DETAILED ACTION
This office action is in response to the amendments filed on July 13, 2026. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Acknowledgement
The applicants’ amendments filed on 7/13/2026 are acknowledged. The present office action is made with all the suggested amendments being fully considered. Accordingly, claims 1-16 are pending in this application.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 3/8/2024 are being considered by the examiner.
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.
Claims 1-4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tokuo (JP 2011-249419A)
With respect to Claim 1, Tokuo discloses (Fig. 4a-4d) all aspects of the current invention including an optical device comprising:
an optical element (307) configured to detect or emit light (par 60)
a first lead frame portion (horizontal portion 301 in which the wire connects to the terminals of the optical element) having one penetrating opening hole (opening and window 312/313) (par 52)
a second lead frame portion (vertical portion 301) different from the first lead portion
a wire (305) electrically bonding between the first lead frame portion and the optical element (par 53)
a sealing material (308) that seals the optical element, the first and second lead frame portions, and the wire, (par 52-53)
wherein: the optical element is disposed in the opening hole,
a light-receiving or light-emitting surface (bottom surface) of the optical element and the plurality of lead frame portions are each exposed at least partially from a first surface (top surface)
in a plan view of the first surface viewed from a front, the first lead frame portion (horizontal portion 301 in which the wire connects to the terminals of the optical element) has a rotation axis extending perpendicular to the first surface that is 180° rotationally symmetrical
the second lead frame portion (vertical portion 301) exposed on the first surface has a shape that is 180° rotationally asymmetric with respect to the rotation axis
the first lead frame portion continuously surrounds the optical element in a side view
With respect to Claim 2, Tokuo discloses (Fig. 4a-4d) wherein the optical element is a sensor configured to detect infrared radiation (par 47,60)
With respect to Claim 3, Tokuo discloses (Fig. 4a-4d) wherein the optical element is an LED configured to emit infrared radiation (par 60)
With respect to Claim 4, Tokuo discloses (Fig. 4a-4d) wherein in the plan view, an exposed portion of the first lead frame portion surrounds an exposed portion of the optical element without any breaks
Claims 1-4 and 10-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kosuke (JP 2011-103382A).
With respect to Claim 1, Kosuke discloses (Fig. 1-2) all aspects of the current invention including an optical device comprising:
an optical element (103) configured to detect or emit light
a first lead frame portion (horizontal portion 101 in which the wire connects to the terminals of the optical element) having one penetrating opening hole (opening containing element 103)
a second lead frame portion (vertical portion 101) different from the first lead portion
a wire (105) electrically bonding between the first lead frame portion and the optical element
a sealing material (106) that seals the optical element, the first and second lead frame portions, and the wire
wherein: the optical element is disposed in the opening hole,
a light-receiving or light-emitting surface (bottom surface) of the optical element and the plurality of lead frame portions are each exposed at least partially from a first surface (top surface)
in a plan view of the first surface viewed from a front, the first lead frame portion (portion 201 which is lead frame portion 101; see Fig 2) has a rotation axis extending perpendicular to the first surface that is 180° rotationally symmetrical
the second lead frame portion (portion 201 which is lead frame portion 101; see Fig 2) exposed on the first surface has a shape that is 180° rotationally asymmetric with respect to the rotation axis
the first lead frame portion continuously surrounds the optical element in a side view (see Fig 1)
With respect to Claim 2, Kosuke discloses (Fig. 1-2) wherein the optical element is a sensor configured to detect infrared radiation (par 10,15-17)
With respect to Claim 3, Kosuke discloses (Fig. 1-2) wherein the optical element is an LED configured to emit infrared radiation (par 10,15)
With respect to Claim 4, Kosuke discloses (Fig. 1-2) wherein in the plan view, an exposed portion of the first lead frame portion surrounds an exposed portion of the optical element without any breaks
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With respect to Claim 10, Kosuke discloses (Fig. 1-2) wherein the first surface has an asymmetric area, in which no second lead frame portion is present and the sealing material is exposed, to form an asymmetric shape, and a third lead frame portion (upper horizontal portion 101 absent the bonding wire) is exposed on a second surface opposite the first surface, in an area that overlaps the asymmetric area (See illustration below)
With respect to Claim 11, Kosuke discloses (Fig. 1-2) wherein the second lead frame portion, and the third lead frame portion are connected inside the optical device.
With respect to Claim 12, Kosuke discloses (Fig. 1-2) wherein part of the second lead frame portion is not directly connected to the side on the first surface and thus has a minimum distance d to the side.
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.
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.
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 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over Tokuo (JP 2011-249419A) in view of Camargo (US 2018/0287005).
