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 response to an Office action mailed on 02/18/2026 (“02/18/2026 OA”), the Applicant amended independent claims 1 and 9 in a reply filed on 05/12/2026. Applicant’s amendments to independent claim 1 have substantively changed the scope of claim 1 and its dependent claims.
Currently, claims 1-11 are examined as below.
Response to Arguments
Applicant’s amendments to the title of the invention have overcome the specification objections as set forth under line item number 1 in the 02/18/2026 OA.
Applicant’s amendments to claims 9 and 11 have overcome the 112(b) rejections as set forth under line item number 2 in the 02/18/2026 OA.
Applicant’s amendments to independent claim 1 have overcome the prior-art rejections as set forth under line item numbers 3-6 in the 02/18/2026 OA. Despite the Applicant’s substantive amendments to claim 1, previously-cited prior art Li still reads on the claim.
On pages 9-10 of the 05/12/2026 Reply, the Applicant argued that the plurality of directions are arrangement directions of the plurality of surface microstructures on the light emitting surface, rather than Li’s directions D1 and D2 that are defined by taking arbitrary tangents of a single surface microstructure. The examiner disagrees.
Claim 1 requires “a plurality of surface microstructures separately arranged on the light emitting surface along a plurality of directions,” which is to define the arrangement of the surface microstructures rather than the arrangement of the directions. Furthermore, no evidence is found in claim 1 of how the plurality of directions are arranged, such that a definition of such “arrangement directions” is not provided in claim 1. Therefore, given the broadest reasonable interpretation, “a plurality of directions” can be any ones of directions along which the surface microstructures are arranged. Since Li discloses surface microstructures 52 being separately arranged on the light emitting surface along directions D1 and D2 (see Annotated Fig. 1 below), Li still reads on the amended claim 1.
New grounds of rejections under 35 U.S.C. 102(a)(1) and 103 are provided as follows.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 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, 3 and 6-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2021/0050481 A1 to Li.
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Regarding independent claim 1, Li in Fig. 1 and Annotated Fig. 1 teaches a light emitting device 1 (Fig. 1 & ¶ 45, light-emitting device structure 1), comprising:
an epitaxial structure 100 (Fig. 1 & ¶ 36, epitaxial structure 100) having a light emitting surface LES (Annotated Fig. 1 & ¶ 38, patterns 52 improves a light output efficiency of the structure 100, which discloses the surface patterns 52 are formed on is a light emitting/output surface) and a surrounding wall surface SWS (Annotated Fig. 1), and the surrounding wall surface SWS surrounds and is connected to the light emitting surface LES (Annotated Fig. 1); and
a plurality of surface microstructures 52 (Fig. 1 & ¶ 38, patterns 52 having a width W between 0.1 μm and 2.5 μm. That is, patterns 52 are in micro-scale) separately arranged on the light emitting surface LES along a plurality of directions D1, D2 (Annotated Fig. 1) parallel to the light emitting surface LES (Annotated Fig. 1, ¶ 37, parts of the arc-shaped surfaces of the pattern 52 are parallel to parts of the light emitting surfaces LES along directions D1 and D2), and the directions D1, D2 are not perpendicular to the surrounding wall surface SWS.
Regarding claim 3, Li in Annotated Fig. 1 further teaches an edge profile of the surrounding wall surface SWS connected to the light emitting surface LES is rectangular (Annotated Fig. 1).
Regarding claim 6, Li in Fig. 1 and Annotated Fig. 1 further teaches the light emitting surface LES defines an opening profile 52 (Fig. 1, ¶ 22 & ¶ 38, patterns 52 are recessed structures i.e., openings in the surface LES) of each of the surface microstructures 52 to be the same (see Fig. 1, opening profiles 52 are in the same shape and size).
Regarding claim 7, Li in Annotated Fig. 1 further teaches maximum depths of the surface microstructures 52 along a normal direction of the light emitting surface LES are all the same (Annotated Fig. 1).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 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.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Li in view of US 2015/0155437 A1 to Singh et al. (“Singh”).
