UNITED STA TES p A TENT 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.
`
`15/360,316
`
`11/23/2016
`
`Hirofumi ICHIKAWA
`
`100415-0252
`
`6319
`
`11/06/2017
`
`7 590
`22428
`Foley & Lardner LLP
`3000 K STREET N.W.
`SUITE 600
`WASHINGTON, DC 20007-5109
`
`EXAMINER
`
`EVERHART, CARIDAD
`
`ART UNIT
`
`PAPER NUMBER
`
`2895
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`11/06/2017
`
`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):
`ipdocketing@foley.com
`
`PTOL-90A (Rev. 04/07)
`
`VIZIO Ex. 1018 Page 00001
`
`

`

`Application No.
`15/360,316
`
`Applicant(s)
`ICHIKAWA ET AL.
`
`Office Action Summary
`
`AIA (First Inventor to File)
`Status
`No
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address -(cid:173)
`Period for Reply
`
`Examiner
`CARIDAD EVERHART
`
`Art Unit
`2895
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE ;J. MONTHS FROM THE MAILING DATE OF
`THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(a). In no event, however, may a reply be timely filed
`after SIX (6) MONTHS from 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) MONTHS from 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, even if timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1.704(b).
`
`Status
`1 )0 Responsive to communication(s) filed on __ .
`0 A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on __ .
`2a)O This action is FINAL.
`2b)~ This action is non-final.
`3)0 An election was made by the applicant in response to a restriction requirement set forth during the interview on
`__ ; the restriction requirement and election have been incorporated into this action.
`4)0 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 Ex parte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`Disposition of Claims*
`5)~ Claim(s) 31-58 is/are pending in the application.
`5a) Of the above claim(s) __ is/are withdrawn from consideration.
`6)0 Claim(s) __ is/are allowed.
`7)~ Claim(s) 31-38.40-53.57 and 58 is/are rejected.
`8)~ Claim(s) 39 and 54-56 is/are objected to.
`9)0 Claim(s) __ are subject to restriction and/or election requirement.
`* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http:ilwww.usoto.gov/patents/init events/pph/index.isp or send an inquiry to PPHfeedback(wuspto.aov.
`
`Application Papers
`10)0 The specification is objected to by the Examiner.
`11 )~ The drawing(s) filed on 11/23/2016 is/are: a)~ accepted or b)O 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:
`a)~ All b)O Some** c)O None of the:
`Certified copies of the priority documents have been received.
`1.~
`Certified copies of the priority documents have been received in Application No. __ .
`2.0
`Copies of the certified copies of the priority documents have been received in this National Stage
`3.0
`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) ~ Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date __ .
`
`3) 0 Interview Summary (PTO-413)
`Paper No(s)/Mail Date. __ .
`4) 0 Other: __ .
`
`U.S. Patent and Trademark Office
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20171031
`
`VIZIO Ex. 1018 Page 00002
`
`

`

`Application/Control Number: 15/360,316
`Art Unit: 2895
`
`Page 2
`
`The present application is being examined under the pre-AIA first to invent
`
`provisions.
`
`Claim Objections
`
`Claims 40 and 41 are objected to because of the following informalities: Claims
`
`40 and 41 seem to be identical. Appropriate correction is required.
`
`Claim Rejections - 35 USC § 102
`
`In the event the determination of the status of the application as subject to AIA 35
`
`U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any
`
`correction of the statutory basis for the rejection will not be considered a new ground of
`
`rejection if the prior art relied upon, and the rationale supporting the rejection, would be
`
`the same under either status.
`
`The following is a quotation of the appropriate paragraphs of pre-AIA 35 U.S.C.
`
`102 that form the basis for the rejections under this section made in this Office action:
`
`A person shall be entitled to a patent unless -
`
`(b) the invention was patented or described in a printed publication in this or a foreign country
`or in public use or on sale in this country, more than one year prior to the date of application
`for patent in the United States.
`
`Claim Rejections - 35 USC § 103
`
`In the event the determination of the status of the application as subject to AIA 35
`
`U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any
`
`correction of the statutory basis for the rejection will not be considered a new ground of
`
`VIZIO Ex. 1018 Page 00003
`
`

