DETAILED ACTION
This office action is in response to applicant’s amendment filed on December 17, 2025. Claims 1-22 are under consideration.
Claim Rejections - 35 USC § 102
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 1, 3, 6, 17, and 21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hsieh et al. (US 2011/0291135 A1, herein “Hsieh”).
Regarding claim 1, Hsieh discloses An optical device (lens 40) comprising: a substrate (lens 40 is made of glass and flat); and
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an optical layer (microstructures 41 are micro-convex) disposed on the substrate (glass flat surface), wherein a contact surface of the substrate that is in contact with the optical layer, to form an interface between the substrate and the optical layer, is non-planar, and wherein an overall surface area of the interface is greater than if the contact surface of the substrate were planar. The examiner considers the non-planar (wavy surface) would have an overall surface area of the interface greater than if the contact surface of the substrate were planar.
Claims 3 and 21. Hsieh discloses the optical device of claim 1, wherein the first region of the substrate has a first thickness, and wherein a second region of the substrate adjacent a lateral side-surface of the substrate of the substrate has a second thickness less than the first thickness, and wherein the contact surface (inverted trapezoid – region defined by reference numeral 114 and 11) comprises a surface of the first region and a surface of the second region, such that each of the first region and the second region is in contact with the optical layer (41). The substrate further comprises a shoulder portion that extends from the second region to the first region, and wherein the optical layer (41) is in contact with the shoulder portion (sits in the inverted trapezoid at reference number “11”. See annotated Fig. 2 below.
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Claim 6. Hsieh the invention of claim 1 and further discloses the contact surface of the substrate includes one or more trenches. The non-planar contact surface of Hsieh’s optical device have shallow trenches (see at reference number 41).
Claim 17. Hsieh discloses an optoelectronic assembly (light emitting diode package 100);
an optoelectronic component (light emitting diode chip 20);
a housing (substrate 10); and
an optical device (lens 40) according to claim 1,
where the optical device (lens 40) is aligned with the optoelectronic component (light emitting diode chip 20) and is mounted to the housing (substrate 10).
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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.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Hsieh in view of Fan et al. (US 2021/0070654 A1, herein “Fan”).
Hsieh discloses the invention of claim 1 and the substrate 10 is silicon (Abstract), but Hsieh is silent to the optical layer is composed of a polymeric material.
Fan teaches an optical device having a glass substrate with microstructured polymer layer applied onto the glass substrate (Para [0024] and Fig. 1).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to recognize using polymer microstructure on glass substrate provides for high performance, cost-effective and low-cost fabrication for manufacturing optical devices such as lens in Hsieh’s invention.
Claims 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over Hsieh in view of Shibuya et al. (US 2006/0114579 A1, herein “Shibuya”).
Hsieh discloses the invention of claims 4-5, but Hsieh does no teach the second region of the substrate is below an optically inactive area of the optical layer and the second region is rougher than the surface of the first region.
Shibuya teaches mounting lens 10 on mounting surface 15. The lens 10 has a first region (inner region where the active area is the convex lens) and the inactive area of the optical lens is the outer region. The second region (portion of Length L) is below the optically inactive area of the optical layer and the second region is rougher than the surface of the first region (Para [0073, claim 7, and Fig. 1).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to recognize the teaching of Shibuya would apply to the optical device of Hsieh since Shibuya teaches the roughed surface improves the bonding strength between the bonding surfaces of the mounting surface 15 and the lens (Para [0073]). One would be motivated to improve the bonding strength to secure the optical lens in place for the device integrity.
Claims 7-13 and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Hsieh in view of Suenaga et al. (US 2013/0088781A1, herein “Suenaga”).
Hsieh discloses the invention of claim 6, but Hsieh does not disclose the one or more trenches are in a region of the substrate adjacent a lateral side-surface of the substrate.
