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 .
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.
Election/Restrictions
Applicant’s election of Species I drawn to Figure 1 and Sub-Species II drawn to Figures 12A – 12E, corresponding claims 1, 2 and 4 – 21 in the reply filed on July 16, 2026 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)).
Response to Amendment
The examiner acknowledges the adding claim 21 and canceling claim 3 by the amendment submitted by the applicant(s) filed on July 16, 2026. Claims 1, 2 and 4 – 21 are pending in this application.
Priority
The priority has been considered by the examiner. Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
Information Disclosure Statement
The references cited in the Information Disclosure Statement (IDS) submitted on September 14, 2023 and July 16, 2026. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered and accepted by the examiner.
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.
Claims 1, 4 and 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Samonji et al. (US 20210159663).
PNG
media_image1.png
337
348
media_image1.png
Greyscale
PNG
media_image2.png
370
562
media_image2.png
Greyscale
Regarding claim 1, Samonji disclose a semiconductor laser light-emitting device comprising:
a mounting base (see Annotation Figure 7 and 9, character 30, Abstract, paragraphs [0072 and 0096] and the reference called “metal substrate (stem)”);
a submount (see Annotation Figures 7 and 9, Character 20, Abstract and paragraphs [0072, 0094 and 0099]) disposed above the mounting base (see Annotation Figures 7 and 9, character 30);
a connecting member (see Annotation Figures 7 and 9, Character 42, Abstract, paragraphs [0072 and 0099] and the reference called “second bonding material”) that connects the mounting base (see Annotation Figures 7 and 9, Character 30) and the submount (see Annotation Figures 7 and 9, Character 20) and is composed of a porous metal material (see Figures 6A and 6B, paragraphs [0072, 0075 - 0077] The second bonding material made of AuSn solder. AuSn (gold–tin) can be engineered (e.g. leveraging AuSn’s high thermal conductivity while maintaining low density) into a porous material by combining its inherent intermetallic structure with controlled fabrication techniques that introduce open voids or nano/micro-scale features.) and
a semiconductor laser (see Annotation Figures 7 and 9, Character 10, Abstract and paragraphs [0072, 0095 and 0099]) disposed above the submount (see Annotation Figures 7 and 9. Character 20), wherein the submount (see Annotation Figures 7 and 9, Character 20) includes a front face (see Annotation Figure 7 Character 20a’) that is a face on a light emission side of the semiconductor laser (see Annotation Figures 7 and 9, Character 10),
the connecting member (see Annotation Figure 9, Character 42) includes a peripheral portion (see Annotation Figure 9, Character 42a”) that continuously covers at least part of the front face (see Annotation Figure 7, Character 20a’) of the submount (see Annotation Figures 7 and 9, Character 20) and a peripheral area (see Annotation Figures 7 and 9, Character 42b”) of a first area of a top surface of the mounting base (see Annotation Figures 7 and 9, Character 30), the first area corresponding to the submount (see Annotation Figures 7 and 9, Character 20), and
a top surface of the peripheral portion (see Annotation Figure 9, Character 42b”) is straight or recessed (see Annotation Figure 9) at a cross section that intersects the front face of the submount (see Annotation Figures 7 and 9, Character 20a’) and the top surface of the mounting base (see Annotation Figures 7 and 9).
Regarding claim 4, Samonji discloses the semiconductor laser (see Annotation Figures 7 and 9, Character 10) includes a front end face (see Annotation Figures 7 and 9, Character 10a’) located farther in a light emission direction of the semiconductor laser (see Annotation Figures 7 and 9, Character 10) from the front face of the submount (see Annotation Figure 7, Character 20a’).
Regarding clam 13, Samonji discloses the top surface of the peripheral portion (see Annotation Figures 7 and 9, Character 42a”) includes a first recessed portion (see Annotation Figure 9) and a second recessed portion (see Annotation Figure 9) at a cross section that intersects the front face of the submount (see Annotation Figures 7 and 9, Character 20) and the top surface of the mounting base (see Annotation Figures 7 and 9, Character 30).
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 2, 6 – 9, 15 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Samonji et al. (US 20210159663) in view of Hiroshi et al. (JP 2003309314, Applicant submitted in the IDS, filed on July 16, 2026).
PNG
media_image3.png
146
344
media_image3.png
Greyscale
Regarding claim 2, Samonji discloses the claimed invention except for an angle between the top surface of the mounting base, and the top surface of the peripheral portion is 45 degrees or less. Hiroshi teaches an angle (see Figure 13) between the top surface of the mounting base (see Figure 13, character 54, the reference called “lead frame”), and the top surface of the peripheral portion (see Figure 13, character 53, the reference called “Ag paste”) is 45 degrees or less. However, it is well known in the art to apply and/or modify the angle between the top surface of the mounting base, and the top surface of the peripheral portion is 45 degrees or less as discloses by Hiroshi in (see Figure 13 and paragraphs [0003 – 0009]). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filling date of the claimed invention was to apply and/or modify the angle between the top surface of the mounting base and the top surface of the peripheral portion is 45 degrees or less as suggested to the device of Samonji, it could be used to provide better support between the base substrate and the submount, as well as stability for the device and/or it could help with heat distribution, 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.
