DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Election/Restrictions
Applicant's election with traverse of species II, claims 1-5, 7 and 9-19 in the reply filed on June 10, 2026 is acknowledged. The traversal is on the ground(s) that 1) “the requirement does not sufficiently explain how each pending claims is directed to each listed species, nor why the claimed common architecture is not a generic invention over the relevant disclosed strip embodiments”; and 2) “the requirement refers to claim 21 as generic, although only claims 1-20 are pending. This is not found persuasive because 1) in restriction, the species are always referred to the different embodiments of the invention, and not to the claims; and 2) due to typographical error, claim 1 should be generic instead.
The requirement is still deemed proper and is therefore made FINAL.
Claims 6, 8 and 20 have been withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on June 10, 2026.
Claim 11 has been withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species. There is no support in the elected embodiment of Figs. 20B, 21A-21C, 30A-30B, 35, 42-45 and 55B for the claim limitations of “a wavelength converting material contained within the strips”, as recited in claim 11, and this feature is found on an unelected embodiment of Fig. 82.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on April 30, 2024 in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “first connection locations” (claim 1), “second connection locations” (claim 2), “source of current” (claim 4), “at least one reflective portion (claim 12) and “a plurality of current sources” (claim 18) must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). 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 Objections
Claims 1-5, 7, 9, 10 and 12-19 are objected to because of the following informalities: a comma should be inserted after “device” (claim 1, line 1) and after claim number (all dependent claims); inconsistent terminologies: “the strips” should read “the plurality of strips” (claim 1, lines 10-11). 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.
Claims 1-5, 7, 9, 10 and 12-19 are 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.
The claimed limitations of “the first die electrode of associated dies”, as recited in claims 1 and 13, are unclear as to which die applicant refers and whether the associated dies share a common first die electrode or each of associated dies has a different first die electrode.
The claimed limitation of “an associated first connection location”, as recited in claim 1, lines 6-7, is unclear as to whether said limitation is the same as or different from “first connection locations”, as recited in claim 1, line 2.
The claimed limitations of “associated dies”, “a group of series-connected LED dies”, and “a plurality of groups of the series-connected LED dies”, as recited in claim 1, are unclear as to whether said limitations are the same as or different from “a plurality of non-packaged light emitting diode (LED) dies”, as recited in claim 1, line 4.
The claimed limitation of “first substrate”, as recited in claim 1, line 5, is unclear as to whether said limitations are the same as or different from “a first substrate”, as recited in claim 1, line 2.
The claimed limitation of “the LED dies”, as recited in claim 1, is unclear as to whether said limitations are the same as or different from “a plurality of non-packaged light emitting diode (LED) dies” and/or “associated dies”, as recited in claim 1, lines 4 and/or 6.
Claim 1 recites the limitation “the strip” in line 10. There is insufficient antecedent basis for this limitation in the claim. Also, it is unclear as to whether said limitation is the same as or different from “a plurality of strips” and/or “each strip”, as recited in claim 1, line 8.
The claimed limitations of “a plurality of strips”, “strips” and “a single strip”, as recited in claim 1, are unclear as to which strip applicant refers.
The claimed limitation of “the first substrate being wider than each strip”, as recited in claim 1, is unclear as to what of the first substrate being wider that what of each strip applicant refers.
The claimed limitation of “the substrate”, as recited in claims 1, 2, 4, 5, 14, 16 and 17, is unclear as to which substrate applicant refers.
The claimed limitation of “portions of the first conductors”, as recited in claim 1, is unclear as to whether said limitation is in one-to-one or multiple-to-one relationship between portion and first conductor applicant refers.
The claimed limitation of “the dies”, as recited in claims 1, 2, 4 and 5, is unclear as to which die applicant refers.
The claimed limitation of “each strip”, as recited in claims 2, 7 and 14, is unclear as to which strip applicant refers.
The claimed limitation of “the strip”, as recited in claims 2-5, is unclear as to which strip applicant refers.
