DETAILED ACTION
This Office action responds to Applicant’s invention filed on 10/24/2023.
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 is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for a 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.
Amendment Status
The present Office action is made with all previously suggested amendments being fully considered. Accordingly, pending in this Office action are claims 1-19.
Information Disclosure Statement (IDS)
Acknowledgement is made of Applicant’s Information Disclosure Statement (IDS) form PTO-1449. The IDS has been considered.
Specification Objection
The specification has been checked to the extend necessary to determine the presence of possible minor errors. However, the Applicant’s cooperation is requested in correcting any errors of which Applicant may become aware in the specification.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim 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.
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.
Initially, and with respect to claim 1, note that a limitation in a claim with respect to the manner in which a claimed device is intended to be used does not differentiate the claimed device from a prior-art device, if the prior-art device teaches all structural limitations in the claim and the limitations are found to be inherent in the prior-art device. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997); Ex Parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). See Hewlett-Packard Co. v. Bausch & Lomb Inc. and the related case law cited therein which makes it clear that it is the final product per se which must be determined in a device claim, and not the patentability of its functions (909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990)). As stated in Best,
Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Note that the applicant has burden of proof once the examiner establishes a sound basis for believing that the products of the applicant and the prior art are the same. See In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Claims 1-6, and 16-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by or, in alternative, under 35 U.S.C. 103 as obvious over by Seko (US 2011/0235355).
Regarding claim 1, Seko shows (see, e.g., Seko: fig. 2) all aspects of the instant invention including a composite encapsulation material 5, comprising:
(A) a polymer glue (see, e.g., Seko: par. [0072], element of silicone resin)
(B) a viscosity modifier (see, e.g., Seko: par. [0052], element of silica, titanium oxide, or alumina)
wherein:
The viscosity modifier (B) has a functional group capable of forming a non-covalent integration with the polymer glue material (A) (see MPEP 2112.01(II) and MPEP 2114.I/2114.II; also see Wu reference as an additional paper)
At room temperature, a ratio (log(η0)/log(η∞)) of a logarithm of a viscosity ((log(η0)) of the composite encapsulation material at a shear rate of 1 × 10-3 s-1 to a logarithm of a viscosity (log(η∞)) of the composite encapsulation material at a shear rate of 1 × 102 s-1 is 1.1-2.5 (see MPEP 2112.01(II) and MPEP 2114.I/2114.II)
Also, Seko does not explicitly state that the viscosity modifier (B) has a functional group capable of forming a non-covalent integration with the polymer glue material (A). Seko, however, teaches that a polymer glue (see, e.g., Seko: par. [0072], element of silicone resin), and a viscosity modifier (see, e.g., Seko: par. [0052], element of silica, titanium oxide, or alumina). As such, one of ordinary skills in the art would understand that there will be non-covalent bonds such as hydrogen bonds between the silicon resin chemical structure and the silica chemical structure, titanium oxide chemical structure or alumina chemical structure (also see Wu reference as an additional paper).
Accordingly, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to have the step of non-covalent bonds in the encapsulant chemical structure of Seko, as taught by Seko himself, to enable an encapsulating material for an optical device.
Regarding claim 2, Seko shows (see, e.g., Seko: fig. 2) that the composite encapsulation material has a tangled net structure (see, e.g., Seko: par. [0072], element of silicone resin, and (see, e.g., Seko: par. [0052], element of silica; for example, the siloxane bonds from the silicon resin) are linked non-covalently with the silica structure, producing a tangled net structure) (see MPEP 2112.01(II)).
Regarding claim 3, Seko shows (see, e.g., Seko: fig. 2) that the non-covalent interaction comprises a van der Waals force, a hydrogen bond, an ionic bond, a hydrophobic force, or a combination thereof (see, e.g., Seko: par. [0072], element of silicone resin, and (see, e.g., Seko: par. [0052], element of silica) (see MPEP 2112.01(II); also see Wu reference as an additional paper).
Regarding claim 4, Seko shows (see, e.g., Seko: fig. 2) that the polymer glue material (A) comprises a siloxane bond, a carbon-hydrogen bond, or a combination thereof (see, e.g., Seko: par. [0072], element of silicone resin).
Regarding claim 5, Seko shows (see, e.g., Seko: fig. 2) that the polymer glue material (A) comprises a silicone resin, an epoxy resin, a fluororesin, or a combination thereof (see, e.g., Seko: par. [0072], element of silicone resin).
Regarding claim 6, Seko shows (see, e.g., Seko: fig. 2) that the functional group the functional group of the viscosity modifier (B) comprises -OH, =NH, -NH2, halogen, hydrocarbon chain, or a combination thereof (see, e.g., Seko: par. [0052], element of silica; also see Wu reference as an additional paper).
