DETAILED ACTION
This office action is in response to the filing of the present application on 02/12/2024. The present application is a Continuation of 17/391,703 filed on 8/2/2021, now U.S. Patent No. 11,901,494, which is a Continuation of 15/464,596 filed on 3/21/2017, now U.S. Patent No. 11,081,625, which is a Divisional of 12/819,795 filed on 6/21/2010, now abandoned.
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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 – 8, and 10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 – 2, 4 – 8, and 12 of U.S. Patent No. 11,901,494 in view of Starkey (US 6,989,412).
The features of claim 1 of the present application are included in claim 1 of the parent U.S. Patent No. 11,901,494 except for the feature of “a b-stage epoxy phosphor film”, where the parent includes “self-supporting pre-shaped phosphor film” instead. Starkey teaches that it is well known to use b-stage epoxy phosphor films for LEDs (Column 2, Line 29). It would have been obvious to one having ordinary skill in the art at the time of the invention to use a b-stage epoxy phosphor film since such film has enough viscosity to maintain phosphor particle dispersion.
The features of claim 2 of the present application are included in claim 2 of the parent U.S. Patent No. 11,901,494. Please see regarding claim 1 of the present application above for “b-stage epoxy phosphor film”.
The features of claim 4 of the present application are included in claim 4 of the parent U.S. Patent No. 11,901,494.
The features of claim 5 of the present application are included in claim 5 of the parent U.S. Patent No. 11,901,494.
The features of claim 6 of the present application are included in claim 6 of the parent U.S. Patent No. 11,901,494.
The features of claim 7 of the present application are included in claim 7 of the parent U.S. Patent No. 11,901,494.
The features of claim 8 of the present application are included in claim 8 of the parent U.S. Patent No. 11,901,494
The features of claim 10 of the present application are included in claim 12 of the parent U.S. Patent No. 11,901,494 except for the feature of “a b-stage epoxy phosphor film”, where the parent includes “self-supporting pre-shaped phosphor film” instead. Starkey teaches that it is well known to use b-stage epoxy phosphor films for LEDs (Column 2, Line 29). It would have been obvious to one having ordinary skill in the art at the time of the invention to use a b-stage epoxy phosphor film since such film has enough viscosity to maintain phosphor particle dispersion.
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 5 – 7, 11, 13, and 15 – 17 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.
Claim 5 recites the limitation "the carrier" in the first line. There is insufficient antecedent basis for this limitation in the claim. It is possible that it was intended for claim 5 to depend on claim 4 instead of claim 1.
Claim 6 recites the limitation "the carrier" in the first line. There is insufficient antecedent basis for this limitation in the claim. It is possible that it was intended for claim 6 to depend on claim 4 instead of claim 1.
Claim 7 recites the limitation "the carrier" in the first line. There is insufficient antecedent basis for this limitation in the claim. It is possible that it was intended for claim 7 to depend on claim 4 instead of claim 1.
Claim 11 recites the limitation "the wafer" in the first line. There is insufficient antecedent basis for this limitation in the claim. It is possible that it was intended for claim 11 to depend on claim 10 instead of claim 9.
Claim 13 recites the limitation "the plurality of LEDs" in the second line. There is insufficient antecedent basis for this limitation in the claim. It is possible that it was intended for claim 13 to depend on claim 12 and 10 instead of claim 12 and claim 9.
Claim 15 recites the limitation "the carrier" in the first line and “the plurality of LEDs” in the second line. There is insufficient antecedent basis for this limitation in the claim. It is possible that it was intended for claim 15 to depend on claim 14 (and for 14 to depend on claim 10) instead of claim 9.
Claim 16 recites the limitation "the carrier" in the first line and “the plurality of LEDs assemblies” in the second line. There is insufficient antecedent basis for this limitation in the claim. It is possible that it was intended for claim 16 to depend on claim 14 (and for 14 to depend on claim 10) instead of claim 9.
Claim 17 recites the limitation "the carrier" in the first line. There is insufficient antecedent basis for this limitation in the claim. It is possible that it was intended for claim 17 to depend on claim 14 (and for 14 to depend on claim 10) instead of claim 9.