The claimed limitations of “the second die electrode of associated dies”, as recited in claim 2, are unclear as to which die applicant refers and whether the associated dies share a common second die electrode or each of associated dies has a different second die electrode.
The claimed limitation “an associated second connection location”, as recited in claim 2, line 3, is unclear as to whether said limitation is the same as or different from “second connection locations”, as recited in claim 2, line 1.
The claimed limitation of “portions of the first conductors”, as recited in claim 2, is unclear as to whether said limitation is the same as or different from “portions of the first conductors”, as recited in claim 1.
The claimed limitation of “portions of the second conductors”, as recited in claim 2, is unclear as to whether said limitation is in one-to-one or multiple-to-one relationship between portion and second conductor applicant refers.
The claimed limitation of “a series connection of the dies”, as recited in claim 1 and 2, is unclear as to which series connection of which dies applicant refers.
The claimed limitation of “the group”, as recited in claims 2 and 7, is unclear as to which group applicant refers.
The claimed limitation of “the portions of the first conductors”, as recited in claim 3, is unclear as to which “portions of the first conductors” applicant refers.
The claimed limitation of “a portion of the second conductors”, as recited in claim 4, is unclear as to whether said limitation is the same as or different from “portions of the second conductors”, as recited in claim 2.
The claimed limitations of “the dies are vertical diodes having their first die electrodes on a first surface and their second die electrodes on an opposite surface”, as recited in claim 5, are unclear whether each die having a first electrode and a second electrode or all dies share a common first electrode and a common second electrode applicant refers.
The claimed limitation of “first die electrodes”, as recited in claim 5, is unclear as to whether said limitation the same as or different from “a first die electrode”, as recited in claim 1.
The claimed limitation of “second die electrodes”, as recited in claim 5, is unclear as to whether said limitation the same as or different from “a second die electrode”, as recited in claim 1.
The claimed limitation of “the first die electrodes”, as recited in claim 5, is unclear as to which first die electrode applicant refers.
The claimed limitation of “the second die electrodes”, as recited in claim 5, is unclear as to which second die electrode applicant refers.
The claimed limitations of “at least some of the first conductors” and “the first conductors”, as recited in claim 5, are unclear as to which first conductor applicant refers.
The claimed limitations of “at least some of the second conductors” and “the second conductors”, as recited in claim 5, are unclear as to which second conductor applicant refers.
The term “substantially” in claim 5 is a relative term which renders the claim indefinite. The term “substantially” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
The claimed limitation of “the first die electrodes” and “the second die electrodes”, as recited in claim 5, are unclear as to which first electrode and second electrode applicant refers.
The claimed limitations of “the first conductors align with the second conductors when the dies are sandwiched between the first substrate and the strip to connect the first die electrode of a first die to the second die electrode of an adjacent second die to connect the first die and the second die in series”, as recited in claim 5, are unclear as to which first electrode, second electrode and die applicant refers, which element to connect the first die electrode of the first die to the second die electrode of the adjacent second die and which element to connect the first die and the second die in series.
Claim 5 recites the limitation “the second die” in line 7. There is insufficient antecedent basis for this limitation in the claim. Also, it is unclear as to whether said limitation the same as or different from “an adjacent second die”, as recited in claim 5.
The claimed limitation of “LED dies”, as recited in claim 7, is unclear as to whether said limitation the same as or different from “a plurality of non-packaged light emitting diode (LED) dies”, “associated dies”, a group of series-connected LED dies” and/or “a plurality of groups of the series connected LED dies”, as recited in claim 1.
Claim 9 recites the limitation “the proximity” in line 2. There is insufficient antecedent basis for this limitation in the claim.
The claimed limitation of “a surface of the strips”, as recited in claim 10, is unclear as to whether said limitation the same as or different from “a surface of the strip”, as recited in claim 1.
The claimed limitation of “light”, as recited in claim 12, is unclear as to whether said limitation the same as or different from “light”, as recited in claim 1.
