DETAILED ACTION
Election/Restrictions
Applicant’s election of Group I and Species 4 (figure 5), corresponding to claims 1-6 and 9-17, in the reply filed on 5/19/26 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
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.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-2, 4-6, and 9-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,477,870, hereafter referred to as the patent. Although the claims at issue are not identical, they are not patentably distinct from each other because the current claims are broader.
Regarding claim 1, the patent claims a surface mount technology (SMT) optoelectronic device, comprising:
a substrate comprising electrical terminals that facilitate attachment and electrical coupling of the SMT optoelectronic device to a printed circuit board (column 7, lines 47-49);
a housing comprising an opaque material and a cavity, wherein the substrate is positioned at a bottom portion of the cavity, and wherein a top portion of the housing comprises a group of slot openings (column 7, lines 50-53);
at least one optoelectronic chip that is electrically connected to the electrical terminals, and mounted, within the cavity, to the substrate (column 7, lines 56-58); and
an encapsulant material that is translucent or transparent and that has been included in the cavity and the slot openings (column 7, lines 59-61).
With respect to claim 2, the patent (claim 2) claims the housing has been formed, via an applied defined pressure and an applied defined heat, from a pellet-based material.
As to claim 4, the patent (claim 3) claims the encapsulant material has been formed, via a sheet lamination process or via compression molding, in the cavity and the slot openings.
In re claim 5 the patent (claim 4) claims the encapsulant material comprises a sheet of pliable material that has been hardened, via a curing process corresponding to at least one of an applied heat or an applied pressure, during the sheet lamination process.
Concerning claim 6, the patent (claim 5) claims at least a portion of the slot openings are diagonal and located at corners of the housing.
Pertaining to claim 9, the patent (claim 6) claims the encapsulant material is within a defined tolerance of a preferred distance from the top portion of the housing.
In claim 10, the patent (claim 7) claims the slot openings correspond to a defined slot depth from the top potion of the housing, and wherein the slot openings correspond to a defined slot width.
Regarding claim 11, the patent (claim 8) claims the defined slot depth is within a defined tolerance of a preferred slot depth that is one half of a depth of the housing.
With respect to claim 12, the patent (claim 9) claims the defined slot depth is within a defined tolerance of a preferred slot depth that is one fifth of a depth of the housing.
As to claim 13, the patent (claim 10) claims the defined slot width is within a defined tolerance of a preferred slot width that is one-tenth of a millimeter.
In re claim 14. The SMT optoelectronic device of claim 10, wherein the defined slot width is within a defined tolerance of a preferred slot width that is five-tenths of a millimeter.
Concerning claim 15, the patent (claim 11) claims the at least one optoelectronic chip comprises a photoemitter or a photodetector.
Pertaining to claim 16, the patent (claim 13) claims the slot openings facilitate a reduction of an effect, on the SMT optoelectronic device, of an external strain that has been applied to the SMT optoelectronic device.
In claim 17, the patent (claim 14) claims the external strain comprises at least one of a mechanical shock that has been applied to the SMT optoelectronic device or a thermal shock that has been applied to the SMT optoelectronic device.
Claim 3 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,477,870, in view of Rittner et al., US 7,789,573.
Regarding claim 3, the patent fails to claim opposite sides of at least two opposite sides of the housing comprise respective stepped or beveled edges to facilitate a reduction in a light emitting surface area corresponding to the cavity.
Park (see marked up figure 2A below) teaches opposite sides of at least two opposite sides of the housing 20 comprise respective stepped or beveled edges to facilitate a reduction in a light emitting surface area corresponding to the cavity.
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It would have been obvious to one of ordinary skill in the art at the time of the invention to use the beveled edge of Park in the invention of the patent because Park teaches the equivalence of a straight edge (figure 1) with a beveled edge (figure 2A). The substitution of one known equivalent technique for another may be obvious even if the prior art does not expressly suggest the substitution (Ex parte Novak 16 USPQ 2d 2041 (BPAI 1989); In re Mostovych 144 USPQ 38 (CCPA 1964); In re Leshin 125 USPQ 416 (CCPA 1960); Graver Tank & Manufacturing Co. V. Linde Air Products Co. 85 USPQ 328 (USSC 1950).
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.
Claim(s) 1, 2, 4, 5, and 9-17 is/are rejected under 35 U.S.C. 102a1 as being clearly anticipated by Park et al., US 8,525,213.
With respect to claim 1, Park (figures 9 & 7) teaches surface mount technology (SMT) optoelectronic device, comprising:
a substrate 31/32 comprising electrical terminals 31/32 that facilitate attachment and electrical coupling of the SMT optoelectronic device 20 to a printed circuit board (figure 22:201);
a housing 10 comprising an opaque material (column 3, lines 52-57-wherein at least PPA is opaque) and a cavity 15, wherein the substrate 31/32 is positioned at a bottom portion of the cavity 15, and wherein a top portion of the housing 10 comprises a group of slot openings 54;
at least one optoelectronic chip 20 that is electrically connected (using unlabeled wires) to the electrical terminals 31/31, and mounted, within the cavity 15, to the substrate 31/32; and
an encapsulant material 40 that is translucent or transparent (column 5, lines 48-52) and that has been included in the cavity 15 and the slot openings 54.