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 pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1 – 3, 8 – 13, and 18 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Park et al. (US 2009/0039762, as cited by Applicant on 2/12/2024) in view of Starkey (US 7,125,917, as cited by Applicant on 2/12/2024).
Regarding claim 1, Park et al. teaches a method for manufacturing an LED assembly, comprising (Figure 6 and 9): mounting an LED 114 to a support member 124/122 (Paragraph 0036); electrically connecting the LED 114 to the support member 124/122 with a wire bond 118 (Paragraph 0038); applying a partially cured epoxy phosphor film 110a (Paragraph 0039 and step 330, 340, and 230 of Figure 9, Paragraphs 0051 – 0053) to the wire bond 118, the LED 114 and the support member 124/122 such that the partially cured epoxy phosphor film 110a deforms around and completely surrounds the wire bond 118; and curing the partially cured epoxy phosphor film (step 240, Paragraph 0054).
Park et al. uses the term “partially cured” but not “b-stage”. The terms appear to mean the same thing in the context of Park et al. For the sake of thoroughness, Starkey is being cited for the term “b-stage”. Starkey teaches that b-stage is a type of partial curing and that b-stage curing allows for easier encapsulation without a liquid (Column 1, Line 40). It would have been obvious to one having ordinary skill in the art at the time of the invention to use b-stage epoxy for the partially cured epoxy of Park et al. since b-stage is a type of partial curing and helps suspend phosphor particles for maintenance of a uniform dispersion and allows for easier encapsulation without a liquid.
Regarding claim 2, Park et al. teaches that the partially cured phosphor film includes a matrix material 110a and a plurality of phosphor elements 112 mixed into the matrix material (Paragraphs 0038 – 0039). Please see claim 1 for b-stage.
Regarding claim 3, Park et al. teaches that the matrix material 110a is at least partially transparent to radiation emitted by the LED 114 and to radiation emitted by the plurality of phosphor elements 112 (both emit visible light and 110a is transparent, Paragraph 0038).
Regarding claim 8, Park et al. teaches that forming the partially cured epoxy phosphor film by: mixing phosphor elements with a matrix material (Paragraph 0049 – 0051); and partially curing the matrix material. See claim 1 for b-stage.
Regarding claim 9, Park et al. teaches that the partially cured epoxy phosphor film includes a plurality of layers 110a/110b, each layer including a matrix material 110a/110b and a plurality of phosphor elements 113/112 mixed into the matrix material, wherein the phosphor elements of each layer differ from the phosphor elements of every other layer (Paragraph 0037 – 0040). See claim 1 for b-stage.
Regarding claim 10, Park et al. teaches a method for manufacturing a plurality of LED assemblies, comprising (Figure 6 and 9, Paragraphs 0033 – 0042 and 0048 - 0057): mounting a plurality of LEDs 114 to a wafer (plurality indicated by step 270 in Figure 9); electrically connecting the plurality of LED to the wafer with a corresponding plurality of wire bonds 118; applying a partially cured epoxy phosphor film 110a to the plurality of wire bonds 118, the plurality of LEDs 114 and the wafer such that the partially cured epoxy phosphor film 110a deforms around and completely surrounds each of the plurality of wire bonds 118; and curing the phosphor film (step 240).
Park et al. uses the term “partially cured” but not “b-stage”. The terms appear to mean the same thing in the context of Park et al. For the sake of thoroughness, Starkey is being cited for the term “b-stage”. Starkey teaches that b-stage is a type of partial curing and that b-stage curing allows for easier encapsulation without a liquid (Column 1, Line 40). It would have been obvious to one having ordinary skill in the art at the time of the invention to use b-stage epoxy for the partially cured epoxy of Park et al. since b-stage is a type of partial curing and helps suspend phosphor particles for maintenance of a uniform dispersion and allows for easier encapsulation without a liquid.
Regarding claim 11, Park et al. teaches singulating the wafer to separate the plurality of LED assemblies from one another (step 270).
Regarding claim 12, Park et al. teaches that the phosphor film 110a includes a matrix material 110a and a plurality of phosphor elements 112 mixed into the matrix material 110a.