`

`Application/Control Number: 15/360,316
`Art Unit: 2895
`
`Page 3
`
`rejection if the prior art relied upon, and the rationale supporting the rejection, would be
`
`the same under either status.
`
`The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis
`
`for all obviousness rejections set forth in this Office action:
`
`(a) A patent may not be obtained though the invention is not identically disclosed or described
`as set forth in section 102, if the differences between the subject matter sought to be patented
`and the prior art are such that the subject matter as a whole would have been obvious at the
`time the invention was made to a person having ordinary skill in the art to which said subject
`matter pertains. Patentability shall not be negatived by the manner in which the invention was
`made.
`
`The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148
`
`USPQ 459 (1966), that are applied for establishing a background for determining
`
`obviousness under pre-AIA 35 U.S.C. 103(a) 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
`
`obviousness or nonobviousness.
`
`This application currently names joint inventors. In considering patentability of the
`
`claims under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter
`
`of the various claims was commonly owned at the time any inventions covered therein
`
`were made absent any evidence to the contrary. Applicant is advised of the obligation
`
`under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was
`
`not commonly owned at the time a later invention was made in order for the examiner to
`
`consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C.
`
`102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
`
`VIZIO Ex. 1018 Page 00004
`
`

`

`Application/Control Number: 15/360,316
`Art Unit: 2895
`
`Page 4
`
`Claim(s) 31-34, 37-38, and 45 is/are rejected under pre-AIA 35 U.S.C. 102(b) as
`
`being anticipated by Wang et al (US 6,627,482 B2).
`
`Wang et al discloses a package for a light emitting diode (col. 1, lines 7-13), the
`
`package including an insulating material such as a glue (col. 1, lines 23-27) which is
`
`formed in a mold (col. 1, lines 49-63), which is a disclosure that the material is a mold
`
`material, which implies that the material such as a glue is a polymeric or resin material,
`
`and metal leads 211, 221 (col. 2, lines 46-29), the light emitting diode is shown mounted
`
`in a "cup" or concave portion of the package (Fig. 12 and col. 3, lines 3-21 ), Fig. 15
`
`shows that the leads are exposed on the outer surfaces of the package on first and
`
`second outer surfaces which are opposed to each other , the exposed surfaces of the
`
`leads being coplanar with the resin side surfaces , Wang et al shows in Fig. 17 that the
`
`leads can be exposed and flush with the insulating material of the walls of the device
`
`(col. 3, lines 50-55), and Wang et al also discloses in Fig. 12
`
`that a notch formed
`
`between the leads 312, 322 has a portion which is wider than another portion of the
`
`notch , the narrow portion is visible when viewed from above, as seen in combining Fig.
`
`7 , in which 211, 221 are the leads and 20 is the insulating material (col. 2, lines 46-49)
`
`with Fig. 12, which has been discussed above, and the wider portion is seen in Fig. 12,
`
`as discussed above. Wang et al also discloses mounting a light emitting diode in the
`
`cup (col. 2, lines 49-55 and col. 3, lines 12-20) and sawing or cutting the structure to
`
`expose the portion of the resin molded body and the portions of the leads as disclosed
`
`by Wang et al and discussed above (col. 2, lines 45-55 ).
`
`VIZIO Ex. 1018 Page 00005
`
`

`

`Application/Control Number: 15/360,316
`Art Unit: 2895
`
`Page 5
`
`Re claim 32: Wang et al discloses in Fig. 17 that a third outer side and a fourth
`
`outer side include surfaces of leads 312 and 322 include a notch in each lead which is
`
`filled with the insulator material 20, and the leads have surfaces which are exposed on
`
`sides in addition to the sides shown in Fig. 12, and that at these sides the exposed
`
`surfaces of leads 312, 322 are flush with the resin surfaces of these sides .
`
`Re claim 33: Wang et al disclose the light emitting device has a rectangular shape
`
`(Fig. 17 and Fig. 18 and col. 3, lines 50-60).
`
`Re claim 34: Wang et al disclose the notch part extends over at least half of the
`
`periphery when viewed from above, as Fig. 17 combined with Fig. 18 shows that in Fig.
`
`18 the notch part 24 extends over at least half of the periphery, and Fig. 17 shows that
`
`the view from Fig. 18 implies that that the same can be stated when viewed from above.
`
`Re claims 37-38: Wang et al discloses in Fig. 17 combined with Fig. 18 that the
`
`first and second leads are exposed in three side surfaces.
`
`Re claim 45: Wang et al discloses in Fig. 12 that the molded body fills an entirety
`
`of each of the first notch parts, as Fig 12 shows the molded material 20 fills the notch
`
`parts formed by the leads 31 and 32.
`
`Claims 35-36 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable
`
`over Wang et al as applied to claim 31-32 above, and further in view of Abdul Karim et
`
`al (US 2009/0057708 A 1 ).
`
`VIZIO Ex. 1018 Page 00006
`
`

