DETAILED ACTION
This Notice is responsive to communication filed on 10/28/2025.
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 .
Election/Restrictions
Applicant's election with traverse of Species 1 reading on Fig. 1, 2, 11 and 12 in the reply filed on 10/28/2025 is acknowledged. The traversal is on the ground(s) that the restriction requirement dated 08/28/2025 lists Figures (as Species) and not different groups of claims as required by the Rules, and the restriction does not identify technical features that define a contribution over the prior art. This is not found persuasive because the burden is on applicant to identify the claims that read on the species. This burden is outlined in the Restriction Requirement dated 8/28/25, which states “Applicant is advised that the reply to this requirement to be complete must include (i) an election of a species or a grouping of patentably indistinct species to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected species.” See Restriction Requirement at page 5, paragraph 6. For the reasons set forth above, the requirement is still deemed proper and is therefore made FINAL.
Acknowledgement is made of previously restricted Species 2, reading on Fig. 3, being prior art, and is withdrawn from the Species restriction. Drawings Objection is included below to rectify.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 03/15/2023 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Drawings
Figure 3 should be designated by a legend such as --Prior Art-- because only that which is old is illustrated. See MPEP § 608.02(g). The applicant has stated in the communication filed on 10/28/2025 that identified Species 2 (Figure 3) is not a Species because it is prior art. Corrected drawings in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. The replacement sheet(s) should be labeled “Replacement Sheet” in the page header (as per 37 CFR 1.84(c)) so as not to obstruct any portion of the drawing figures. 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 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 14-16, 19-20, 27-28, and 30-31 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nishioka (US 20200161513).
Regarding claim 14, Nishioka teaches an optoelectronic device comprising:
an optoelectronic semiconductor component Fig. 2: 1+10 having an active region configured to generate light and having a light emitting surface Fig. 2: 1 through which the generated light is emittable from the semiconductor component, the light emitting surface Fig. 2: 1 being arranged on a top surface of the semiconductor component (para. 0017);
a converter Fig. 2: 3 centered above the light emitting surface Fig. 2: 1 and configured to convert the generated light into converted light of at least one other wavelength (para. 0029); and
an adhesive Fig. 2: 9 fixing the converter Fig. 2: 3 to the top surface of the semiconductor component Fig. 2: 1+10,
wherein a contour line (annotated below), projected onto the top surface of the semiconductor component Fig. 2: 1+10, completely circumvents the converter Fig. 2: 3 in a circumferential direction and lies completely within the light emitting surface Fig. 2: 1,
wherein the adhesive Fig. 2: 9 is arranged between the light emitting surface Fig. 2: 1 and the converter Fig. 2: 3 and/or in the circumferential direction around the converter Fig. 2: 3 in such a way that the adhesive Fig. 2: 9 is arranged only on the light emitting surface Fig. 2: 1, and
wherein at least one metallic region Fig. 2: 5 is arranged laterally next to the light emitting surface Fig. 2: 1 on the top surface of the semiconductor component Fig. 2: 1+10.
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Regarding claim 15, Nishioka teaches the optoelectronic device according to claim 14, wherein the contour line corresponds to an outer circumference of a bottom surface Fig. 2: 3a of the converter Fig 2: 3.
Regarding claim 16, Nishioka teaches the optoelectronic device according to claim 14, wherein the light emitting surface Fig. 2: 1 comprises a peripheral outer edge line (annotated above) surrounding the light emitting surface Fig. 2: 1 in the circumferential direction, and wherein the projected contour line lies completely within the outer edge line (shown in annotated Fig. 1 above).
Regarding claim 19, Nishioka teaches the optoelectronic device according to claim 14, wherein the light emitting surface Fig. 2: 1 is formed by an epitaxial layer of the semiconductor component lying on the top surface (para. 0025), and/or wherein a white material Fig. 2: 7 surrounds the converter Fig. 2: 3 (para. 0042, titanium oxide material).
Regarding claim 20, Nishioka teaches the optoelectronic device according to claim 14, wherein the adhesive Fig. 2: 9 is arranged between the light emitting surface Fig. 2: 1 and the converter Fig. 2: 3 and/or in the circumferential direction around the converter Fig. 2: 3 such that the adhesive Fig. 2: 9 does not cover the at least one metallic region Fig. 2: 5.
Regarding claim 27, Nishioka teaches the optoelectronic device according to claim 14, wherein the metallic region Fig. 2: 5 is covered by a dielectric material (para. 0037).
