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
Election/Restrictions
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-8, drawn to a light emitting device, classified in class H01S.
II. Claims 9-12, drawn to a method for producing a package for a light emitting device, classified in class H01L.
The inventions are distinct, each from the other because of the following reasons:
Inventions II and I are related as process of making and product made. The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make other and materially different product or (2) that the product as claimed can be made by another and materially different process (MPEP § 806.05(f)). In the instant case the product as claimed can be made by another and materially different process such as etching, as is well known in the art of semiconductor manufacturing.
Restriction for examination purposes as indicated is proper because all these inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and examination burden if restriction were not required because one or more of the following reasons apply:
(a) the inventions have acquired a separate status in the art in view of their different classification;
(b) the inventions have acquired a separate status in the art due to their recognized divergent subject matter;
(c) the inventions require a different field of search (for example, searching different classes/subclasses or electronic resources, or employing different search queries);
(d) the prior art applicable to one invention would not likely be applicable to another invention;
(e) the inventions are likely to raise different non-prior art issues under 35 U.S.C. 101 and/or 35 U.S.C. 112, first paragraph.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of a invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable on the elected invention.
If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103(a) of the other invention.
During a conversation with Nomugi Tomoyori on 12/19/2025 a provisional election was made without traverse to prosecute the invention of Group I, claims 1-8. Affirmation of this election must be made by applicant in replying to this Office action. Claims 9-12 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
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.
Claims 1, 2, 4-7 are rejected under 35 U.S.C. 103 as being unpatentable over Matsuo et al. (2021/0203127), hereinafter ‘127, and further in view of Yamazaki et al. (2020/0273762), hereinafter ‘762.
Regarding claim 1, Figs 2A-2D of ‘127 disclose a light-emitting device comprising:
1. “a semiconductor laser element [10];
a base [20] having a bottom portion [20p,20b] supporting the semiconductor laser element [10] and a lateral wall [20w] surrounding the semiconductor laser element
with the lateral wall [20w] being bonded to the bottom portion [20b],
the lateral wall [20w] including a light-transmitting portion [20t] configured to transmit a laser beam [10L] emitted from the semiconductor laser element [10];
a cover [50], the cover and the base [20] together defining an encapsulation space in which the semiconductor laser element [10] is encapsulated (See Figs 2A-D); and
two lead terminals [30] penetrating through the lateral wall [20w] of the base, one end [right ends] of each of the lead terminals being located inside the encapsulation space (See Figs 2A-D),
wherein the bottom portion [20p,20b] of the base has an upper surface [20s] defining a portion [area under the laser element 10] located between the two lead terminals [30] as viewed from above, and
the portion [area under the laser element 10] has a flat surface over which the semiconductor laser element [10] is placed (See Figs 2A-D).”
‘127 discloses the semiconductor light emitting device as described above, but does not disclose a recessed portion in the upper surface of the base.
However, providing a recessed portion in upper surface of the base/mount is well known in the art as evidenced by Figs 17, 18 of ‘762, which disclose a semiconductor element 6 positioned on the mount 41 with a concave/recessed portion 10 in the upper surface of the mount. Paragraph 0011 of ‘762 discloses that this is advantageous to prevent positional shift of the semiconductor element. Paragraph 0044 of ‘762 also discloses that the bottom surface of the recessed portion is very flat and Fig 17 discloses this surface to be parallel to the bottom surface of the mount 41.
It would have been obvious to one of ordinary skill in the art to incorporate the teachings of ‘762 into the device of ‘127 by making a recessed portion in the top surface of the base, the recessed portion being positioned under the laser element, since the combination would yield the predictable result of preventing the semiconductor laser element from shifting out of alignment.
Thus, the claimed invention would have been obvious before the effective filing date of the claimed invention because “all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art. KSR, 550 U.S. at 416, 82 USPQ2d at 1395.
Combination of ‘127 and ‘762 discloses:
1. “wherein the bottom portion [41 of ‘762, 20p,20b of ‘127] of the base has an upper surface [top of 41 of ‘762, 20s of ‘127] defining a recessed portion [10 of ‘762] located between the two lead terminals [30 of ‘127] as viewed from above, and
the recessed portion [10 of ‘762] has a flat bottom surface [Paragraph 0044 of ‘762] over which the semiconductor laser element [6 of ‘762, 10 of ‘127] is placed.”
Regarding claims 2, 4-6, combination of ‘127 and ‘762 further discloses:
2. “wherein the base [41 of ‘762, 20p,20b of ‘127] has a flat lower surface [bottom], and the bottom surface of the recessed portion [10 of ‘762] is parallel to the lower surface of the base.” (See Fig 17 of ‘762)
4. “wherein a height of the lateral wall [20w] is equal to or greater than 0.2 times and equal to or smaller than 0.5 times a length of an outside perimeter of the lateral wall (Paragraph 0022 of ‘127 discloses that the dimensions of the package in the X, Y and Z directions are chosen between 5-10 mm. Therefore, if the dimension of the wall is 5 mm in the x, y and z directions, the perimeter of the package is 5x4=20 mm and the ratio of the height to the perimeter is 5/20=0.25, which meets the above limitation of between 0.2-0.5),
the bottom portion [20b,20p] includes a flat-plate portion [20b] and an elevated portion [20p] together defining a step,
the elevated portion [20p] including the upper surface [20s] defining the recessed portion [10 of ‘762], and
a dimension of the step in a normal direction of the upper surface of the elevated portion is equal to or greater than 0.25 times and equal to or smaller than 0.5 times a height of the lateral wall (Fig 2A of ‘127 shows the ratio of the height of the step to the height of the wall to be 0.4, which meets the above limitation of between 0.25-0.5).”
5. “wherein the semiconductor laser element [10] is configured to emit the laser beam [10L] having a wavelength equal to or higher than 440 nm and equal to or lower than 475 nm.” (see paragraph 0048)
6. “wherein the semiconductor laser element [10] is configured to emit the laser beam [10L] having a wavelength equal to or higher than 420 nm and equal to or lower than 450 nm, and a power equal to or greater than 10 W.” (see paragraphs 0021, 0048)
Regarding claim 7, combination of ‘127 and ‘762 discloses a light emitting device as described above, but does not disclose a collimating lens inside the laser package:
7. “further comprising a lens located inside the encapsulation space,
the lens being configured to collimate or converge the laser beam emitted from the semiconductor laser element.”
However, the examiner takes an official notice that collimating lenses inside the laser packages are well known in the art for at least the purpose of collimating the light emitted by the laser diode, such that the light emitting device outputs collimated light that does not need to be collimated by additional lenses outside the package.
It would have been obvious to one of ordinary skill in the art to modify the device of ‘127 and ‘762 by adding a collimating lens inside the encapsulation space, since the combination would yield the predictable result of collimating the laser beam to prevent it from diverging.
Thus, the claimed invention would have been obvious before the effective filing date of the claimed invention because “all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art. KSR, 550 U.S. at 416, 82 USPQ2d at 1395.
Allowable Subject Matter
Claims 3 and 8 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: The prior art of record does not disclose or suggest to combine a laser device in an optical package with a recessed portion in the base for a metal film, the laser element being supported by a submount with the metal film on the bottom, wherein the thickness of the metal film is greater than a depth of the recessed portion. These limitations in combination with the rest of the limitations of the claim are considered novel. Claim 8 is dependent on claim 3.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
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 which lists other references with similar features as the invention. However, none of them anticipate all the features of the pending claims.
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 9-5.
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