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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 11/26/2025 has been entered.
Response to Amendment
The Examiner acknowledges the amending of claims 1 and 23.
Claim Objections
The previous objection to claim 1 is withdrawn due to the current amendments.
Claim Rejections - 35 USC § 112
The previous 112a rejections of claims 1 and 19 are withdrawn based on the Applicant’s currently filed Remarks (see Remarks, pg.6-9).
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 22 and 23, are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 22 refers to the adhesive layer including “multi-layers”. The specification as originally filed teaches the adhesive can be of different materials ([0042]) but does not clearly disclose use of multiple materials together or the use of multiple layers. Therefore, the originally filed specification does not make clear the Applicant was in possession of the claimed invention at the time of filing.
Claim 23 further refers to the multi-layer being composed of a conductive layer. The specification as originally filed does not disclose the adhesive layer #2 to include a conductive layer.
Response to Arguments
Applicant's arguments filed 11/26/2025 have been fully considered but they are not persuasive.
With respect to the 112a rejections of claims 22 and 23, the Applicant has argued (Remarks, pg.9-11) that fig.12-16 show the substrate 1 and the laser unit 3 are bonded together using a multi-layered structure including an adhesive layer 2 and a conductive layer 10.
The Examiner notes that the originally filed specification does not teach the adhesive layer #2 to be of multiple layers and additionally does not teach a conductive layer to be one of the multi-layers. The originally filed specification teaches the presence of an adhesive layer #2 and a conductive layer #10. The specification further teaches the adhesive layer #2 functions to bond the substrate #1 to the laser unit #3 ([0061]). The specification clearly teaches the adhesive layer #2 to be a layer separate from the conductive layer #10. The specification therefore does not teach the adhesive layer #2 to comprise more than 1 layer and also does not teach the conductive layer #10 to be part of the adhesive layer. In other words, adhesive layer #2 and conductive layer #10 are taught to be separate and distinct while also teaching the adhesive layer #2, not the conductive layer #10, functions to bond the substrate #1 and laser unit #3 ([0061]).
With respect to claim 1, the Applicant has argued the amended language at the bottom of claim 1 is not taught by Tanaka as Tanaka does not teach (1) “an optical structure…disposed on a surface of the substrate…”, or (2) an optical structure having plural microstructures, or (3) with respect to fig.15, Tanaka teaches each of the 3 laser units to have a single lens and not “wherein the laser unit comprises:…an optical structure having plural surface-structures”.
With respect to (1), Tanaka clearly teaches an optical structure #72a in both fig.12 and fig.15 which is disposed on a surface of the substrate as the #72a’s are located “in close proximity” to surface #72 of the substrate #1. Note Merriam-Webster’s online dictionary defines “on” to include “in close proximity”.
With respect to (2), the optical structure #72a is formed to have microstructures as fig.12 and fig.15 clearly show the use of a central lens with ridges/valleys on either side. The lens, along with the ridges/valleys, can each be read as a “microstructure”; therefore “plural” microstructures exist based on the formation shape/disposition of #72a of Tanaka. Further, fig.15 clearly shows use of multiple #72a’s, thereby teaching use of plural microstructures even if only the central lens “dome” were to be considered the microstructure. Lastly, claim 1 still does not say that each microstructure has an optical function, rather claim 1 states each optical structure has plural microstructures (which are not specifically assigned an optical function).
With respect to (3), the Examiner first notes the quoted/argued claim language of “wherein the laser unit comprises:…an optical structure having plural surface-structures” is not actually found within claim 1. Further, fig.15 of Tanaka can be interpreted such that the laser unit corresponds to all the LS units together, e.g. as a single array device, such that claim 1 remains clearly met.
The Applicant has additionally argued (Remarks, pg.14-15) that the prior art of Chen and Scharma has not taught the particular electrode structure of the application for “flip-chip bonding”.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., flip-chip bonding) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
The Applicant has argued the art of Hsu (1) has a publication date of 11/15/2018, which is later than the earliest priority date of the present application (11/08/2018), and that (2) there is an inventor listed in common.
With respect to (1), the Examiner notes that the earliest priority date of the instant application is not considered 11/08/2018 until the foreign document relied upon to provide such date is perfected (i.e. English translation) as outlined in MPEP 216. Therefore, the art of Hsu remains a valid reference under 102a1.
With respect to (2), the Examiner notes a SINGLE inventor listed in common. In other words, the Hsu reference names other inventors. MPEP 717.01 III (A/B) states that no automatic exception exists for either 102a1 or 102a2 references when other inventors/authors are listed along with one or more inventors/authors in common. Therefore, the art of Hsu remains a valid reference based on inventorship for both 102a1 and 102a2 type rejections.