In addition, the selection of an angle between the top surface of the mounting base and the top surface of the peripheral portion, it’s obvious because it is a matter of determining optimum process conditions by routine experimentation with a limited number of species of result effective variables. These claims are prima facie obvious without showing that the claimed ranges achieve unexpected results relative to the prior art range. In re Woodruff, 16 USPQ2d 1935, 1937 (Fed. Cir. 1990). See also In re Huang, 40 USPQ2d 1685, 1688 (Fed. Cir. 1996) (claimed ranges or a result effective variable, which do not overlap the prior art ranges, are unpatentable unless they produce a new and unexpected result which is different in kind and not merely in degree from the results of the prior art). See also In re Boesch, 205 USPQ 215 (CCPA) (discovery of optimum value of result effective variable in known process is ordinarily within skill or art) and In re Aller, 105 USPQ 233 (CCPA 1995) (selection of optimum ranges within prior art general conditions is obvious).
Note that the specification contains no disclosure of either the critical nature of the claimed [an angle between the top surface of the mounting base and the top surface of the peripheral portion is 45 degrees or less] or any unexpected results arising therefrom. Where patentability is said to be based upon particular chosen [an angle between the top surface of the mounting base and the top surface of the peripheral portion is 45 degrees or less] or upon another variable recited in a claim, the Applicant must show that the chosen [an angle between the top surface of the mounting base and the top surface of the peripheral portion is 45 degrees or less] are critical. In re Woodruf, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990).
Notwithstanding, it would have been an obvious matter of design choice bounded by well-known manufacturing constraints and ascertainable by routine experimentation and optimization to choose these particular dimensions because applicant has not disclosed that the dimensions are for a particular unobvious purpose, produce an unexpected result, or are otherwise critical, and it appears prima facie that the process would possess utility using another dimension. Indeed, it has been held that mere dimensional limitations are prima facie obvious absent a disclosure that the limitations are for a particular unobvious purpose, produce an unexpected result, or are otherwise critical. See, for example, In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955); In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976); Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984); In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
Regarding claim 6, Samonji and Hiroshi, Hitoshi discloses the top surface of the peripheral portion (see Figure 13, character 53) decreases in height with increasing distance from the submount (see Figure 13, character 52).
Regarding claim 7, Samonji discloses the claimed invention except for a distance from a bottom surface of the submount to a position at which the top surface of the peripheral portion contacts the front face of the submount is largest below an optical axis of the semiconductor laser. Hitoshi teaches a distance from a bottom surface of the submount (see Figure 13, character 52) to a position at which the top surface of the peripheral portion (see Figure 13, character 53) contacts the front face of the submount is largest below an optical axis of the semiconductor laser (see Figure 13, character 51). However, it is well known in the art to apply and/or modify the distance from a bottom surface of the submount to a position at which the top surface of the peripheral portion contacts the front face of the submount is largest below an optical axis of the semiconductor laser as discloses by Hiroshi in (see Figure 13 and paragraphs [0003 – 0009]). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filling date of the claimed invention was to apply and/or modify the distance from a bottom surface of the submount to a position at which the top surface of the peripheral portion contacts the front face of the submount is largest below an optical axis of the semiconductor laser as suggested to the device of Samonji, it could be used to provide better support between the base substrate and the submount, as well as stability for the device and/or it could help with heat distribution,, 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.
In addition, the selection of distance from a bottom surface of the submount to a position at which the top surface of the peripheral portion contacts the front face of the submount, it’s obvious because it is a matter of determining optimum process conditions by routine experimentation with a limited number of species of result effective variables. These claims are prima facie obvious without showing that the claimed ranges achieve unexpected results relative to the prior art range. In re Woodruff, 16 USPQ2d 1935, 1937 (Fed. Cir. 1990). See also In re Huang, 40 USPQ2d 1685, 1688 (Fed. Cir. 1996) (claimed ranges or a result effective variable, which do not overlap the prior art ranges, are unpatentable unless they produce a new and unexpected result which is different in kind and not merely in degree from the results of the prior art). See also In re Boesch, 205 USPQ 215 (CCPA) (discovery of optimum value of result effective variable in known process is ordinarily within skill or art) and In re Aller, 105 USPQ 233 (CCPA 1995) (selection of optimum ranges within prior art general conditions is obvious).
