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 .
DETAILED ACTION
Drawings
Figures 1A and 1B should be designated by a legend such as --Prior Art-- because only that which is old is illustrated. See MPEP § 608.02(g). Paragraphs 0004-0005 of the Background section of applicant’s specification, clearly disclose that Figs 1A-1B are current state of the art and not the invention, furthermore the specification explains that these figures contain deficiencies that the applicant’s embodiments illustrated in Figs 2-9 endeavor to overcome. 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.
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.
Claims 11-16 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, regards as the invention.
1) Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999).
The term “side looking laser die” in claims 11 and 14 is used by the claims to mean “laser die”. The term “egress window” in claims 11 and 16 are used by the claims to mean “flat window”. The terms do not conform with standard usage in the art, making the claims indefinite.
Furthermore, the specification does not clearly redefine these terms. The term “egress window” only appears in the claims and does not appear in the specification. Element 256 is described in the specification as “flat window”. The term “side-looking laser” does not appear in the description of the elected device described in the embodiments of Figs 2-5, the term only appears in the claims. Element 240 is described in the specification as “laser die”.
2) Claims 11 and 14 recite the limitation “side-looking laser”. This limitation is confusing making the claim indefinite, since the laser does not have eyes and is not capable of looking at anything.
3) Claims 11 and 16 recites the limitation “egress window”. This limitation is confusing making the claim indefinite, since there is no escape or emergency exit provided by the window, the disclosed element is fixed in place and is not capable of opening.
4) Claim 12 recites the limitation in line 2 from the bottom:
“a through via disposed through the semiconductor substrate configured to”
This limitation is confusing making the claim indefinite, since it is not clear if “the via is configured to” or “the substrate is configured to”.
In order to overcome this rejection, the limitation should be amended to recite:
“a through via disposed through the semiconductor substrate and configured to”
The remainder of the claims are rejected for their dependence on claim 11. For the purpose of examination, the limitations have been searched and considered.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 12 is rejected under 35 U.S.C. 112(d) as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. The claim discloses limitations:
“wherein the carrier submount further comprises a through via disposed through the semiconductor substrate configured to provide electrical and/or thermal conductivity between the component mounting pad and at least one of the plurality of metalized pads.”
However, claim 11 already discloses “an electrically conductive package mounting pad disposed on the package mounting surface in electrical communication with the component mounting pad”. Therefore, claim 12 cannot claim electrical conductivity in the alternative to thermal conductivity.
In order to overcome this rejection, the claim should be amended to recite:
“wherein the carrier submount further comprises a through via disposed through the semiconductor substrate and configured to provide electrical conductivity between the component mounting pad and at least one of the plurality of metalized pads.”
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
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.
Claims 11-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Reinert et al. (2016/0285232) found in IDS, hereinafter ‘232.
Fig 19 of ‘232 discloses a laser surface-mount device (SMD) package, comprising:
11. “a carrier submount [16], comprising:
a semiconductor substrate [16] comprising a substantially rectangular component mounting surface [top] and a package mounting surface [bottom] disposed opposite the component mounting surface;
an electrically conductive component mounting pad [20 on top] disposed on the component mounting surface [top];
an electrically conductive package mounting pad [20 on bottom] disposed on the package mounting surface [bottom] in electrical communication [28] with the component mounting pad; and
a side-looking laser die [17] mounted to and in electrical communication [wires] with the component mounting pad [20], the side-looking laser die [17] arranged to emit a laser beam in a path substantially parallel [horizontal] to the component mounting surface [top] toward a first edge [right side] of the component mounting surface; and
a glass cap [1] mounted to the carrier submount [16] over the laser die [17], the glass cap comprising:
a mounting surface [main body of the glass cap] surrounding a glass cap cavity; and
an egress window [18, ARC] mounted to the glass cap [1] and positioned adjacent to the first edge [right side] of the component mounting surface
wherein the glass cap [1] is arranged upon the carrier submount [16] such that the side-looking laser die [17] is disposed within the glass cap cavity and the laser beam path passes through the egress window [18, ARC].”
12. “wherein the electrically conductive package mounting pad [20 on bottom] comprises a plurality of metalized pads; and
wherein the carrier submount [16] further comprises a through via [28] disposed through the semiconductor substrate configured to provide electrical and/or thermal conductivity between the component mounting pad [20 on top] and at least one of the plurality of metalized pads [20 on the bottom].”
13,15. “wherein the glass cap [1] forms a hermetic seal of the laser die [17].” See paragraph 0227
14. “further comprising:
an electrically and/or thermally conductive pedestal portion [23] disposed between the side-looking laser die [17] and the semiconductor substrate [16] configured to elevate the laser die [17] with respect to the semiconductor substrate [16].”
Claim Rejections - 35 USC § 102/103
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 16 is rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over ‘232, as applied to claims 11-15 above.
‘232 discloses a laser package as described above, in addition:
16. “wherein the egress window [18, ARC] comprises
an interior surface [18, ARC on inside] facing the glass cap cavity and an exterior surface [18, ARC on outside] opposite the interior surface,”
but does not disclose verbatim:
“the interior surface and the exterior surface each have a flatness of one micron or less.”
However, the examiner takes an official notice that flatness of the transparent window is a result effective variable that determines the transmissivity of the window. The less roughness the surface has, the less diffraction it introduces to the laser beam and the more transparent the window becomes. Furthermore, ‘232 discloses that the window surfaces are specifically coated to make them antireflective, meaning that they are made to be maximally transparent. Therefore, it is either inherent or it would have been obvious for one of ordinary skill in the art to set the flatness of the surfaces to be less than 1 µm, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or working ranges or the optimum value for a result effective variable involves only routine skill in the art. In re Aller, 105 USPQ 233, In re Boesch, 617 F.2d 272,205 USPQ 215(CCPA 1980).
Response to Arguments
Applicant’s arguments with respect to claim(s) 11-16 filed on 02/05/26 have been considered but they are moot because the new ground of rejection.
Regarding applicant’s argument that “the present application does not describe Figs 1A-B as prior art”, the examiner disagrees and points to paragraphs 0004-0005 of the specification.
Regarding applicant’s argument that “applicant need not confine themselves to the terminology used in the prior art”, the examiner disagrees and points out that the written description must clearly redefine the claim term and set forth the uncommon definition so as to put someone skilled in the art on notice that the applicant intends to redefine the uncommon claim term.
Pertinent Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Applicant’s attention is drawn to the references cited on form PTO-892 in the previous office action, which lists other references with similar features as the invention.
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.
Contact Info
Any inquiry concerning this communication or earlier communications from the examiner should be directed to M. A. GOLUB-MILLER whose telephone number is (571) 272-8602. The examiner can normally be reached on M-F 9 am - 5 pm EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, MinSun Harvey can be reached on (571) 272-1835. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/M. A. Golub-Miller/Primary Examiner, Art Unit 2828