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 .
Specification
The Applicant has amended the title in a curative manner. The objection is withdrawn.
Response to Arguments
Applicant’s arguments, filed July 30, 2025, with respect to the rejection(s) of the apparatus claims have been fully considered and are not persuasive. The Applicant repeats most of the arguments made in past responses and the Examiner’s response are not repeated for brevity. Regarding new arguments that the Applicant advances in this case, the Applicant argues:
The voids of Satterthwaite are not formed during operation, Satterhwaite thus not reading on this limitation.
In response, the requirement of formation during operation is a product-by-process limitation. This limitation does not limit the claim except for its implied structure as a result of the process step of forming the cavities “during operation.” M.P.E.P. 2113 I. In the case of claim 15, the structure resulting from the cavity formation is explicitly recited, namely, that the cavities form entirely within the matrix and at the crack nuclei. This structure is taught by the combination of Haiberger and Satterthwaite as described below.
The Applicant further argues that a combination of Haiberger and Satterthwaite would render Haiberger unsatisfactory for its intended purpose. In specific, and in support of the above, Applicant asserts that the particles of Satterthwaite are unable to counteract the color locus shift described by Haiberger. The Applicant further asserts that because Haiberger does not have a stress problem, there is no need for stress relief.
Satterwaite is used in the rejection of the independent claims to show that the location of the microcracks of Haiberger may provide some benefit i.e., providing sites of stress relief. It is not proposed that the particles of Satterwaite are added to the matrix of Haiberger. Satterwaite teaches the person of ordinary skill in the art to move the microcracks of Haiberger outside the particles, such a modification giving the benefit of stress relief as taught by Satterwaite. Regarding the alleged lack of a need for stress relief, Haiberger teaches the formation of microcracks over the operating life time of the device [0055]-[0056] and a decreased reflectivity of the side wall. This may be considered by a person of ordinary skill in the art as a problem to solve, thus encouraging a decrease in the amount of microcracks formed over the lifetime of the device on the sidewalls.
The Applicant states again that the cracks formed in the combination of Haiberger and Saittherwaite do not form during operation. Such a limitation is a product by process limitation and the implied structure of the process is considered. M.P.E.P. 2113 I.
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.
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.
Claims 15-20, 22, and 25-29 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Pat. Pub No. US 20170222103 A1 to Haiberger et al. (hereinafter “Haiberger”) in view of Effect of resin-composite filler particle size and shape on shrinkage-stress to Satterhwaite et al. (hereinafter “Satterhwaite”).
Regarding claim 15, Haiberger teaches an optoelectronic semiconductor component (1) [0067] in fig. 1 comprising:
an optoelectronic semiconductor chip (10) [0016]; and a casing (all elements within opening 100 including 110, 130, 120, and 140 hereinafter referred to as “the casing”) [0068] comprising a matrix material (110) [0068]; and
optically inactive particles (140; optically inactive because of matched refractive index) [0083] & [0089] being crack nuclei (142 which is part of 140) [0092] located in the matrix material (110) of the casing (the casing),
wherein the optoelectronic semiconductor chip is embedded in the matrix material (110) of the casing (casing), and
wherein during operation of the optoelectronic semiconductor component (1), and based on the crack nuclei (142), cavities [0092] form entirely within the matrix material (110) of the casing (the casing) and outside the particles at least at some of the crack nuclei (142).
To further clarify, Haiberger reads on claim 15 regarding the formation of the cavities because it relates to the Applicant’s disclosure of such cavities as comprising microcracks in [0020].
Haiberger does not teach that the cavities form outside the particles.
Satterhwaite, however, teaches that cavities, formed within a matrix material, provide sites of stress relief (p. 610 left col. para. 1).
It would have been obvious to a person of ordinary skill in the art (POSITA) to use the particles of Haiberger to nucleate cracks in the casing of Haiberger to relieve stress as taught by Satterhwaite p. 610 left col. para. 1.
Regarding the term “optically inactive,” and to further clarify, Haiberger discloses in para [0089] that the particles (140) comprise phenylsilicone and the matrix material (110) comprises methylsilicone. These disclosed materials would be similarly refractive, the matrix material thus being optically similar with or without the presence of the particles 140. This discussion is in line with the Applicant’s discussion concerning the term “optically inactive” in the as-filed specification at [0022].