Regarding claim 16, Seko shows (see, e.g., Seko: fig. 2) an optical device that comprises the composite encapsulation material 5.
Regarding claim 17, Seko shows (see, e.g., Seko: fig. 2) that the optical device 1 comprises a light-emitting unit 4, wherein the composite encapsulation material 5 covers the light-emitting unit 4 of the optical devices 1.
Regarding claim 18, Seko shows (see, e.g., Seko: fig. 2) that the optical device 1 comprises optical unit 5, wherein the optical unit 5 is made of the composite encapsulation material 5.
Claims 7, 9-11, and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Seko in view of Shiobara (US 2011/0140289).
Regarding claim 7, Seko shows (see, e.g., Seko: fig. 2) most aspects of the instant invention (see paragraph 11 above) including a viscosity modifier (B) (see, e.g., Seko: par. [0052], element of silica). Seko, however, fails (see, e.g., Seko: fig. 2) to show that the viscosity modifier (B) comprises a polymer material, a nanomaterial, or a combination thereof. Seko further teaches (see, e.g., Seko: fig. 2) that the viscosity modifier (B) is silica (see, e.g., Seko: par. [0052], element of silica). Shiobara, in a similar device/material to Seko, also teaches (see, e.g., Shiobara: fig. 1) that the viscosity modifier (B) is a nanomaterial (see, e.g., Shiobara: par. [0083]).
Therefore, it would have been obvious at the time of the invention to one of ordinary skill in the art to use either the nanomaterial of silica-based viscosity modifier of Shiobara or the silica-based viscosity modifier of Seko because these were recognized in the semiconductor art for their use as viscosity modifiers in encapsulations of semiconductor device packages, as taught by Shiobara and Seko, and selecting between known equivalents would be within the level of ordinary skill in the art. KSR International Co. v. Teleflex Inc., 550 U.S.--,82 USPQ2d 1385 (2007).
Regarding claim 9, Seko in view of Shiobara shows (see, e.g., Shiobara: fig. 1) that a particle size of the nanomaterial is 1 nm to 500 nm (see, e.g., Shiobara: par. [0083]). In fact, Seko in view of Shiobara shows (see, e.g., Shiobara: fig. 1) shows that a particle size of the nanomaterial is 0.01 µm to 75 µm (see, e.g., Shiobara: par. [0083]).
However, the differences in the particle diameters will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such differences are critical. “Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the workable ranges by routine experimentation”. In re Aller, 220 F.2d 454,456,105 USPQ 233, 235 (CCPA 1955).
Accordingly, since the applicant has not established the criticality (see next paragraph below) of the mentioned particle diameters, and Shiobara has identified such particle diameters as result-effective variables subject to optimization (see, e.g., Shiobara: par. [0083]), it would have been obvious to one of ordinary skill in the art to use these diameter values in the device of Seko in view of Shiobara.
CRITICALITY
The specification contains no disclosure of either the critical nature of the claimed diameter values 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 Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990).
Regarding claim 10, Seko in view of Shiobara shows (see, e.g., Shiobara: fig. 1) that based on 100 parts by weight of the polymer glue material (A), the nanomaterial is 0.1-130 parts by weight (wt%) (see, e.g., Shiobara: par. [0085]). In fact, Seko in view of Shiobara shows (see, e.g., Shiobara: fig. 1) shows that the silica-based filler should preferably be added in an amount of 5 to 150 parts by weight preferably 10 to 100 parts by weight for 100 parts by weight of the above-mentioned curable resin composition (see, e.g., Shiobara: par. [0085]).
However, the differences in the nanomaterial weight will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such differences are critical. “Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the workable ranges by routine experimentation”. In re Aller, 220 F.2d 454,456,105 USPQ 233, 235 (CCPA 1955).
Accordingly, since the applicant has not established the criticality (see paragraph 25) of the mentioned nanomaterial weight, and Shiobara has identified such nanomaterial weight as a result-effective variable subject to optimization (see, e.g., Shiobara: par. [0085]), it would have been obvious to one of ordinary skill in the art to use these nanomaterial weight values in the device of Seko in view of Shiobara.
Regarding claim 11, Seko in view of Shiobara shows (see, e.g., Shiobara: fig. 1) that the nanomaterial comprises a luminescent material, a non-luminescent material, or a combination thereof (see, e.g., Shiobara: par. [0083], element of silica-filler particle material).