Note that the specification contains no disclosure of either the critical nature of the claimed [distance from a bottom surface of the submount to a position at which the top surface of the peripheral portion contacts the front face of the submount is largest below an optical axis of the semiconductor laser] or any unexpected results arising therefrom. Where patentability is said to be based upon particular chosen [distance from a bottom surface of the submount to a position at which the top surface of the peripheral portion contacts the front face of the submount is largest below an optical axis of the semiconductor laser] or upon another variable recited in a claim, the Applicant must show that the chosen [distance from a bottom surface of the submount to a position at which the top surface of the peripheral portion contacts the front face of the submount is largest below an optical axis of the semiconductor laser] are critical. In re Woodruf, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990).
Notwithstanding, it would have been an obvious matter of design choice bounded by well-known manufacturing constraints and ascertainable by routine experimentation and optimization to choose these particular dimensions because applicant has not disclosed that the dimensions are for a particular unobvious purpose, produce an unexpected result, or are otherwise critical, and it appears prima facie that the process would possess utility using another dimension. Indeed, it has been held that mere dimensional limitations are prima facie obvious absent a disclosure that the limitations are for a particular unobvious purpose, produce an unexpected result, or are otherwise critical. See, for example, In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955); In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976); Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984); In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
Regarding claim 8, Samonji discloses the claimed invention except for the peripheral portion covers a region that includes a straight line forming an angle of 45 degrees or less with a direction downward from the semiconductor laser, among straight lines that extend in an in-plane direction of the front face of the submount from a part at which the semiconductor laser contacts the front face of the submount. Hitoshi teaches the peripheral portion (see Figure 13, character 53) covers a region that includes a straight line forming an angle of 45 degrees or less (see Figure 13) with a direction downward from the semiconductor laser (see Figure 13, character 51), among straight lines that extend in an in-plane direction of the front face of the submount (see Figure 13, character 52) from a part at which the semiconductor laser (see Figure 13, character 51) contacts the front face of the submount (see Figure 13, character 52). However, it is well known in the art to apply and/or modify the peripheral portion covers a region that includes a straight line forming an angle of 45 degrees or less with a direction downward from the semiconductor laser, among straight lines that extend in an in-plane direction of the front face of the submount from a part at which the semiconductor laser contacts the front face of the submount as discloses by Hiroshi in (see Figure 13 and paragraphs [0003 – 0009]). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filling date of the claimed invention was to apply and/or modify the peripheral portion covers a region that includes a straight line forming an angle of 45 degrees or less with a direction downward from the semiconductor laser, among straight lines that extend in an in-plane direction of the front face of the submount from a part at which the semiconductor laser contacts the front face of the submount as suggested to the device of Samonji, it could be used to provide better support between the base substrate and the submount, as well as stability for the device, and/or it could help with heat distribution, 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.
In addition, the selection of the peripheral portion covers a region that includes a straight line forming an angle with a direction downward from the semiconductor laser, , it’s obvious because it is a matter of determining optimum process conditions by routine experimentation with a limited number of species of result effective variables. These claims are prima facie obvious without showing that the claimed ranges achieve unexpected results relative to the prior art range. In re Woodruff, 16 USPQ2d 1935, 1937 (Fed. Cir. 1990). See also In re Huang, 40 USPQ2d 1685, 1688 (Fed. Cir. 1996) (claimed ranges or a result effective variable, which do not overlap the prior art ranges, are unpatentable unless they produce a new and unexpected result which is different in kind and not merely in degree from the results of the prior art). See also In re Boesch, 205 USPQ 215 (CCPA) (discovery of optimum value of result effective variable in known process is ordinarily within skill or art) and In re Aller, 105 USPQ 233 (CCPA 1995) (selection of optimum ranges within prior art general conditions is obvious).
Note that the specification contains no disclosure of either the critical nature of the claimed [the peripheral portion covers a region that includes a straight line forming an angle of 45 degrees or less with a direction downward from the semiconductor laser, among straight lines that extend in an in-plane direction of the front face of the submount from a part at which the semiconductor laser contacts the front face of the submount] or any unexpected results arising therefrom. Where patentability is said to be based upon particular chosen [the peripheral portion covers a region that includes a straight line forming an angle of 45 degrees or less with a direction downward from the semiconductor laser, among straight lines that extend in an in-plane direction of the front face of the submount from a part at which the semiconductor laser contacts the front face of the submount] or upon another variable recited in a claim, the Applicant must show that the chosen [the peripheral portion covers a region that includes a straight line forming an angle of 45 degrees or less with a direction downward from the semiconductor laser, among straight lines that extend in an in-plane direction of the front face of the submount from a part at which the semiconductor laser contacts the front face of the submount] are critical. In re Woodruf, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990).
Notwithstanding, it would have been an obvious matter of design choice bounded by well-known manufacturing constraints and ascertainable by routine experimentation and optimization to choose these particular dimensions because applicant has not disclosed that the dimensions are for a particular unobvious purpose, produce an unexpected result, or are otherwise critical, and it appears prima facie that the process would possess utility using another dimension. Indeed, it has been held that mere dimensional limitations are prima facie obvious absent a disclosure that the limitations are for a particular unobvious purpose, produce an unexpected result, or are otherwise critical. See, for example, In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955); In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976); Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984); In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
Regarding claim 9, Samonji discloses the submount includes a rear face (see Annotation Figure 7, Character 20b’) that is a face on a rear side of the submount relative to the front face (see Annotation Figure 7, Character 20a’).
