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 .
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 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.
This Office Action is in response to Amendments/Remarks filed on February 05, 2026.
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.
Claim(s) 1-5, 7-14, and 16-17 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent No. 5,489,321 to Tracy et al. (“Tracy”) in view of WO 2018211176 A1 to Määttänen et al. (“Määttänen”) (equivalent to U.S. Patent Application Publication No. 2021/0078104 A1). As to claim 1, although Tracy discloses a hermetically sealed package, comprising: at least one cover substrate (12) which is sheet-like and includes a flat outer surface and a circumferential narrow side, the at least one cover substrate (12) being formed as a transparent thin film substrate (12), the at least one cover substrate (12) having a thickness; a second substrate (14) which is adjoined to the at least one cover substrate (12) and in direct contact with the at least one cover substrate (12); at least one functional area (30) enclosed by the hermetically sealed package, the at least one functional area (30) being between the at least one cover substrate (12) and the second substrate (14); and a laser bonding line (130’) which joins the at least one cover substrate (12) and the second substrate (14) directly and in a hermetically tight manner, wherein the laser bonding line (130’) has a width W in a direction parallel to a main extension direction of the at least one cover substrate (12), the width W of the laser bonding line (130’) being greater than the thickness – that is, a thickness D - of the at least one cover substrate (12) (See Fig. 3, Fig. 4, Fig. 6-Fig. 8, Column 1, lines 21-51, Column 3, lines 2-67, Column 4, lines 1-34, Column 5, lines 1-46) (Notes: the direct contact is formed by adjacent surfaces 12’, 14’. Further, the isothermal thermal lines 112, 114, 116 may reach the entire substrates), Tracy does not further disclose the thickness of less than 200 μm. However, Määttänen does disclose the thickness of less than 200 μm (See Fig. 1, Fig. 3, Fig. 8, ¶ 0048, ¶ 0052, ¶ 0054, ¶ 0071, ¶ 0086, ¶ 0087, ¶ 0090, ¶ 0095, ¶ 0126, ¶ 0153). In view of the teaching of Määttänen, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the teaching of Tracy to have the thickness of less than 200 μm because a thinner cover substrate provides a smaller package to accommodate a device element, where the emission and/or detection of wavelength are also less likely to be interfered (See ¶ 0095). As to claim 2, Tracy in view of Määttänen further discloses wherein at least one of: (a) the thickness (¶ 0071) of the at least one cover substrate (12/120/a) is measured on the circumferential narrow side of the at least one cover substrate (12/120/a); and (b) at least one of (i) the at least one cover substrate (12/120/a) has a thickness (¶ 0071) of less than 170 μm, and (ii) a thickness (¶ 0071) of more than 10 μm (See Määttänen ¶ 0071). As to claim 3, Tracy further discloses wherein the at least one cover substrate (12) exhibits an increased shear strength when bonded to the second substrate (14) (See Fig. 8, Column 5, lines 28-43) (Notes: the laser bonding provides the increased adhesion). As to claim 4, Tracy further discloses wherein a ratio between the width W of the laser bonding line (130’) and the thickness - that is, a thickness D - of the at least one cover substrate (12) - that is, W/D - is greater than or equal to 1 (See Fig. 4, Fig. 8) (Notes: the isothermal thermal lines 112, 114, 116 provide the ratio of greater than 1). As to claim 5, Tracy further discloses wherein at least one of: (a) the hermetically sealed package is produced by a process such that the laser bonding line (130’) has an initial height HL (112, 114, 116), and the thickness of the at least one cover substrate (12) is less than half of the initial height HL (112, 114, 116); and (b) at least one of (i) T<D + WH, and (ii) T> CN, wherein T is a height of the laser bonding line, D is the thickness of the at least one cover substrate, WH is a thickness of the laser bonding line in a direction perpendicular to a planar extension direction of the at least one cover substrate, and the hermetically sealed package is produced by a process such that CN is a distance from a laser focus to a plane in which the width W of the laser bonding line is measured (See Fig. 4, Fig. 8) (Notes: the initial laser bonding line reaches the entire substrates). Further regarding claim 5, the limitation “(a) the hermetically sealed package is produced by a process