Regarding claim 13, Seko in view of Shiobara shows (see, e.g., Seko: fig. 2) that the nanomaterial (see, e.g., Shiobara: par. [0083]) comprises a luminescent material, a non-luminescent material, or a combination thereof (see, e.g., Seko: par. [0052], element of silica, titanium oxide, or alumina).
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Seko in view of Shiobara in further view of Haruna (Fuel (scientific journal), vol. 248, pages 205-214, 2019, https://doi.org/10.1016/j.fuel.2019.03.039).
Regarding claim 12, Seko in view Shiobara shows (see, e.g., Seko: fig. 2) most aspects of the instant invention (see paragraph 11 above) a nanomaterial that is a non-luminescent material (see, e.g., Shiobara: par. [0083], element of silica-filler particle material). Seko in view Shiobara, however, fails (see, e.g., Seko: fig. 2) to show that the nanomaterial is a luminescent material. Haruna, in a similar device/material to Seko in view Shiobara, also teaches that the nanomaterial is a luminescent material (see, e.g., Fuel: abstract, element of quantum dots in a polymer matrix).
Therefore, it would have been obvious at the time of the invention to one of ordinary skill in the art to use either the luminescent nanomaterial of Haruna or the non-luminescent nanomaterial of Seko in view Shiobara because these were recognized in the semiconductor art for their use as nanomaterial viscosity modifiers in encapsulations of semiconductor device packages, as taught by Fuel and Seko in view Shiobara, and selecting between known equivalents would be within the level of ordinary skill in the art. KSR International Co. v. Teleflex Inc., 550 U.S.--,82 USPQ2d 1385 (2007).
Seko in view Shiobara in view of Haruna shows (see, e.g., Fuel: abstract, element of quantum dots in a polymer matrix) that the luminescent material comprises quantum dots.
Claims 8 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Seko in view of Shiobara in further view of Miao (US 2014/0308450).
Regarding claim 8, Seko in view Shiobara shows (see, e.g., Seko: fig. 2) most aspects of the instant invention (see paragraph 11 above) including a viscosity modifier (B) (see, e.g., Seko: par. [0052], element of silica). Seko in view Shiobara, however, fails (see, e.g., Seko: fig. 2) to show that the viscosity modifier (B) comprises a polymer material that further comprises a polyamide wax, an organic bentonite clay, a hydrogenated castor oil, or a combination thereof. Seko in view Shiobara further teaches (see, e.g., Seko: fig. 2) that the viscosity modifier (B) is silica (see, e.g., Seko: par. [0052], element of silica). Miao, in a similar device/material to Seko in view Shiobara, also teaches that the polymer material that further comprises a polyamide wax, an organic bentonite clay, a hydrogenated castor oil, or a combination thereof (see, e.g., Miao: par. [0097]).
Therefore, it would have been obvious at the time of the invention to one of ordinary skill in the art to use either the polyamide wax, an organic bentonite clay, a hydrogenated castor oil as a polymer material of Miao or the silica-based viscosity modifier of Seko in view Shiobara because these were recognized in the semiconductor art for their use as viscosity modifiers in encapsulations of semiconductor device packages, as taught by Miao and Seko in view Shiobara, and selecting between known equivalents would be within the level of ordinary skill in the art. KSR International Co. v. Teleflex Inc., 550 U.S.--,82 USPQ2d 1385 (2007).
Regarding claim 14, Seko in view Shiobara shows (see, e.g., Seko: fig. 2) most aspects of the instant invention (see paragraph 11 above) including a viscosity modifier (B) (see, e.g., Seko: par. [0052], element of silica). Seko in view Shiobara, however, fails (see, e.g., Seko: fig. 2) to show that the viscosity modifier (B) comprises a polymer material that further comprises a polyamide wax, an organic bentonite clay, a hydrogenated castor oil, or a combination thereof. Seko in view Shiobara further teaches (see, e.g., Seko: fig. 2) that the viscosity modifier (B) is silica (see, e.g., Seko: par. [0052], element of silica). Miao, in a similar device/material to Seko in view Shiobara, also teaches that the polymer material that further comprises a polyamide wax, an organic bentonite clay, a hydrogenated castor oil, or a combination thereof (see, e.g., Miao: par. [0097]).
Therefore, it would have been obvious at the time of the invention to one of ordinary skill in the art to use either the a polyamide wax, an organic bentonite clay, a hydrogenated castor oil as a polymer material of Miao or the silica-based viscosity modifier of Seko in view Shiobara because these were recognized in the semiconductor art for their use as viscosity modifiers in encapsulations of semiconductor device packages, as taught by Miao and Seko in view Shiobara, and selecting between known equivalents would be within the level of ordinary skill in the art. KSR International Co. v. Teleflex Inc., 550 U.S.--,82 USPQ2d 1385 (2007).