Haiberger and Saittherwaite do not teach that the cracks are formed during operation. This limitation does not limit the claim except for its implied structure as a result of the process step of forming the cavities “during operation.” M.P.E.P. 2113 I. In the case of claim 15, the structure resulting from the cavity formation is explicitly recited, namely, that the cavities form entirely within the matrix and at the crack nuclei.
Regarding claim 16, Haiberger in view of Satterhwaite teaches an optoelectronic semiconductor component according to claim 15. Haiberger further discloses in fig. 2 wherein aging-related shrinkage of the matrix material (110) causes formation of the cavities [0092]. To further clarify, Haiberger discloses that the catalyst (142) supports decomposition of the optically inactive particles (140) and subsequently causes cracks [0092] (as modified by Satterhwaite). Since the catalyst 142 and encapsulation 145 are part of the matrix material (110) and decomposition occurs as the operating period increases [0092], “shrinkage due to decomposition of encapsulation 145” is considered to be aging-related shrinkage of the matrix material (110) that causes formation of the cavities/cracks.
Regarding claim 17, Haiberger in view of Satterhwaite teaches an optoelectronic semiconductor component according to claim 15. Haiberger further discloses in fig. 1 wherein the particles (140) are transparent [0083] to a radiation (visible light) [0083] generated or received by the optoelectronic semiconductor chip (10).
Regarding claim 18, Haiberger in view of Satterhwaite teaches an optoelectronic semiconductor component according to claim 15. Haiberger discloses in fig. 1 wherein a refractive index [0089] of a material of the particles matches (140) [0089] refractive index of the matrix material (110). To further clarify, Haiberger discloses in para [0089] that the particles (140) comprise phenylsilicone and the matrix material (110) comprises methylsilicone. These disclosed materials satisfy the indicated relationship in the claim.
Regarding claim 19, Haiberger in view of Satterhwaite teaches an optoelectronic semiconductor component according to claim 18. Haiberger discloses in fig. 1 wherein the refractive index [0089] of the material of the particles (140) varies by not more than 10% from the refractive index [0089] of the matrix material (110). To further clarify, Haiberger discloses in para [0089] that the particles (140) comprise phenylsilicone and the matrix material (110) comprises methylsilicone. These disclosed materials satisfy the indicated relationship in the claim.
Regarding claim 20, Haiberger in view of Satterhwaite teaches an optoelectronic semiconductor component according to claim 18. Haiberger discloses in fig. 1 wherein the refractive index [0089] of the material of the particles (140) varies by not more than 5% from the refractive index [0089] of the matrix material (110). To further clarify, Haiberger discloses in para [0089] that the particles (140) comprise phenylsilicone and the matrix material (110) comprises methylsilicone. These disclosed materials satisfy the indicated relationship in the claim.
Regarding claim 21, Haiberger in view of Satterhwaite, thus far, does not teach an optoelectronic semiconductor component according to claim 15. Haiberger is silent on a semiconductor component wherein at least some of the particles (140) have an angular basic form.
Satterhwaite, however, teaches the effect of resin-composite filler particle size and shape on shrinkage stress. Satterhwaite teaches that irregular or multimodal particle shape contributes to more shrinkage stress than spherical particles in the conclusion on p. 613. The terms “irregular” and “multimodal” are considered as reading on the claim limitation of “at least some particles hav[ing] an angular basic form,” (emphasis added) because of the non-spherical nature of the particles as taught by Satterhwaite on p. 610 sec. 2.
It would have been obvious to the POSITA, before the effective filing date of the invention, to modify at least some of the particles (140) of Haiberger to comprise a basic angular form because they would serve as better crack nuclei in age-related shrinkage (higher shrinkage stress) as taught by Satterhwaite in the conclusion on p. 613.
Regarding claim 22, Haiberger discloses an optoelectronic semiconductor component according to claim 15. Haiberger further discloses in fig. 1 wherein the particles (140) have an average diameter between 5 µm and 30 µm, inclusive [0061].