With respect to claim 2, though Park fails to teach the housing has been formed, via an applied defined pressure and an applied defined heat, from a pellet-based material, this is an impermissible process limitation in a product claim. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)
As to claim 4, though Park fails to teach the encapsulant material has been formed, via a sheet lamination process or via compression molding, in the cavity and the slot openings, this is an impermissible process limitation in a product claim. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)
In re claim 5, though Park fails to teach the encapsulant material comprises a sheet of pliable material that has been hardened, via a curing process corresponding to at least one of an applied heat or an applied pressure, during the sheet lamination process this is an impermissible process limitation in a product claim. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)
Concerning claim 9, Park (figure 10) teaches the encapsulant material 40 is within a defined tolerance of a preferred distance from the top portion of the housing 10.
Pertaining to claim 10, Park (figure 9 & 7, 8 & 10) the slot openings 54 correspond to a defined slot depth from the top potion of the housing, and wherein the slot openings 54 correspond to a defined slot width.
In claim 11, though Park fails to teach the defined slot depth is within a defined tolerance of a preferred slot depth that is one half of a depth of the housing, it would have been obvious to one ordinary skill in the art at the time of the invention to optimize the depth through routine experimentation (MPEP 2144.05).
Regarding claim 12, though Park fails to teach the defined slot depth is within a defined tolerance of a preferred slot depth that is one fifth of a depth of the housing, it would have been obvious to one ordinary skill in the art at the time of the invention to optimize the depth through routine experimentation (MPEP 2144.05).
With respect to claim 13, though Park fails to teach the defined slot width is within a defined tolerance of a preferred slot width that is one-tenth of a millimeter, it would have been obvious to one ordinary skill in the art at the time of the invention to optimize the width through routine experimentation (MPEP 2144.05).
As to claim 14, though Park fails to teach the defined slot width is within a defined tolerance of a preferred slot width that is five-tenths of a millimeter, it would have been obvious to one ordinary skill in the art at the time of the invention to optimize the width through routine experimentation (MPEP 2144.05).
In re claim 15, Park (column 4, lines 65-67) teaches the at least one optoelectronic chip comprises a photoemitter or a photodetector.
Concerning claim 16, though Park fails to specifically teach the slot openings facilitate a reduction of an effect, on the SMT optoelectronic device, of an external strain that has been applied to the SMT optoelectronic device, this is an inherent side effect of the structure of Park. in the housing would inherently reinforce the overall device. "[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art's functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. V. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessary make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). In In re Crish, 393 F.3d 1253, 1258, 73 USPQ2d 1364, 1368 (Fed. Cir. 2004), the court held that the claimed promoter sequence obtained by sequencing a prior art plasmid that was not previously sequenced was anticipated by the prior art plasmid which necessarily possessed the same DNA sequence as the claimed oligonucleotides. The court stated that "just as the discovery of properties of a known material does not make it novel, the identification and characterization of a prior art material also does not make it novel." (MPEP 2112 I)
Pertaining to claim 17, though Park fails to specifically teach the external strain comprises at least one of a mechanical shock that has been applied to the SMT optoelectronic device or a thermal shock that has been applied to the SMT optoelectronic device, this is an inherent side effect of the structure of Park. in the housing would inherently reinforce the overall device. "[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art's functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. V. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessary make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). In In re Crish, 393 F.3d 1253, 1258, 73 USPQ2d 1364, 1368 (Fed. Cir. 2004), the court held that the claimed promoter sequence obtained by sequencing a prior art plasmid that was not previously sequenced was anticipated by the prior art plasmid which necessarily possessed the same DNA sequence as the claimed oligonucleotides. The court stated that "just as the discovery of properties of a known material does not make it novel, the identification and characterization of a prior art material also does not make it novel." (MPEP 2112 I)
Claim(s) 3 and 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Park et al., US 8,525,213, as applied to claim 1 above, and further in view of Rittner et al., US 7,789,573.
In claim 3, the patent fails to claim opposite sides of at least two opposite sides of the housing comprise respective stepped or beveled edges to facilitate a reduction in a light emitting surface area corresponding to the cavity.
Park (see marked up figure 2A above) teaches opposite sides of at least two opposite sides of the housing 20 comprise respective stepped or beveled edges to facilitate a reduction in a light emitting surface area corresponding to the cavity.
It would have been obvious to one of ordinary skill in the art at the time of the invention to use the beveled edge of Park in the invention of the patent because Park teaches the equivalence of a straight edge (figure 1) with a beveled edge (figure 2A). The substitution of one known equivalent technique for another may be obvious even if the prior art does not expressly suggest the substitution (Ex parte Novak 16 USPQ 2d 2041 (BPAI 1989); In re Mostovych 144 USPQ 38 (CCPA 1964); In re Leshin 125 USPQ 416 (CCPA 1960); Graver Tank & Manufacturing Co. V. Linde Air Products Co. 85 USPQ 328 (USSC 1950).
Regarding claim 6, though Park fails to teach at least a portion of the slot openings are diagonal and located at corners of the housing, it would have been obvious to one ordinary skill in the art at the time of the invention to optimize the location of the slot openings through routine experimentation (MPEP 2144.05).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID A ZARNEKE whose telephone number is (571)272-1937. The examiner can normally be reached M-F.
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/DAVID A ZARNEKE/Primary Examiner, Art Unit 2891 6/26/26
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