Prosecution Insights
Last updated: April 19, 2026
Application No. 18/390,460

OPTICAL SEMICONDUCTOR ELEMENT

Non-Final OA §103§112
Filed
Dec 20, 2023
Examiner
WOLDEGEORGIS, ERMIAS T
Art Unit
2893
Tech Center
2800 — Semiconductors & Electrical Systems
Assignee
Hamamatsu Photonics K K
OA Round
1 (Non-Final)
71%
Grant Probability
Favorable
1-2
OA Rounds
3y 0m
To Grant
83%
With Interview

Examiner Intelligence

Grants 71% — above average
71%
Career Allow Rate
526 granted / 743 resolved
+2.8% vs TC avg
Moderate +12% lift
Without
With
+11.9%
Interview Lift
resolved cases with interview
Typical timeline
3y 0m
Avg Prosecution
49 currently pending
Career history
792
Total Applications
across all art units

Statute-Specific Performance

§101
0.2%
-39.8% vs TC avg
§103
68.7%
+28.7% vs TC avg
§102
26.6%
-13.4% vs TC avg
§112
3.6%
-36.4% vs TC avg
Black line = Tech Center average estimate • Based on career data from 743 resolved cases

Office Action

§103 §112
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 . Information Disclosure Statement The information disclosure statement filed on 01/03/2024 has been acknowledged and a signed copy of the PTO-1449 is attached herein. Specification The disclosure is objected to because the foreign priority application number recited in paragraph [0001] of the specification does not match the foreign priority application number identified in the Application Data Sheet (ADS). Appropriate correction is required. Claim Rejections - 35 USC § 112 The following is a quotation of 35 U.S.C. 112(b): (b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention. The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph: The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention. Claims 1, 2, 5, 13 and 20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Regarding claims 1, 2, 5, 13 and 20, the phrase "predetermined direction" renders the claim vague because predetermined by whom? what is the criteria or based on what criteria the term “predetermined” is defined? A person of ordinary skill wouldn’t know with reasonable certainty which specific direction is the “predetermined direction”, since the wiring layer could have a measurable width in multiple directions depending on its geometry. This affects every claim that references “the predetermined direction”. 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. Claims 1-13, 15, and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over LEE (US 2020/0152691 A1, hereinafter “LEE”). In regards to claim 1, LEE discloses (See, for example, Figs. 8 and 10) An optical semiconductor element, comprising: a substrate (100, See Fig. 10B); and a first cell (LES1) and a second cell (LES2) formed on the substrate (100) , wherein the first cell (LES1) includes at least a first semiconductor layer (102), the second cell (LES2) is configured to generate or detect light (See, for example, Par [0125]), a first electrode (CVP/PT3 is arranged on the top surface of LES1) electrically connected to the first semiconductor layer (for example, 102) is arranged on a top surface (through CPD at portion PT3 is arranged on top surface (passivation layer PVT), See for example, Par [0132], [0134]-[0136]) of the first cell (LES1), the first cell (LES1) and the second cell (LES2) are electrically connected to each other by a first wiring layer (CPD includes first portion PT1, second portion PT2, and third portion PT3, See for example, Par [0136]) extending from the top surface of the first cell (LES1) to the second cell (LES2), a first insulating layer (PVT) is arranged on the top surface of the first cell (LES1), and the first electrode (CVP/PT3) is exposed to outside through an opening formed in the first insulating layer (DES, See, for example, Pars [0132], [0136]), the first wiring layer (CPD, portions PT1) is spaced apart from the first electrode (CPV) on the top surface of the first cell (LES1), and is electrically connected to the first electrode (CPV) via the first semiconductor layer (for example, 102, See Par [0153]), a portion of the first wiring layer (for example PT1) arranged on the top surface of the first cell (LES1) includes a contact region (VP5, VP6) in contact with the first semiconductor layer (102, thru CVP), and a width of the contact region (VP5, VP6) in a predetermined direction along a width direction of the first wiring layer (CPD) is equal to or greater than a width of the opening (Openings for VP5, VP6) in the predetermined direction. While LEE does not explicitly teach that the contact region width equals or exceeds the opening width, Lee teaches that the pads are designed with sufficient area for electrical contact and bonding (See, Pars [0075]-[0076], and [0080]-[0082]) to be electrically stable. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to configure the contact region width to be equal or greater than the opening width as a matter of routine design optimization to ensure reliable electrical contact and current carrying capacity. See MPEP §2144.05 (II)(A). In regards to claim 2, LEE discloses (See, for example, Figs. 8 and 10) an entire width of a portion of the first wiring layer (CPD) extending from the top surface of the first cell (LES1) to the second cell (LES2) is equal to or greater than the width of the opening in the predetermined direction (the second portion PT2 and third portion PT3 of common pad CPD have a second width W2, greater that W1. See, Par [0136], and See also Fig. 8B). In regards to claim 3, LEE discloses (See, for example, Figs. 8 and 10) the first electrode includes a planned contact region with which solder (conductive parts CP1-CP4, See, for example, Fig. 15) comes into contact when being electrically connected to an external member (MSUB). Though LEE is silent about the specific shapes of the planned contact region having a circular shape when viewed from a thickness direction of the substrate, LEE teaches VP1-VP6 are shown with circular cross-sections in top views (See, for example, Fig. 8B … shows circular through pattern openings). Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to provide a circular shape regions for uniform current distribution and compatibility with spherical solder balls, and also because changes in shape are generally recognized as a matter of design choice. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). See also §2144.04(IV)(B). In regards to claim 4, LEE discloses (See, for example, Figs. 8 and 10) the first electrode (CVP/PT3) includes a first layer (CVP) and a second layer (PT3) arranged on a side of the substrate with respect to the first layer (CVP). In regards to claim 5, LEE discloses (See, for example, Figs. 8 and 10) the width of the contact region (where PT3 contacts CVP) in the predetermined direction is equal to or greater than a width of the first layer (CVP) in the predetermined direction. In regards to claim 6, LEE discloses (See, for example, Figs. 8 and 10) the first wiring layer (CPD) has the same layer structure as the second layer (PT3) of the first electrode (CVP/PT3). In regards to claim 7, LEE discloses (See, for example, Figs. 8 and 10) the first electrode (CVP/PT3) is formed of a material containing metal (See, for example, Par [0149]) However, LEE is silent about the first electrode being formed of a material containing at least Au. It is well known in the art to use Au as electrode material for semiconductor devices due to gold’s properties of excellent conductivity, corrosion resistance, and reliable ohmic contact formation. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to form the first electrode of a material containing at least Au because it is well known in the art to use Au as electrode material for semiconductor devices due to gold’s properties of excellent conductivity, corrosion resistance, and reliable ohmic contact formation. In regards to claim 8, LEE discloses (See, for example, Figs. 8 and 10) the second cell (LES2) includes an optical layer that is an active layer for generating light or an absorption layer for absorbing light (LE1, LE2, LE3 each include active layers 104, 204, and 304) for generating light (See, Pars [0064 and [0065]), a second semiconductor layer arranged on a side opposite to the substrate with respect to the optical layer (106, 206, 306), and a third semiconductor layer (102, 202, 302) arranged on a side of the substrate with respect to the optical layer In regards to claim 9, LEE discloses (See, for example, Fig. 13A) a layer structure of the first cell (LES1) is different from a layer structure of the second cell (LES2). In regards to claim 10, LEE discloses (See, for example, Figs. 8 and 10) a layer structure of the first cell (LES1) is the same as a layer structure (See, for example, Pars [0125]-[0127]) of the second cell (LES2). In regards to claim 11, LEE discloses (See, for example, Figs. 9A) each of the first cell (LES1) and the second cell (LES2) has a mesa structure including a side surface inclined with respect to a thickness direction of the substrate (See, Mesa structures with etched portions having first width W1, second width W2, and third width W3, creating a stepped/inclined side surfaces. Figs. 9A-9C and Pars [0146]-[0147]). In regards to claim 12, LEE discloses (See, for example, Figs. 8 and 10) a second insulating layer (DES) is arranged between the first wiring layer (CPD) and a side surface of the first cell (LES1), and the second insulating layer is provided so as to reach the top surface of the first cell (LES1). In regards to claim 13, LEE discloses (See, for example, Figs. 9) a third cell formed on the substrate (additional light emitting structures can be formed , See Fig. 9C and Pars [0157]-[0159]) , wherein the third cell is configured to generate or detect light and is electrically connected to the second cell by a second wiring layer (See, Par [0159]). While LEE does not explicitly teach that the width of the contact region in the predetermined direction is larger than a width of a portion of the second wiring layer between the second cell and the third cell, Lee teaches that the pads are designed with sufficient area for electrical contact and bonding (See, Pars [0075]-[0076], and [0080]-[0082]) to be electrically stable. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to configure the contact region width to be equal or greater than the opening width as a matter of routine design optimization to ensure reliable electrical contact and current carrying capacity. See MPEP §2144.05 (II)(A). In regards to claim 15, LEE discloses (See, for example, Figs. 8 and 10) the first wiring layer (CPD including PT1, PT2, and PT3) includes an extending portion (PT2) that extends so as to surround an outer edge of the second cell (LES2) when viewed from a thickness direction of the substrate (100). In regards to claim 17, LEE discloses (See, for example, Figs. 8 and 10) the first cell (LES1) and the second cell (LES2) are spaced apart from each other by a groove portion (where DES is placed) formed in the substrate (100). In regards to claim 18, LEE discloses (See, for example, Figs. 8 and 10) the first cell (LES1) has the same shape as the second cell (LES2) when viewed from a thickness direction of the substrate (100). In regards to claim 19, LEE discloses (See, for example, Figs. 7C and 8, See also Pars [0113]-[0115]) the first electrode (CVP) includes a planned contact region (CP4 is place, See Fig. 7C, See also Pars [0086] and [0121]) with which solder (CP4) comes into contact when being electrically connected to an external member (MSUB), a third insulating layer (PVT2, See, Fig. 7C) is arranged on the first insulating layer (PVT1), and the first electrode (CVP/PT3) is exposed to outside through an opening formed in the third insulating layer (PVT2), and the planned contact region is formed by a portion of the first electrode (CVP/PT3) exposed from the opening formed in the third insulating layer (PVT2). In regards to claim 20, LEE discloses (See, for example, Figs. 8 and 10) a distance from a portion of the first wiring layer (PT1, CPD) arranged on the top surface of the first cell (LES1) to the first electrode (for example, CVP/PT3) is smaller than a width of the opening in the predetermined direction. Allowable Subject Matter Claims 14 and 16 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. Correspondence Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERMIAS T WOLDEGEORGIS whose telephone number is (571)270-5350. The examiner can normally be reached on Monday-Friday 8 am - 5 pm E.S.T.. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Britt Hanley can be reached on 571-270-3042. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /ERMIAS T WOLDEGEORGIS/Primary Examiner, Art Unit 2893
Read full office action

