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 .
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
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Claims 11, 14, 16, 18, 19, 21 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1/5, 7, 11, 12, 15, 16 of copending Application No. 18791226 (hereafter ‘226) in view of Takayasu (JP 2020-126948).
With respect to claim 11, ‘226 teaches a light-emitting device (claim 1) comprising: a substrate formed of a metal material and having an upper surface (claim 1), the upper surface defining a recessed portion having a bottom surface (claim 1), the bottom surface including a planar region (claim 1, “flat”); a semiconductor laser element disposed on the bottom surface of the recessed portion and configured to emit a laser beam (claim 1); and a frame body formed of ceramics and surrounding the semiconductor laser element (claim 1). ‘226 does not specify a mirror member disposed on the bottom surface of the recessed portion and configured to reflect the laser beam to change a traveling direction of the laser beam in a direction away from the upper surface of the substrate, with the mirror member surrounded by the frame. Takayasu teaches a similar device (fig.1-8) which includes a metal substrate (fig.7 #10) with a recessed surface (fig.8 #101 recessed from #104), a ceramic frame (fig.5 #20), a laser (fig.3 #30) on a flat portion of the substrate, a mirror member (fig.3 #50) disposed on the bottom surface of the recessed portion and configured to reflect the laser beam to change a traveling direction of the laser beam in a direction away from the upper surface of the substrate (based on 45 degree angle), with the mirror member surrounded by the frame (fig.3/4). It would have been obvious to one of ordinary skill in the art before the filing of the instant application to further make use of a mirror member for changing a direction of the laser light and to surround the mirror with the frame in the device of ‘226 as demonstrated by Takayasu in order to control the path of the beam and to protect the mirror.
Claim 14 is taught by claim 7 of ‘226.
Claim 16 is taught by claim 11 of ‘226.
Claim 18 is taught by claim 12 of ‘226.
Claim 19 is taught by claim 15 of ‘226.
Claim 21 is taught by claim 16 of ‘226.
This is a provisional nonstatutory double patenting rejection.
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.
Claim(s) 1, 2, 4-7, 10-14, 18-21 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Takayasu (JP 2020-126948, Applicant submitted prior art; note Espacenet translation, provided by Applicant, used for citations).
With respect to claim 1, Takayasu discloses a method for manufacturing ([0008, 9], ‘forming’, ‘joining’, etc.) a base portion for a light-emitting device, the method comprising: providing a base body (fig.7 #10), the base body including a substrate formed of a metal material ([0020]), the substrate having an upper surface (fig.7 top of #104), and a frame body (fig.5 #20) formed of ceramics ([0025]), the frame body being located around the upper surface of the substrate (fig.3/4); and forming a recessed portion in the upper surface of the substrate (fig.7 portion #101 recessed relative to #104), the recessed portion having a bottom surface including a planar region (fig.1 #101 is planar, [0017]).
With respect to claim 2, Takayasu discloses the bottom surface of the recessed portion and a lower surface (fig.9 #102) of the substrate are parallel to each other (fig.9 #101 parallel to #102).
With respect to claim 4, Takayasu discloses the providing of the base body includes bonding the substrate to the frame body via an inorganic bonding member ([0036], e.g. AuSn).
With respect to claim 5, Takayasu discloses manufacturing a base portion (fig.7 #10) by the method for manufacturing a base portion according to claim 1 (see claim 1); and disposing a semiconductor laser element (fig.3 #30) on the bottom surface of the recessed portion (fig.3/4).
With respect to claim 6, Takayasu discloses disposing a mirror member (fig.3 #50) on the bottom surface of the recessed portion (fig.3/4).
With respect to claim 7, Takayasu discloses disposing at least one additional semiconductor laser element on the bottom surface of the recessed portion (fig.3/4 multiple #30s).
With respect to claim 10, Takayasu discloses the providing of the base body includes providing the substrate and the frame body such that a distance from the upper surface of the substrate to a lower surface of the substrate is longer than a distance from the upper surface of the substrate to a lower surface of the frame body (see annotated figure below; distance from #104 to a lower interior surface of frame body is zero, distance from #104 to #102 is more than zero).
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With respect to claim 11, Takayasu discloses a light-emitting device (abstract) comprising: a substrate (fig.7 #10) formed of a metal material ([0020]) and having an upper surface (fig.7 #104), the upper surface defining a recessed portion (fig.7 #101 recessed relative to #104) having a bottom surface, the bottom surface including a planar region ([0017]); a semiconductor laser element (fig.3 #30) disposed on the bottom surface of the recessed portion (fig.3/4) and configured to emit a laser beam ([0026]); a mirror member (fig.3 #50) disposed on the bottom surface of the recessed portion (fig.3/4) and configured to reflect the laser beam ([0054]) to change a traveling direction of the laser beam in a direction away from the upper surface of the substrate (based on 45 degree angle); and a frame body (fig.5 #20) formed of ceramics ([0025]) and surrounding the semiconductor laser element and the mirror member (fig.3/4).
With respect to claim 12, Takayasu discloses the substrate has a planar lower surface located opposite to the upper surface (fig.9 #102).
With respect to claim 13, Takayasu discloses at least one additional semiconductor laser element disposed on the bottom surface of the recessed portion (fig.3/4 multiple #30s).
With respect to claim 14, Takayasu discloses the bottom surface of the recessed portion and a lower surface of the substrate are parallel to each other (fig.9 #101 parallel with #102).