The courts have held that “[if] the prior art discloses a point within the claimed range, the prior art anticipates the claim.” UCB, Inc. v. Actavis Labs. UT, Inc., 65 F.4th 679, 687, 2023 USPQ2d 448 (Fed. Cir. 2023); M.P.E.P. 2131.03 (I).
Regarding claim 25, Haiberger in view of Satterhwaite teaches an optoelectronic semiconductor component according to claim 15. Haiberger further discloses in fig. 1 wherein the matrix material (110) is silicone [0068].
Regarding claim 26, Haiberger in view of Satterhwaite teaches an optoelectronic semiconductor component according to claim 15. Haiberger further discloses in fig. 1 wherein the matrix material (110) has a refractive index of between 1.4 and 1.6, inclusive [0089]. To further clarify, Haiberger teaches that the matrix material (110) may comprise a phenyl silicone material in [0089]. Phenyl silicone is known to comprise a refractive index between 1.4 and 1.6, inclusive, as evidenced by Mosley in High Refractive Index Thermally Stable Phenoxyphenyl and Phenylthiophenyl Silicones for Light-Emitting Diode Applications, p. 1.
Regarding claim 27, Haiberger teaches A method for operating an optoelectronic semiconductor component (1) [0067] in fig. 1 an optoelectronic semiconductor chip (10) [0016] and a casing (all elements within opening 100 including 110, 130, 120, and 140 hereinafter referred to as “the casing”) [0068] comprising a matrix material (110) [0068], wherein the optoelectronic semiconductor chip (10) is embedded in the matrix material (110) of the casing (the casing), and wherein optically inactive particles (140; optically inactive because of matched refractive index) [0083] & [0089] being crack nuclei (142 as part of 140) [0092] located in the matrix material (110) of the casing (the casing), the method comprising:
operating the optoelectronic semiconductor component (1) such that, based on the crack nuclei (142 as part of 140), cavities [0092] form entirely within the matrix material (110) of the casing (the casing) for at least some of the particles (142) [0092] (i.e., the cracking disclosed by Haiberger is interpreted read on the cavities of the current invention because the current specification, in para [0020], discloses cavities are in the form of microcracks).
Haiberger does not teach that the cavities form outside the particles.
Satterhwaite, however, teaches that cavities, formed within a matrix material, provide sites of stress relief (p. 610 left col. para. 1).
It would have been obvious to a person of ordinary skill in the art (POSITA) to use the particles of Haiberger to nucleate cracks in the casing of Haiberger to relieve stress as taught by Satterhwaite p. 610 left col. para. 1.
Regarding the term “optically inactive,” and to further clarify, Haiberger discloses in para [0089] that the particles (140) comprise phenylsilicone and the matrix material (110) comprises methylsilicone. These disclosed materials would be similarly refractive, the matrix material thus being optically similar with or without the presence of the particles 140. This discussion is in line with the Applicant’s discussion concerning the term “optically inactive” in the as-filed specification at [0022].
Regarding claim 28, Haiberger teaches an optoelectronic semiconductor component (1) [0067] in fig. 1 comprising:
an optoelectronic semiconductor chip (10) [0016];
and a casing (all elements within opening 100 including 110, 130, 120, and 140 hereinafter referred to as “the casing”) [0068] comprising a matrix material (110) [0068], optically inactive particles (140) [0083] being crack nuclei (142 as part of 140) [0092] located in the matrix material (110) of the casing (the casing), wherein the optoelectronic semiconductor chip (10) is embedded in the matrix material (110) of the casing (the casing), and
wherein at least some of the particles (140) are configured to form cavities [0092] entirely within the matrix material (110) of the casing (the casing) (i.e., the cracking disclosed by Haiberger is interpreted read on the cavities of the current invention because the current specification, in para [0020], discloses cavities are in the form of microcracks).
Haiberger does not teach that the cavities form outside the particles.
Satterhwaite, however, teaches that cavities, formed within a matrix material, provide sites of stress relief (p. 610 left col. para. 1)
It would have been obvious to a person of ordinary skill in the art (POSITA) to use the particles of Haiberger to nucleate cracks in the casing of Haiberger to relieve stress as taught by Satterhwaite p. 610 left col. para. 1.
