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 .
DETAILED ACTION
This office action is in response to the filing of the Applicant Arguments/Remarks Made in an Amendment on 05/08/2026. Currently, claims 17-33 are pending in the application. Claims 1-16 have been cancelled.
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim 33 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by KONAGAYOSHI et al (US 20180195677 A1).
Regarding claim 33, Figure 1 of KONAGAYOSHI discloses an optoelectronic component comprising: a radiation passage surface (at 34) and a housing top surface (top surface of 12, [0026]), which surrounds the radiation passage surface in lateral directions at least in places; and a remainder (stacked layers on 12) of a cover which covers the housing top surface at least in places, wherein the remainder of the cover has traces (cutting traces for putting 32) of a perforation at an edge of the remainder.
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 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 of this title, 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 17-32 are rejected under 35 U.S.C. 103 as being obvious over KONAGAYOSHI et al (US 20180195677 A1).
Regarding claim 17, Figure 1 of KONAGAYOSHI discloses an arrangement comprising:
an optoelectronic component comprising a radiation passage surface (34, [0034]) and a housing top surface (of 12 at 48, [0026]), which surrounds the radiation passage surface in lateral directions at least in places; and
a cover (stacked layers on 12) covering the radiation passage surface and the housing top surface at least in places.
KONAGAYOSHI does not explicitly teach wherein the cover is configured to be partially removed such that the radiation passage surface is at least partially exposed and the housing top surface remains covered at least in places by a remainder of the cover.
However, the above limitation does not distinguish the present invention over the prior art of KONAGAYOSHI which teaches the structure as claimed, wherein the structure is capable of performing the above function. Moreover, it has been held that claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997). Further, The Examiner notes that where the Patent Office has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact, be an inherent characteristic of the prior art, it possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on. (In re Swinehart and Sfiligoj, 169 USPQ 226 (C.C.P.A. 1971)).
Regarding claim 18, Figure 1 of KONAGAYOSHI discloses that the arrangement according to claim 17, wherein the cover comprises a perforation (at 32, [0033]) but does not teach that the configured to facilitate or enable partial removal of the cover. However, the above limitation does not distinguish the present invention over the prior art of KONAGAYOSHI which teaches the structure as claimed, wherein the structure is capable of performing the above function. Moreover, it has been held that claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997).
Regarding claim 19, Figure 1 of KONAGAYOSHI discloses that the arrangement according to claim 17, wherein the cover (stacked layers over 12) is opaque at least in places (there is some opaque characteristics of the materials stacked on top of 12).
Regarding claim 20, Figure 1 of KONAGAYOSHI discloses that the arrangement according to claim 17, wherein the cover (stacked layers over 12) comprises or is a metal-containing foil ([0036]).
Regarding claim 21, Figure 1 of KONAGAYOSHI does not teach that the arrangement according to claim 17, wherein the cover (stacked layers over 12) comprises or is an aluminum foil. However, the examiner takes an official notice that aluminum is a very well-known alternative of the material described in [0036] of KONAGAYOSHI.
Regarding claim 22, Figure 1 of KONAGAYOSHI discloses that the arrangement according to claim 17, wherein the cover (stacked layer on 12) is formed as a self-adhesive foil at least in places ([0036]-[0038]).
Regarding claim 23, Figure 1 of KONAGAYOSHI does not teach that the arrangement according to claim 17, wherein the cover (stacked layers over 12) is partially removed after assembling the optoelectronic component at a destination.
However, it has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. Ex parte Masham, 2 USPQ 2d 1647 (1987).
Regarding claim 24, Figure 1 of KONAGAYOSHI does not teach that the arrangement according to claim 17, wherein the remainder of the cover (stacked layers over 12) protects an area of the housing top surface covered by the remainder from solar radiation.
However, it has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. Ex parte Masham, 2 USPQ 2d 1647 (1987).
Regarding claim 25, Figure 1 of KONAGAYOSHI discloses that the arrangement according to claim 17, wherein the remainder completely covers the housing top surface (stacked layers on 12 covers completely).
Regarding claim 26, Figure 1 of KONAGAYOSHI discloses that the arrangement according to claim 17, wherein the remainder (layers stacked on 12) covers the housing top surface only in places and comprises at least two regions that are arranged at a distance from one another on the housing top surface.
Regarding claims 27-28, Figure 1 of KONAGAYOSHI discloses that the arrangement according to claim 17, wherein the cover (stacked layers over 12) comprises a marking for identifying the optoelectronic component on its side facing away from the housing top surface, wherein the marking is applied to the remainder of the cover (the marking is not defined what it is and thus any point of the covers can be interpreted as a marking on a broadest reasonable interpretation) ([0036]-[0038]).