The claimed limitation of “the strips”, as recited in claims 10, 12 and 19, is unclear as to which strip applicant refers.
The claimed limitation of “series-connected LED dies”, as recited in claim 14, is unclear as to which die applicant refers.
The claimed limitation of “groups of the series-connected LED dies”, as recited in claims 15 and 18, is unclear as to which group of which die applicant refers.
The term “approximately” in claim 17 is a relative term which renders the claim indefinite. The term “approximately” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
The claimed limitations of “the substrate is approximately equal to or greater than 2x2 feet”, as recited in claim 10, are unclear as to what of the substrate is approximately equal to or greater than 2x2 feet applicant refers; and what unit of first “2” applicant refers.
The claimed limitation of “a plurality of the groups”, as recited in claim 17, is unclear as to which group applicant refers.
The claimed limitation of “the LED dies”, as recited in claim 19, is unclear as to which die applicant refers.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter 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 pre-AIA 35 U.S.C. 103(a) 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 under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claims 1-5, 7, 9, 10 and 12-19, as best understood, are is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Daniels et al. (2007/0090387) in view of Narendran et al. (2008/0117500).
As for claim 1, Daniels et al. show in Figs. 16, 48, 49, 178-180,184(a) and related text a lighting device comprising:
a first substrate having first connection locations electrically connected to first conductors supported by the first substrate (reflective or transparent electrode, Fig. 49);
a plurality of non-packaged light emitting diode (LED) dies, each die having at least a first die electrode (cathode) and a second die electrode (anode), the first die electrode of associated dies being aligned with and electrically connected to an associated first connection location on the first substrate without wire bonds (Figs. 16 and 48); and
a plurality of strips over the LED dies and first substrate, each strip enclosing at least a group of series-connected LED dies and allowing light from the group to pass through a surface of the strip, the strips forming a pattern of strips on the first substrate,
wherein portions of the first conductors create a series connection of the dies within each group encapsulated by a single strip without using wire bonds, and wherein the first conductors also interconnect a plurality of groups of the series- connected LED dies.
Daniel et al. do not disclose that the first substrate being wider than each strip.
Narendran et al. teach in Fig. 12 and related text the first substrate 504 being wider than each strip 522/524/526.
It would have been obvious to one of ordinary skill in the art, at the time the invention was made to include the first substrate being wider than each strip, as taught by Narendran et al., in Daniel et al.'s device, in order to reduce size of the device and improve the performance of the device.
As for claim 2, the combined device shows each strip has second connection locations electrically connected to second conductors (Daniel: transparent electrode, Fig. 49) formed on the strip, the second die electrode of associated dies being aligned with and electrically connected to an associated second connection location on the strip without wire bonds, and wherein portions of the first conductors and portions of the second conductors overlap and electrically connect when the first substrate and the strip are brought together to create a series connection of the dies within the group without using wire bonds.
As for claim 3, the combined device shows the portions of the first conductors and the portions of the second conductors electrically connect with no intervening layer sandwiched between the first substrate and the strip (Daniel: Fig. 49).
As for claim 4, the combined device shows a portion of the second conductors in the strip is exposed after the dies are sandwiched between the first substrate and the strip in order to connect the second conductors to a source of current (Daniel: Fig. 184(a)).
Regarding the process limitations (“exposed after the dies are sandwiched between the first substrate and the strip”), these would not carry patentable weight in this claim drawn to a structure, because distinct structure is not necessarily produced.
Note that a “product by process” claim is directed to the product per se, no matter how actually made, In re Hirao, 190 USPQ 15 at 17 (footnote 3). See also In re Brown, 173 USPQ 685; In re Luck, 177 USPQ 523; In re Fessmann, 180 USPQ 324; In re Avery, 186 USPQ 161; In re Wertheim, 191 USPQ 90 (209 USPQ 554 does not deal with this issue); and In re Marosi et al., 218 USPQ 289, all of which make it clear that it is the patentability of the final product per se which must be determined in a “product by process” claim, and not the patentability of the process, and that an old or obvious product produced by a new method is not patentable as a product, whether claimed in “product by process” claims or not. Note that the applicant has the burden of proof in such cases, as the above case law makes clear.