Lastly, the Examiner notes Hsu qualifies as art under 102a2, as well as 102a1, based on the filing date of Hsu being before that of the Applicant’s earliest priority date as the inventorship/authorship is “by another”.
The Examiner points out that the Applicant does not appear to argue the merits of the Hsu reference’s teachings, thereby the Examiner does not agree that the currently filed Remarks are sufficient to overcome the art of Hsu.
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 (i.e., changing from AIA to pre-AIA ) 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 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 –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1, 2, 20 and 21 is/are rejected under 35 U.S.C. 102a1/a2 as being anticipated by Tanaka (US 2008/0031295).
With respect to claim 1, Tanaka discloses a laser element (fig.12/15, [0051]), comprising: a substrate (fig.12/15 #1); an adhesive layer (fig.12/15 #10, [0060-61]; note same SiO2 material identified in Applicant’s spec as an adhesive at [0042]); and a laser unit (fig.12/15 LS) bonded to the substrate by the adhesive layer (function of the material of #10), wherein the laser unit comprises: a front conductive structure (fig.12/15 #21) bonded to the substrate by the adhesive layer (fig.12/15 #10 joins #1 and #21); a first type semiconductor stack (fig.12/15 #3-5, [0052], p-type), and the front conductive structure located on the first type semiconductor stack (fig.12/15 #21 physically and electrically contacting #3-5); an active layer (fig.12/15 #6, [0052]); a second type semiconductor stack (fig.12/15 #7-8, [0052], n-type), and the active layer located between the first type semiconductor stack and the second type semiconductor stack; a patterned insulating layer (fig.12/15 portion of #20 on top surface of device, see annotated fig.12 below) on the second type semiconductor stack (fig.12/15 #20 physically contacts #8); a back conductive structure on the patterned insulating layer, and the back conductive structure includes a first electrode (fig.12/15 portion of #33 on top of #20) and a second electrode (fig.12/15 portion of #29 on top of #20), and wherein the first electrode of the back conductive structure contacts the second type semiconductor stack (fig.12/15 #33 electrically contacts #8); a first via hole passing through the patterned insulating layer, the second type semiconductor stack, the active layer and the first type semiconductor stack (fig.12/15 #20a); a first conductive channel located in the first via hole (fig.12/15 #27) and electrically connected to the second electrode of the back conductive structure (fig.12/15 #27 contacts #29 at top) and the front conductive structure (fig.12/15 #27 contacts #21 at bottom); and a first passivation layer (fig.12/15 #20 in via) formed on a sidewall of the first via hole and located between the first conductive channel and the sidewall of the first via hole, and an optical structure (fig.12/15 #72a) having plural microstructures (can be considered the peaks/valleys along with central lens of fig.12, or considered the plurality of lenses in fig.15) disposed on (= in close proximity with) a surface (fig.12/15 #72) of the substrate (lower) opposite to the adhesive layer (fig.12/15 #10).
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With respect to claim 2, Tanaka teaches the first passivation layer contacts the patterned insulating layer on the second type semiconductor stack (fig.12/15 #20 in via contacts #20 on top which is in contact with #8).
With respect to claim 20, Tanaka teaches the optical structure is bonded to the one side of the substrate opposite to the adhesive layer (the term “bonded” is understood to be a product-by-process limitation not disclosed to impart a distinctive structural characteristic and is therefore is not found limiting in this device/structure claim; see MPEP 2113), and the plural microstructures of the optical structure are matched with the laser unit to produce plural laser spots (each lens in fig.15 would produce a spot for each laser outputting to the lens).
With respect to claim 21, Tanaka teaches a plurality of laser units connected to the substrate by the adhesive layer (fig.15 shows 3 lasers connected to the substrate by layer #10).
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 (i.e., changing from AIA to pre-AIA ) 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 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 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.
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tanaka in view of Chen et al. (US 2017/0353004).