With respect to Claim 5, Tokuo discloses most aspects of the present invention. However, Tokuo does not show wherein the light-receiving or light-emitting surface of the optical element is formed on a semiconductor substrate that has been subjected to roughening processing.
On the other hand, and in the same field of endeavor, Camargo teaches (Fig 8) an optical device comprising an optical element (1100) configured to detect or emit light, the optical element has a light-receiving or light-emitting surface, wherein the light-receiving or light-emitting surface of the optical element is formed on a semiconductor substrate (1010) that has been subjected to roughening processing (see par 99,137-138). Camargo teaches doing so to improve the adhesion of the substrate, and the optical device as well as the sealing material on the roughened part (par 137).
Therefore, it would have been obvious to one of ordinary skill in the art, and before the effective filing date of the claimed invention to have the arrangement of wherein the light-receiving or light-emitting surface of the optical element is formed on a semiconductor substrate that has been subjected to roughening processing in the device of Tokuo, as taught by Camargo to improve the adhesion of the substrate, and the optical device as well as the sealing material on the roughened part.
With respect to Claim 6, Camargo teaches (Fig 8) wherein the semiconductor substrate has a thickness of 400 µm or less.
Claims 7-9 are rejected under 35 U.S.C. 103 as being unpatentable over Tokuo (JP 2011-249419A) in view of Sato (JP 2011-216741A)
With respect to Claim 7, Tokuo discloses most aspects of the present invention. However, Tokuo does not show wherein a distance from an end of the opening hole to the optical element is 70 µm or more.
On the other hand, and in the same field of endeavor, Sato teaches (Fig 1-2) an optical device comprising an optical element (1) configured to detect or emit light, a first lead frame portion (horizontal portion 3b in which the wire connects to the terminals of the optical element) having one penetrating opening hole (opening containing element 1), and a second lead frame portion (vertical portion 3a) different from the first lead portion. Further, Sato teaches wherein a distance from an end of the opening hole to the optical element has a distance smaller than a distance from an end of the opening hole to the second lead frame portion (see Fig 2) but does not disclose wherein a distance from an end of the opening hole to the optical element is 70 µm or more. However, it is noted that the specification fails to provide teachings about the criticality of having wherein a distance from an end of the opening hole to the optical element is 70 µm or more, as claimed in the instant application.
The courts have held, differences in distances will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such distances are critical. “Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Since the applicant has not established the criticality of having a distance from an end of the opening hole to the optical element is 70 µm or more as claimed by the applicant, and similar arrangements are known in the art (see Sato), it would have been obvious to one of the ordinary skill in the art to modify the arrangement in the device of Tokuo in view of Sato.
Criticality: The specification contains no disclosure of either the critical nature of the claimed arrangement of distances 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 USPQ 2d 1934, 1936 (Fed Cir. 1990).
With respect to Claim 8, Tokuo discloses most aspects of the present invention. However, Tokuo does not show wherein a distance from an end of the opening hole to the optical element is 200 µm or less.
On the other hand, and in the same field of endeavor, Sato teaches (Fig 1-2) an optical device comprising an optical element (1) configured to detect or emit light, a first lead frame portion (horizontal portion 3b in which the wire connects to the terminals of the optical element) having one penetrating opening hole (opening containing element 1), and a second lead frame portion (vertical portion 3a) different from the first lead portion. Further, Sato teaches wherein a distance from an end of the opening hole to the optical element has a distance smaller than a distance from an end of the opening hole to the second lead frame portion (see Fig 2) but does not disclose wherein a distance from an end of the opening hole to the optical element is 200 µm or less.
The courts have held, differences in distances will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such distances are critical. “Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Since the applicant has not established the criticality of having a distance from an end of the opening hole to the optical element is 200 µm or less as claimed by the applicant, and similar arrangements are known in the art (see Sato), it would have been obvious to one of the ordinary skill in the art to modify the arrangement in the device of Tokuo in view of Sato.
Criticality: The specification contains no disclosure of either the critical nature of the claimed arrangement of distances 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 USPQ 2d 1934, 1936 (Fed Cir. 1990).
With respect to Claim 9, Tokuo discloses most aspects of the present invention including wherein in the second lead frame portion, an area in which a non-etched area of a front surface overlaps a non-etched area of a back surface. However, Tokuo does not show wherein the area in which a non-etched area of a front surface overlaps a non-etched area of a back surface has a width of 100 µm or less in at least one place.