Suenaga teaches forming an optical adjustment element having a first region (center) and a second region (peripheral). Suenaga further teaches forming anchor grooves (53) in the second region. The anchor grooves enhance adhesive strength of the base and the optical adjustment layer. The increased adhesion provided by the anchor grooves prevent peeling of the optical adjustment layer in the second region (Fig. 12, Para [0045]). Suenaga further teaches the one or more trenches are in a region of the substrate adjacent to a lateral side-surface of the substrate (see annotated Fig. 12 above, the second region is adjacent to “a lateral side-surface of the substrate”).
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It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to recognize the trenches provided in the second region for the purpose of preventing peeling, which solves the same problem as applicant’s rougher substrate (Para [0045]). Applicant’s disclosure goes further to create trenches 32 to “help prevent delamination of the optical layer 16” (Para [0045]). Therefore, one would be motivated to provide one or more trenches in the substrate to improve adhesion and prevent peeling or delamination.
Claims 8-13. Hsieh in view of Suenaga teach the invention of claim 7 and further teaches triangular, rectangular, and curved trench shapes, which have been determined to have adhesive strength similar to the above is obtained (Para [0066]-[0068]).
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Hsieh in view of Suenaga do not teach the trenches include at least one undercut trench or at least one canted straight-wall trench. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to experiment with different trench cuts, since it has been held that a mere change in shape of an element is generally recognized as being within the level of ordinary skill in the art when the change in shape is not significant to the function of the combination. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). Further, one would have been motivated to select the shape of undercut trench or canted straight-walled trench to maximize the adhesive strength of the trench against delamination between different materials.
Claim 12. Hsieh in view of Suenaga teach the one or more trenches include a plurality of trenches, wherein a volume of at least one of the trenches differs from a volume of another one of the trenches (See duplicated Figs. 3(a)-3(c) above).
Claim 13. Hsieh in view of Suenaga teach the surface of the substrate includes a projection located closer to a lateral side-surface of the substrate than are the one or more trenches, and wherein a height of the projection is less than a depth of the one or more trenches.
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Regarding claim 18, Hsieh teach the invention of claim 17 and the lens 40 is disposed on the platform 114 of the silicon substrate 10 by a binder (Para [0019]. The examiner considers the “binder” in Hsieh’s disclosure is equivalent to the adhesive material as recited in the claim.
However, Hsieh does not teach:
the surface of the substrate includes one or more trenches;
the surface of the substrate includes a projection located closer to a lateral side-surface of the substrate than are the one or more trenches, a height of the projection being less than a depth of the one or more trenches; and
the adhesive material being in contact with the projection.
Suenaga teaches forming an optical adjustment element has trenches (anchor grooves 53) in the substrate. The surface of the substrate includes a projection located closer to a lateral side-surface of the substrate than are the one or more trenches, and wherein a height of the projection is less than a depth of the one or more trenches.
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The projection orientation and depth with respect to the trenches function in concert to enhance adhesive strength of the base and the optical adjustment layer. The increased adhesion provided by the trenches prevent peeling of the optical adjustment layer in the second region (Fig. 12, Para [0045]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to recognize the teaching of Suenaga’s trenches provided in the second region for the purpose of preventing peeling would be modifiable to the platforms in Hsieh’s housing. By introducing the trenches to the platform of Hsieh’s invention the lens can be attached to the trenches in the platform with binder. Each trench provide additional surface area for the binder to attach thereto, thus preventing delamination. Therefore, one would be motivated to provide one or more trenches in the substrate to improve adhesion and prevent peeling or delamination.
Claim 19. Hsieh in view of Suenaga teach the invention of claim 18. The combined teaching of Hsieh in view of Suenaga would necessarily teach the adhesive material is disposed between the projection (opposite of the projection surfaces are trenches) and the optical layer since Hsieh teaches a binder secures lens 40 to platform 114 of the silicon substrate 10 (Hsieh, Para [0019]).
Claim 20. Hsieh in view of Suenaga teach the invention of claim 18, wherein the optoelectronic component is a light emitter (Hsieh: light emitting diode chip 20).
Claims 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over Yu et al. (US 2019/0051762 A1, herein “Yu”) in view of Li et al. (US 2016/0126293 A1, herein “Li”).