Samonji discloses the claimed invention except for a bottom surface of the submount to a position at which the top surface of the peripheral portion contacts the front face of the submount is greater than a distance from the bottom surface of the submount to a position at which the top surface of the peripheral portion contacts the rear face of the submount.. Hiroshi teaches a distance from a bottom surface of the submount (see Figure 13, character 52) to a position at which the top surface of the peripheral portion (see Figure 13, character 53) contacts the front face of the submount (see Figure 13, character 52) is greater than a distance from the bottom surface of the submount (see Figure 13, character 52) to a position at which the top surface of the peripheral portion (see Figure 13, character 53) contacts the rear face of the submount (see Figure 13, character 52). However, it is well known in the art to apply and/or modify the bottom surface of the submount to a position at which the top surface of the peripheral portion contacts the front face of the submount is greater than a distance from the bottom surface of the submount to a position at which the top surface of the peripheral portion contacts the rear face of the submount as discloses by Hiroshi in (see Figure 13 and paragraphs [0003 – 0009]). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filling date of the claimed invention was to apply and/or modify the bottom surface of the submount to a position at which the top surface of the peripheral portion contacts the front face of the submount is greater than a distance from the bottom surface of the submount to a position at which the top surface of the peripheral portion contacts the rear face of the submount as suggested to the device of Samonji, it could be used to provide better support between the base substrate and the submount, as well as stability for the device and/or it could help with heat distribution, 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.
In addition, the selection of distance, it’s obvious because it is a matter of determining optimum process conditions by routine experimentation with a limited number of species of result effective variables. These claims are prima facie obvious without showing that the claimed ranges achieve unexpected results relative to the prior art range. In re Woodruff, 16 USPQ2d 1935, 1937 (Fed. Cir. 1990). See also In re Huang, 40 USPQ2d 1685, 1688 (Fed. Cir. 1996) (claimed ranges or a result effective variable, which do not overlap the prior art ranges, are unpatentable unless they produce a new and unexpected result which is different in kind and not merely in degree from the results of the prior art). See also In re Boesch, 205 USPQ 215 (CCPA) (discovery of optimum value of result effective variable in known process is ordinarily within skill or art) and In re Aller, 105 USPQ 233 (CCPA 1995) (selection of optimum ranges within prior art general conditions is obvious).
Note that the specification contains no disclosure of either the critical nature of the claimed [bottom surface of the submount to a position at which the top surface of the peripheral portion contacts the front face of the submount is greater than a distance from the bottom surface of the submount to a position at which the top surface of the peripheral portion contacts the rear face of the submount] or any unexpected results arising therefrom. Where patentability is said to be based upon particular chosen [bottom surface of the submount to a position at which the top surface of the peripheral portion contacts the front face of the submount is greater than a distance from the bottom surface of the submount to a position at which the top surface of the peripheral portion contacts the rear face of the submount] or upon another variable recited in a claim, the Applicant must show that the chosen [bottom surface of the submount to a position at which the top surface of the peripheral portion contacts the front face of the submount is greater than a distance from the bottom surface of the submount to a position at which the top surface of the peripheral portion contacts the rear face of the submount] are critical. In re Woodruf, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990).
Notwithstanding, it would have been an obvious matter of design choice bounded by well-known manufacturing constraints and ascertainable by routine experimentation and optimization to choose these particular dimensions because applicant has not disclosed that the dimensions are for a particular unobvious purpose, produce an unexpected result, or are otherwise critical, and it appears prima facie that the process would possess utility using another dimension. Indeed, it has been held that mere dimensional limitations are prima facie obvious absent a disclosure that the limitations are for a particular unobvious purpose, produce an unexpected result, or are otherwise critical. See, for example, In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955); In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976); Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984); In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
Regarding claim 15, a semiconductor laser light-emitting device comprising:
a mounting base (see Annotation Figure 7 and 9, character 30, Abstract, paragraphs [0072 and 0096] and the reference called “metal substrate (stem)”);
a submount (see Annotation Figures 7 and 9, Character 20, Abstract and paragraphs [0072, 0094 and 0099]) disposed above the mounting base (see Annotation Figures 7 and 9, character 30);
a connecting member (see Annotation Figures 7 and 9, Character 42, Abstract, paragraphs [0072 and 0099] and the reference called “second bonding material”) that connects the mounting base (see Annotation Figures 7 and 9, Character 30) and the submount (see Annotation Figures 7 and 9, Character 20) and is composed of a porous metal material (see Figures 6A and 6B, paragraphs [0072, 0075 - 0077] The second bonding material made of AuSn solder. AuSn (gold–tin) can be engineered into a porous material by combining its inherent intermetallic structure with controlled fabrication techniques that introduce open voids or nano/micro-scale features.) and
a semiconductor laser (see Annotation Figures 7 and 9, Character 10, Abstract and paragraphs [0072, 0095 and 0099]) disposed above the submount (see Annotation Figures 7 and 9. Character 20), wherein the submount (see Annotation Figures 7 and 9, Character 20) includes a front face (see Annotation Figure 7 Character 20a’) that is a face on a light emission side of the semiconductor laser (see Annotation Figures 7 and 9, Character 10),
the connecting member (see Annotation Figure 9, Character 42) includes a peripheral portion (see Annotation Figure 9, Character 42a”) that continuously covers at least part of the front face (see Annotation Figure 7, Character 20a’) of the submount (see Annotation Figures 7 and 9, Character 20) and a peripheral area (see Annotation Figures 7 and 9, Character 42b”) of a first area of a top surface of the mounting base (see Annotation Figures 7 and 9, Character 30), the first area corresponding to the submount (see Annotation Figures 7 and 9, Character 20).