`

`Application/Control Number: 15/360,316
`Art Unit: 2895
`
`Page 6
`
`Wang et al discloses the limitations of claim 31-32 as stated above. Wang et al
`
`is silent with respect to a sealing member covering the light emitting element in the
`
`concave portion and with respect to the resin part containing a light reflecting material.
`
`Abdul Karim et al discloses an LED package (para. 0001) which includes a cup
`
`portion which is a concave portion in which an LED is placed (para. 0010), and the cup
`
`is molded from a material which includes reflective particles such as TiO2 in order to
`
`provide a reflective surface in the cup (para. 0011 and 0012). Abdul Karim et al also
`
`discloses a sealing member in the cup portion covering the light emitting source (para.
`
`0013).
`
`It would have been obvious to one of ordinary skill in the art at the time of the
`
`invention to have included a sealing member in the cup portion covering the light
`
`emitting source in the device disclosed by Wang et al in order to obtain the benefit of
`
`providing a wavelength converting material as disclosed by Abdul Karim et al (para.
`
`0013) and to protect the wiring and the light emitting source (para. 0012). It would have
`
`been obvious to one of ordinary skill in the art at the time of the invention to have
`
`provided a reflective surface to the cup in the device disclosed by Wang et al in order to
`
`obtain the benefit of increased efficiency as disclosed by Abdul Karim et al (para. 0023).
`
`Claims 40-41 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable
`
`over Wang et al as applied to claim 31 above, and further in view of Kotani et al (WO
`
`2008/059856, of which Kotani et al US 2010/0140638 A 1 is the English language
`
`equivalent) and of Takeda et al (US 2007/0138697 A 1 ).
`
`VIZIO Ex. 1018 Page 00007
`
`

`

`Application/Control Number: 15/360,316
`Art Unit: 2895
`
`Page 7
`
`Wang et al discloses the limitations of claim 31 as stated above, including that
`
`portions of the leads are exposed at the bottom of the package (Fig. 12). Wang et al is
`
`silent with respect to the recited steps of the molding process.
`
`Kotani et al discloses transfer molding (para. 0041) package material 103 which
`
`is a resin material (para. 0074 and Fig. 2c) in which the steps include sandwiching the
`
`lead frame between an upper and lower mold , as Kotani et al disclose the mold
`
`includes upper and lower parts 301 (Fig. 2b) in which is sandwiched the lead frame 105
`
`(Fig. 2b) and the material is the resin is infused into the mold and cured (para. 0075).
`
`Kotani et al also disclose that the metal leadframe parts are exposed at the bottom of
`
`the molded resin (Fig. 2c).
`
`It would have been obvious to one of ordinary skill in the art to have combined
`
`the steps disclosed by Kotani et al with the method disclosed by Wang et al in order to
`
`obtain the package disclosed by Wang et al in which portions of the leads are exposed
`
`at the bottom of the package as disclosed by Wang et al.
`
`Claims 42-43 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable
`
`over Wang et al as applied to claim 31-32 above, and further in view Chia et al (US
`
`2005/0151149 A 1 ).
`
`Wang et al discloses the limitations of claim 31-32 as stated above. Wang et al
`
`is silent with respect to the lead frame being completely silver plated.
`
`Chia et al discloses a light emitting device, as Chia et al disclose an LED (para.
`
`0002), including a resin package including a resin part, as Chia et al disclose a resin
`
`VIZIO Ex. 1018 Page 00008
`
`

