Attorney’s Docket Number: 3394-612
Filing Date: 04/21/2023
Claimed Foreign Priority Date: NA
Applicant(s): Wilcox et al
Examiner: Aneesa Baig
DETAILED ACTION
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 . The application serial no. 18/020,349 filed on 02/08/2023 has been entered.
Election/Restrictions
Applicant's election with traverse of Species 2, directed to Figures 3A, 3B, 4, 5-9, 15A-15C, and 18/19 in the reply filed on 11/07/2025 is acknowledged. The applicants indicated that claims 1-8, 11-14, and 16-20 read on the species 2. Examiner agrees.
The traversal is on the grounds that the restriction requirement requires the inventions to be both independent and distinct and the requirement is not supported by showing a serious burden. Applicant’s attention is directed to the MPEP which states “Restriction is the practice of requiring an applicant to elect a single claimed invention (e.g., a combination or subcombination invention, a product or process invention, a species within a genus) for examination when two or more independent inventions and/or two or more distinct inventions are claimed in an application.” See MPEP 802.02. The criteria for restriction between inventions is further laid out in MPEP 803 section 1 and makes clear the inventions need only be independent or distinct, not both.
In regards to proving serious burden, in the restriction requirement the examiner set forth that the application contained species including mutually exclusive characteristics, which make them patentably distinct from each other. That is, the unpatentability of one of the species would not necessarily imply the unpatentability of the other species.
As noted in MPEP § 808.01(a), an election of species should be required prior to a search on the merits in all applications containing species and generic claims. On the other hand, such an election of species should not be required if the species are considered clearly unpatentable (obvious) over each other or if there is an express admission by the applicants to that effect. In re Lee, 199 USPQ 108 (Comm' r Pat. 1978).
The applicants have failed to advance reasons leading to the conclusion that the species claimed are considered clearly unpatentable over each other. As the examiner indicated, the species are independent or distinct because they do not overlap in scope and are not obvious variants of each other making them patentably distinct from each other. Accordingly, the prior art applicable to one of the species would not likely be applicable to the other species as the species are likely to raise different prior art issues. Since each of the species belongs to a different subject of inventive effort, they will require different fields of search (e.g., employing different search queries) that would allow separately searching for each of their mutually exclusive characteristics; thus, creating a serious burden on the examiner.
For all of the above reasons, the requirement is still deemed proper and is therefore, made final. Accordingly, claims 9, 10, 15 are 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.
Specification
The disclosure is objected to because of the following informalities:
Par. [0037] mentions a Figure 3C which is missing from the drawings. Examiner believes this should be corrected to Figure 3B.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim 1, 14, 16-20 are rejected under 35 U.S.C. 102 (a)(1) as anticipated by Chen (US 20180040786 A1, Hereinafter Chen).
Regarding Claim 1, Chen(e.g., Figure 5A and 5B [0090]-[0098][0068][0014]) shows all aspects of the instant invention, A light-emitting diode (LED) package comprising:
at least one LED chip (e.g., die 10’);
a support structure comprising electrical connections coupled to the at least one LED chip (lead frame 81, including a first electrode 811 and a second electrode 812 coupled to 14); and
a reactive material configured to preferentially absorb environmental ingress in greater amounts than the electrical connections ( e.g., Getter 24 including 242 getter particles “oxygen and moisture scavengers” [0068][0017]).
Regarding Claim 14, See comments from Claim 1, as they would be considered repeated here.
Regarding Claim 16, Chen(e.g., Figure 5A and 5B [0090]-[0098][0068][0014]) shows all aspects of the instant invention, A light-emitting diode (LED) package comprising:
at least one LED chip (e.g., die 10’) ;
a lead frame at least electrically coupled to the at least one LED chip (lead frame 81, including a first electrode 811 and a second electrode 812); and
a reactive material configured to preferentially absorb environmental ingress in greater amounts than the lead frame ( e.g., Getter 24 including 242 getter particles “oxygen and moisture scavengers” [0068][0017]).
