DETAILED ACTION
This Action is responsive to the communication filed on 08/04/2023.
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 .
In the event the determination of the status of the application as subject to 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.
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.
Initially, and with respect to Claim 10, note that a “product-by-process” claim is directed to the product per se, no matter how actually made. See In re Thorpe, 227 USPQ 964 (CAFC, 1985) and the related case law cited therein which makes it clear that it is the final product per se which must be determined in a “product-by-process” claim, and not the patentability of the process, and that, as here, 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. As stated in Thorpe,
[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA); In re Pilkington, 411 F.2d 1345, 1348, 162 USPQ 145, 147 (CCPA 1969); Buono v. Yankee Maid Dress Corp., 77 F.2d 274, 279, 26 USPQ 57, 61 (2d. Cir. 1935).
Note that the applicants have the burden of proof in such cases, as the above case law makes clear.
Claims 1-6 and 8-12 are rejected under 35 U.S.C. 103 as being unpatentable over Kim (US 2019/0019780), in view of Dai (CN 110416249 A).
Regarding claim 1, Kim (see, e.g., FIG. 3A) discloses a light emitting device comprising:
at least two light emitting elements C1, C2, C3 provided on a substrate 21, 22, 23, 43 (Para 0049, Para 0051); and
a transparent resin part 41 provided so as to cover the light emitting elements C1, C2, C3 (Para 0053, Para 0055, Para 0070),
wherein in a sectional view, a surface distance between the light emitting element e.g., C1 and a surface e.g., top surface of 41 of the transparent resin part 41 is x (µm) e.g., 10 µm, an end surface e.g., left end surface of 41 distance between the light emitting element e.g., C1 and an end surface e.g., left end surface of 41 of the transparent resin part 41 closest to the light emitting element e.g., C1 is y (µm) e.g., 12 µm, and a refractive index of the transparent resin part 41 is λm e.g., refractive index of epoxy resin: 1.5,
Although Kim shows substantial features of the claimed invention, Kim fails to expressly teach when a size of a width of the light emitting element positioned at an end part is a (µm), an expression (1) below or expressions (2) and (3) below are satisfied: (Expression 1) y < (1.44 λm - 0.76) x x + (0.08 λm - 0.04) x a - 0.02 λm - 0.47; (Expression 2) y > (1.44 λm - 0.76) x x + (0.08 λm - 0.04) x a - 0.02 λm - 0.47; (Expression 3) y < (1.44 λm - 0.76) x x + (0.15 λm - 0.08) x a - 0.06 λm - 0.61.
Dai (see, e.g., FIG. 1) teaches the width of the light emitting structures have a width between 1 µm and 100 µm for the purpose of controlling the spectral ratio and distribution of the semiconductor light emitting device (pg. 5, para 9-para 12).
The combination of Kim (see, e.g., FIG. 3A) / Dai (see, e.g., FIG. 1) teaches that an expression (1) below or expressions (2) and (3) below are satisfied: (Expression 1) y < (1.44 λm - 0.76) x x + (0.08 λm - 0.04) x a - 0.02 λm - 0.47 where λm = 1.5 (refractive index of epoxy resin as taught by Kim); x = 10 µm (as taught by Kim); a = 10 µm ( as taught by Dai); and y = 12 µm (as taught by Kim). Expression (1): y < 12.7
Examiner note: Examiner notes that at paragraph 0070, Kim states that the upper thickness b of the molding member 41 is 10 µm or greater and 120 µm or less. Further, at paragraph 0071, Kim states that the mold layer 41 is thicker at sides [represented as y in claim] than an upper portion b [represented as x in the claim] of each light emitting chip. The upper portion thickness b was chosen to be 10 µm, and so the mold layer at the sides of the light emitting chip closes to the end will be greater than 10 µm. Therefore, the end surface e.g., left end surface of 41 distance between the light emitting element e.g., C1 and an end surface e.g., left end surface of 41 of the transparent resin part 41 closest to the light emitting element e.g., C1 is y (µm) can be for e.g., 12 µm, which satisfies expression (1).
Therefore, 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 width of the light emitting element as described by Dai in the device of Kim for the purpose of controlling the spectral ratio and distribution of the semiconductor light emitting device (pg. 5, para 9-para 12).