`

`Application/Control Number: 15/360,316
`Art Unit: 2895
`
`Page 8
`
`portion 525, which may be epoxy (para. 0031) a first lead 520 (Fig. 5A) a second lead
`
`515 (Fig 5A) the resin package having a concave portion shown in Fig. 5A in which
`
`light emitting device 505 is placed (para. 0031) having a bottom face at which a part of
`
`an upper surface of the first lead and second lead are exposed from the resin part and a
`
`light emitting element 505 mounted on the bottom face of the concave part (Fig. 5A and
`
`para. 0031 ). Chia et al also discloses the lead frame is plated with silver in order to
`
`enhance adhesiveness of the epoxy cast to the lead frame (para. 0021 ).
`
`It would have been obvious to one of ordinary skill in the art at the time of the
`
`invention to have plated the entire lead frame with silver as disclosed by Chia et al in
`
`the method disclosed by Wang et al in order to obtain the benefit of increased
`
`adhesiveness of the mold material to the lead frame as disclosed by Chia et al .
`
`Claim 44 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over
`
`Wang et al as applied to claim 31 above, and further in view of Aoki et al (US
`
`2008/0255283 A 1 ).
`
`Wang et al discloses the limitations of claim 31 as stated above. Wang et al is
`
`silent with respect to triazine derivative epoxy resin.
`
`Aoki et al disclose epoxy resin mold compounds for LEDs (para. 0002) which are
`
`epoxy resins derived through reaction of a triazine epoxy resin (para. 0015), which Aoki
`
`et al disclose have desirable properties such as improved strength, thermal shock
`
`resistance, and heat resistance without yellowing (para. 0013).
`
`VIZIO Ex. 1018 Page 00009
`
`

`

`Application/Control Number: 15/360,316
`Art Unit: 2895
`
`Page 9
`
`It would have been obvious to one of ordinary skill in the art at the time of the
`
`invention to have used a triazine derivative epoxy resin as disclosed by Aoki et al in the
`
`device disclosed by Wang et al in order to obtain the benefits of strength, thermal shock
`
`resistance, and heat resistance without yellowing disclosed by Aoki et al.
`
`Claim(s) 46-49, 52-53, and 58 is/are rejected under pre-AIA 35 U.S.C. 102(b) as
`
`being anticipated by Wang et al (US 6,627,482 B2).
`
`Wang et al discloses a package for a light emitting diode (col. 1, lines 7-13), the
`
`package including an insulating material such as a glue (col. 1, lines 23-27) which is
`
`formed in a mold (col. 1, lines 49-63), which is a disclosure that the material is a mold
`
`material, which implies that the material such as a glue is a polymeric or resin material,
`
`and metal leads 211, 221 (col. 2, lines 46-29), the light emitting diode is shown mounted
`
`in a "cup" or concave portion of the package (Fig. 12 and col. 3, lines 3-21 ), Fig. 15
`
`shows that the leads are exposed on the outer surfaces of the package on first and
`
`second outer surfaces which are opposed to each other , the exposed surfaces of the
`
`leads being coplanar with the resin side surfaces , Wang et al shows in Fig. 17 that the
`
`leads can be exposed and flush with the insulating material of the walls of the device
`
`(col. 3, lines 50-55), and Wang et al also discloses in Fig. 12
`
`that a notch formed
`
`between the leads 312, 322 has a portion which is wider than another portion of the
`
`notch , the narrow portion is visible when viewed from above, as seen in combining Fig.
`
`7 , in which 211, 221 are the leads and 20 is the insulating material (col. 2, lines 46-49)
`
`VIZIO Ex. 1018 Page 00010
`
`

