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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 7/28/2025 has been entered.
Response to Arguments
Applicant's arguments filed 7/28/2025 have been fully considered but they are not fully persuasive. Applicant’s arguments related to Kotani in view of Aoki are persuasive since previously dependent claim 9’s limitations are now incorporated into newly independent claim 8. However, arguments related to the prior rejection in view of Aoki to claims 1-9 and 11 are not persuasive.
Applicant argues that in Aoki, the optical element and electric board are in contact with one another and the waveguide and therefore cannot face the electric board, nor that the resin cured product serves to underfill the optical element. As shown in Aoki figure 1, although all of these components are directly in contact with one another, the claims do not currently require any space or gap therebetween. As seen in Aoki figure 1, the area between the optical elements 22 and 23 face the opposing electric board 10 with an underfill portion 34 as an “underfill” (fills the space between). Therefore, the prior art appears to anticipate the claim as currently recited.
Further it is noted that the limitations of claim 8 recite that features face toward one another while claim 10 recites that they face away. Therefore, it appears that this feature lacks criticality as both options are claimed.
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.
Claim(s) 8 and 10-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 7,551,811 to Aoki et al (cited in the prior office action) in view of
Aoki discloses an optical element bonding and reinforcing resin composition (resin layer 34) in contact with a light-emitting portion or a light-receiving portion of an optical element (22) and/or (23) while reinforcing a junction between the optical element (22/23) and an electric circuit board (10), see FIG. 1,
wherein the optical element bonding and reinforcing resin composition (34) comprising a light-transmissive resin composition which comprises a resin component (“a photocurable material alone or in combination with a thermosetting material”) and a curing agent component (“photopolymerization initiator”) including only a non-antimony-containing curing agent (“hexafluorophosphate”, “bis(4-tert-butylphenyl)iodonium tetrafluoroborate”, “tertiary amine”, “the photopolymerization initiator may be used alone or in combination of two or more”)
wherein a proportion of the non-antimony-containing curing agent is in a range of 0.1 to 20 parts by weight based on 100 parts by weight of the resin component (Aoki: “The photopolymerization initiator is preferably added to the photopolymerizable resin in an amount of 0.1% to 20% by weight”), and
wherein the non-antimony-containing curing agent comprises a curing agent selected from the group consisting of a phosphorus-containing curing agent, a boron-containing curing agent, and a modified aliphatic amine curing agent (i.e., “a hexafluorophosphate of UVI 6974”, “bis(4-tert-butylphenyl)iodonium tetrafluoroborate”, and/or “triethanolamine, methyldiethanolamine, triisopropanolamine”). Aoki’s disclosed range of “0.1% to 20% by weight” for his non-antimony-containing curing agent (photopolymerization initiator) overlaps the claimed range of “3 to 30 parts by weight based on 100 parts by weight of the resin component”. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See columns 3-12 of Aoki for further details.
In re prior claim 8’s dependent limitation, the additional limitations recited by these claims are mentioned in col. 12, lines 39-47 of Aoki (“The overall resin layer 34 may then be cured by secondary light irradiation and heat treatment or heat treatment”).
In re prior claim 9 (now incorporated into claim 8), as seen in FIG. 1 of Aoki, the optical element (22/23) is joined onto the electric circuit board (10) with the light-emitting portion or the light-receiving portion thereof facing toward the electric circuit board (10), and the optical element bonding and reinforcing resin cured product (34) serves as an underfill for the optical element (22/23). Also see Response to Arguments above for this relationship.
In re claim 10, this claim is similar to claim 8 above except that portions may be facing “away” from the respective surfaces. The angled surface in Aoki figure 1 is part of the light emitting portion and faces away from the lower electrical board. In addition, as noted in the Response to Arguments above, since both variants of the facing direction are claimed, it appears this portion of the limitation lacks criticality. It would have been obvious to one having ordinary skill in the art to rearrange known components as an obvious design choice for the intended packaging of the board.
In re claim 11, Aoki further discloses an optical waveguide (11) including a core which is optically coupled to the light-emitting portion or the light-receiving portion of the optical element (22/23).
In re claim 12 (this claim recites prior claim 2 limitations), as mentioned in col. 4, lines 37-61 and col. 6, lines 12-16 of Aoki, the resin component of the light-transmissive resin composition (“photopolymerizable resin”) may comprise not less than 50 wt.% of an epoxy resin (“The ratio by weight between the reactive polymer, the compound having a photopolymerizable group, and the photopolymerization initiator in the photopolymerizable resin is generally 40 to 100:0 to 60:0.1 to 10, particularly 60 to 100:0 to 40:1 to 10”).
In re claim 13 (this claim recites prior claim 3 limitations), as mentioned in col. 4, lines 10-26 of Aoki, the resin component of the light-transmissive resin composition further comprises an acrylic-based resin.
In re claim 14 (this claim recites prior claim 7 limitations), the additional limitations recited by these claims are mentioned in col. 12, lines 39-47 of Aoki (“The overall resin layer 34 may then be cured by secondary light irradiation and heat treatment or heat treatment”).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 2014/0186765 to Oonishi et al (optimization of non-antimony-based resins).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Eric K Wong whose telephone number is (571)272-2363. The examiner can normally be reached M-Tu, Th-F 8A-6P.
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ERIC K. WONG
Primary Examiner
Art Unit 2874
/Eric Wong/Primary Examiner, Art Unit 2874