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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 05/11/2026 (“05/11/2026 Submission”) has been entered.
In response to a final Office action mailed on 02/18/2026 (“02/18/2026 FOA”), the Applicant have amended independent claim 1 and canceled claim 18 in the 05/11/2026 Submission. The amendments to the independent claim 1 substantively changed the scope of claim 1 as well as the scope of its respective dependent claims. Claims 13-17 are withdrawn.
Currently, claims 1-12 are examined as below.
Response to Arguments
Applicant’s amendments to claims 9 and 12 have overcome the claim objections as set forth under line item number 1 in the 02/18/2026 FOA.
Applicant’s amendments to claim 10 and cancellation of claim 18 have overcome the 112(b) rejections as set forth under line item number 2 in the 02/18/2026 FOA.
Applicant’s amendments to independent claim 1 have overcome the prior-art rejections as set forth under line item numbers 3-5 in the 02/18/2026 FOA.
New reference is introduced. New grounds of rejections under 35 U.S.C. 102(a)(1), 103 and 112(b) are provided as follows. There are also claim objections.
Claim Objections
Claim 10 is objected to because of the following informalities:
Regarding claim 10, “each of the plurality of unpackaged light-emitting diode (LED) diodes are separated from an adjacent plurality of unpackaged light-emitting diode (LED) diodes” should read “each of the plurality of unpackaged light-emitting diode (LED) diodes is separated from an adjacent plurality of unpackaged light-emitting diode (LED) diodes.”
Appropriate correction is required.
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.
Claim 10 is 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.
Claim 10 is indefinite, because the limitation “the plurality of unpackaged light-emitting diode (LED) diodes” is not mentioned before. Only “a plurality of unpackaged light-emitting diodes” is mentioned in the base claim 1. The limitation should read “the plurality of unpackaged light-emitting diodes.”
Claim Rejections - 35 USC § 102
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 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 1-3 and 8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2013/0256711 A1 to Joo et al. (“Joo”).
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Regarding independent claim 1, Joo in Figs. 1C-2B and 2E teaches a light-emitting device (Figs. 2B & 2E) comprising:
a plurality of unpackaged light-emitting diodes 18 (Figs. 1C-2B, 2E, ¶ 54, LED chips 18 which are raw chips i.e., unpackaged LED chips) arranged in a grid (Figs. 1C-2B, 2E, ¶ 72, LED chips 18 are arranged in rows and columns thus in a grid formed by scribe marks 24 filled with reflective material 26. The scribe marks 24 and reflective material 26 would form a grid that covers all sidewalls of and separates each of the LED chips 18 for later singulating individual devices including the LED chips 18 (see Fig. 2F, ¶ 76)) on a support 12 (Figs. 1C-2B, 2E, ¶ 54, substrate), each of the unpackaged light-emitting diodes 18 surrounded by a reflective coating material 22 (Figs. 1C-2B, 2E, ¶ 64, encapsulant 22 comprises reflective particles or materials, which makes the encapsulant 22 a reflective coating material) such that the reflective coating material 22 interacts with (i.e., in contact with) all surfaces of the plurality of unpackaged light-emitting diodes 18 except for a surface of the plurality of unpackaged light-emitting diodes 18 that is on the support 12 (Figs. 1C-2B, 2E);
an opening 24 (Fig. 2B, ¶ 66, scribe mark 24) in the reflective coating material 22 disposed between each of the unpackaged light-emitting diodes 18; and
a layer of light absorbing material (Fig. 2B, ¶ 75, ¶ 124, claim 32, light absorbing material filled in scribe mark 24) disposed in the opening 24,
wherein each of the unpackaged light-emitting diodes 18 of the grid is fixed (i.e., attached) in place by the reflective coating material 22 (Figs. 2B, 2E).
Regarding claim 2, Joo in Figs. 2B and 2E further teaches the layer of light absorbing material (Figs. 2B, 2E, ¶ 75, ¶ 124, claim 32, light absorbing material filled in scribe mark 24) separates the plurality of unpackaged light-emitting diodes 18 (Figs. 2B, 2E-2F, ¶ 76, scribe mark 24 filled with the light absorbing material separates the LED chips 18; see also the rejection of claim 1 as noted above).
Regarding claim 3, Joo in Fig. 2C further teaches the layer of light absorbing material (Fig. 2C, ¶ 75, ¶ 124, claim 32, light absorbing material filled in scribe mark 24) partially separates the plurality of unpackaged light-emitting diodes 18.
Regarding claim 8, Joo in Figs. 2B and 2E further teaches the reflective coating material 22 comprises silicone (¶ 97).
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.
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 4 and 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over Joo in view of US 2014/0131753 A1 to Ishida et al. (“Ishida”).
Regarding claim 4, Joo does not explicitly disclose each of the plurality of unpackaged light-emitting diodes comprise at least one electrical contact, a sapphire substrate, and a light converting layer.