Samonji discloses the claimed invention except for a distance from a bottom surface of the submount to a position at which the top surface of the peripheral portion contacts the front face of the submount is largest below an optical axis of the semiconductor laser. Hitoshi teaches a distance from a bottom surface of the submount (see Figure 13, character 52) to a position at which the top surface of the peripheral portion (see Figure 13, character 53) contacts the front face of the submount is largest below an optical axis of the semiconductor laser (see Figure 13, character 51). However, it is well known in the art to apply and/or modify the distance from a bottom surface of the submount to a position at which the top surface of the peripheral portion contacts the front face of the submount is largest below an optical axis of the semiconductor laser as discloses by Hiroshi in (see Figure 13 and paragraphs [0003 – 0009]). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filling date of the claimed invention was to apply and/or modify the distance from a bottom surface of the submount to a position at which the top surface of the peripheral portion contacts the front face of the submount is largest below an optical axis of the semiconductor laser as suggested to the device of Samonji, it could be used to provide better support between the base substrate and the submount, as well as stability for the device and/or it could help with heat distribution,, 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.
In addition, the selection of distance from a bottom surface of the submount to a position at which the top surface of the peripheral portion contacts the front face of the submount, it’s obvious because it is a matter of determining optimum process conditions by routine experimentation with a limited number of species of result effective variables. These claims are prima facie obvious without showing that the claimed ranges achieve unexpected results relative to the prior art range. In re Woodruff, 16 USPQ2d 1935, 1937 (Fed. Cir. 1990). See also In re Huang, 40 USPQ2d 1685, 1688 (Fed. Cir. 1996) (claimed ranges or a result effective variable, which do not overlap the prior art ranges, are unpatentable unless they produce a new and unexpected result which is different in kind and not merely in degree from the results of the prior art). See also In re Boesch, 205 USPQ 215 (CCPA) (discovery of optimum value of result effective variable in known process is ordinarily within skill or art) and In re Aller, 105 USPQ 233 (CCPA 1995) (selection of optimum ranges within prior art general conditions is obvious).
Note that the specification contains no disclosure of either the critical nature of the claimed [distance from a bottom surface of the submount to a position at which the top surface of the peripheral portion contacts the front face of the submount is largest below an optical axis of the semiconductor laser] or any unexpected results arising therefrom. Where patentability is said to be based upon particular chosen [distance from a bottom surface of the submount to a position at which the top surface of the peripheral portion contacts the front face of the submount is largest below an optical axis of the semiconductor laser] or upon another variable recited in a claim, the Applicant must show that the chosen [distance from a bottom surface of the submount to a position at which the top surface of the peripheral portion contacts the front face of the submount is largest below an optical axis of the semiconductor laser] are critical. In re Woodruf, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990).
Notwithstanding, it would have been an obvious matter of design choice bounded by well-known manufacturing constraints and ascertainable by routine experimentation and optimization to choose these particular dimensions because applicant has not disclosed that the dimensions are for a particular unobvious purpose, produce an unexpected result, or are otherwise critical, and it appears prima facie that the process would possess utility using another dimension. Indeed, it has been held that mere dimensional limitations are prima facie obvious absent a disclosure that the limitations are for a particular unobvious purpose, produce an unexpected result, or are otherwise critical. See, for example, In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955); In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976); Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984); In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
Regarding claim 16, Samonji discloses the claimed invention except for the peripheral portion covers a region that includes a straight line forming an angle of 45 degrees or less with a direction downward from the semiconductor laser, among straight lines that extend in an in-plane direction of the front face of the submount from a part at which the semiconductor laser contacts the front face of the submount. Hitoshi teaches the peripheral portion (see Figure 13, character 53) covers a region that includes a straight line forming an angle of 45 degrees or less (see Figure 13) with a direction downward from the semiconductor laser (see Figure 13, character 51), among straight lines that extend in an in-plane direction of the front face of the submount (see Figure 13, character 52) from a part at which the semiconductor laser (see Figure 13, character 51) contacts the front face of the submount (see Figure 13, character 52). However, it is well known in the art to apply and/or modify the peripheral portion covers a region that includes a straight line forming an angle of 45 degrees or less with a direction downward from the semiconductor laser, among straight lines that extend in an in-plane direction of the front face of the submount from a part at which the semiconductor laser contacts the front face of the submount as discloses by Hiroshi in (see Figure 13 and paragraphs [0003 – 0009]). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filling date of the claimed invention was to apply and/or modify the peripheral portion covers a region that includes a straight line forming an angle of 45 degrees or less with a direction downward from the semiconductor laser, among straight lines that extend in an in-plane direction of the front face of the submount from a part at which the semiconductor laser contacts the front face of the submount as suggested to the device of Samonji, it could be used to provide better support between the base substrate and the submount, as well as stability for the device, and/or it could help with heat distribution, 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.