Regarding the term “optically inactive,” and to further clarify, Haiberger discloses in para [0089] that the particles (140) comprise phenylsilicone and the matrix material (110) comprises methylsilicone. These disclosed materials would be similarly refractive, the matrix material thus being optically similar with or without the presence of the particles 140. This discussion is in line with the Applicant’s discussion concerning the term “optically inactive” in the as-filed specification at [0022].
Regarding claim 29, Haiberger in view of Satterhwaite teaches an optoelectronic semiconductor component according to claim 28. Haiberger further discloses in fig. 1 wherein the casing (the casing) is configured to form the cavities [0092] based on aging-related shrinkage [0092] of the matrix material (110). To further clarify, Haiberger discloses that the catalyst (142) supports decomposition of the optically inactive particles (140) and subsequently causes cracks [0092] (i.e., Since the catalyst 142 and encapsulation 145 are part of the matrix material and decomposition occurs as the operating period increases [0092], “shrinkage due to decomposition of encapsulation 145” is considered to be aging-related shrinkage of the matrix material that causes formation of the cavities/cracks).
Regarding claim 30, Haiberger in view of Satterhwaite teaches the optoelectronic semiconductor component of claim 15, wherein the particles (140) are not diffusers [0089].
Regarding claim 31, Haiberger in view of Satterhwaite teaches the optoelectronic semiconductor component of claim 15, wherein the particles (140) are not luminophores [0089].
Claims 23-24 are rejected under 35 U.S.C. 103 as being unpatentable over Haiberger in view of Satterhwaite as applied to claim 15 above, and further in view of U.S. Pat. Pub No. US 20150076544 A1 to Schmidtke et al. (hereinafter “Schmidtke”).
Regarding claim 23, Haiberger discloses an optoelectronic semiconductor component according to claim 15. Haiberger does not teach in fig. 1 wherein the particles (140) are present in the casing (the casing) with a proportion between 5% by weight and 25% by weight inclusive.
Schmidtke, however, teaches a optoelectronic semiconductor component (abstract) in fig. 1 comprising a transparent material (50) [0062] and filler particles (60) [0131] comprising a proportion between 3% by weight and 30% by weight inclusive [0063].
It would have been obvious to the POSITA, before the effective filing date of the invention, to modify the materials of Haiberger (the materials of the particles and the matrix) to comprise a proportion between 3% by weight and 30% by weight to improve efficiency as taught by Schmidtke in [0059].
Regarding claim 24, Haiberger discloses an optoelectronic semiconductor component according to claim 15. Haiberger does not teach in fig. 1 wherein the particles (140) are present in the casing (the casing) with a proportion between 5% by weight and 25% by weight inclusive.
Schmidtke, however, teaches a optoelectronic semiconductor component (abstract) in fig. 1 comprising a transparent material (50) [0062] and filler particles (60) [0131] comprising a proportion between 5% by weight and 25% by weight inclusive [0063].
It would have been obvious to the POSITA, before the effective filing date of the invention, to modify the materials of Haiberger (the materials of the particles and the matrix) to comprise a proportion between 5% by weight and 25% by weight to improve efficiency as taught by Schmidtke in [0059].
Allowable Subject Matter
Claims 32-34 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.
Regarding claim 32, it is not found explicitly taught nor suggested (nor a motivation found) to modify the combination of Haiberger in view of Satterthwaite to meet the limitations of claim 32. In particular, the light scattered in the cavities is not found to land in the wavelength range of 700nm and above.
Regarding claim 33, it is not found explicitly taught nor suggested (nor a motivation found) to modify the combination of Haiberger in view of Satterthwaite to meet the limitations of claim 33. In particular, is not found a reason to select a particular material for the particles which differs by at least 50X10-6/K different from the matrix material.
Regarding claim 34, this claim comprises allowable subject matter for the same reason as claim 33.
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 ETHAN EDWARD CUTLER whose telephone number is (703)756-5415. The examiner can normally be reached Monday-Friday 7:30 am - 5:00 pm Eastern Time.
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, Drew Richards can be reached on (571) 272-1736. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ETHAN EDWARD CUTLER/Examiner, Art Unit 2892
/NORMAN D RICHARDS/Supervisory Patent Examiner, Art Unit 2892