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
Claims 6-9 and 15-25 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 02/04/2026.
Claim Status
Claims 1-5 are pending.
Specification
The disclosure is objected to because of the following informalities:
Paragraphs [0033-0034] recite the light transmittance of both epoxy resins is greater than 90%. However, in in paragraphs [0036-0038] applicants disclose examples of both epoxy resins, but all listed examples state the resins have, “a light transmittance of 90%,” which does not fall in the claimed range. It appears applicants intended to recite, “a light transmittance of 90% or more.” For the purpose of examination the specification has been interpreted as such.
Appropriate correction is required.
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.
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 is/are rejected under 35 U.S.C. 103 as being unpatentable over Satoru et al (herein ‘Satoru’; US 20050272896 A1).
Satoru teaches an epoxy modified polysiloxane composition useful for sealing light emitting devices which exhibit excellent light resistance and excellent adhesiveness [p. 0002].
Satoru teaches the modified polysiloxane contains epoxy groups and an alicyclic hydrocarbon group (hereinafter referred to as EPS), and may further comprise an epoxy resin [p. 0020, 0074].
Satoru teaches the EPS may be obtained from a condensation reaction between an organopolysiloxane containing a condensable group and a hydroxy compound containing an epoxy group [p. 0061-0065]. Satoru further teaches the organopolysiloxane containing a condensable group is not particularly limited, but examples thereof include non-aromatic organopolysiloxanes containing a condensable group such as polymethylsiloxane containing a condensable group and aromatic organopolysiloxanes containing a condensable group, such as polyphenylsiloxane containing a condensable group and polyphenylmethylsiloxane containing a condensable group; wherein examples of the organic condensable group include alkoxy groups such as a methoxy group and an ethoxy group and amino groups such as a dimethyl amino group [p. 0062, 0063].
Although Satoru is silent with respect to the refractive index and light transmittance of the EPS resin, EPS resins prepare according to the teachings of Satoru read over the organosilicon modified epoxy resins of instant claim 2 and correspond to the acceptable organosilicon modified epoxy resins applicants list in [p. 0037] of the instant specification (having a refractive index of 1.65 and a light transmittance of 90%).
Satoru teaches the composition may further comprise an epoxy resin, which increases the adhesion properties between the sealing agent and the light emitting device [p. 0074]. Satoru teaches the amount to be used of the epoxy resin is 0.1 to 100 parts by mass based on 100 parts by mass of the EPS; wherein examples of the epoxy resin include aromatic glycidyl ethers such as bisphenol A epoxy resin, bisphenol F epoxy resin, and polyphenol glycidyl ether [p. 0076, 0081].
Although Satoru is silent with respect to the refractive index and light transmittance of the aromatic glycidyl ether resins, the aromatic glycidyl ether resins taught by Satoru read over the epoxy resins of instant claim 3 and correspond to the acceptable epoxy resins applicants list in [p. 0037] of the instant specification.
In light of this, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to prepare the composition of Satoru with an aromatic epoxy resin of 0.1 to 100 parts by mass based on 100 parts by mass of the EPS, as Satoru teaches the aromatic epoxy resin improves the adhesion properties between the sealing agent and the light emitting device. Furthermore, the range of the aromatic epoxy resin relative to the EPS taught by Satoru reads over the ranges of instant claims 4 and 5. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 2008/0207848 A1; Morita provides motivation to select an organosilicon modified epoxy resin having a refractive index in visible light of 589 nm that is no less than 1.5 and a light transmittance in visible light of 420 nm that is no less than 80%.
Morita teaches a curable silicone composition for use in optical applications [p. 0006]. Morita teaches a problem associated with the use of curable silicone compositions and cured bodies of curable silicone compositions of a polydimethylsiloxane type is that their refractive index of 1.41 is lower than that of an epoxy resin, and therefore optical parts that utilize cured bodies of the aforementioned composition cannot provide high brightness of light [p. 0003]. It has been found that refractive index can be increased to the level of epoxy-resin type organic materials by introducing compositions that contain phenyl groups, such as polydimethyl-diphenyl siloxane type or polymethylphenyl siloxane type curable silicone compositions. [0061] Morita teaches the curable silicone composition of the invention and a cured body obtained from this composition should have a refractive index in visible light of 589 nm that is no less than 1.5 and a light transmittance in visible light of 420 nm that is no less than 80% [p. 0061]. Morita further teaches, if the refractive index is less than 1.5 and/or the light transmittance is lower than 80%, it would be impossible to provide sufficient reliability of the optical parts or elements that are coated with the use of such silicone compositions or cured bodies of these compositions.
US 2015/0337075 A1, cited on IDS filed 06/28/2023; Oshima teaches bisphenol A-based epoxy resins and bisphenol-F based epoxy resins have a refractive index of 1.56 to 1.70 [p. 0017, 0018].
US 2016/0102226 A1; Alvarez teaches cured products for optical applications desirably have a light transmittance of at least 90, alternatively at least 95, alternatively at least 96, alternatively at least 97, alternatively at least 98, alternatively at least 99, percent in the range of visible light [p. 0063].
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HOLLEY GRACE HESTER whose telephone number is (703)756-5435. The examiner can normally be reached Monday - Friday 9:00AM -5:00PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached at (571) 272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/HOLLEY GRACE HESTER/ Examiner, Art Unit 1766
/RANDY P GULAKOWSKI/ Supervisory Patent Examiner, Art Unit 1766
Prosecution Insights