Claim 14. Yu discloses in Fig. 12D an optical device comprising:
a substrate (61);
one or more projections (2) on a surface of the substrate , wherein the one or more projections are composed of a silicon film (Para [0042]); and
an optical layer (9/8) disposed on the surface of the substrate and on surfaces of the projections,
wherein the optical layer (9/8) has a first region that is structure so as to provide an optical effect (convex surface 25 in Fig. 12D) on light impinging on the first region, the optical layer further including a second optically inactive region (the optical layer encapsulated in material 8 is considered to be inactive) that is closer to a lateral side-surface of the substrate, wherein the one or more projections are disposed below the second optically inactive region of the optical layer. The examiner notes: the recitation of “second optically inactive region” is considered to be the ONLY optically inactive region since the claim does not recite a first optically inactive region.
However, Yu does not disclose the one or more projections (“device that is operable to emit or sense light at an operational wavelength k”, Specification Para [0052]) are an amorphous or crystalline silicon film.
Li teaches active matrix light emitting diodes module wherein Li teaches that passive matrix and active matrix LEDs (light emitting diodes) can be implemented with thin film transistors in the control circuits. The control circuits for LED are manufactured with amorphous silicon thin film transistors or poly-crystalline silicon thin film transistors on the emissive side (Para [0008]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to recognize the active matrix, for example LEDs as taught by Li would be interchangeable with the VCSEL matrix in Yu. Poly-crystalline silicon thin film transistors are known in the art of semiconductor and CMOS integration as in the technology disclosed by Yu. The modification of Li’s teaching to Yu’s thin optoelectronic modules would necessitate the one or more projections are in contact with the surface of the substrate and protrude above the surface of the substrate. One would be motivated to implement poly-crystalline thin film silicon transistors, as opposed to VCSEL for example, is the smaller form factor, thus more LEDs can be manufactured on a wafer.
Claim 15. Yu discloses the substrate (61) is composed of glass or silicon (Para [0431], [0658], [0698]), and wherein the optical layer is composed of a polymeric material (clear encapsulation material 8 is curable epoxy Para [0480]).
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Yu in view of Li (herein “Yu / Li”), as applied to claim 14 above, and further in view of Tischler et al. (US 2015/0221835 A1, herein “Tischler”).
Yu / Li teach the invention of claim 14, but Yu / Li do not teach each of the one or more projections has a shape of an inverted frustum of a pyramid.
Tischler teaches an optical element (230) is covered in encapsulant material (2870, Para [0293]). The optical element (230) forms a projection inside the encapsulant. The projection takes on an inverted frustum of a pyramid (frustum: truncated pyramid) (Para [0216]).
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It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to recognize an inverted frustum of a pyramid is a geometry that allows for efficient light extraction. One would be motivated to employ the inverted frustum of a pyramid geometry to form a wafer size LED, as the inverted frustum of a pyramid geometry is well-known in the art for extracting light out of the LED substrate efficiently.
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Hsieh.
Hsieh discloses the invention of claim 21, but Hsieh does not disclose the shoulder is substantially straight and is perpendicular to a lower surface of the substrate, the lower surface of the substrate being opposite to the contact surface along a vertical direction.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention was made to change the inverted trapezoid shape of the substrate (see annotated Fig. 2 above) to be a rectangular shape, since it has been held that a mere change in shape of an element is generally recognized as being within the level of ordinary skill in the art when the change in shape is not significant to the function of the combination, In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). Further, one would have been motivated to select the shape of rectangle with perpendicular edge for the purpose of simplifying the etching step since etching perpendicular edges is simpler than etching angular edges.
Response to Arguments
Applicant’s arguments with respect to claims 1-22 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Erin D Chiem whose telephone number is (571)272-3102. The examiner can normally be reached 10 am - 6 pm.
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, Thomas A. Hollweg can be reached at (571) 270-1739. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ERIN D CHIEM/Examiner, Art Unit 2874
/THOMAS A HOLLWEG/Supervisory Patent Examiner, Art Unit 2874
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