Prosecution Insights
Last updated: April 19, 2026
Application No. 17/868,840

METHOD OF MANUFACTURING FLUORESCENT SUBSTANCE

Non-Final OA §103§112
Filed
Jul 20, 2022
Examiner
NGUYEN, SOPHIA T
Art Unit
2893
Tech Center
2800 — Semiconductors & Electrical Systems
Assignee
Roots Co. Ltd.
OA Round
3 (Non-Final)
45%
Grant Probability
Moderate
3-4
OA Rounds
2y 8m
To Grant
58%
With Interview

Examiner Intelligence

Grants 45% of resolved cases
45%
Career Allow Rate
230 granted / 509 resolved
-22.8% vs TC avg
Moderate +13% lift
Without
With
+13.3%
Interview Lift
resolved cases with interview
Typical timeline
2y 8m
Avg Prosecution
86 currently pending
Career history
595
Total Applications
across all art units

Statute-Specific Performance

§103
51.4%
+11.4% vs TC avg
§102
17.0%
-23.0% vs TC avg
§112
26.7%
-13.3% vs TC avg
Black line = Tech Center average estimate • Based on career data from 509 resolved cases

Office Action

§103 §112
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/11/2025 has been entered. Response to Amendment Applicant’s amendment dated 11/11/2025, in which claims 1 and 5 were amended, claims 2-3 were cancelled, has been entered. Drawings Figure 8 should be designated by a legend such as --Prior Art-- because only that which is old is illustrated. See MPEP § 608.02(g). Corrected drawings in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. The replacement sheet(s) should be labeled “Replacement Sheet” in the page header (as per 37 CFR 1.84(c)) so as not to obstruct any portion of the drawing figures. If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance. The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Fig. 7 only show removing the adhesive material 9 but does not show any removing of any UV tape. The workbench 13 appears to remain intact after the adhesive material 9 is removed. Therefore, the limitation of “the removing step comprises further irradiating the adhesive material in the dicing trenches with the UV light such that the UV tape is removed together with the adhesive material” must be shown or the feature(s) canceled from the claim(s). No new matter should be entered. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance. 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 1, 4-5 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. Regarding claim 1, claim 1 further recites “the removing step comprises further irradiating the adhesive material in the dicing trenches with the UV light such that the UV tape is removed together with the adhesive material”. However, Fig. 6 and Fig. 7 do not show any removal of any UV tape. The workbench 13 appears to remain intact after the adhesive material 9 is removed. Thus, it is unclear how UV tape is removed together with the adhesive material while the workbench including the UV tape remains intact and the individual fluorescent substances remains attaching to the workbench including the UV tape. For the purpose of this Action, the above limitation of “the removing step comprises further irradiating the adhesive material in the dicing trenches with the UV light such that the UV tape is removed together with the adhesive material” will be interpreted and examined as --the removing step further comprises removing the workbench including the UV tape by irradiating the workbench including the UV tape with the UV light”. Claims depending from the rejected claims noted above are rejected at least on the same basis as the claim(s) from which the dependent claims depend. Appropriate correction 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. Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Yanagihara et al. (US Pub. 20210179932) in view of Wu et al. (US Pub. 20100009518), and Akiyama et al. (US Pub. 20100233867) and Hampton (US Pat. 6861336). Regarding claim 1, Yanagihara et al. discloses in Fig. 1, paragraph [0042]-[0054] a method of manufacturing a fluorescent substance as a color conversion member for changing a wavelength of light emitted from an LED chip, the method comprising: obtaining a fluorescent substance wafer, wherein the fluorescent substance wafer is obtained by mixing a fluorescent material in powder form with glass or silicone resin to form a mixture and then sintering, compressing and drying the mixture; and obtaining plurality of individual fluorescent substances. Yanagihara et al. fails to disclose obtaining a plurality of individual fluorescent substances comprising: forming dicing trenches on one surface of the fluorescent substance wafer along grid-type dicing lines; filling the dicing trench with an adhesive material having fluidity; curing the adhesive material; placing the fluorescent substance wafer on a workbench including a UV tape having an adhesive surface; reducing a thickness of a portion of the fluorescent substance wafer opposite to the one surface on which the dicing trenches are formed, so as to form an integrated structure in which a plurality of individual fluorescent substances divided along the dicing lines are connected by the adhesive material in the dicing trenches; and removing the adhesive material from the dicing trenches so that only the plurality of individual fluorescent substances remain, wherein, during the reducing