
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`nor suggested by the combination of prior art references of record at least for reasons explained as
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`follows.
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`
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`In the rejection for claim 1, the Office states that (Office Action, p.3-4):
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`isposed in the accornmmadating space and
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`( covering the Rghting unit wherein the light-penneable package compound inchades (Fig. 8);
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`
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`adhering ta a top surface of the lighting unit 19; and
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`
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`ranged around the attaching partion.
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`Yoo fails te teach that a surrounding portionintegrally connected to the attaching
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`sortion, wherein the surrounding gortien contacts the surrounding lateral surface af the
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`tehting aot, so to allow lightfram the surrounding lateral surface of the lighting unit to enter, 3
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`{ wherein the surrounding portion is arranped around the attaching partion.
`SAAN,
`i
`$
`Howe
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`ats that a surrounding portion 30ab iNtegrally connected to the j
`Ss COAx
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`attaching portion {Fig. 10.8 14
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`
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`Application Serial No. 17/141,635
`Response Dated July 31, 2024
`Reply to Office Action of May 3, 2024
`
`Asan initial matter, while the Office takes clear position that “phosphor layer 36” of Yoon
`
`teaches the claimed “attaching portion 61” as claimed, it is unclear which part of the primary
`
`reference Yoon (i.e., the first molding member 45, the second molding member47, or the third
`
`molding member 44?) does the Office consider to teach the “surrounding portion 62”as claimed.
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`To facilitate easy andfaithful discussion, relevant figures from the cited prior art(s) are
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`reproduced below (with annotations).
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`
`
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`
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`Koon oh
`x ‘S wat
`gg
`“Seemann
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`[Yoon, FIG.8, with annotations]
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`For the sake of discussion rather than admission:
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`(i) Yoon explicitly and repeatedly teachesthat the first molding member45hasto be placed
`
`at a position “lower than that of a bottom surface of the phosphor layer 16/36.” See, Yoon, e.g., at
`
`[0081], [0093].
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`That is, Yoon explicitly teaches that the “phosphor layer 36” and the “first
`
`molding member 45”are structurally disjointed and functionally distinctive members(i.e., they
`
`are taught to be made with substantially different material compositions from different fabrication
`
`processes, and are explicitly required to be structurally disconnected).
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`See, Yoon, e.g., at [0081],
`
`[0093].
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`Based on Yoon’s teaching,
`
`the primary reference in fact actively teaches away the
`
`possibility of an “integral connection” between the “phosphor layer 36 and the “first molding
`
`8
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`
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`Application Serial No. 17/141,635
`Response Dated July 31, 2024
`Reply to Office Action of May 3, 2024
`
`member 45”. Therefore, Yoon fails to disclose at least the limitations of “the light-permeable
`
`package compoundincludes a attachingportion and a surroundingportion integrally connected
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`to being a one-piece continuouslayer with the attaching portion,” as recited in amended claim 1
`
`of the present application.
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`Moreover, Yoon teachesthat the first molding member45 serves as the "reflective layer”
`
`(see, Yoon, e.g, at [0051]). However, the center of the curvature of first second molding member
`
`55 of Yoon is located within the accommodating space, and thus Yoon does not disclose the
`
`technical feature of "the center of the curvature of the reflective layer is arranged outside of the
`
`accommodating space" as claimed in the present application.
`
`FIG.9
`
` “k
`
`*i‘;4‘\eecerciaraceceseteteAsheseesOTCOpOPOFTEeed
`
`
`
`me”7"
`
`one
`
`
`
`he:
`
`
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`More importantly,
`
`based on Yoon’s explicit teaching,
`
`the Office’s further allegation of (35
`
`combinability between Yoon and Nichia would appear unfaithful to
`U.S.C. 103 obviousness)
`
`Yoon’s teaching as a whole in light of its explicit teach-away statements.
`
`The indiscriminating deposition of the alleged “surrounding portion 30ab” (which the
`
`Applicant suspected to refer to the “member 330 that contains the fluorescent material 331) would
`
`simply form a single fluorescent layer in the entire cell within the package wall;
`
`The asserted combination/ replacement of Yoon’s “phosphorlayer 36” and “first molding
`
`member 45” with Nichia’s irregularly formed “fluorescent member 330” would not only render
`
`Yoon’s original design inoperable, such alleged replacement would also fail to teach the “curved
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`surfaces” as the instant claim 1 recites.
`
`
`
`
`
`
`
`u
`
`“Yossnsng
`one 8
`
`x3xs
`.
