DETAILED ACTION
Notice of Pre-AIA 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 .
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.
Claims 23, 25-26, 34, 36-39 are pending. Applicant’s previous election of Group I, claims 23, 25-26, 36-39 still applies and claims 34 remain withdrawn.
Response to Amendment
Applicant’s amendment of 09/17/25 has been entered. Applicant's amendment has necessitated new grounds of rejection and the remarks are not persuasive.
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 rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
If this application currently names joint inventors: in considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
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 ordinary skill 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 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 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 obviousness or nonobviousness.
When something is indicated as being “obvious” this should be taken as shorthand for “prima facie obvious to one having ordinary skill in the art to which the claimed invention pertains before the effective filing date of the invention”.
When a range is indicated as overlapping a claimed range, unless otherwise noted, this should be taken as short hand to indicate that the claimed range is obvious in view of the overlapping range in the prior art as set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claim(s) 23, 25-26, 36-39 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ebe (U.S. 2013/0234187) in view of Matsuda (U.S. 2012/0319153, previously cited).
Regarding claims 23, 25-26, 36-39, Ebe teaches a converter element comprising a phosphor layer, encapsulating layer, and adhesive layer, where each layer may comprise a cured polysiloxane resin matrix with cured polysiloxane powder filler, and with the phosphor layer additionally comprising a phosphor (and the other layers not, as in claim 37) and with the thickness of each layer, and corresponding sum thickness of all layers, overlapping the claimed thicknesses of claims 23, 25, 26, and 36 ([0038], [0047], [0149], [0168], [0171], [0176], [0187], [0190], [0195], [0205]). It is further noted that whether the phosphor free layer is a single layer or a plurality of layers is not a patentable distinction by itself because the same material may be used to form the multiple phosphor free layers which may be adjacent to each other, such that there is no difference in the final product if the layer is built up from multiple adjacent, identical, phosphor free sub-layers or from a single phosphor free layer.
Ebe teaches that the silicone microparticle filler may be a polysilsesquioxane resin (a type of T unit containing polysiloxane) but does not disclose that the same polysiloxane is used in both the silicone filler and the silicone resin. However, Matsuda is also directed to silicone based phosphor containing laminates and teaches that polymethylsilsequioxane microparticles are a preferred type of silicone/silsesquioxane filler for improving hardness of a silicone resin composition ([0169]-[0171]) and also teaches that the silicone resin into which the filler is incorporated should have a similar refractive index compared to the filler for transparency and brightness ([0167]-[0168]) and also teaches that a preferred transparent silicone resin is a polymethylsilsequioxane having an overlapping methoxy group as in claims 38-39 and is commercially available (i.e., does not need to be synthesized) ([0232]-[0239]) and also teaches that the phosphor containing layer may comprise the above described silicone resin composition and benefit from improved durability and transparency, i.e., the benefits discussed above ([0287]-[0289], [0297]). Accordingly, it would have been obvious to have used polymethylsilsequioxane microparticles as the silicone particles in the phosphor layer of Ebe because Matsuda teaches that they are a preferred type of filler for improving hardness (which is a beneficial attribute for a silicone based phosphor layer in terms of durability, as taught by Matsuda), and it would have been obvious to have used the preferred polymethylsilsequioxane from Matsuda as the silicone resin for the phosphor layer in Ebe because Matsuda teaches that such a polymethylsilsequioxane is preferred, is commercially available (does not need to be synthesized) and provides transparency, (which is another beneficial attribute for a silicone based phosphor layer), and it would have further been obvious to have used the same polymethylsilsequioxane for both the silicone filler and the silicone resin in the phosphor layer of Ebe because Matsuda teaches that polymethylsilsequioxane is preferred for the resin and the filler respectively (as explained above) and because differences in refractive index between the filler and resin should be minimized to improve transparency and brightness (with zero difference in refractive index being achieved by using the same polymethylsilsequioxane for both the resin and filler).
It is further noted that the resin and filler as claimed merely need to be “based on” the same polysiloxane (i.e., can be very different if the final product was made from/based on the same type of starting product). This effectively makes the “same” requirement a product by process limitation that is given limited patentable weight (i.e., if two resins are different in a way that could be achieved by differently modifying the same resin as a starting material, the two final different resins would still be “based on” the same starting material).
Although the methoxy content is addressed in the prior art as explained above, this is an immaterial product by process limitation because the methoxy groups only exist in the pre-cured intermediate product and the claims are directed to the cured final product.
“[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” See MPEP 2113.
Response to Arguments
Applicant’s remarks are moot in light of the new grounds of rejection which were necessitated by Applicant's amendment. Remarks which are still deemed relevant are addressed below and are not persuasive.
Applicant argues that Ebe requires a non-T unit silicone resin however the portions cited by Applicant are merely preferred/exemplified and Ebe does not require these particular silicone resins.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is 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 event a 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 of this final action.
References cited in any corresponding foreign applications have been considered but would be cumulative to the above. Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL B NELSON whose direct telephone number is (571)272-9886 and whose direct fax number is (571)273-9886 and whose email address is Michael.Nelson@USPTO.GOV. The examiner can normally be reached on Mon-Sat, 7am - 7pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached on 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300 (faxes sent to this number will take longer to reach the examiner than faxes sent to the direct fax number above).
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/MICHAEL B NELSON/
Primary Examiner, Art Unit 1787
Prosecution Insights