Prosecution Timeline

Dec 20, 2023
Application Filed
Mar 18, 2026
Non-Final Rejection — §103, §112 (current)

Precedent Cases

Applications granted by this same examiner with similar technology

Patent 12598902
Display Module and Display Device
2y 5m to grant Granted Apr 07, 2026
Patent 12593457
MULTI-STATE FERROELECTRIC-RAM WITH STACKED CAPACITORS
2y 5m to grant Granted Mar 31, 2026
Patent 12588365
DISPLAY APPARATUS AND METHOD OF MANUFACTURING THE SAME
2y 5m to grant Granted Mar 24, 2026
Patent 12588398
TOUCH DISPLAY PANEL AND PREPARATION METHOD THEREOF, AND DISPLAY APPARATUS
2y 5m to grant Granted Mar 24, 2026
Patent 12580019
SEMICONDUCTOR DEVICE AND FABRICATION METHOD THEREOF
2y 5m to grant Granted Mar 17, 2026
Study what changed to get past this examiner. Based on 5 most recent grants.

AI Strategy Recommendation

Get an AI-powered prosecution strategy using examiner precedents, rejection analysis, and claim mapping.
Powered by AI — typically takes 5-10 seconds

Prosecution Projections

1-2
Expected OA Rounds
71%
Grant Probability
83%
With Interview (+11.9%)
3y 0m
Median Time to Grant
Low
PTA Risk
Based on 743 resolved cases by this examiner. Grant probability derived from career allow rate.

Sign in with your work email

Enter your email to receive a magic link. No password needed.

Personal email addresses (Gmail, Yahoo, etc.) are not accepted.

Free tier: 3 strategy analyses per month