`

`Application/Control Number: 15/360,316
`Art Unit: 2895
`
`Page 1 0
`
`with Fig. 12, which has been discussed above, and the wider portion is seen in Fig. 12,
`
`as discussed above.
`
`Re claim 47: Wang et al discloses in Fig. 17 that a third outer side and a fourth outer
`
`side include surfaces of leads 312 and 322 include a notch in each lead which is filled
`
`with the insulator material 20, and the leads have surfaces which are exposed on sides
`
`in addition to the sides shown in Fig. 12, and that at these sides the exposed surfaces
`
`of leads 312, 322 are flush with the resin surfaces of these sides .
`
`Re claim 48: Wang et al disclose the light emitting device has a rectangular shape
`
`(Fig. 17 and Fig. 18 and col. 3, lines 50-60).
`
`Re claim 49: Wang et al disclose the notch part extends over at least half of the
`
`periphery when viewed from above, as Fig. 17 combined with Fig. 18 shows that in Fig.
`
`18 the notch part 24 extends over at least half of the periphery, and Fig. 17 shows that
`
`the view from Fig. 18 implies that that the same can be stated when viewed from above.
`
`Re claims 52-53: Wang et al discloses in Fig. 17 combined with Fig. 18 that the
`
`first and second leads are exposed in three side surfaces.
`
`Re claim 58: Wang et al discloses the entirety of the first notch is filled with a
`
`portion of the resin (Fig. 17).
`
`Claims 50-51 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable
`
`over Wang et al as applied to claim 46 above, and further in view of Abdul Karim et al
`
`(US 2009/0057708 A 1 ).
`
`VIZIO Ex. 1018 Page 00011
`
`

`

`Application/Control Number: 15/360,316
`Art Unit: 2895
`
`Page 11
`
`Wang et al discloses the limitations of claim 46 as stated above. Wang et al is
`
`silent with respect to a sealing member covering the light emitting element in the
`
`concave portion and with respect to the resin part containing a light reflecting material.
`
`Abdul Karim et al discloses an LED package (para. 0001) which includes a cup
`
`portion which is a concave portion in which an LED is placed (para. 0010), and the cup
`
`is molded from a material which includes reflective particles such as TiO2 in order to
`
`provide a reflective surface in the cup (para. 0011 and 0012). Abdul Karim et al also
`
`discloses a sealing member in the cup portion covering the light emitting source (para.
`
`0013).
`
`It would have been obvious to one of ordinary skill in the art at the time of the
`
`invention to have included a sealing member in the cup portion covering the light
`
`emitting source in the device disclosed by Wang et al in order to obtain the benefit of
`
`providing a wavelength converting material as disclosed by Abdul Karim et al (para.
`
`0013) and to protect the wiring and the light emitting source (para. 0012). It would have
`
`been obvious to one of ordinary skill in the art at the time of the invention to have
`
`provided a reflective surface to the cup in the device disclosed by Wang et al in order to
`
`obtain the benefit of increased efficiency as disclosed by Abdul Karim et al (para. 0023).
`
`Claim 57 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over
`
`Wang et al as applied to claim 46 above, and further in view of Aoki et al (US
`
`2008/0255283 A 1 ).
`
`VIZIO Ex. 1018 Page 00012
`
`

`

`Application/Control Number: 15/360,316
`Art Unit: 2895
`
`Page 12
`
`Wang et al discloses the limitations of claim 46 as stated above. Wang et al is
`
`silent with respect to triazine derivative epoxy resin.
`
`Aoki et al disclose epoxy resin mold compounds for LEDs (para. 0002) which are
`
`epoxy resins derived through reaction of a triazine epoxy resin (para. 0015), which Aoki
`
`et al disclose have desirable properties such as improved strength, thermal shock
`
`resistance, and heat resistance without yellowing (para. 0013).
`
`It would have been obvious to one of ordinary skill in the art at the time of the
`
`invention to have used a triazine derivative epoxy resin as disclosed by Aoki et al in the
`
`device disclosed by Wang et al in order to obtain the benefits of strength, thermal shock
`
`resistance, and heat resistance without yellowing disclosed by Aoki et al.
`
`Double Patenting
`
`The nonstatutory double patenting rejection is based on a judicially created
`
`doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the
`
`unjustified or improper timewise extension of the "right to exclude" granted by a patent
`
`and to prevent possible harassment by multiple assignees. A nonstatutory double
`
`patenting rejection is appropriate where the conflicting claims are not identical, but at
`
`least one examined application claim is not patentably distinct from the reference
`
`claim(s) because the examined application claim is either anticipated by, or would have
`
`been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46
`
`USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed.
`
`Cir. 1993); In re Langi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum,
`
`VIZIO Ex. 1018 Page 00013
`
`

