Prosecution Insights
Last updated: August 17, 2026
Application No. 18/308,602

LIGHT-EMITTING DEVICE AND MOUNTING MEMBER

Final Rejection §103
Filed
Apr 27, 2023
Priority
Apr 28, 2022 — JP 2022-074740 +1 more
Examiner
CARTER, MICHAEL W
Art Unit
2828
Tech Center
2800 — Semiconductors & Electrical Systems
Assignee
NICHIA Corporation
OA Round
2 (Final)
74%
Grant Probability
Favorable
3-4
OA Rounds
0m
Est. Remaining
90%
With Interview

Examiner Intelligence

Grants 74% — above average
74%
Career Allowance Rate
638 granted / 859 resolved
+6.3% vs TC avg
Strong +16% interview lift
Without
With
+15.7%
Interview Lift
resolved cases with interview
Typical timeline
2y 5m
Avg Prosecution
26 currently pending
Career history
885
Total Applications
across all art units

Statute-Specific Performance

§101
0.8%
-39.2% vs TC avg
§103
56.3%
+16.3% vs TC avg
§102
18.0%
-22.0% vs TC avg
§112
21.2%
-18.8% vs TC avg
Black line = Tech Center average estimate • Based on career data from 859 resolved cases

Office Action

§103
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 . 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. Claim Rejections - 35 USC § 103 The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action. Claims 1-8, and 13-16 are rejected under 35 U.S.C. 103 as being unpatentable over US 2018/0278015 (Hagimoto) in view of US 2008/0084905 (Doerfel) and US 2024/0006843 (Hiroki). For claim 1, Hagimoto teaches a light-emitting device (fig. 1 and 5) comprising: a submount including a substrate having an insulating property (fig. 1 and 5, labels 10, 15a and 15b; [0075]), and having a first surface (fig. 5, top of 15a) and a second surface located on a side opposite to the first surface (fig. 5, bottom of 15b), and the substrate having a shape in which a length in a second direction (fig. 1, length of 10 in vertical direction of the fig.) perpendicular to a first direction (fig. 1, direction between pins parallel to surface of 41) is greater than a width in the first direction in a plan view as seen along a direction perpendicular to the first surface (fig. 1, length of 10 is greater than width of 10), a first metal layer arranged on the first surface of the substrate (fig. 5, 13; [0045]), and a second metal layer arranged on the second surface of the substrate (fig. 5, 14; [0045]), a width of the second surface of the substrate being greater than a width of the second metal layer in the first direction (fig. 5, width of 15b > width 14); and a semiconductor laser element arranged on a side of the submount on which the first metal layer is arranged (fig. 1 and 5, 20; [0037]), wherein the width of the second metal layer is smaller than a width of the first metal layer in the first direction (fig. 5, width 14 smaller than width 13). Hagimoto does not teach the second surface being a single planar surface. However, Doerfel teaches a submount are plane parallel with a generally rectangular shape in order to provide simpler alignment ([0022]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to form the second surface of Hagimoto as a single planar surface such that the submount is plane parallel with a generally rectangular shape in order to provide simpler alignment as taught by Doerfel. The combination of Hagimoto and Doerfel does not teach a difference between a length of the first metal layer and a length of the second metal layer in the second direction is smaller than a difference between the width of the first metal layer and the width of the second metal layer in the first direction. Hagimoto does teach a non-zero difference (ΔW) between the width of the first metal layer and the width of the second metal layer in the first direction (Fig. 5, [(width of 13)-(width of 14)= ΔW>0]). Hagimoto does not provide details regarding a difference (ΔL) between a length of the first metal layer and a length of the second metal layer in the second direction is smaller than a difference (ΔW) between the width of the first metal layer and the width of the second metal layer in the first direction (i.e. ΔL< ΔW). However, Hiroki teaches a submount with a first and second metal layer extending the entire length of the submount (fig. 2, 22 and 21) in order to form an electrode and a spacer for soldering and efficient thermal conductivity (fig. 2 and [0059]-[0061]). The resulting difference (ΔL) between a length of the first metal layer and a length of the second metal layer in the second direction is zero. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the length of metallization layers taught by Hiroki with the combination of Hagimoto and Doerfel in order to provide an electrode and a spacer for soldering and efficient thermal conductivity. The combination results in ΔL=0 as both the first and second metal layer extend along the length substrate. The combination therefore teaches ΔL< ΔW. For claim 2, Hiroki teaches the difference between the length of the first metal layer and the length of the second metal layer in the second direction is smaller than 50µm. (Fig. 2, 21 and 22 both run the entire length of the substrate such that the length difference is smaller than 50µm). The combination does not teach the difference between the first metal layer and the width of the second metal layer in the first direction is greater than 50 µm. However, the difference is the width of the bottom (fig. 5, bottom of 15b) on either side of the metal layer 14 (fig. 5). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to determine the workable and optimal range for the difference between the first metal layer and the width of the second metal layer including a range greater than 50 µm in order to maintain sufficient heat dissipation, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. For claim 3, Hagimoto teaches the semiconductor laser element has a shape in which a length of the semiconductor laser element in the second direction is greater than a width of the semiconductor laser element in the first direction (fig. 1, 20). For claim 4, Hiroki further teaches the submount includes a wiring layer arranged on the first metal layer ([0059] electrode 21 may be a plurality of conductive films such that the lowest layer is the first metal layer and the top layer is the wiring layer). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the multiple layers of Hiroki as a simple substitution for the single layer of Hagimoto as the substituted components and their functions were known in the art and the substitution would have yielded predictable results. In the present case, the substituted component provides an alternative conductive layer. See MPEP 2143 I.B. For claim 5, Hiroki further teaches a thickness of the first metal layer is 30 µm or more (fig. 2, 21; [0059]). For claim 6, Hiroki further teaches a thickness of the second metal layer is 30 µm or more (fig. 2, 22; [0061]). For claim 7, Hagimoto teaches each of the width of the first metal layer and the width of the second metal layer in the first direction is greater than a width of the semiconductor laser element in the first direction (fig. 5). For claim 8, Hagimoto teaches the difference between the width of the first metal layer and the width of the second metal layer in the first direction is smaller than a width of the semiconductor laser element in the first direction (fig. 5). Also, the limitation, absent any criticality, is only considered to be an obvious modification of the relative shapes of prior art as the courts have held that a change in shape or configuration, without any criticality, is within the level of skill in the art as the particular shape claimed by applicant is nothing more than one of numerous shapes and widths that a person having ordinary skill in the art will find obvious to provide using routine experimentation based on its suitability for the intended use of the invention. See In re Dailey, 149 USPQ 47 (CCPA 1976). For claim 13, the combination does not teach the semiconductor laser element is disposed such that a middle point of a width of the semiconductor laser element in the first direction is disposed at a position shifted in the first direction from a middle point of the width of the substrate in the first direction, and in the plan view, a middle point of the width of the second metal layer in the first direction is shifted in the first direction from a middle point of the width of the first metal layer in the first direction. However, the exact relative location of the first and second metal layer is not critical, and it would have been obvious to one having ordinary skill in the art the effective filing date of the claimed invention to change the exact alignment of the first and second metal layer, since it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 86 USPQ 70. For claim 14, Hagimoto teaches a mounting member (fig. 1 and 5) comprising: a substrate having an insulating property (fig. 1 and 5, labels 10, 15a and 15b; [0075]), and having a first surface (fig. 5, top of 15a) and a second surface located on a side opposite to the first surface (fig. 5, bottom of 15b), and the substrate having a shape in which a length in a second direction (fig. 1, length of 10 in vertical direction of the fig.) perpendicular to a first direction (fig. 1, direction between pins parallel to surface of 41) is greater than a width in the first direction in a plan view as seen along a direction perpendicular to the first surface (fig. 1, length of 10 is greater than width of 10), a first metal layer arranged on the first surface (fig. 5, 13; [0045]), and a second metal layer arranged on the second surface (fig. 5, 14; [0045]), a width of the second surface of the substrate is greater than a width of the second metal layer in the first direction (fig. 5, width of 15b > width 14); and the width of the second metal layer is smaller than a width of the first metal layer in the first direction (fig. 5, width 14 smaller than width 13). Hagimoto does not teach the second surface being a single planar surface. However, Doerfel teaches a submount are plane parallel with a generally rectangular shape in order to provide simpler alignment ([0022]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to form the second surface of Hagimoto as a single planar surface such that the submount is plane parallel with a generally rectangular shape in order to provide simpler alignment as taught by Doerfel. The combination of Hagimoto and Doerfel