Ishida recognizes a need for providing a light emitting device having improved light-extraction efficiency (¶ 41). Ishida satisfies the need by providing a light-emitting diode 3 (Figs. 1A-1B, ¶ 38, ¶ 43, light emitting element 3 is a light emitting diode) comprising at least one electrical contact 10 (Figs. 1A-1B, ¶ 38, conductive member 10), a sapphire substrate (Figs. 1A-1B, ¶ 98, sapphire substrate), and a light converting layer 4 (Fig. 1B, ¶ 68, phosphor layer 4).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to use the light emitting diodes taught by Ishida for the unpackaged light-emitting diodes taught by Joo, so as to provide a light emitting device having improved light-extraction efficiency (Ishida: ¶ 41).
Regarding claim 6, the combination of Joo and Ishida further teaches the light converting layer 4 (Ishida) comprises a phosphor 4 (Ishida: ¶ 39, phosphor layer 4) and wherein the at least one electrical contact 10 comprises gold (Au) (Ishida: ¶ 57).
Regarding claim 7, the combination of Joo and Ishida further teaches the phosphor 4 is selected from a phosphor in silicone (Ishida: ¶ 69).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Joo in Figs. 1C-2B and 2E in view of Joo in Figs. 3A-3E.
Regarding claim 5, Joo in Figs. 1C-2B and 2E does not explicitly disclose a printed circuit board (PCB), wherein the plurality of unpackaged light-emitting diodes arranged in the grid is mounted on the PCB.
However, Joo in Figs. 3A-3E recognizes a need for surface mounting and/or electrically connecting LED chips with external components (¶ 78, ¶ 105). Joo in Figs. 3A-3E satisfies the need by providing a printed circuit board (PCB) (¶ 78), wherein a plurality of unpackaged light-emitting diodes 34 (¶ 78, LED chips 34) arranged in a grid (Figs. 3A-3E disclose similar structures to those in Figs. 2B and 2E) is mounted on the PCB (Figs. 3A-3E, ¶ 78), and disposing bottom contacts 35 over a surface of a substrate 32 (Figs. 3A-3E, ¶ 78) to connect with the PCB.
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to combine the light-emitting device taught by Figs. 1C-2B and 2E of Joo, with the printed circuit board (PCB) and the bottom contacts taught by Figs. 3A-3E of Joo, so as to surface mount and/or electrically connect LED chips with external components (Joo: ¶ 78, ¶ 105).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Joo in view of US 2020/0075813 A1 to Joo et al. (“Joo813”).
Regarding claim 9, Joo does not explicitly disclose the layer of light absorbing material comprises of one or more of silicone, carbon particles, or a metal material.
Joo813 recognizes a need for providing improved LEDs having reduced optical losses and providing desirable illumination characteristics (¶ 6). Joo813 satisfies the need by providing a light absorbing material 48 (Fig. 3A, ¶ 58, light-absorbing particles of a light-altering material 48) comprises of one or more of silicone or carbon particles (¶ 58, silicone binder and carbon particles).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to use the silicone binder and carbon particles taught by Joo813 for the light absorbing material taught by Joo, so as to provide improved LEDs having reduced optical losses and providing desirable illumination characteristics (Joo813: ¶ 6).
Claims 10-12 are rejected under 35 U.S.C. 103 as being unpatentable and obvious over Joo.
Regarding claim 10, Joo in Figs. 1C-1D teaches each of the plurality of unpackaged light-emitting diode (LED) diodes 18 are separated from an adjacent plurality of unpackaged light-emitting diode (LED) diodes 18.
Joo does not explicitly disclose each of the plurality of unpackaged light-emitting diode (LED) diodes are separated from an adjacent plurality of unpackaged light-emitting diode (LED) diodes by a distance in a range of 10 µm to 500 µm.
However, it would have been obvious to form the distance within the claimed range, since it has been held by the Federal circuit that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. (In Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984)).
Regarding claim 11, Joo does not disclose the reflective coating material has a reflectance in a range of from 80% to 100%.
However, Joo teaches a general condition in which the reflective coating material 22 has a reflectance (Figs. 1C-2B, 2E, ¶ 64, encapsulant 22 comprises reflective particles or materials, which makes the encapsulant 22 a reflective coating material, and a reflective material has a reflectance).
According to Section 2144.05 of the MPEP, "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F. 2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Here, since Joo teaches said general conditions, it would not be inventive to discover the optimum or workable ranges by routine experimentation before the effective filing date of the claimed invention. Unless the Applicant can show that the specific conditions of the reflective coating material having a reflectance in a range of from 80% to 100% produce unexpected results that are different in kind and not different in degree, said general conditions taught by Joo renders claim 11 obvious.
Regarding claim 12, Joo does not explicitly disclose the reflective coating material has a thickness in a range of from 10 µm to 500 µm.
However, it would have been obvious to form the thickness within the claimed range, since it has been held by the Federal circuit that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. (In Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984)).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MIKKA LIU whose telephone number is (571)272-2568. The examiner can normally be reached on 9AM-5AM EST M-F.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eliseo Ramos-Feliciano can be reached on 571-272-7925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/M.L./Examiner, Art Unit 2817
/ELISEO RAMOS FELICIANO/Supervisory Patent Examiner, Art Unit 2817
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