such that the laser bonding line has an initial height HL, and the thickness of the at least one cover substrate is less than half of the initial height HL; and (b) at least one of (i) T<D + WH, and (ii) T> CN, wherein T is a height of the laser bonding line, D is the thickness of the at least one cover substrate, WH is a thickness of the laser bonding line in a direction perpendicular to a planar extension direction of the at least one cover substrate, and the hermetically sealed package is produced by a process such that CN is a distance from a laser focus to a plane in which the width W of the laser bonding line is measured” is a product-by-process limitation that does not structurally distinguish the claimed invention over the prior art. It has been held it has been held that “The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature” than when a product is claimed in the conventional fashion. In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974). Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983). The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product. See, e.g., In re Garnero, 412 F.2d 276, 279, 162 USPQ 221, 223 (CCPA 1979). As to claim 7, Tracy in view Määttänen further discloses wherein at least one of: (a) the flat outer surface of the at least one cover substrate (12/120/a) is distinguished by being flat; and (b) the at least one cover substrate (12/120/a) is thinner than 200 μm across an entire extent of the at least one cover substrate (12/120/a) (See Tracy Fig. 8 and Määttänen Fig. 1, ¶ 0071). As to claim 8, Tracy further discloses wherein the at least one cover substrate (12) and the second substrate (14) define a contact plane or a contact area (at 130’) where the at least one cover substrate (12) contacts the second substrate (14), wherein the contact plane or the contact area (at 130’) is free of any foreign materials (See Fig. 8, Column 4, lines 8-10). As to claim 9, Tracy in view of Määttänen further discloses wherein: (a) the second substrate (14/110) is a base substrate (14/110), which is hermetically joined to the at least one cover substrate (12/120a) by the laser bonding line (130’/J1); or (b) the hermetically sealed package includes a base substrate (120b), the second substrate (14/110) being an intermediate substrate (14/110) which is disposed between the at least one cover substrate (12/120a) and the base substrate (120b), the base substrate (120b) being joined to the intermediate substrate (14/110) along a first bonding plane (IF1b), and the at least one cover substrate (12/120a) being joined to the intermediate substrate (14/110) along a second bonding plane (IF1a) (See Määttänen Fig. 8). As to claim 10, Tracy further discloses wherein the laser bonding line (130’) has a thickness WH (112, 114, 116, FIG. 3) in a direction perpendicular to a planar extension direction of the at least one cover substrate (12); and wherein the laser bonding line (130’) extends as far as to the flat outer surface (See Fig. 3, Fig. 7, Fig. 8, Column 3, lines 18-28) (Notes: the weld zone abuts the bottom flat outer surface as the weld zone widens. Further, the initial laser bonding line by the isothermal lines reach the entire substrates. Fig. 3 also shows the laser bonding line reaches throughout the substrates). As to claim 11, Tracy further discloses wherein at least one of the at least one cover substrate (12) and the second substrate (14) include a material modification in an area associated with the laser bonding line (130’) (See Fig. 8, Column 5, lines 16-46) (Notes: the melting and solidification/fusion meet the limitation). As to claim 12, Tracy in view of Määttänen further discloses wherein the functional area (30/CAV1) includes a hermetically sealed accommodation cavity (30/CAV1) configured for accommodating an accommodation item (20/130) (See Tracy Fig. 8, Column 3, lines 2-17 and Määttänen Fig. 3, Fig. 8, ¶ 0095, ¶ 0126). As to claim 13, Tracy further discloses wherein the at least one cover substrate (12) is transparent for a range of wavelengths at least one of at least partially and at least in a section of the at least one cover substrate (12) (See Fig. 8, Column 4, lines 24-34). As to claim 14, Tracy further discloses wherein: (1) the at least one cover substrate (12) is made of a glass, a glass ceramic, silicon, sapphire, or a combination thereof; or (2) the at least one cover substrate (12) is made of a ceramic material (See Fig. 8, Column 4, lines 24-34). As to claim 16, Tracy in view Määttänen further discloses wherein the hermetically sealed package is configured for at least one of a sensor unit and a medical implant (See Määttänen Fig. 3, Fig. 8, ¶ 0095, ¶ 0126, ¶ 0153). Further, the claim limitation “is configured for at least one of a sensor unit and a medical implant” specifies an intended use or field of use, and is met by the prior art since it has been held that in device claims, intended use must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In re Casey, 152 USPQ 235 (CCPA 1967); In re Otto, 136 USPQ 458, 459 (CCPA 1963). A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex Parte Masham, 2 USPQ 2d 1647 (Bd. Pat. App. & Inter. 