`

`Application/Control Number: 15/360,316
`Art Unit: 2895
`
`Page 13
`
`686 F.2d 937,214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438,164 USPQ 619
`
`(CCPA 1970); In re Thorington, 418 F.2d 528,163 USPQ 644 (CCPA 1969).
`
`A timely filed terminal disclaimer in compliance with 37 CFR 1.321 (c) or 1.321 (d)
`
`may be used to overcome an actual or provisional rejection based on nonstatutory
`
`double patenting provided the reference application or patent either is shown to be
`
`commonly owned with the examined application, or claims an invention made as a
`
`result of activities undertaken within the scope of a joint research agreement. See
`
`MPEP § 717.02 for applications subject to examination under the first inventor to file
`
`provisions of the AIA as explained in MPEP § 2159. See MPEP §§ 706.02(1)(1) -
`
`706.02(1)(3) for applications not subject to examination under the first inventor to file
`
`provisions of the AIA. A terminal disclaimer must be signed in compliance with 37 CFR
`
`1.321 (b).
`
`The USPTO Internet website contains terminal disclaimer forms which may be
`
`used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application
`
`in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26,
`
`PTO/AIA/25, or PTO/AIA/26) should be used. A web-based eTerminal Disclaimer may
`
`be filled out completely online using web-screens. An eTerminal Disclaimer that meets
`
`all requirements is auto-processed and approved immediately upon submission. For
`
`more information about eTerminal Disclaimers, refer to
`
`www.uspto.gov/patents/process/file/efs/quidance/eTD-info-l.isp.
`
`VIZIO Ex. 1018 Page 00014
`
`

`

`Application/Control Number: 15/360,316
`Art Unit: 2895
`
`Page 14
`
`Claim 31 is rejected on the ground of nonstatutory double patenting as being
`
`unpatentable over claim 13 of U.S. Patent No. 9,287,476 B2 in view of Wang et al (US
`
`6,627,482 B2). Claim 31 of the present application recites providing a structure which
`
`includes limitations which are disclosed by Wang et al, as stated in the rejection of claim
`
`46 above. The steps recited in claim 31 which are carried out on the substrate provided
`
`in claim 31 are steps recited in claim 13 of US Pat. 9,287,476, which, although not
`
`identical, are reworded but are not patentably distinct from the steps recited in claim 31
`
`of the present application. It would have been obvious to one of ordinary skill in the art
`
`before the effective filing date of the claimed invention to have carried out the steps
`
`recited in claim 31 on the structure disclosed by Wang et al in order to obtain the
`
`separated packaged light emitting diodes disclosed by Wang et al .
`
`Re claim 32: Wang et al discloses in Fig. 17 that a third outer side and a fourth
`
`outer side include surfaces of leads 312 and 322 include a notch in each lead which is
`
`filled with the insulator material 20, and the leads have surfaces which are exposed on
`
`sides in addition to the sides shown in Fig. 12, and that at these sides the exposed
`
`surfaces of leads 312, 322 are flush with the resin surfaces of these sides .
`
`Re claim 33: : Wang et al disclose the light emitting device has a rectangular
`
`shape (Fig. 17 and Fig. 18 and col. 3, lines 50-60).
`
`Re claim 34: Wang et al disclose the notch part extends over at least half of the
`
`periphery when viewed from above, as Fig. 17 combined with Fig. 18 shows that in Fig.
`
`18 the notch part 24 extends over at least half of the periphery, and Fig. 17 shows that
`
`the view from Fig. 18 implies that that the same can be stated when viewed from above.
`
`VIZIO Ex. 1018 Page 00015
`
`

`

`Application/Control Number: 15/360,316
`Art Unit: 2895
`
`Page 15
`
`Re claim 36: Claim 16 of US Pat. 9,287,476 corresponds to claim 36 of the
`
`present application, as claim 15 recites a reflecting material.
`
`Re claim 45: Wang et al discloses the entirety of the first notch is filled with a
`
`portion of the resin (Fig. 17).
`
`Allowable Subject Matter
`
`Claims 39 and 54-56 are objected to as being dependent upon a rejected base
`
`claim, but would be allowable if rewritten in independent form including all of the
`
`limitations of the base claim and any intervening claims.
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to CARIDAD EVERHART whose telephone number is
`
`(571 )272-1892. The examiner can normally be reached on Monday through Fridays
`
`7:30-4:00.
`
`Examiner interviews are available via telephone, in-person, and video
`
`conferencing using a USPTO supplied web-based collaboration tool. To schedule an
`
`interview, applicant is encouraged to use the USPTO Automated Interview Request
`
`(AIR) at http://www.uspto.gov/interviewpractice.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
`
`supervisor, Eliseo Ramos-Feliciano can be reached on 571-272-7925. The fax phone
`
`number for the organization where this application or proceeding is assigned is 571-
`
`273-8300.
`
`VIZIO Ex. 1018 Page 00016
`
`