With respect to claim 18, Takayasu discloses a distance from the upper surface of the substrate to a lower surface of the substrate is longer than a distance from the upper surface of the substrate to a lower surface of the frame body (see annotated figure below; distance from #104 to a lower interior surface of frame body is zero, distance from #104 to #102 is more than zero).
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With respect to claim 19, Takayasu discloses the frame body defines an opening portion extending from an upper surface to a lower surface (fig.5/6 interior opening), the frame body has a step provided on a lower surface side of an inner surface in the opening portion (fig.6 #204), and a peripheral region of the upper surface of the substrate is bonded to the step of the frame body (fig.9 #204 bonded to #104; [0036]).
With respect to claim 20, Takayasu discloses a distance from the upper surface to a lower surface of the substrate is longer than a distance from the upper surface of the substrate to a lower surface of the frame body (see annotated figure below; distance from #104 to a lower interior surface of frame body is zero, distance from #104 to #102 is more than zero).
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With respect to claim 21, Takayasu discloses the peripheral region of the upper surface of the substrate is bonded to the step of the frame body via an inorganic bonding member (fig.9; [0036] e.g. AuSn).
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.
Claim(s) 3, 8, 9, 16, 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Takayasu in view of Kitagawa et al. (US 2021/0359492).
With respect to claim 3, Takayasu teaches the method outlined above, including the bottom surface of the recessed portion has a first bottom surface (fig.3/4 portion under lasers) and a second bottom surface (fig.3/4 portion under reflectors), with the first bottom surface and second bottom surface being parallel with the lower surface of the substrate (as seen in fig.9), but does not teach a distance between the second bottom surface and a lower surface of the substrate is shorter than a distance between the first bottom surface and the lower surface of the substrate. Kitagawa teaches related laser and mirror packaging (fig.14/15) which includes a distance between a second bottom surface (fig.14 area under mirror #303) and a lower surface of a substrate (fig.3 lower surface of #310) is shorter than a distance between a first bottom surface (fig.14 area under laser #302) and the lower surface of the substrate, and the first bottom surface, the second bottom surface, and the lower surface of the substrate are parallel to one another (as seen in fig.14). It would have been obvious to one of ordinary skill in the art before the filing of the instant application to adapt the device of Takayasu such that a distance between the second bottom surface and a lower surface of the substrate is shorter than a distance between the first bottom surface and the lower surface of the substrate as demonstrated by Kitagawa in order to control heat flow within the packaging in a desired manner and away from the optics (Kitagawa, [0176]).
With respect to claim 8, Takayasu, as modified, further teaches manufacturing a base portion by the method for manufacturing a base portion according to claim 3 (see claim 3); disposing a semiconductor laser element (fig.3 #30) on the first bottom surface of the recessed portion (fig.3/4); and disposing a mirror member (fig.3#50) on the second bottom surface of the recessed portion (fig.3/4).
With respect to claim 9, Takayasu, as modified, further teaches disposing at least one additional semiconductor laser element (fig.3 multiple #30s) on the first bottom surface of the recessed portion (fig.3/4), and disposing at least one additional mirror member (fig.3 multiple #50s) on the second bottom surface of the recessed portion (fig.3/4).
With respect to claims 16 and 17, Takayasu teaches the method outlined above, including the bottom surface of the recessed portion has a first bottom surface supporting the laser element (fig.3/4 portion under lasers) and a second bottom surface supporting the mirror member (fig.3/4 portion under reflectors), with the first bottom surface and second bottom surface being parallel with each other and planar (as seen in fig.9), but does not teach a distance between the second bottom surface and a lower surface of the substrate is shorter than a distance between the first bottom surface and the lower surface of the substrate. Kitagawa teaches related laser and mirror packaging (fig.14/15) which includes a distance between a second bottom surface (fig.14 area under mirror #303) and a lower surface of a substrate (fig.3 lower surface of #310) is shorter than a distance between a first bottom surface (fig.14 area under laser #302) and the lower surface of the substrate, and the first bottom surface and the second bottom surface are parallel to one another and planar (as seen in fig.14). It would have been obvious to one of ordinary skill in the art before the filing of the instant application to adapt the device of Takayasu such that a distance between the second bottom surface and a lower surface of the substrate is shorter than a distance between the first bottom surface and the lower surface of the substrate as demonstrated by Kitagawa in order to control heat flow within the packaging in a desired manner and away from the optics (Kitagawa, [0176]).
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Takayasu in view of Ishidu et al. (US 2006/0198162).
With respect to claim 15, Takayasu teaches the device outlined above, but does not teach flatness of the bottom surface of the recessed portion is 10 μm or less, and flatness of the lower surface of the substrate is 50 μm or less. Ishidu teaches a mounting member for a light emitter (fig.1) which includes the flatness of the mounting surface to be no more than 5um, preferably 1um ([0046]). It would have been obvious to one of ordinary skill in the art before the filing of the instant application to adapt Takayasu such that the flatness of the bottom surface of the recessed portion (a mounting surface for the lasers and mirrors) and the flatness of the lower surface of the substrate (which is mounted to substrate #2, [0016]) to be near 1um as demonstrated by Ishidu in order to avoid forming gaps to facilitate ease of mounting/alignment and to improve heat flow away from the device (Ishidu, [0046]).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 2022/0271496, 2022/0376469, 2022/0320823 are found to read on most of the claimed features.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TOD THOMAS VAN ROY whose telephone number is (571)272-8447. The examiner can normally be reached M-F: 8AM-430PM.
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/TOD T VAN ROY/ Primary Examiner, Art Unit 2828
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