DETAILED ACTION
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 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.
Response to Amendment/Restriction
Applicant’s election without traverse of Group II, Species I, Embodiment 1: Fig. 1B (parallel 15), Sub 1: Fig. 1C (coplanar 13 and P), and Claims 13-16, 18, and 20-23 in the reply filed on March 23, 2026 is acknowledged. Thus, Claims 1-12, 17, and 19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention. Election was made without traverse in the reply filed on March 23, 2026.
Specification
The title of the invention is broad and not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
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 13-16, 18, and 20-23 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. As to claim 13, the limitation “the light-emitting part arrangement region” and “the one or more first wire-connection parts” lacks sufficient antecedent basis. Thus, the limitation renders the claims indefinite and clarification is required.
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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 13-14, 18, and 20-21 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication No. 2021/0005590 A1 to Ishii et al. (“Ishii”) in view of JP 2021-009898 A to Suzuki (“Suzuki”). As to claim 13, although Ishii discloses a light-emitting device comprising: a light source comprising: a support substrate (80) having a first upper face and comprising, on the first upper face, a plurality of first terminal parts (7) disposed in the light-emitting part arrangement region, and one or more first connection parts (outside 80), a plurality of light-emitting parts (20) disposed in the light-emitting part arrangement region and electrically connected to the first terminal parts (7), each of the plurality of light-emitting parts (20) having an emission face, a resin member (52) disposed on the first upper face between the light-emitting part arrangement region and the one or more first wire-connection parts in a top view, and a light-shielding member (40) disposed in contact with the resin member (52) while the first wire-connection parts and the emission faces of the light-emitting parts (20) are exposed from the light-shielding member (40) in the top view (Fig. 1, Fig. 13, ¶ 0082, ¶ 0085, ¶ 0090, ¶ 0091, ¶ 0093, ¶ 0101, ¶ 0102, ¶ 0103, ¶ 0105, ¶ 0111, ¶ 0115, ¶ 0235), Ishii does not further disclose a control unit having a second upper face, the control unit comprising, on the second upper face, a first region where the light source is disposed, and one or more second wire-connection parts disposed in a second region other than the first region; a first wire connecting the first wire-connection parts and the second wire-connection parts; and a first cover member covering the first wire while the emission faces of the light-emitting parts are exposed from the first cover member. However, Suzuki does disclose a control unit (20) having a second upper face, the control unit (20) comprising, on the second upper face, a first region where the light source is disposed, and one or more second wire-connection parts (21, 22) disposed in a second region other than the first region; a first wire (31, 32) connecting the first wire-connection parts (11, 12) and the second wire-connection parts (21, 22); and a first cover member (40) covering the first wire (31, 32) while the emission faces of the light-emitting parts (1) are exposed from the first cover member (40) (See Fig. 2, Fig. 3, ¶ 0011-¶ 0017, ¶ 0028, ¶ 0029, ¶ 0033). In view of the teaching of Suzuki, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the teaching of Ishii to have a control unit having a second upper face, the control unit comprising, on the second upper face, a first region where the light source is disposed, and one or more second wire-connection parts disposed in a second region other than the first region; a first wire connecting the first wire-connection parts and the second wire-connection parts; and a first cover member covering the first wire while the emission faces of the light-emitting parts are exposed from the first cover member because the control unit further provides driver terminals to control the light source via the first and second wire-connection parts and the first wire protected by the first cover member that improves light extraction (See ¶ 0014, ¶ 0017, ¶ 0029). As to claim 14, Ishii further discloses wherein a height of the resin member (52) is greater than heights of the emission faces of the light-emitting parts (20) (See Fig. 13). As to claim 18, Ishii in view of Suzuki further discloses, wherein: the support substrate (80/10) comprises a plurality of the first wire-connection parts (11, 12) arranged in columns with the light-emitting part arrangement region interposed between the first wire-connection parts (11, 12) in the top view; and the resin member (52/41) is disposed along a columnar arrangement direction of the first terminal parts (7) (See Ishii Fig. 13 and Suzuki Fig. 2, Fig. 3). As to claim 20, Ishii in view of Suzuki further discloses wherein the first cover member (40) is in contact with the resin member (52/41) between an upper edge and a lower edge of the resin member (52/41) (See Suzuki Fig. 3). As to claim 21, Ishii in view of Suzuki discloses further comprising a second cover member (42) that covers the second wire-connection parts (21, 22) (See Suzuki Fig. 3).