does not teach a difference between a length of the first metal layer and a length of the second metal layer in the second direction is smaller than a difference between the width of the first metal layer and the width of the second metal layer in the first direction. Hagimoto does teach a non-zero difference (ΔW) between the width of the first metal layer and the width of the second metal layer in the first direction (Fig. 5, [(width of 13)-(width of 14)= ΔW>0]). Hagimoto does not provide details regarding a difference (ΔL) between a length of the first metal layer and a length of the second metal layer in the second direction is smaller than a difference (ΔW) between the width of the first metal layer and the width of the second metal layer in the first direction (i.e. ΔL< ΔW). However, Hiroki teaches a submount with a first and second metal layer extending the entire length of the submount (fig. 2, 22 and 21) in order to form an electrode and a spacer for soldering and efficient thermal conductivity (fig. 2 and [0059]-[0061]). The resulting difference (ΔL) between a length of the first metal layer and a length of the second metal layer in the second direction is zero. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the length of metallization layers taught by Hiroki with the combination of Hagimoto and Doerfel in order to provide an electrode and a spacer for soldering and efficient thermal conductivity. The combination results in ΔL=0 as both the first and second metal layer extend along the length substrate. The combination therefore teaches ΔL< ΔW. For claim 15, the combination does not teach in the plan view, a middle point of the width of the second metal layer in the first direction is shifted in the first direction from a middle point of the width of the first metal layer in the first direction. However, the exact relative location of the first and second metal layer is not critical, and it would have been obvious to one having ordinary skill in the art the effective filing date of the claimed invention to change the exact alignment of the first and second metal layer, since it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 86 USPQ 70. For claim 16, Hagimoto teaches the second surface (fig. 5, bottom of 15b) is a lowermost surface of the substrate (fig. 5, labels 10, 15a and 15b). Claims 9-12 are rejected under 35 U.S.C. 103 as being unpatentable over US 2018/0278015 (Hagimoto) in view of US 2008/0084905 (Doerfel) and US 2024/0006843 (Hiroki) and further in view of US 2013/0272329 (Auen). For claim 9, the previous combination does not teach a plurality of submounts including the submount; and a plurality of semiconductor laser elements including the semiconductor laser element, the plurality of semiconductor laser elements being respectively arranged on the plurality of submounts, wherein the plurality of submounts are disposed side by side in the first direction. However, Auen teaches a plurality of lasers and submounts side by side (fig. 1A, 1 and 3) in order to obtain a high power laser beam ([0064]). It would have been obvious to one of ordinary skill in the art to before the effective filing date of the claimed invention to duplicate the element of claim 1, which is obvious over Hagimoto in view of Doerfel and Hiroki as discussed in the rejection above, such that a plurality of submounts including the submount; and a plurality of semiconductor laser elements including the semiconductor laser element, the plurality of semiconductor laser elements being respectively arranged on the plurality of submounts, wherein the plurality of submounts are disposed side by side in the first direction in order to obtain a high power laser beam as taught by Auen. Note that it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8. For claim 10, Auen teaches a base having a mounting surface on which the plurality of submounts are disposed (fig. 1A, 11). Nagano does not teach the plurality of submounts are disposed at an interval of 350 µm or less in the first direction. However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to dispose the submounts at an interval of 350 µm or less in the first direction in order to minimize the size of the device, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. For claim 11, Hagimoto as combined with Auen teaches a bonding portion (fig. 5, 52) arranged between the mounting surface (fig. 5, top of 30) and the second metal layer of each of the plurality of submounts (fig. 5, 14) and configured to bond the submounts to the base ([0046]), wherein in a cross-sectional view parallel to the first direction, the bonding portion is disposed within a region surrounded by virtual planes respectively including opposing lateral surfaces of the second metal layers of adjacent ones of the plurality of submounts (see annotated fig. below), a virtual plane including the second surface (fig. 5, bottom of 15b), and a virtual plane including the mounting surface (fig. 5, top of 30). PNG media_image1.png 458 559 media_image1.png Greyscale For claim 12, Hagimoto as applied to the rejection of claim 10 in combination with Auen teaches a bonding portion provided between the mounting surface and the second metal layer