DETAILED ACTION
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.
This Office Action is in response to Amendments/Remarks filed on April 27, 2026.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 14-15 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. As to claim 14, the limitation “the second metal contact” lacks sufficient antecedent basis. Thus, the limitation renders the claims indefinite and clarification is required.
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 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) 10-12 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication No. 2013/0049053 A1 to Kususe et al. (“Kususe”) in view of U.S. Patent Application Publication No. 2007/0090522 A1 to Alhayek et al. (“Alhayek”). As to claim 10, although Kususe discloses a device comprising: an optoelectronic device including: an active region (8) configured to generate ultraviolet radiation; a first electrode (22) and a second electrode (22) located adjacent to the active region (8); and an insulator layer (14) located adjacent to the first electrode (22) and the second electrode (22), wherein the insulator layer (14) is transparent to ultraviolet radiation and covers a side surface of both the first electrode (22) and the second electrode (22); a submount (9) for the optoelectronic device, wherein the submount (9) includes: a body (9), wherein the optoelectronic device is located on a first side of the body (9); and wherein the insulator layer (14) covers the first electrode (22) and the second electrode (22); and a first metal contact (3) located between the body (9) and the first electrode (22), wherein an outer edge of the first metal contact (3) is spaced apart from an outer edge of the body (9) in a cross sectional view, wherein the first metal contact (3) is electrically connected to the first electrode (22) (See Fig. 1, Fig. 3, Fig. 4, ¶ 0067-¶ 0071, ¶ 0075, ¶ 0080, ¶ 0087, ¶ 0088, ¶ 0094, ¶ 0095) (Notes: the single layer of SiO2 allows light to pass through), Kususe does not further disclose the body formed of an insulating material; and a via material in thermal contact with the body, wherein the via material is thermally conductive, wherein the insulator layer separates the via material from the first electrode and the second electrode; and wherein the body includes a thermal conductivity that is comparable to at least one of silicon carbide film or aluminum nitride ceramic. However, Alhayek does disclose the body (15) formed of an insulating material (AlN, SiC); and a via material (24) in thermal contact with the body (15), wherein the via material (24) is thermally conductive; and wherein the body (15) includes a thermal conductivity that is comparable to at least one of silicon carbide film or aluminum nitride ceramic (See Fig. 5, ¶ 0018, ¶ 0023, ¶ 0025, ¶ 0026). In view of the teaching of Alhayek, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the teaching of Kususe to have the body formed of an insulating material; and a via material in thermal contact with the body, wherein the via material is thermally conductive, wherein the insulator layer separates the via material from the first electrode and the second electrode; and wherein the body includes a thermal conductivity that is comparable to at least one of silicon carbide film or aluminum nitride ceramic because the insulating material in combination with the via material provide good heat dissipation to support the optoelectronic device and the insulator layer further protects and isolates the first and second electrodes from the environment (See Kususe Fig. 4 and Alhayek ¶ 0018, ¶ 0026). Further regarding claim 10, the claim limitation “configured to generate ultraviolet radiation” specifies an intended use or field of use, and is met by the prior art since it has been held that in device claims, intended use must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In re Casey, 152 USPQ 235 (CCPA 1967); In re Otto, 136 USPQ 458, 459 (CCPA 1963). A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex Parte Masham, 2 USPQ 2d 1647 (Bd. Pat. App. & Inter. 1987). As to claim 11, Kususe further discloses wherein the optoelectronic device is an ultraviolet light emitting diode (See ¶ 0069, ¶ 0075). As to claim 12, Kususe further discloses wherein the optoelectronic device includes a substrate (5) and a buffer layer (¶ 0080), wherein the substrate (5) and the buffer layer (¶ 0080) are transparent to a target ultraviolet radiation (See Fig. 4, ¶ 0067, ¶ 0080). As to claim 16, Kususe further discloses wherein the first electrode (22) and the second electrode (22) are electrically isolated from one another by the insulator layer (14) (See Fig. 4).
Claim(s) 13 is rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication No. 2013/0049053 A1 to Kususe et al. (“Kususe”) and U.S. Patent Application Publication No. 2007/0090522 A1 to Alhayek et al. (“Alhayek”) as applied to claim 10 above, and further in view of U.S. Patent Application Publication No. 2011/0309326 A1 to Gaska et al. (“Gaska”). The teachings of Kususe and Alhayek have been discussed above.
As to claim 13, although Kususe in view of Alhayek discloses wherein the optoelectronic device further comprises: a p-type layer (7) located adjacent to the first electrode (22); and an n-type layer (6) located adjacent to the second electrode (22), wherein the first electrode (22) and the second electrode (22) are reflective of the ultraviolet radiation, wherein the insulator layer (14) separates the p-type layer (7) and the n-type layer (6) from the via material (24) (See Kususe Fig. 1, Fig. 4, ¶ 0069, ¶ 0094, and Alhayek Fig. 5), Kususe does not further disclose the n-type layer and/or the second electrode form a short period superlattice that is transparent to the ultraviolet radiation. However, Gaska does disclose the n-type layer and/or the second electrode form a short period superlattice that is transparent to the ultraviolet radiation (See ¶ 0031, ¶ 0036). In view of the teaching of Gaska, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the teaching of Kususe to have the n-type layer and/or the second electrode form a short period superlattice that is transparent to the ultraviolet radiation because better crystal quality and/or higher optical transmission are obtained (See ¶ 0031, ¶ 0036).
Claim(s) 17 is rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication No. 2013/0049053 A1 to Kususe et al. (“Kususe”) and U.S. Patent Application Publication No. 2007/0090522 A1 to Alhayek et al. (“Alhayek”) as applied to claim 10 above, and further in view of U.S. Patent Application Publication No. 2013/0032799 A1 to Yen et al. (“Yen”) and U.S. Patent Application Publication No. 2012/0235304 A1 to Huisinga et al. (“Huisinga”). The teachings of Kususe and Alhayek have been discussed above. As to claim 17, although Kususe in view of Alhayek discloses the via material (24) further comprising a thermally conducive filler material (24) located adjacent to the insulator layer (14) and thermally connected to a heatsink (3) (See Kususe Fig. 1, Fig. 4, and Alhayek Fig. 5, ¶ 0025, ¶ 0026), Kususe and Alhayek do not further disclose wherein the thermally conductive filler material is electrically insulating and is reflective to ultraviolet radiation. However, Yen and Huisinga do disclose wherein the thermally conductive filler material (19) is electrically insulating and is reflective to ultraviolet radiation (See Yen Fig. 1, ¶ 0024, ¶ 0025, ¶ 0026, and Huisinga ¶ 0031). In view of the teachings of Yen and Huisinga, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings of Kususe and Alhayek to have wherein the thermally conductive filler material is electrically insulating and is reflective to ultraviolet radiation because the SiOx thermally conducive filler material with a certain thickness provides an insulator, a diffusion barrier, and a better light extraction layer (See Yen and Huisinga).
Response to Arguments
Applicant's arguments with respect to claim 10 have been considered but are moot in view of the new ground(s) of rejection.
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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID CHEN whose telephone number is (571)270-7438. The examiner can normally be reached M-F 12-6.
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/DAVID CHEN/Primary Examiner, Art Unit 2815
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