Claim(s) 15-16 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication No. 2021/0005590 A1 to Ishii et al. (“Ishii”) and JP 2021-009898 A to Suzuki (“Suzuki”) as applied to claim 14 above, and further in view of U.S. Patent Application Publication No. 2019/0165224 A1 to Tokunaga (“Tokunaga”). The teachings of Ishii and Suzuki have been discussed above.
As to claim 15, although Ishii and Suzuki do not further disclose wherein a Young’s modulus of a resin material of the resin member is lower than a Young’s modulus of a resin material of the light-shielding member, Tokunaga does disclose wherein a Young’s modulus of a resin material of the resin member (40) is lower than a Young’s modulus of a resin material of the light-shielding member (30) (See Fig. 3, ¶ 0042, ¶ 0046) (Notes: the resin materials are met as recited in claim 16). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the teaching of Ishii to have wherein a Young’s modulus of a resin material of the resin member is lower than a Young’s modulus of a resin material of the light-shielding member because the light-shielding member contains phenyl silicone further serves as a bonding member to the wavelength conversion plate and the resin member contains dimethyl silicone further provides reflectivity (See Tokunaga ¶ 0042, ¶ 0046). As to claim 16, Ishii in view of Tokunaga further discloses wherein: the resin material of the resin member (52/40) contains dimethyl silicone; and the resin material of the light-shielding member (40/30) contains phenyl silicone (See Tokunaga ¶ 0042, ¶ 0046).
Claim(s) 22-23 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication No. 2021/0005590 A1 to Ishii et al. (“Ishii”) and JP 2021-009898 A to Suzuki (“Suzuki”) as applied to claim 14 above, and further in view of U.S. Patent Application Publication No. 2006/0197212 A1 to Ishiyama (“Ishiyama”). The teachings of Ishii and Suzuki have been discussed above. As to claim 22, although Ishii and Suzuki disclose a light-emitting module comprising: a light-emitting device according to claim 13 (See Ishii and Suzuki), Ishii and Suzuki do not further disclose a mounting substrate having a third upper face on which the light-emitting device is disposed, the mounting substrate comprising one or more third wire-connection parts disposed on a region of the third upper face other than the region where the light-emitting device is disposed; and a second wire connecting the second wire-connection parts of the control unit and the third wire-connection parts of the mounting substrate. However, Ishiyama does disclose a mounting substrate (provided with Vss) having a third upper face on which the device (A8) is disposed, the mounting substrate (provided with Vss) comprising one or more third wire-connection parts (Vss) disposed on a region of the third upper face other than the region where the device (A8) is disposed; and a second wire (61) connecting the second wire-connection parts (on B8) of the control unit (B8) and the third wire-connection parts (Vss) of the mounting substrate (provided with Vss) (See Fig. 14, ¶ 0158-¶ 0162). In view of the teachings of Ishii, Suzuki, and Ishiyama, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings of Ishii and Suzuki to have a mounting substrate having a third upper face on which the light-emitting device is disposed, the mounting substrate comprising one or more third wire-connection parts disposed on a region of the third upper face other than the region where the light-emitting device is disposed; and a second wire connecting the second wire-connection parts of the control unit and the third wire-connection parts of the mounting substrate because the EMI is suppressed and prevented to obtain high reliability (See Ishiyama ¶ 0162). As to claim 23, Ishii, Suzuki, and Ishiyama disclose further comprising a third cover member (40) that covers the third wire-connection parts (Vss) (See Suzuki Fig. 3 and Ishiyama Fig. 14) such that the second wire is well protected.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID CHEN whose telephone number is (571)270-7438. The examiner can normally be reached M-F 12-6.
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, JOSHUA BENITEZ can be reached at (571) 270-1435. 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.
/DAVID CHEN/Primary Examiner, Art Unit 2815
Prosecution Insights