Regarding claim 28, Nishioka teaches the optoelectronic device according to claim 27, wherein the adhesive Fig. 2: 9 is arranged between the light emitting surface Fig. 2: 1 and the converter Fig. 2: 3 and/or in the circumferential direction around the converter Fig. 2: 3 such that the adhesive Fig. 2: 9 does not cover the dielectric material (Nishioka teaches the dielectric material is over the converter, which is also not covered by the adhesive).
Regarding claim 30, Nishioka teaches the optoelectronic device according to claim 14, wherein the optoelectronic semiconductor component Fig. 2: 1 is an LED chip (para. 0025).
Regarding claim 31, an optoelectronic device comprising:
an optoelectronic semiconductor component Fig. 2: 1 having an active region configured to generate light and having a light emitting surface through which the generated light is emittable from the semiconductor component Fig. 2: 1, the light emitting surface being arranged on an top surface of the semiconductor component Fig. 2: 1 (para. 0017);
a window Fig. 2: 3 centered above the light emitting surface (para. 0029, glass); and
an adhesive Fig. 2: 9 fixing the window Fig. 2: 3 to the top surface of the semiconductor component Fig. 2: 1,
wherein a contour line (see annotated fig. 1 above), projected onto the top surface of the semiconductor component Fig. 2: 1, completely circumvents the window Fig. 2: 3 in a circumferential direction and lies completely within the light emitting surface Fig. 2: 1, and
wherein the adhesive Fig. 2: 9 is arranged between the light emitting surface Fig. 2: 1 and the window Fig. 2: 3 and/or in the circumferential direction around the window Fig. 2: 3 such that the adhesive Fig. 2: 9 is arranged only on the light emitting surface Fig. 2: 1.
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) 17 and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nishioka (US 20200161513).
Regarding claim 17, Nishioka teaches the optoelectronic device according to claim 16, wherein the projected contour line and the outer edge line (annotated Fig. 1 above) form a circumferential stripe on the light emitting surface (top surface of Fig. 2: 1), and wherein the stripe has at each location a width between 5µm and 50µm, inclusive. Since the applicants have not established the criticality (see Criticality paragraph below) of the width of the stripe and the Prior Art shows that the stripe would necessarily have a width, it would have been obvious to one of ordinary skill in the art before the effective filing date to select the width of the stripe to be between 5um and 50um.
CRITICALITY
The specification contains no disclosure of either the critical nature of the claimed width of the stripe or any unexpected results arising therefrom. Where patentability is said to be based upon particular chosen values or upon another variable recited in a claim, the applicant must show that the chosen values are critical. In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990). MPEP 2144.05 (III)(A).
Regarding claim 18, Nishioka teaches the optoelectronic device according to claim 16, wherein the projected contour line and the outer edge line form a circumferential stripe on the light emitting surface, and wherein the stripe has at each location a width between 10µm and 15µm, inclusive. Since the applicants have not established the criticality (see Criticality paragraph above) of the width of the stripe and the Prior Art shows that the stripe would necessarily have a width, it would have been obvious to one of ordinary skill in the art before the effective filing date to select the width of the stripe to be between 10um and 15um.
Claim(s) 21 and 29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nishioka (US 20200161513) as applied to claim 14 above, and further in view of Sugimoto et al. (US 9,496,465).
Regarding claim 21, although Nishioka teaches the substantial features of the claimed invention, he fails to explicitly teach the optoelectronic device according to claim 20, wherein the adhesive does not even partially cover the at least one metallic region. However, Sugimoto teaches an LED device wherein the adhesive does not even partially cover the at least one metallic region (col. 7, lines 30-36 "metal member”). Sugimoto teaches an adhesive agent used to join the light emitting elements and the light transmissive member, avoiding leakage or creep of the adhesive to the side surfaces of the light transmissive member, and also teaches preferably no adhesive material or other such joining member is elsewhere but at these joining surfaces of the light emitting element and light transmissive member for the purpose of efficiently reflecting light by the reflecting member included in the device. Therefore, it would have been obvious to one of ordinary skill in the art that the adhesive agent used to join the light emitting element and the converter is only on these surfaces, and not provided elsewhere on the device, including the at least one metallic region, for the purpose of efficiently reflecting the light emitted from the light emitting element (col. 4, lines 65-67; col 5, lines 1-8).