In addition, the selection of the peripheral portion covers a region that includes a straight line forming an angle with a direction downward from the semiconductor laser, , it’s obvious because it is a matter of determining optimum process conditions by routine experimentation with a limited number of species of result effective variables. These claims are prima facie obvious without showing that the claimed ranges achieve unexpected results relative to the prior art range. In re Woodruff, 16 USPQ2d 1935, 1937 (Fed. Cir. 1990). See also In re Huang, 40 USPQ2d 1685, 1688 (Fed. Cir. 1996) (claimed ranges or a result effective variable, which do not overlap the prior art ranges, are unpatentable unless they produce a new and unexpected result which is different in kind and not merely in degree from the results of the prior art). See also In re Boesch, 205 USPQ 215 (CCPA) (discovery of optimum value of result effective variable in known process is ordinarily within skill or art) and In re Aller, 105 USPQ 233 (CCPA 1995) (selection of optimum ranges within prior art general conditions is obvious).
Note that the specification contains no disclosure of either the critical nature of the claimed [the peripheral portion covers a region that includes a straight line forming an angle of 45 degrees or less with a direction downward from the semiconductor laser, among straight lines that extend in an in-plane direction of the front face of the submount from a part at which the semiconductor laser contacts the front face of the submount] or any unexpected results arising therefrom. Where patentability is said to be based upon particular chosen [the peripheral portion covers a region that includes a straight line forming an angle of 45 degrees or less with a direction downward from the semiconductor laser, among straight lines that extend in an in-plane direction of the front face of the submount from a part at which the semiconductor laser contacts the front face of the submount] or upon another variable recited in a claim, the Applicant must show that the chosen [the peripheral portion covers a region that includes a straight line forming an angle of 45 degrees or less with a direction downward from the semiconductor laser, among straight lines that extend in an in-plane direction of the front face of the submount from a part at which the semiconductor laser contacts the front face of the submount] are critical. In re Woodruf, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990).
Notwithstanding, it would have been an obvious matter of design choice bounded by well-known manufacturing constraints and ascertainable by routine experimentation and optimization to choose these particular dimensions because applicant has not disclosed that the dimensions are for a particular unobvious purpose, produce an unexpected result, or are otherwise critical, and it appears prima facie that the process would possess utility using another dimension. Indeed, it has been held that mere dimensional limitations are prima facie obvious absent a disclosure that the limitations are for a particular unobvious purpose, produce an unexpected result, or are otherwise critical. See, for example, In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955); In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976); Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984); In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
Claims 5, 10 – 12 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Samonji et al. (US 20210159663)
Regarding claim 5, Samonji discloses the claimed invention except for a distance from a bottom surface of the submount to a position at which at least part of the top surface of the peripheral portion contacts the front face of the submount is from 40% to 100%, inclusive, of a distance from a bottom surface of the submount to a top surface of the submount. It would have been obvious to a person having ordinary skill in the art before the effective filling date of the claimed invention was to apply and/or modify the distance from a bottom surface of the submount to a position at which at least part of the top surface of the peripheral portion contacts the front face of the submount is from 40% to 100%, inclusive, of a distance from a bottom surface of the submount to a top surface of the submount to the device of Samonji, to provide stability for the device and/or it could help with heat distribution, 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.
In addition, the selection of distance from a bottom surface of the submount to a position at which at least part of the top surface of the peripheral portion contacts the front face of the submount, it’s obvious because it is a matter of determining optimum process conditions by routine experimentation with a limited number of species of result effective variables. These claims are prima facie obvious without showing that the claimed ranges achieve unexpected results relative to the prior art range. In re Woodruff, 16 USPQ2d 1935, 1937 (Fed. Cir. 1990). See also In re Huang, 40 USPQ2d 1685, 1688 (Fed. Cir. 1996) (claimed ranges or a result effective variable, which do not overlap the prior art ranges, are unpatentable unless they produce a new and unexpected result which is different in kind and not merely in degree from the results of the prior art). See also In re Boesch, 205 USPQ 215 (CCPA) (discovery of optimum value of result effective variable in known process is ordinarily within skill or art) and In re Aller, 105 USPQ 233 (CCPA 1995) (selection of optimum ranges within prior art general conditions is obvious).