`
`8
`
`
`
`\A
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`
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`Application Serial No. 17/141,635
`Response Dated July 31, 2024
`Reply to Office Action of May 3, 2024
`
`
` aia
`
`ahEAREEEELEEES
`yefe84
`
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`goody
`
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`spayee
`
`[Nichia, FIGS.9 & 10]
`(ii) As an alternative interpretation, assuming the “third molding member 44 (which Yoon
`
`explicitly teaches to be a “diffusion layer,” see, Yoon, e.g, at [0097]) is asserted to teach the claimed
`
`“surrounding portion 62.”
`
`In this case, Yoon’s “third molding member 44”fails to teach the feature “being covered
`
`by the light-permeable package compound”asrecited in the pending claim 1.
`
`Moreover, Yoonstill explicitly states that the “diffusion layer 44” and the “phosphorlayer
`
`36,” differs both structurally and in material composition.
`
`Therefore, even with this alternative interpretation, the primary reference Yoon does not
`
`teach the “a surrounding portion being a one-piece continuous layer with the attaching portion”
`
`feature recited in the pending claim 1.
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`And for the same reasons discussed above, the teach-away messages from the primary
`
`reference Yoon would suggest that the asserted obviousness combination of secondary references
`
`to be improper.
`
`Heeding Examiner Kim’s suggestion, claim 1 is amended to read “a surrounding portion
`
`being a one-piece continuous layer with the attaching portion” to further reflect the mutually
`
`recognized patentable distinction as delineated above.
`
`Therefore, at least for the foregoing reasons, independent claim 1 is patentable over the
`
`cited references under 35 U.S.C. § 103. Accordingly, claims 3-7, 10-19 and 21-24, which depend
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`directly or indirectly from now allowable independent claim 1, are patentable as well.
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`Withdrawal of the 35 U.S.C. § 103 rejection is thus respectfully requested.
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`10
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`
`
`Application Serial No. 17/141,635
`Response Dated July 31, 2024
`Reply to Office Action of May 3, 2024
`
`Amended Claim 24
`
`The Office asserts that Yoon’s “phosphorlayer 36,” “reflective layer 45/ diffusion layer
`
`44”(or the substitution thereof by the “fluorescent member 330” from Nichia) collectively teaches
`
`the “light-permeable package compound”as claimed.
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`However, regardless of the possible prior art interpretations and/or combinations, the
`
`Office’s asserted “light-permeable package compound”are all taught to be further covered by
`
`additional package compounds(asillustrated below in the reproduced FIG.8 from Yoon) rather
`
`than “being in contact with air above the light-permeable package compound,”as recited by the
`
`amended claim 24.
`
` [Yoon, FIG.8]
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`Accordingly, Applicant believes that the amended claim 24 should provide furtherclarity
`
`overthe cited prior arts of record.
`
`Moreover, Applicant submits that a comparable amendmentto claim 24 as discussed above
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`had been foundto be patentable in an IPR proceeding of the corresponding parent case (Appl. no.
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`US16/009,005), and the prior art references applied during the IPR proceedings were largely
`
`identical to those cited in the current Office Action.
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`Accordingly, withdrawal of the 35 U.S.C. § 103 rejection and favorable reconsideration of
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`11
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`
`
`Application Serial No. 17/141,635
`Response Dated July 31, 2024
`Reply to Office Action of May 3, 2024
`
`the amended claims is respectfully requested.
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`CONCLUSION
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`Accordingly, in view of the above amendments and remarks, reconsideration of any
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`pending objections and rejections and allowance of the claims in connection with the present
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`application is earnestly solicited.
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`Should there be any outstanding matters that need to be resolved in the present
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`application, the Examineris respectfully requested to contact undersigned at the telephone
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`numberof the undersigned below.
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`If necessary, the Commissioneris hereby authorized in this, concurrent, and future
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`replies, to charge paymentor credit any overpayment to Deposit Account No. 505407 for any
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`additional fees required under 37 C.F.R. § 1.16 OR UNDER37 C.F.R § 1.17, particularly,
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`extension of time fees.
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`Respectfully submitted,
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`LI & CAI INTELLECTUAL PROPERTY (USA) OFFICE
`
`/ZHUO XU/
`By:___
`ZHUO XU,Reg. No. 62,987
`3057 NUTLEY STREET, SUITE 818
`FAIRFAX, VIRGINIA 22031
`(703) 268-5992
`
`12
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