With respect to claim 12, Tanaka teaches the device outlined above, but does not teach a conductive layer on the substrate, and from a top view of the laser element, the conductive layer surrounds a periphery of the substrate and has at least one hollow region. Chen teaches a related VCSEL unit (fig.7b) including a substrate (fig.7b #720) with integrated optics (fig.7b #721) and a conductive layer on the substrate (fig.7a #727/729) with a hollow region at the center (fig.7a), and second conductive channels on sidewalls of the laser unit (fig.7b #725/726), and a third (fig.7b #730) and fourth (fig.7b #731) electrodes, wherein the conductive layer, the second conductive channels, the third electrode and the fourth electrode are electrically connected to each other (fig.7a/7b connected to enable detection feature). It would have been obvious to one of ordinary skill in the art before the filing of the instant application to adapt the laser unit (Tanaka, fig.12/15) to include alternate 3rd/4th electrodes, conductive channels on the sidewalls, a conductive layer on the substrate in the outlined locations (Chen, fig.7b bottom of substrate, fig.8d top of substrate), and the electrical interconnection of these features as demonstrated by Chen in order to provide for a means of detecting damage to the device (Chen, [0055]).
Claim(s) 13-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tanaka in view of Schrama (US 2019/0237935).
With respect to claims 13 and 14, Tanaka teaches the device outlined above, but does not teach a conductive layer on the substrate, and from a top view of the laser element, the conductive layer has plural hollow regions arranged as an array OR the conductive layer forms a strip-like structure or a snakelike geometry structure on the substrate. Schrama teaches a related laser ([0016]) device which makes use of a substrate/optic (fig.1b #120) which includes a conductive layer thereon (fig.1b #130) and therein the conductive layer has plural hollow regions (fig.1b/2a/2b hollow regions between conductor) and/or a strip-like (fig.2a/b) or snake-like geometry (fig.2a/b). It would have been obvious to one of ordinary skill in the art before the filing of the instant application to adapt the device of Tanaka to utilize a conductive layer on the substrate in a shape outlined by Schrama in order to form a laser interlock safety feature (Schrama, abstract) and detect damage via different trace shapes.
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tanaka in view of Kitamura et al. (US 6687268).
With respect to claim 15, Tanaka teaches the device outlined above, but does not teach an ohmic contact formed between the back conductive structure and the second type semiconductor stack. Kitamura teaches a related laser device including a via connection (fig.1) and additionally teaches the conductive structures to create ohmic contacts (abstract). It would have been obvious to one of ordinary skill in the art before the filing of the instant application to adapt the device of Tanaka to create an ohmic contact between the back conductive structure and the second type semiconductor stack as demonstrated by Kitamura in order to form a well-known contact type exhibiting a linear current-voltage relationship.
Claim(s) 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tanaka.
With respect to claim 22, Tanaka teaches the device outlined above, but does not teach the adhesive layer includes multi-layers. The adaptation of a particular feature to be made separable (i.e. separating a thick layer into multiple thinner layers) or to be duplicated (i.e. to make use of a second layer identical to a first layer) has been found to be obvious (see MPEP 2144.04 V C, VI B). Therefore, it would have been obvious to one of ordinary skill in the art before the filing of the instant application to make use of multiple thinner layers of the taught adhesive of Tanaka in order to allow for flexibility in the manufacturing process OR to duplicate the existing adhesive layer in order to provide an increased level of support between the laser(s) and optic(s).
Claim(s) 19 and 23-24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tanaka in view of Hsu (US 2018/0331256).
With respect to claim 19, Tanaka teaches the device outlined above, including the front conductive structure includes plural openings located on the first type semiconductor stack (fig.15 openings in each #23), but does not teach a width of each microstructure is smaller than a width of each opening of the front conductive structure on the first type semiconductor stack. Hsu teaches a related laser device (fig.7/11) which includes plural openings (fig.11a #51s) with microstructures of a smaller width aligned with the openings (fig.11a #1501/1502, each of #1501/1502 smaller than openings #51 as indicated by the dotted lines). It would have been obvious to one of ordinary skill in the art before the filing of the instant application to adapt the optical element of Tanaka to make use of the optical element with the disclosed relative sizing of Hsu in order to enable changing the radiation pattern in a desired manner (Hsu, [0091]).
With respect to claims 23 and 24, Tanaka teaches the device outlined above, but does not teach at least one of the multi-layers is a conductive layer OR the adhesive layer includes benzocyclobutene (BCB) layer. Hsu further teaches the use of conductive materials and BCB for a bonding/adhesive layer ([0106]). It would have been obvious to one of ordinary skill in the art before the filing of the instant application to adapt the adhesive material of Tanaka to make use of a conductive layer or BCB as demonstrated by Hsu in order to make use of an alternate material demonstrated to be suitable for the intended adhesive/bonding purpose (see MPEP 2144.07).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TOD THOMAS VAN ROY whose telephone number is (571)272-8447. The examiner can normally be reached M-F: 8AM-430PM.
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/TOD T VAN ROY/Primary Examiner, Art Unit 2828