Note that the specification contains no disclosure of either the critical nature of the claimed [a distance from a bottom surface of the submount to a position at which at least part of the top surface of the peripheral portion contacts the front face of the submount is from 40% to 100%, inclusive, of a distance from a bottom surface of the submount to a top surface of the submount] or any unexpected results arising therefrom. Where patentability is said to be based upon particular chosen [a distance from a bottom surface of the submount to a position at which at least part of the top surface of the peripheral portion contacts the front face of the submount is from 40% to 100%, inclusive, of a distance from a bottom surface of the submount to a top surface of the submount] or upon another variable recited in a claim, the Applicant must show that the chosen [a distance from a bottom surface of the submount to a position at which at least part of the top surface of the peripheral portion contacts the front face of the submount is from 40% to 100%, inclusive, of a distance from a bottom surface of the submount to a top surface of the submount] are critical. In re Woodruf, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990).
Regarding claim 10, Samonji discloses the claimed invention except for a thermal conductivity of the connecting member is greater than or equal to a thermal conductivity of the submount. It would have been obvious to a person having ordinary skill in the art before the effective filling date of the claimed invention was to apply and/or modify the thermal conductivity of the connecting member is greater than or equal to a thermal conductivity of the submount to the device of Samonji, in order to transfers heat more quickly from the connecting member to the submount, 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.
In addition, the selection of PLACE WHAT IS TO BE OPTIMIZED, it’s obvious because it is a matter of determining optimum process conditions by routine experimentation with a limited number of species of result effective variables. These claims are prima facie obvious without showing that the claimed ranges achieve unexpected results relative to the prior art range. In re Woodruff, 16 USPQ2d 1935, 1937 (Fed. Cir. 1990). See also In re Huang, 40 USPQ2d 1685, 1688 (Fed. Cir. 1996) (claimed ranges or a result effective variable, which do not overlap the prior art ranges, are unpatentable unless they produce a new and unexpected result which is different in kind and not merely in degree from the results of the prior art). See also In re Boesch, 205 USPQ 215 (CCPA) (discovery of optimum value of result effective variable in known process is ordinarily within skill or art) and In re Aller, 105 USPQ 233 (CCPA 1995) (selection of optimum ranges within prior art general conditions is obvious).
Note that the specification contains no disclosure of either the critical nature of the claimed [dimensions] or any unexpected results arising therefrom. Where patentability is said to be based upon particular chosen [dimensions] or upon another variable recited in a claim, the Applicant must show that the chosen [dimensions] are critical. In re Woodruf, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990).
Regarding claims 11 and 12, Samonji discloses the claimed invention except for at a cross section of the connecting member, an atomic ratio of a metal in an area other than voids in the connecting member is 95 atomic % or more and a void ratio of the connecting member is less than 30%. It would have been obvious to a person having ordinary skill in the art before the effective filling date of the claimed invention was to apply and/or modify at a cross section of the connecting member, an atomic ratio of a metal in an area other than voids in the connecting member is 95 atomic % or more and a void ratio of the connecting member is less than 30% to the device of Samonji, as the atomic proportion of the metal increases or decreases, the thermal conductivity of the solder may increase or decrease therefore, heat generated at laser can be efficiently conducted to mounting substrate via submount and solder, 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.
In addition, the selection of atomic ratio, it’s obvious because it is a matter of determining optimum process conditions by routine experimentation with a limited number of species of result effective variables. These claims are prima facie obvious without showing that the claimed ranges achieve unexpected results relative to the prior art range. In re Woodruff, 16 USPQ2d 1935, 1937 (Fed. Cir. 1990). See also In re Huang, 40 USPQ2d 1685, 1688 (Fed. Cir. 1996) (claimed ranges or a result effective variable, which do not overlap the prior art ranges, are unpatentable unless they produce a new and unexpected result which is different in kind and not merely in degree from the results of the prior art). See also In re Boesch, 205 USPQ 215 (CCPA) (discovery of optimum value of result effective variable in known process is ordinarily within skill or art) and In re Aller, 105 USPQ 233 (CCPA 1995) (selection of optimum ranges within prior art general conditions is obvious).
Note that the specification contains no disclosure of either the critical nature of the claimed [at a cross section of the connecting member, an atomic ratio of a metal in an area other than voids in the connecting member is 95 atomic % or more and a void ratio of the connecting member is less than 30%] or any unexpected results arising therefrom. Where patentability is said to be based upon particular chosen [at a cross section of the connecting member, an atomic ratio of a metal in an area other than voids in the connecting member is 95 atomic % or more and a void ratio of the connecting member is less than 30%] or upon another variable recited in a claim, the Applicant must show that the chosen [at a cross section of the connecting member, an atomic ratio of a metal in an area other than voids in the connecting member is 95 atomic % or more and a void ratio of the connecting member is less than 30%] are critical. In re Woodruf, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990).