`

`Application/Control Number: 15/360,316
`Art Unit: 2895
`
`Page 16
`
`Information regarding the status of an application may be obtained from the
`
`Patent Application Information Retrieval (PAIR) system. Status information for
`
`published applications may be obtained from either Private PAIR or Public PAIR.
`
`Status information for unpublished applications is available through Private PAIR only.
`
`For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
`
`you have questions on access to the Private PAIR system, contact the Electronic
`
`Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a
`
`USPTO Customer Service Representative or access to the automated information
`
`system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
`
`/CARIDAD EVERHART/
`Primary Examiner, Art Unit 2895
`
`VIZIO Ex. 1018 Page 00017
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`First Inventor Name:
`
`Hirofumi ICHIKAWA
`
`Atty. Dkt. No. 100415-0252
`
`Title:
`
`Appl.No.:
`
`Filing Date:
`
`Examiner:
`
`Art Unit:
`
`LIGHT EMITTING DEVICE, RESIN PACKAGE, RESIN(cid:173)
`MOLDED BODY, AND METHODS FOR MANUFACTURING
`LIGHT EMITTING DEVICE, RESIN PACKAGE AND RESIN(cid:173)
`MOLDED BODY
`
`15/360,316
`
`11/23/2016
`
`Caridad EVERHART
`
`2895
`
`Confirmation Number:
`
`6319
`
`AMENDMENT AND REPLY UNDER37 C.F.R. § 1.111
`
`Mail Stop AMENDMENT
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Commissioner:
`
`This communication is responsive to the non-final Office Action mailed November 6,
`
`2017, concerning the above-referenced patent application.
`
`Amendments to the Claims are reflected in the listing of claims which begins on page 2
`
`of this document.
`
`Remarks begin on page 10 of this document.
`
`Please amend the application as follows:
`
`4839-3984-8025.1
`
`-1-
`
`VIZIO Ex. 1018 Page 00018
`
`

`

`Amendments to the Claims:
`
`This listing of claims will replace all prior versions and listings of claims in the application:
`
`Atty. Dkt. No. 100415-0252
`
`Listing of Claims:
`
`1. - 30.
`
`(Cancelled)
`
`31.
`
`(Currently Amended) A method of manufacturing a plurality of light emitting
`
`devices, each comprising a resin package that includes a first lead, a second lead and a resin part,
`
`and a light emitting element mounted on the resin package, each resin package including a first
`
`outer side surface and a second outer side surface opposing the first outer side surface, the
`
`method comprising:
`
`providing a structure comprising:
`
`a lead frame including first portions to become the first leads, and second
`
`portions to become the second leads, and
`
`a resin-molded body,
`
`wherein the structure includes a plurality of areas, each of which will
`
`become one of the resin packages, and each of which has a first outer side corresponding to the
`
`first outer side surface of the corresponding resin package, and a second outer side opposing the
`
`first outer side and corresponding to the second outer side surface of the corresponding resin
`
`package,
`
`wherein each area of said structure has a concave portion on its upper side,
`
`wherein the lead frame is exposed from the resin-molded body at a bottom
`
`face of each concave portion, such that a part of one of the first portions and a part of one of the
`
`second portions of the lead frame are located at each respective bottom face, separated by a
`
`portion of the resin-molded body,
`
`wherein the lead frame has a plurality of first notch parts in which a
`
`portion of the resin-molded body is disposed,
`
`4839-3984-8025.1
`
`-2-
`
`VIZIO Ex. 1018 Page 00019
`
`

`

`Atty. Dkt. No. 100415-0252
`
`where