1987). As to claim 17, although Tracy discloses a hermetically joined substrate assembly, comprising: at least one first substrate (12) which is sheet-like and includes a flat outer surface and a circumferential narrow side, the at least one first substrate (12) being formed as a transparent thin film substrate (12), the at least one first substrate (12) having a thickness; a second substrate (14) which is adjoined to the at least one first substrate (12) and in direct contact with the at least one first substrate (12); and at least one laser bonding line (130’) which joins the at least one first substrate (12) and the second substrate (14) directly and in a hermetically tight manner, the at least one laser bonding line (130’) extending as far as to the flat outer surface, wherein the laser bonding line (130’) has a width W in a direction parallel to a main extension direction of the at least one first substrate (12), the width W of the laser bonding line (130’) being greater than the thickness – that is, a thickness D - of the at least one first substrate (12) (Notes: the direct contact is formed by adjacent surfaces 12’, 14’. Further, the isothermal thermal lines 112, 114, 116 may reach the entire substrates. Moreover, the weld zone/laser bonding line abuts the bottom flat outer surface as the weld zone/laser bonding line widens. Lastly, the initial laser bonding line by the isothermal lines reach the entire substrates and Fig. 3 also shows the laser bonding line reaches all the way), Tracy does not further disclose the thickness of less than 200 μm. However, Määttänen does disclose the thickness of less than 200 μm (See Fig. 1, Fig. 3, Fig. 8, ¶ 0048, ¶ 0052, ¶ 0054, ¶ 0071, ¶ 0086, ¶ 0087, ¶ 0090, ¶ 0095, ¶ 0126). In view of the teaching of Määttänen, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the teaching of Tracy to have wherein the thickness of less than 200 μm because a thinner cover substrate provides a smaller package, where the emission and/or detection of wavelength are also less likely to be interfered (See ¶ 0095). Lastly, the applicant also has not established the critical nature of the “wherein the thickness is of less than 200 μm, at least one of (i) the at least one cover substrate has a thickness of less than 170 μm, and (ii) a thickness of more than 10 μm, W/D - is greater than or equal to 1, at least one of (i) T<D+WH, and (ii) T>CN”. “The law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims….In such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range.” In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir.1990). Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention was made to have various ranges. It would also have been obvious to one of ordinary skill in the art at the time the invention was made to discover the optimum or workable ranges by routine experimentations to adjust the laser bonding line relative to the cover substrate such that a sufficient bonding is obtained. See also In re Huang, 40 USPQ2d 1685, 1688 (Fed. Cir. 1996) (claimed ranges of a result effective variable, which do not overlap the prior art ranges, are unpatentable unless they produce a new and unexpected result which is different in kind and not merely in degree from the results of the prior art). See also In re Boesch, 205 USPQ 215 (CCPA) (discovery of optimum value of result effective variable in known process is ordinarily within skill of art) and In re Aller, 105 USPQ 233 (CCPA 1955) (selection of optimum ranges within prior art general conditions is obvious).
Response to Arguments
Applicant's arguments with respect to claims 1 and 17 have been considered but are moot in view of the new ground(s) of rejection.
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 DAVID CHEN whose telephone number is (571)270-7438. The examiner can normally be reached M-F 12-6.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, JOSHUA BENITEZ can be reached at (571) 270-1435. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID CHEN/Primary Examiner, Art Unit 2815
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