Regarding claim 29, Figure 1 of KONAGAYOSHI discloses that the arrangement according to claim 17, further comprising a second cover arranged at least in places over the cover (layers stacked on 12 comprising multiple layers, one can be the first cover and another can be second layer) ([0036]-[0038]).
Regarding claim 30, Figure 1 of KONAGAYOSHI discloses that the arrangement according to claim 17, wherein the cover (stacked layers over 12) comprises a first layer and a second layer, wherein the first layer is arranged between the housing top surface and the second layer, and wherein, after partial removal of the cover at least a part of the first layer remains as the remainder (layers stacked on 12 comprising multiple layers, one can be the first cover and another can be second layer) ([0036]-[0038]).
Regarding claim 31, Figure 1 of KONAGAYOSHI discloses that the arrangement according to claim 30, wherein the second layer (layer of stacked layers on top 12) comprises or is a transparent, self-adhesive foil([0036]-[0038]).
Regarding claim 32, Figure 1 of KONAGAYOSHI discloses a method for assembling the optoelectronic component, the method comprising: providing the arrangement according to claim 17 but does not teach assembling the arrangement at a destination; and partially removing the cover in such a way that the radiation passage surface of the optoelectronic component is at least partially exposed and the housing top surface remains covered at least in places by the remainder of the cover. However, it has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. Ex parte Masham, 2 USPQ 2d 1647 (1987). Further, these above limitation is merely a product-by-process limitation that does not structurally distinguish the claimed invention over the prior art of KONAGAYOSHI who teaches the structure as claimed. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 227 USPQ 964, 966.
Response to Arguments
Applicant's arguments filed on 05/08/2026 have been fully considered but they are not persuasive.
Applicant’s main argument regarding claim 17 includes: From the method and the materials disclosed in Konagayoshi, the sealing portion 48 is merely formed in spaces where the metallization of the upper surface 14, the metallization of the bonding surface 44 and the material of the sealing portion 48 are present. However, in the region of the recess 16, it is not possible to implement this three-part bonding system as the recess forms an opening in the upper surface 14 so that no metallization of the upper surface 14 of the package substrate 12 can be provided in that region. Consequently, Konagayoshi fails to disclose an arrangement in which a cover covers the radiation passage surface, and consequently, a partial removal of the cover layer such that the radiation passage surface is at least partially exposed cannot be an inherent characteristic of the light-emitting module of Konagayoshi.
In response, the Examiner respectfully disagrees and would like to point out that KONAGAYOSHI does not explicitly teach “wherein the cover is configured to be partially removed such that the radiation passage surface is at least partially exposed and the housing top surface remains covered at least in places by a remainder of the cover’. However, the arrangement of Figure 1 of KONAGAYOSHI teaches the arrangement as claimed. Further, the cover (stacked layers on 12) is not formed all over the radiation passage, wherein the a window member 30 is formed. Thus, the above limitation does not distinguish the present invention over the prior art of KONAGAYOSHI which teaches the structure as claimed, wherein the structure is capable of performing the above function. Moreover, it has been held that claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997). Further, The Examiner notes that where the Patent Office has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact, be an inherent characteristic of the prior art, it possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on. (In re Swinehart and Sfiligoj, 169 USPQ 226 (C.C.P.A. 1971)).
Applicant’s main argument regarding claim 33 includes: Paragraph [038] of Konagayoshi states that "[T]he sealing portion 48 spreads between the upper surface 14 and the bonding surface 44 in a molten state and forms an eutectic bond with the upper surface 14 and the bonding surface 44. Thereby, the sealing portion 48 seals the space between the package substrate 12 and the window member 30." Consequently, the sealing portion is merely formed in spaces where the metallization of the upper surface 14, the metallization of the bonding surface 44 and the material of the sealing portion 48 are present. Accordingly, there is no need to cut either the sealing portion nor any other layer in the light- emitting module of Konagayoshi and, consequently, there are not traces of cutting or perforations.
In response, the Examiner respectfully disagrees and would like to point out that KONAGAYOSHI teaches a sign of patterning (sloped sides at 38) or shaping in order to accommodate the window member 30 on the housing top surface. Thus, Figure 1 of KONAGAYOSHI teaches a remainder (stacked layers on 12) of a cover which covers the housing top surface at least in places, wherein the remainder of the cover has traces (cutting traces for putting 32) of a perforation at an edge of the remainder.
Conclusion
THIS ACTION IS MADE FINAL. 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 extension fee 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 KHAJA AHMAD whose telephone number is (571)270-7991. The examiner can normally be reached on Monday to Friday from 8:00 AM to 5:00 PM (Eastern Time).
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, GAUTHIER STEVEN B, can be reached on (571)270-0373. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KHAJA AHMAD/
Primary Examiner, Art Unit 2813
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