step, the adhesive material in the dicing trenches supports the individual fluorescent substances to prevent the fluorescent substance wafer from being damaged or any of the individual fluorescent substances from separating from the workbench, the adhesive material in the dicing trenches is an ultraviolet (UV curable adhesive material, the curing step comprises irradiating the adhesive material in the dicing trenches with UV light, and the removing step further comprises removing the workbench including the UV tape by irradiating the workbench including the UV tape with the UV light. Wu et al. discloses in Fig. 1A-Fig. 1E a method for obtaining a plurality of individual substances from a substance wafer comprising: forming dicing trenches [103] on one surface [102] of the substance wafer [101] along grid-type dicing lines [Fig. 1A]; filling the dicing trench [103] with an adhesive material [105] having fluidity [Fig. 1B, paragraph [0022]-[0026]]; curing the adhesive material [105][paragraph [0022]-[0026]]; placing the substance wafer [101] on a workbench including a UV tape [107] having an adhesive surface [Fig. 1C, paragraph [0028]-[0029]]; reducing a thickness of a portion of the substance wafer [101] opposite to the one surface [102] on which the dicing trenches [103] are formed, so as to form an integrated structure in which a plurality of individual substances [101] divided along the dicing lines are connected by the adhesive material [105] in the dicing trenches [103][Fig. 1D]; and removing the adhesive material [105] from the dicing trenches [103] so that only the plurality of individual substances remain, wherein, during the reducing step, the adhesive material [105] in the dicing trenches [103] supports the individual substances to prevent the substance wafer from being damaged or any of the individual substances from separating from the workbench [107]; the removing step further comprises removing the workbench including the UV tape [107][Fig. 2B-Fig. 2C, paragraph [0037]]. Akiyama et al. discloses in Fig. 2-Fig. 4, paragraph [0049]-[0052] the adhesive material [12] in the dicing trenches is an ultraviolet (UV curable adhesive material, the curing step comprises irradiating the adhesive material [12] in the dicing trenches with UV light, and Hampton discloses in Fig. 2E-2F the removing step further comprises removing the workbench including the UV tape [18] by irradiating the workbench including the UV tape [18] with the UV light [the back grinding tape 18 is removed by placing the known good die 12 and the back grinding tape 18 face up in a UV cure station. The back grinding tape 18 is then UV irradiated for two minutes, therefore, reducing the adhesive strength from 400 g/25 mm to 5 g/25 mm.]. It would have been obvious to one of ordinary skill in the art before the effective filling date of the invention to incorporate the teachings of Wu et al., Akiyama et al. and Hampton into the method of Yanagihara et al. to include obtaining a plurality of individual fluorescent substances comprising: forming dicing trenches on one surface of the fluorescent substance wafer along grid-type dicing lines; filling the dicing trench with an adhesive material having fluidity; curing the adhesive material; placing the fluorescent substance wafer on a workbench including a UV tape having an adhesive surface; reducing a thickness of a portion of the fluorescent substance wafer opposite to the one surface on which the dicing trenches are formed, so as to form an integrated structure in which a plurality of individual fluorescent substances divided along the dicing lines are connected by the adhesive material in the dicing trenches; and removing the adhesive material from the dicing trenches so that only the plurality of individual fluorescent substances remain, wherein, during the reducing step, the adhesive material in the dicing trenches supports the individual fluorescent substances to prevent the fluorescent substance wafer from being damaged or any of the individual fluorescent substances from separating from the workbench, the adhesive material in the dicing trenches is an ultraviolet (UV curable adhesive material), the curing step comprises irradiating the adhesive material in the dicing trenches with UV light, and the removing step further comprises removing the workbench including the UV tape by irradiating the workbench including the UV tape with the UV light. The ordinary artisan would have been motivated to modify Yanagihara et al. in the above manner for the purpose of providing suitable method for forming individual fluorescent substances. Further, it would have been obvious to try one of the known methods with a reasonable expectation of success. KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385 (2007). Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Yanagihara et al. (US Pub. 20210179932) in view of Wu et al. (US Pub. 20100009518), and Akiyama et al. (US Pub. 20100233867) and Hampton (US Pat. 6861336) as applied to claim 1 above and further in view of Choi et al. (US Pub. 20100112787). Regarding claim 4, Yanagihara et al. and Wu et al. and Akiyama et al. and Hampton fails to discloses between the forming of the dicing trench and the filling of the dicing trench, grinding the one surface on which the dicing trench is formed to a uniform thickness so as to remove a chipping region formed on the one surface of the wafer in the forming of the dicing trench. Choi et al. discloses in Fig. 2B-2D between the forming of the dicing trench [116] and subsequent process, grinding the one surface on which the dicing trench [116] is formed to a uniform thickness. It would have been obvious to one of ordinary skill in the art before the effective filling date of the invention to incorporate the teachings of Choi et al. into the method of Yanagihara et al. and Wu et al. and Akiyama et al. and Hampton to include between the forming of the dicing trench and the filling of the dicing trench, grinding the one surface on which the dicing trench is formed to a uniform thickness. The ordinary artisan would have been motivated to modify Yanagihara et al. and Wu et al. and Akiyama et al. and Hampton in the above manner for the purpose of providing suitable intermediate step to remove undesired material formed on the one surface on which the dicing trench is formed and reducing the one surface to a determined depth [paragraph [0025] of Choi]. The grinding process disclosed by Choi would remove any chipping region formed on the one surface of the wafer in the forming of the dicing trench. Same process would inherently yield same result. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01. Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Yanagihara et al. (US Pub. 20210179932) in view of Wu et al. (US Pub. 20100009518), and Akiyama et al. (US Pub. 20100233867) and Hampton (US Pat. 6861336) as applied to claim 1 above and further in view of Hirschler et al. (US Pub. 20130189830). Regarding claim 5, Wu et al. discloses in Fig. 1C-Fig. 1D wherein the reducing a thickness of a surface [104] opposite to the one surface on which the dicing trenches are formed comprises placing the wafer [101] coming into contact with an upper surface of the workbench [107], and grinding an upper surface [104] of the wafer [101] to a uniform thickness over the entire wafer using a surface grinder until the surface grinder reaches the adhesive material [105]. Yanagihara et al. and Wu et al. and Akiyama et al. and Hampton fails to discloses turning over the wafer in which the dicing trench is filled with the adhesive material to place the wafer coming into contact with an upper surface of the workbench. Hirschler et al. discloses in Fig. 4 turning over the wafer [10] in which the dicing trench [60] is filled with the adhesive material [70] to place the wafer [10] coming into contact with an upper surface of the workbench [80]. It would have been obvious to one of ordinary skill in the art before the effective filling date of the invention to incorporate the teachings of Hirschler et al. into the method of Yanagihara et al. and Wu et al. and Akiyama et al. and Hampton to include turning over the wafer in which the dicing trench is filled with the adhesive material to place the wafer coming into contact with an upper surface of the workbench. The ordinary artisan would have been motivated to modify Yanagihara et al. and Wu et al. and Akiyama et al. and Hampton in the above manner for the purpose of providing suitable method for reducing a thickness of a surface opposite to the one surface on which the dicing trenches are formed. Further, it would have been obvious to try one of the known methods with a reasonable expectation of success. KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385 (2007). Response to Arguments Applicant’s arguments with respect to claim(s) 1, 4-5 have been considered but are moot in view of the new ground of rejection and because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. Overall, Applicant’s arguments are not persuasive. The claims stand rejected. Conclusion The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The cited art discloses similar materials, devices and methods. Any inquiry concerning this communication or earlier communications from the examiner should be directed to SOPHIA T NGUYEN whose telephone number is (571)272-1686. The examiner can normally be reached 9:00am -5:00 pm, Monday-Friday. 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, BRITT D HANLEY can be reached at (571)270-3042. 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. /SOPHIA T NGUYEN/ Primary Examiner, Art Unit 2893
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Prosecution Timeline

Jul 20, 2022
Application Filed
May 08, 2025
Non-Final Rejection — §103, §112
Aug 04, 2025
Response Filed
Aug 15, 2025
Final Rejection — §103, §112
Nov 11, 2025
Response after Non-Final Action
Nov 17, 2025
Request for Continued Examination
Nov 25, 2025
Response after Non-Final Action
Jan 08, 2026
Non-Final Rejection — §103, §112 (current)

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Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

3-4
Expected OA Rounds
45%
Grant Probability
58%
With Interview (+13.3%)
2y 8m
Median Time to Grant
High
PTA Risk
Based on 509 resolved cases by this examiner. Grant probability derived from career allow rate.

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