Regarding claim 2, The combination of Kim (see, e.g., FIG. 3A) / Dai (see, e.g., FIG. 1) teaches light emitting device according to claim 1, wherein the expression (1) is satisfied and the expressions (2) and (3) are not satisfied (Kim: Para 0049, Para 0051, Para 0053, Para 0055, Para 0070; Dia: pg. 5, para 9-para 12).
Regarding claim 3, the expression option selected in Claim 1, from which Claim 3 depends, was Expression (1). Therefore, the claim limitation directed to “the (1) is not satisfied and the expressions (2) and (3) are satisfied” of Claim 3 does not apply.
Regarding claim 4, Kim (see, e.g., FIG. 3A) teaches the light emitting device according to claim 1, wherein the refractive index λm e.g., refractive index of epoxy resin being 1.5 is equal to or larger than 1.2 and equal to or smaller than 1.8 (Para 0055).
Regarding claim 5, Kim (see, e.g., FIG. 3A) teaches the light emitting device according to claim 1, wherein a thickness of the light emitting device 41, C1, C2, C3 in the sectional view is 30 µm or smaller (Para 0049, Para 0051, Para 0053, Para 0055, Para 0070).
Regarding claim 6, Kim (see, e.g., FIG. 3A) teaches the light emitting device according to claim 5, wherein a thickness of each of the light emitting elements C1, C2, C3 in the sectional view is 10 µm or smaller (Para 0070).
Regarding claim 8, Kim (see, e.g., FIG. 3A) teaches the light emitting device according to claim 1, wherein the light emitting elements C1, C2, C3 include three light emitting elements (Para 0049, Para 0051).
Regarding claim 9, Kim (see, e.g., FIG. 3A) teaches the light emitting device according to claim 8, wherein the three light emitting elements C1, C2, C3 are a first light emitting element C1 configured to emit light in red, a second light emitting element C2 configured to emit light in green, and a third light emitting element C3 configured to emit light in blue (Para 0051).
Regarding claim 10, Kim (see, e.g., FIG. 3A) teaches the light emitting device according to claim 1, wherein the light emitting elements C1, C2, C3 are each an element (Para 0051).
Examiner Note: The following limitation is a product-by process limitation: “each an element peeled off from a growth substrate.” "[E]ven though product–by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). In this case, whether or not each element is peeled off from a growth substrate does not change the product, i.e., light emitting elements.
Regarding claim 11, Kim (see, e.g., FIG. 3A) teaches the light emitting device according to claim 1, wherein the transparent resin part 41 contains no scatterer that scatters light (Para 0055, Para 0069).
Regarding claim 12, Kim (see, e.g., FIG. 3A) teaches the display device 1 comprising the light emitting device 41, C1, C2, C3 according to claim 1 (Kim: Para 0049, Para 0051, Para 0053, Para 0055, Para 0070; Dia: pg. 5, para 9-para 12).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Kim (US 2019/0019780), in view of Dai (CN 110416249 A), and further in view of Ohashi (US 2020/0335677).
Regarding claim 7, although Kim/Dai show substantial features of the claimed invention, Kim/Dai fail to expressly teach light emitting device according to claim 1, wherein the light emitting element positioned at the end part is a light emitting element configured to emit light in green.
However, regarding “the light emitting element positioned at the end part is a light emitting element configured to emit light in green,” it would have been an obvious matter of design choice to position at the end part the light emitting element configured to emit light in green of Kim as taught by Ohashi (see, e.g., FIG. 5B) who teaches that the light emitting element 10G positioned at the end part e.g., left end of 20 is a light emitting element 10G configured to emit light in green and that the position of each of the light emitting elements 10R, 10G, and 10B is not limited thereto (Para 0040-Para 0042). Moreover, a rearrangement of parts by having the light emitting element configured to emit light in green positioned at the end part of Kim provides no novel or unexpected result as taught by Ohashi. A person within the level of ordinary skill in the art would have found to be obvious absent persuasive evidence that the particular position of the light emitting element configured to emit light in green was significant, and a rearrangement of parts is generally recognized as being within the level of ordinary skill in the art. In re Kuhle, 526 F.2d 553 (C.C.P.A 1975).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANTONIO CRITE whose telephone number is (571) 270-5267. The examiner can normally be reached Monday - Friday, 10:00 am - 6:30 pm.
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/ANTONIO B CRITE/Primary Examiner, Art Unit 2817