Regarding claim 29, although Nishioka teaches the substantial features of the claimed invention, he fails to explicitly teach the optoelectronic device according to claim 28, wherein the adhesive does not even partially cover the dielectric material. However, Sugimoto teaches an LED device wherein the adhesive does not even partially cover the dielectric material (col. 7, lines 30-36 “insulating member”). Sugimoto teaches a metal member on which a dielectric (col. 7, lines 30-36 “insulating member”) has been formed. Sujimoto an adhesive agent used to join the light emitting elements and the light transmissive member, avoiding leakage or creep of the adhesive to the side surfaces of the light transmissive member, and teaches that preferably no adhesive material or other such joining member is elsewhere but at these joining surfaces of the light emitting element and light transmissive member for the purpose of efficiently reflecting light by the reflecting member included in the device. Therefore, it would have been obvious to one of ordinary skill in the art that the adhesive agent used to join the light emitting element and the converter is only on these surfaces, and not provided elsewhere on the device, including the dielectric material, for the purpose of efficiently reflecting the light emitted from the light emitting element (col. 4, lines 65-67; col 5, lines 1-8).
Claims 22-24 are rejected under 35 U.S.C. 103 as being unpatentable over Nishioka (US 20200161513) as applied to claim 14 above, and further in view of Wang et al. (US 20200083419).
Regarding claim 22, although Nishioka teaches the substantial features of the claimed invention, he fails to explicitly teach the optoelectronic device according to claim 14, wherein the converter comprises an upper portion and a lower portion, the lower portion being closer to the light emitting surface than the upper portion, and wherein the upper portion comprises a larger cross-section than the lower portion when viewed in a plane parallel to the top surface. However, Wang teaches wherein the converter Fig. 1: RE comprises an upper portion and a lower portion (annotated below), the lower portion being closer to the light emitting surface Fig. 1: TS than the upper portion, and wherein the upper portion comprises a larger cross-section than the lower portion when viewed in a plane parallel to the top surface. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to combine the teachings of Nishioka and Wang for the purpose of a light emitting device that has the effect of lateral light emission thereby avoiding the problem of light spots derived from concentrated emission of the light beam (para. 0064).
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Regarding claim 23, Wang teaches the optoelectronic device according to claim 22, wherein the contour line extends in the circumferential direction around the lower portion (contour line drawn around the bottom portion of the annotated lower portion).
Regarding claim 24, Wang teaches the optoelectronic device according to claim 22, wherein a contour line projected on the top surface of the semiconductor component and surrounding the upper portion of the converter RE in the circumferential direction is completely outside a projected contour line of the lower portion.
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Claim 25 is rejected under 35 U.S.C. 103 as being unpatentable over Nishioka (US 20200161513) and Wang et al. (US 20200083419) as applied to claim 22 above, and further in view of Bang (US 20200220060).
Regarding claim 25, Nishioka and Wang teach the substantial features of the invention, but fail to explicitly teach the optoelectronic device according to claim 22, wherein the lower portion comprises a converter material while the upper portion comprises a transparent carrier material. However, Bang teaches wherein the lower portion Fig. 3B: 220 comprises a converter material (para. 0081, phosphor) while the upper portion Fig. 3B: 230 comprises a transparent carrier material (para. 0082, transparent silicon). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to combine the teachings of Nishioka, Wang, and Bang for the purpose of blocking moisture from penetrating into the wavelength converter (para. 0082).
Claim 26 is rejected under 35 U.S.C. 103 as being unpatentable over Nishioka (US 20200161513) as applied to claim 14 above, and further in view of Eisert et al. (US 20140117396).
Regarding claim 26, Nishioka teaches the optoelectronic device according to claim 14, wherein the converter Fig. 2: 3 is a cuboid element (shown in Fig. 1 and 2), but fails to explicitly teach the optoelectronic device according to claim 14, wherein the converter is a component with an upper portion and a lower portion, wherein both portions are each cuboid elements, wherein the upper portion comprises a square or rectangular first side on which a square or rectangular second side of the lower portion is arranged, and wherein the first side has a larger area than the second side, or at least partially a truncated conical or pyramidal element. However, Eisert teaches wherein the converter Fig. 2: 20 is a component with an upper portion Fig. 2: 22 and a lower portion Fig. 2: 21, wherein both portions are each cuboid elements (para. 0040), wherein the upper portion Fig. 2: 22 comprises a square or rectangular first side (bottom surface of 22) on which a square or rectangular second side (top surface of 21) of the lower portion Fig. 2: 21 is arranged, and wherein the first side has a larger area than the second side (shown in Fig. 1B), or at least partially a truncated conical or pyramidal element. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to combine the teachings of Nishioka and Eisert for the purpose of having a converter that is able to absorb light emitted from the exposed surface of the light emitting element, and light that is scattered in the lower portion of the converter without being converted (para. 0113).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NKECHINYERE ESIABA whose telephone number is (571)272-0720. The examiner can normally be reached Monday - Friday 10am-5pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kretelia Graham can be reached at (571) 272-5055. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Nkechinyere Esiaba/Examiner, Art Unit 2817
/Kretelia Graham/Supervisory Patent Examiner, Art Unit 2817 January 29, 2026