of each of the plurality of submounts and configured to bond the submount to the base (see fig. 5 modified by Auen above, the portion above 30, below 14, and between the annotated virtual planes including lateral surfaces), wherein in a cross-sectional view parallel to the first direction, the bonding portion is filled within a region surrounded by virtual planes respectively including opposing lateral surfaces of the second metal layers of adjacent ones of the submounts, a virtual plane including the second surface, and a virtual plane including the mounting surface (see fig. 5 modified by Auen above, region filled by 52), and the bonding portion is not completely filled within a region surrounded by virtual planes respectively including opposing lateral surfaces of the second metal layers of the submounts adjacent to each other, a virtual plane including the first surface, and the virtual plane including the mounting surface (fig. 5 modified by Auen above, the region between layer 14 of the two substrates). Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over US 2018/0278015 (Hagimoto) in view US 2024/0006843 (Hiroki). For claim 17, Hagimoto teaches a light-emitting device (fig. 1 and 5) comprising: a submount including a substrate having an insulating property (fig. 1 and 5, labels 10, 15a and 15b; [0075]), and having a first surface (fig. 5, top of 15a) and a second surface located on a side opposite to the first surface (fig. 5, bottom of 15b), the second surface (fig. 5, bottom of 15b) being a lowermost surface of the substrate (fig. 5, labels 10, 15a and 15b) and the substrate having a shape in which a length in a second direction (fig. 1, length of 10 in vertical direction of the fig.) perpendicular to a first direction (fig. 1, direction between pins parallel to surface of 41) is greater than a width in the first direction in a plan view as seen along a direction perpendicular to the first surface (fig. 1, length of 10 is greater than width of 10), a first metal layer arranged on the first surface of the substrate (fig. 5, 13; [0045]), and a second metal layer arranged on the second surface of the substrate (fig. 5, 14; [0045]), a semiconductor laser element arranged on a side of the submount on which the first metal layer is arranged (fig. 1 and 5, 20; [0037]), wherein a width of the second metal layer is smaller than a width of the first metal layer in the first direction (fig. 5, width 14 smaller than width 13); a width of the second surface of the substrate being greater than a width of the second metal layer in the first direction (fig. 5, width of 15b > width 14). Hagimoto does not teach a difference between a length of the first metal layer and a length of the second metal layer in the second direction is smaller than a difference between the width of the first metal layer and the width of the second metal layer in the first direction. Hagimoto does teach a non-zero difference (ΔW) between the width of the first metal layer and the width of the second metal layer in the first direction (Fig. 5, [(width of 13)-(width of 14)= ΔW>0]). Hagimoto does not provide details regarding a difference (ΔL) between a length of the first metal layer and a length of the second metal layer in the second direction is smaller than a difference (ΔW) between the width of the first metal layer and the width of the second metal layer in the first direction (i.e. ΔL< ΔW). However, Hiroki teaches a submount with a first and second metal layer extending the entire length of the submount (fig. 2, 22 and 21) in order to form an electrode and a spacer for soldering and efficient thermal conductivity (fig. 2 and [0059]-[0061]). The resulting difference (ΔL) between a length of the first metal layer and a length of the second metal layer in the second direction is zero. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the length of metallization layers taught by Hiroki with Hagimoto in order to provide an electrode and a spacer for soldering and efficient thermal conductivity. The combination results in ΔL=0 as both the first and second metal layer extend along the length substrate. The combination therefore teaches ΔL< ΔW. Response to Arguments Applicant’s arguments with respect to the claims 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 Michael W Carter whose telephone number is (571)270-1872. The examiner can normally be reached M-F, 9:00-5:30. 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, MinSun Harvey can be reached at 571-272-1835. 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. /Michael Carter/ Primary Examiner, Art Unit 2828
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Prosecution Timeline

Apr 27, 2023
Application Filed
Apr 01, 2026
Non-Final Rejection mailed — §103
Jun 25, 2026
Response Filed
Jul 28, 2026
Final Rejection mailed — §103 (current)

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Prosecution Projections

3-4
Expected OA Rounds
74%
Grant Probability
90%
With Interview (+15.7%)
2y 5m (~0m remaining)
Median Time to Grant
Moderate
PTA Risk
Based on 859 resolved cases by this examiner. Grant probability derived from career allowance rate.

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