Regarding claim 13, Park et al. teaches that the matrix material 110a is at least partially transparent to radiation emitted by the plurality of LEDs 114 and to radiation emitted by the plurality of phosphor elements 112 (Paragraph 0039, 110a is transparent and LEDs and phosphor elements emit in visible spectrum).
Regarding claim 18, Park et al. teaches that forming the partially cured epoxy phosphor film by: mixing phosphor elements with a matrix material (Paragraph 0049 – 0051); and partially curing the matrix material. See claim 1 for b-stage.
Claims 4 – 7 and 14 – 17 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Park et al. (US 2009/0039762, as cited by Applicant on 2/12/2024) in view of Starkey (US 7,125,917, as cited by Applicant on 2/12/2024) as applied to claims 1 and 9 above, and further in view of Kamada et al. (WO 2007/034803, where related US 2010/0148196 will be used as an English translation).
Regarding claim 4, Park et al. does not teach that during application, the b-stage epoxy phosphor film is attached to a carrier having a stiffness greater than a stiffness of the b-stage epoxy phosphor film. Kamada et al. shows (Figure 6, Paragraph 0085) that an encapsulant 50c is applied to an LED 10 with wire bond 14 with the encapsulant 50c being attached to a carrier 60 having a stiffness greater than the encapsulant. It would have been obvious to one having ordinary skill in the art at the time of the invention to modify the method of Park et al. such that during application, the b-stage epoxy phosphor film of Park et al. in view of Starkey is attached to a carrier having a stiffness greater than a stiffness of the b-stage epoxy film, in the manner as taught by Kamada et al. since doing so allows one to encapsulate and attach optical elements in the same step. Please note that the carrier of Kamada et al. is stiffer than the b-stage epoxy phosphor film of claim 1.
Regarding claim 5, Park et al. does not teach that the carrier includes a lens portion, however, Kamada et al. shows (Figure 6, Paragraphs 0075, 0085) that the carrier 60 includes a lens portion 60b opposite the encapsulant 50c from the LED. It would have been obvious to one having ordinary skill in the art at the time of the invention to modify the invention of Park et al. such that the carrier includes a lens portion since doing so would allow one to manipulate the direction of the outputted light.
Regarding claim 6, Park et al. does not teach that the carrier includes a generally flat material that is transparent to radiation emitted by the LED assembly. Kamada et al. shows (Figure 6, Paragraph 0074) that the carrier 60 includes a generally flat material (surface 60a is flat) that is transparent to visible light. It would have been obvious to one having ordinary skill in the art at the time of the invention to modify the invention of Park et al. such the carrier includes a generally flat material that is transparent to visible light in the manner as taught by Kamada et al. since doing so allows one to hold encapsulant material and also manipulate outputted light.
Regarding claim 7, Park et al. does not teach that the carrier includes additional phosphor elements at a lower concentration than a concentration of phosphor elements in the phosphor film. Kamada et al. shows (Figure 1, Paragraph 0076) that a carrier can include phosphor elements (particles taught inside element 70). It would have been obvious to one having ordinary skill in the art at the time of the invention to modify the invention of Park et al. such that the carrier includes phosphor elements in the manner as taught by Kamada et al. since doing so allows one to convert more light to achieve the desired wavelength.
Park et al. in view of Kamada et al. does not teach that the concentration of phosphor elements in the carrier is lower than the concentration of phosphor elements in the phosphor film. The concentration of phosphor elements in the carrier can be of three concentrations – lower than the concentration of phosphor elements in the phosphor film, equal to the concentration of phosphor elements in the phosphor film, or more than the concentration of phosphor elements in the phosphor film. The concentration of phosphor elements affects the outputted color temperature of the light. One having ordinary skill in the art would recognize that the concentration of phosphor elements in the carrier is optimizable. It would have been obvious to one having ordinary skill in the art at the time of the invention to have the concentration of phosphor elements in the carrier be lower than the concentration of phosphor elements in the phosphor film since it has been held that it is obvious to try a finite number of identified and predictable solutions (please see MPEP 2144.05(II)(B)). Furthermore, it would have been obvious to one having ordinary skill in the art at the time of the invention to make the concentration of phosphor elements in the carrier be less than the concentration of phosphor elements in the phosphor film 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, 1955).