Seko in view Shiobara in view of Miao shows that based on 100 parts by weight of the polymer glue material (A), the polymer material is 1-100 parts by weight (wt%) (see, e.g., Miao: par. [0097]). In fact, Seko in view Shiobara in view of Miao shows that based on 100 weight parts of the metal compound (polymer glue), the amount of the viscosity modifier (polymer material) is about 0.3 to 3 weight parts (see, e.g., Miao: par. [0097]).
However, the differences in the polymer material weight will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such differences are critical. “Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the workable ranges by routine experimentation”. In re Aller, 220 F.2d 454,456,105 USPQ 233, 235 (CCPA 1955).
Accordingly, since the applicant has not established the criticality (see paragraph 25) of the mentioned polymer material weight, and Miao has identified such polymer material weight as a result-effective variable subject to optimization (see, e.g., Miao: par. [0097]), it would have been obvious to one of ordinary skill in the art to use these polymer material weight values in the device of Seko in view of Shiobara in view of Miao.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Seko in view of Chen (US 2018/0122999).
Regarding claim 15, Seko shows (see, e.g., Seko: fig. 2) most aspects of the instant invention (see paragraph 11 above) including an encapsulation material comprises phosphor (see, e.g., Seko: par. [0031]). Seko, however, fails (see, e.g., Seko: fig. 2) to show that the encapsulation material comprises phosphor powder. Seko. Chen, in a similar device/material to Seko, teaches that the encapsulation material comprises phosphor powder (see, e.g., Chen: par. [0056]).
Therefore, it would have been obvious at the time of the invention to one of ordinary skill in the art to use either the phosphor powder of Chen or the phosphor of Seko because these were recognized in the semiconductor art for their use as luminescent components in encapsulations of semiconductor device packages, as taught by Chen and Seko, and selecting between known equivalents would be within the level of ordinary skill in the art. KSR International Co. v. Teleflex Inc., 550 U.S.--,82 USPQ2d 1385 (2007).
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Seko in view of Ni (US 11849623).
Regarding claim 15, Seko shows (see, e.g., Seko: fig. 2) most aspects of the instant invention (see paragraph 11 above) including an optical device 1 that has a optical unit 5 made of the composite encapsulation material 5.
Seko, however, fails (see, e.g., Seko: fig. 2) to show that the optical unit is a lens. Ni, in a similar device to Seko, shows (see, e.g., Ni: fig. 3) that the optical unit 3 is made of the encapsulation material is lens (see, e.g., Ni: col.4/II.8-17, and col. col.8/II. 56-63). Ni further shows (see, e.g., Ni: fig. 3) that a surface of a side of the encapsulation layer 3 with a larger refractive index close to the first insulating layer is provided with a first groove 17 close to an edge of the protruding structure 14, and the second insulating layer 16 with a smaller refractive index is filled in the first groove 17, so that part of the encapsulation layer 3 corresponding to the protruding structure 14 and the second insulating layer 16 also constitute a micro-lens pattern for improving the light extraction efficiency, which can further improve the light extraction efficiency of the display panel (see, e.g., Ni: col.4/II.8-17).
It would have been obvious at the time of filing the invention to one of ordinary skill in the art to include a lens as a optical unit made of an encapsulation material of Ni in the device of Seko, in order to improve the light extraction efficiency, which can further improve the light extraction efficiency of the display panel.
In reference to the language in claim 1 referring to the structure of the device, it is noted that Seko shows all structural aspects of the encapsulation material and device according to the instant invention (see paragraph 11 above), and that providing different ratio of logarithms of a viscosity when the semiconductor functional structure is at different shear rates is does not affect the function of the final device. Furthermore, Seko’s material and device is configured of performing the claimed functions since the performing function interaction corresponding to content tested would involve a mere manipulation of the structure of the encapsulation material and package structure.
As to the grounds of rejection of claim 1 under section 103, see MPEP § 2112, which discusses the handling of functional language in the claims and recommends the alternative (§ 102/ § 103) grounds of rejection.
Additional reference
Wu, X.; Sacher, E.; Meunier, M. – The effects of hydrogen bonds on the adhesion of inorganic oxide particles on hydrophilic silicon surfaces, Journal of Applied Physics 86(3): 1744-1748, 1999.
Conclusion
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/TIBERIU DAN ONUTA/Examiner, Art Unit 2814
/WAEL M FAHMY/Supervisory Patent Examiner, Art Unit 2814