As for claim 5, the combined device shows the dies are vertical diodes having their first die electrodes on a first surface and their second die electrodes on an opposite surface (Daniel: Fig. 48), wherein at least some of the first conductors are connected to the first die electrodes and at least some of the second conductors are connected to the second die electrodes, wherein the first conductors substantially align with the second conductors when the dies are sandwiched between the first substrate and the strip to connect the first die electrode of a first die to the second die electrode of an adjacent second die to connect the first die and the second die in series.
As for claim 7, the combined device shows each strip has a plurality of cavities that accommodate at least a portion of a thickness of LED dies within the group (Daniel: Fig. 184(a); Narendran: Fig. 12).
As for claim 9, the combined device shows a wavelength converting material is selectively provided in the proximity of each LED die location to create an alternative composition of light wavelengths (Daniel: [0024]).
As for claim 10, the combined device shows a wavelength converting material over at least a portion of a surface of the strips (Daniel: [0055], [0067], [0488], [0539]; Narendran: 528/530/532; Fig. 12; [0085], line 10).
As for claim 12, the combined device shows the first substrate comprises at least one reflective portion for reflecting light through the strips (Daniel: Fig. 49; Narendran: 508/510/512; Fig. 12; [0085], line 6).
As for claim 13, the combined device shows the first connection locations are connected to the first die electrodes of associated dies by at least a partially electrically conductive material (Daniel: Fig. 49).
As for claim 14, the combined device shows the first substrate and each strip sandwich at least a linear column of series-connected LED dies (Daniel: Figs. 178-180).
As for claim 15, the combined device shows the first conductors connect groups of the series-connected LED dies in at least one parallel configuration (Daniel: Figs. 178-180).
As for claim 16, the combined device shows the first conductors are formed over the first substrate (Daniel: Fig. 49).
As for claim 17, Daniels et al. and Narendran et al. disclosed substantially the entire claimed invention, as applied to claim 1 above, including a plurality of the groups are connected in parallel (Figs. 178-180).
Daniels et al. and Narendran et al. do not disclose that the first substrate is approximately equal to or greater than 2x2 feet, and wherein the device forms an overhead lighting fixture.
It would have been obvious to one having ordinary skill in the art at the time of the invention was made to include the first substrate is approximately equal to or greater than 2x2 feet, and wherein the device forms an overhead lighting fixture, in order to optimize the performance of the device and to use an application which requires an overhead lighting fixture. Furthermore, it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Furthermore, it has been held in that the applicant must show that a 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, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990). Note that the law is replete with cases in which when the mere difference between the claimed invention and the prior art is some dimensional limitation or other variable within the claims, patentability cannot be found. The instant disclosure does not set forth evidence ascribing unexpected results due to the claimed dimensions. See Gardner v. TEC Systems, Inc., 725 F.2d 1338 (Fed. Cir. 1984), which held that the dimensional limitations failed to point out a feature which performed and operated any differently from the prior art.
As for claim 18, Daniels et al. and Narendran et al. disclosed substantially the entire claimed invention, as applied to claim 1 above, except a plurality of current sources connected to groups of series-connected LED dies.
It would have been obvious to one having ordinary skill in the art at the time the invention was made connect a plurality of current sources to groups of series-connected LED dies, in order to apply different current sources to a different LED dies. Furthermore, it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper co. V. Bemis Co., 193 USPQ 8.
As for claim 19, the combined device shows the strips are preformed strips that are affixed over the LED dies (Daniel: Fig. 184(a); Narendran: Fig. 12).
Conclusion
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/MEIYA LI/Primary Examiner, Art Unit 2811
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