Regarding claim 14, Park et al. does not teach that during application, the b-stage epoxy phosphor film is attached to a carrier having a stiffness greater than a stiffness of the b-stage epoxy phosphor film. Kamada et al. shows (Figure 6, Paragraph 0085) that an encapsulant 50c is applied to an LED 10 with wire bond 14 with the encapsulant 50c being attached to a carrier 60 having a stiffness greater than the encapsulant. It would have been obvious to one having ordinary skill in the art at the time of the invention to modify the method of Park et al. such that during application, the b-stage epoxy phosphor film of Park et al. in view of Starkey is attached to a carrier having a stiffness greater than a stiffness of the b-stage epoxy film, in the manner as taught by Kamada et al. since doing so allows one to encapsulate and attach optical elements in the same step. Please note that the carrier of Kamada et al. is stiffer than the b-stage epoxy phosphor film of claim 1.
Regarding claim 15, Park et al. does not teach that the carrier includes a plurality of lens portion, however, Kamada et al. shows (Figure 6, Paragraphs 0047, 0075, 0085) that the carrier 60 includes a plurality of lens portions 60b opposite the encapsulant 50c from and corresponding to the plurality of LEDs 10. It would have been obvious to one having ordinary skill in the art at the time of the invention to modify the invention of Park et al. such that the carrier includes a plurality of lens portion in the manner taught by Kamada et al. since doing so would allow one to manipulate the direction of the outputted light.
Regarding claim 16, Park et al. does not teach that the carrier includes a generally flat material that is transparent to radiation emitted by the LED assembly. Kamada et al. shows (Figure 6, Paragraph 0074) that the carrier 60 includes a generally flat material (surface 60a is flat) that is transparent to visible light. It would have been obvious to one having ordinary skill in the art at the time of the invention to modify the invention of Park et al. such the carrier includes a generally flat material that is transparent to visible light in the manner as taught by Kamada et al. since doing so allows one to hold encapsulant material and also manipulate outputted light without decreasing light efficiency.
Regarding claim 17, Park et al. does not teach that the carrier includes additional phosphor elements at a lower concentration than a concentration of phosphor elements in the phosphor film. Kamada et al. shows (Figure 1, Paragraph 0076) that a carrier can include phosphor elements (particles taught inside element 70). It would have been obvious to one having ordinary skill in the art at the time of the invention to modify the invention of Park et al. such that the carrier includes phosphor elements in the manner as taught by Kamada et al. since doing so allows one to convert more light to achieve the desired wavelength.
Park et al. in view of Kamada et al. does not teach that the concentration of phosphor elements in the carrier is lower than the concentration of phosphor elements in the phosphor film. The concentration of phosphor elements in the carrier can be of three concentrations – lower than the concentration of phosphor elements in the phosphor film, equal to the concentration of phosphor elements in the phosphor film, or more than the concentration of phosphor elements in the phosphor film. The concentration of phosphor elements affects the outputted color temperature of the light. One having ordinary skill in the art would recognize that the concentration of phosphor elements in the carrier is optimizable. It would have been obvious to one having ordinary skill in the art at the time of the invention to have the concentration of phosphor elements in the carrier be lower than the concentration of phosphor elements in the phosphor film since it has been held that it is obvious to try a finite number of identified and predictable solutions (please see MPEP 2144.05(II)(B)). Furthermore, it would have been obvious to one having ordinary skill in the art at the time of the invention to make the concentration of phosphor elements in the carrier be less than the concentration of phosphor elements in the phosphor film 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, 1955).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Chang et al. (US 2006/0274524) also teaches encapsulating a wire bond with a b-stage substance (Paragraph 0022).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SUN MI KIM KING whose telephone number is (571)270-1431. The examiner can normally be reached Monday - Friday, 8:30 AM - 5:00 PM MST.
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, Steven Gauthier can be reached at (571) 270-0373. 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.
/SUN MI KIM KING/Examiner, Art Unit 2813
/STEVEN B GAUTHIER/Supervisory Patent Examiner, Art Unit 2813
Prosecution Insights