Regarding claim 2, Li in Annotated Fig. 1 teaches a sidewall of the surrounding wall surface SWS reveals a first surface microstructure 52 (Fig. 1 & ¶ 36, one of the patterns 52), a second surface microstructure 52 (Fig. 1 & ¶ 36, another one of the patterns 52), and a third surface microstructure 52 (Fig. 1 & ¶ 36, the other one of the patterns 52) of the surface microstructures 52, the first surface microstructure 52, the second surface microstructure 52, and the third surface microstructure 52 respectively have a first maximum depth, a second maximum depth, and a third maximum depth along a normal direction of the light emitting surface LES (Annotated Fig. 1).
Li does not explicitly disclose the first maximum depth, the second maximum depth, and the third maximum depth are different from each other.
Singh recognizes a need for enhancing the light extraction efficiency from the surface of the LED (¶ 1). Singh satisfies the need by providing a first surface structure (Fig. 2C), a second surface structure (Fig. 2C), and a third surface structure (Fig. 2C) respectively have a first maximum depth, a second maximum depth, and a third maximum depth along a normal direction of a light emitting surface 225 (Fig. 2C & ¶ 27, surface 225), and the first maximum depth, the second maximum depth, and the third maximum depth are different from each other (Fig. 2C, the structures have different maximum depths).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to modify the first, second and third microstructures taught by Li with different maximum depths taught by Singh, so as to enhance the light extraction efficiency from the surface of the LED (Singh: ¶ 1).
Claims 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over Li in view of US 2010/0096657 A1 to Ou et al. (“Ou”).
Regarding claim 4, Li in Annotated Fig. 1 and Figs. 4A-4B further teaches the surface microstructures 52 are separately arranged on the light emitting surface LES (Figs. 4A-4B) in a hexagonal close packing manner.
Ou recognizes a need for achieving light-extraction efficiency of a light-emitting device (¶ 9). Ou satisfies the need by providing surface structures (Fig. 6A & ¶ 24, hexagonal pattern units) arranged in a hexagonal close packing manner (Fig. 6A & ¶ 24 disclose the hexagonal pattern units are arranged in a hexagonal close packing manner).
Before the effective filing date of the claimed invention, it would have bene obvious to one of ordinary skill in the art to modify the surface microstructures taught by Li with the hexagonal pattern units and arrangement taught by Ou, so as to achieve light-extraction efficiency of a light-emitting device (Ou: ¶ 9).
Regarding claim 5, Li in Annotated Fig. 1 teaches the surface microstructures 52 are arranged along a first direction D1 (Annotated Fig. 1) and a second direction D2 (Annotated Fig. 1) respectively.
The combination of Li and Ou does not explicitly disclose an included angle between the first direction and the second direction is 60 degrees.
However, it would have been obvious to form the included angle within the claimed range, since it has been held by the Federal circuit that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. (In 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)).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable and obvious over Li.
Regarding claim 8, Li in Annotated Fig. 1 teaches the surface microstructures 52 are arranged along a first direction D1 or D2 (Annotated Fig. 1), the surrounding wall surface SWS has a plurality of sidewall surfaces SWS (Annotated Fig. 1), and an included angle between the first direction D1 or D2 and any of the sidewall surfaces SWS.
Li does not explicitly disclose the included angle is between 5 degrees and 25 degrees, between 35 degrees and 55 degrees, or between 65 degrees and 85 degrees.
However, it would have been obvious to form the included angle within the claimed range, since it has been held by the Federal circuit that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. (In 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)).
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter:
Claims 9-11 are allowed.
Independent claim 9 is allowed, because claim 9 includes previously-indicated allowable subject matter of claim 9 as set forth under lien item number 7 in the 02/18/2026 OA.
Claims 10-11 are allowed, because they depend from the allowed claim 9.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MIKKA LIU whose telephone number is (571)272-2568. The examiner can normally be reached on 9AM-5AM EST M-F.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eliseo Ramos-Feliciano can be reached on 571-272-7925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/M.L./Examiner, Art Unit 2817
/ELISEO RAMOS FELICIANO/Supervisory Patent Examiner, Art Unit 2817
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