Regarding Claim 17, Chen shows the getter layer 24 arranged on surfaces of the lead frame (Fig 5B).
Claim 1, 14, 16-19 are rejected under 35 U.S.C. 102 (a)(1) as anticipated by Amiotti et al (US 20050230691 A1, Hereinafter Amiotti).
Regarding Claim 1, Amiotti (e.g., Figure 3-5 [0033]-[0060]) shows all aspects of the instant invention, A light-emitting diode (LED) package comprising:
at least one LED chip (e.g., 306, 406, 506 [0005] “each die is mounted between two electrodes” );
a support structure comprising electrical connections coupled to the at least one LED chip (308a/b, 408a/b, 508a/b, on base 312,412,512); and
a reactive material configured to preferentially absorb environmental ingress in greater amounts than the electrical connections ( e.g., getter 318, 418, 522 “scavenger material that has an affinity for certain substances, such as hydrogen or oxygen… from the atmosphere” [0033][0047][0059]).
Regarding Claim 16, Amiotti (e.g., Figure 3-5 [0046]-[0021][0033][0047]) shows all aspects of the instant invention, A light-emitting diode (LED) package comprising:
at least one LED chip (e.g., 306, 406, 506 [0005] “each die is mounted between two electrodes” ) ;
a lead frame at least electrically coupled to the at least one LED chip (308a/b, 408a/b, 508a/b on base 312,412,512); and
a reactive material configured to preferentially absorb environmental ingress in greater amounts than the lead frame ( e.g., getter 318, 418, 522 “scavenger material that has an affinity for certain substances” including contaminants [0033][0047][0059]).
Regarding Claim 17, Amiotti shows the reactive material is arranged on one or more surfaces of the lead frame (the getter material 318 is on and touching a surface of the lead frame).
Regarding Claim 18, Amiotti shows a body (reflector cup 504a/504b) formed about portions of the lead frame, wherein the reactive material (522) is arranged on the body and spaced apart from the lead frame and the at least one LED chip (e.g., Fig shows the getter material is on the reflective surface and spaced from the lead frame).
Regarding Claim 19, Amiotti (Fig 3, [0037] ) shows the recess (conical aperture 305) and the reactive material (318) is placed on the bottom floor of the recess.
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.
Claims 2,20 are rejected under 35 U.S.C. 103 as being unpatentable over Amiotti.
Regarding claim 2, While Amiotti discloses most aspects of the instant invention, including, metal and zeolite materials similar to the disclosure, it does not explicitly show the reactive material comprises a lower redox potential than the electrical connections.
However, note that a limitation in a claim with respect to a material property in a claimed device does not differentiate the claimed device from prior-art device if the prior-art device teaches all the structural limitations in the claims.
As stated in Best, Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F. 2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977)
Note that the applicant has a burden of proof once the examiner establishes a sound basis for believing that the products of the applicant and the prior art are the same. See In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed, Cir. 1990).
In the instant case, the reactive materials in Amiotti are listed in ([0035]) as metals such as titanium and iron with primary mechanisms of removing contaminants with a chemical rection (e.g., oxidation). The material of the electrical connections may be copper or copper alloys ([0012]). In the instant application, the reactive materials are also listed as metals such as titanium and iron, with the electrical connections made of copper or copper alloys ([0080], [0057]). Therefore, since the getter materials of Amiotti are at least comprised of same materials as the reactive material in the instant application, the getter material is capable of having a lower redox potential in order to absorb environmental ingress.
Accordingly, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to have the getter materials of Amiotti to have a lower redox potential than the electrical connections.
Regarding Claim 20, see comments from Claim 2 above, as they would be considered repeated here.
Allowable Subject Matter
Claims 3-8,11,12,13 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
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/ANEESA RIAZ BAIG/Examiner, Art Unit 2814 /WAEL M FAHMY/ Supervisory Patent Examiner, Art Unit 2814