Regarding claim 14, Samonji discloses for voids are formed in the peripheral portion (see Figures 6A and 6B, paragraphs [0072, 0075 - 0077] The second bonding material made of AuSn solder. AuSn (gold–tin) can be engineered into a porous material by combining its inherent intermetallic structure with controlled fabrication techniques that introduce open voids or nano/micro-scale features.).
Samonji discloses the claimed invention except for the peripheral portion includes a first region and a second region having an average size of the voids smaller than an average size of the voids in the first region. It would have been obvious to a person having ordinary skill in the art before the effective filling date of the claimed invention was to apply and/or modify the peripheral portion includes a first region and a second region having an average size of the voids smaller than an average size of the voids in the first region to the device of Samonji, 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.
In addition, the selection of sizes of the voids, it’s obvious because it is a matter of determining optimum process conditions by routine experimentation with a limited number of species of result effective variables. These claims are prima facie obvious without showing that the claimed ranges achieve unexpected results relative to the prior art range. In re Woodruff, 16 USPQ2d 1935, 1937 (Fed. Cir. 1990). See also In re Huang, 40 USPQ2d 1685, 1688 (Fed. Cir. 1996) (claimed ranges or a result effective variable, which do not overlap the prior art ranges, are unpatentable unless they produce a new and unexpected result which is different in kind and not merely in degree from the results of the prior art). See also In re Boesch, 205 USPQ 215 (CCPA) (discovery of optimum value of result effective variable in known process is ordinarily within skill or art) and In re Aller, 105 USPQ 233 (CCPA 1995) (selection of optimum ranges within prior art general conditions is obvious).
Note that the specification contains no disclosure of either the critical nature of the claimed [the peripheral portion includes a first region and a second region having an average size of the voids smaller than an average size of the voids in the first region] or any unexpected results arising therefrom. Where patentability is said to be based upon particular chosen [the peripheral portion includes a first region and a second region having an average size of the voids smaller than an average size of the voids in the first region] or upon another variable recited in a claim, the Applicant must show that the chosen [the peripheral portion includes a first region and a second region having an average size of the voids smaller than an average size of the voids in the first region] are critical. In re Woodruf, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990).
Allowable Subject Matter
Claim 21 is 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. Claim 21 recites a semiconductor laser light-emitting device structure including the specific structure limitation of the peripheral portion includes a first region and a second region, the first region includes first metal particles having a first particle size, the second region includes second metal particles having a second particle size smaller than the first particle size, and the second region covers at least part of the first region and is bonded to the front face of the submount, which is neither anticipated or neither disclosed nor suggested in any piece of available prior art, which is neither anticipated nor obvious over the prior art of record.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Claims 17 – 20 are allowed.
The following is an examiner’s statement of reasons for allowance: Claim 17 recites a method of manufacturing a semiconductor laser light emitting device including the specific steps limitation of applying first metal particles having a first particle size on a top surface of a mounting base; disposing the submount on the first metal particles and disposing the first metal particles so as to contact a front face of the submount, the front face being a face on a light emission side of the semiconductor laser; and applying second metal particles having a second particle size on the first metal particles, which is neither anticipated or neither disclosed nor suggested in any piece of available prior art, which is neither anticipated nor obvious over the prior art of record.
The closest art: Samonji et al. (US 20210159663) disclose Semiconductor light-emitting apparatus includes substrate, submount above substrate, and semiconductor laser above submount. Semiconductor laser and submount are bonded to each other with first bonding material. Substrate and submount are bonded to each other with second bonding material. Submount has first region and second region near substrate, first region being a region on which spacer is disposed, and second region being a region without spacer. Submount is bonded to substrate by covering at least a portion of second region with second bonding material.
JP 2003309314 discloses the integrated optical element comprises at least a light- emitting element adhered onto a lead frame via a sub-mount. In this element, the sub-mount is adhered to the lead frame via a solver embedded in the recess formed on the frame. The method for manufacturing the same comprises the steps of forming the recess on the lead frame, supplying the solder to the recess, mounting the sub-mount on the solder, and completing the adhesion of the solder through heat treating.
The prior art failed to teach or suggest applying first metal particles having a first particle size on a top surface of a mounting base; disposing the submount on the first metal particles and disposing the first metal particles so as to contact a front face of the submount, the front face being a face on a light emission side of the semiconductor laser; and applying second metal particles having a second particle size on the first metal particles.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Delma R. Forde whose telephone number is (571)272-1940. The examiner can normally be reached M - TH 7:00 AM - 4:00 PM.
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, MinSun O Harvey can be reached at 571-272-1835. 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.
/Delma R Forde/Examiner, Art Unit 2828
/XINNING(Tom) NIU/Primary Examiner, Art Unit 2828
Prosecution Insights