On the other hand, and in the same field of endeavor, Sato teaches (Fig 1-2) an optical device comprising an optical element (1) configured to detect or emit light, a first lead frame portion (horizontal portion 3b in which the wire connects to the terminals of the optical element) having one penetrating opening hole (opening containing element 1), and a second lead frame portion (vertical portion 3a) different from the first lead portion. Further, Sato teaches wherein an area in which a non-etched area of a front surface overlaps a non-etched area of a back surface, and wherein the area in which a non-etched area of a front surface overlaps a non-etched area of a back surface has a width (y), less than an entire width of the second lead frame portion. However, it is noted that the specification fails to provide teachings about the criticality of having wherein in the second lead frame portion, an area in which a non-etched area of a front surface overlaps a non-etched area of a back surface has a width of 100 µm or less in at least one place.
The courts have held, differences in widths will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such widths are critical. “Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Since the applicant has not established the criticality of having the widths as claimed by the applicant, and similar arrangements are known in the art (see Sato), it would have been obvious to one of the ordinary skill in the art to modify the arrangement in the device of Tokuo in view of Sato.
Criticality: The specification contains no disclosure of either the critical nature of the claimed arrangement of widths 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 USPQ 2d 1934, 1936 (Fed Cir. 1990).
Claims 13-16 are rejected under 35 U.S.C. 103 as being unpatentable over Kosuke (JP 2011-103382A) in view of Sato (JP 2011-216741A).
With respect to Claim 13, Kosuke discloses (Fig. 1-2) wherein part of the second lead frame portion is not directly connected to the side on the first surface and thus has a minimum distance to the side. However, Kosuke does not disclose wherein the minimum distance d is 0.1 mm or more. However, it is noted that the specification fails to provide teachings about the criticality of having wherein the minimum distance d is 0.1 mm or more.
On the other hand, and in the same field of endeavor, Sato teaches (Fig 1-2) an optical device comprising an optical element (1) configured to detect or emit light, a first lead frame portion (horizontal portion 3b in which the wire connects to the terminals of the optical element) having one penetrating opening hole (opening containing element 1), and a second lead frame portion (vertical portion 3a) different from the first lead portion. Further, Sato teaches wherein part of the second lead frame portion is not directly connected to the side on the first surface and thus has a minimum distance to the side.
The courts have held, differences in distances will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such distances are critical. “Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Since the applicant has not established the criticality of having wherein the minimum distance d is 0.1 mm or more as claimed by the applicant, and similar arrangements are known in the art (see Sato), it would have been obvious to one of the ordinary skill in the art to modify the arrangement in the device Kosuke in view of Sato.
Criticality: The specification contains no disclosure of either the critical nature of the claimed arrangement of distances 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 USPQ 2d 1934, 1936 (Fed Cir. 1990).
With respect to Claim 14, Kosuke discloses (Fig. 1-2) wherein part of the second lead frame portion is not directly connected to the side on the first surface and thus has a minimum distance to the side. However, Kosuke does not disclose wherein the minimum distance d is 1.0 nm or less. However, it is noted that the specification fails to provide teachings about the criticality of having wherein the minimum distance d is 1.0 mm or less.
On the other hand, and in the same field of endeavor, Sato teaches (Fig 1-2) an optical device comprising an optical element (1) configured to detect or emit light, a first lead frame portion (horizontal portion 3b in which the wire connects to the terminals of the optical element) having one penetrating opening hole (opening containing element 1), and a second lead frame portion (vertical portion 3a) different from the first lead portion. Further, Sato teaches wherein part of the second lead frame portion is not directly connected to the side on the first surface and thus has a minimum distance to the side.
The courts have held, differences in distances will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such distances are critical. “Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Since the applicant has not established the criticality of having wherein the minimum distance d is 1.0 mm or less as claimed by the applicant, and similar arrangements are known in the art (see Sato), it would have been obvious to one of the ordinary skill in the art to modify the arrangement in the device Kosuke in view of Sato.
Criticality: The specification contains no disclosure of either the critical nature of the claimed arrangement of distances 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 USPQ 2d 1934, 1936 (Fed Cir. 1990).
With respect to Claim 15, Kosuke discloses (Fig. 1-2) wherein part of the second lead frame portion is not directly connected to the side on the first surface and thus has a minimum distance to the side. However, Kosuke does not disclose wherein the minimum distance d is 1/30 or more the length D of a side of the optical device in a direction parallel to the minimum distance d in the plan view. However, it is noted that the specification fails to provide teachings about the criticality of having wherein the minimum distance d is 1/30 or more the length D of a side of the optical device in a direction parallel to the minimum distance d in the plan view
On the other hand, and in the same field of endeavor, Sato teaches (Fig 1-2) an optical device comprising an optical element (1) configured to detect or emit light, a first lead frame portion (horizontal portion 3b in which the wire connects to the terminals of the optical element) having one penetrating opening hole (opening containing element 1), and a second lead frame portion (vertical portion 3a) different from the first lead portion. Further, Sato teaches wherein part of the second lead frame portion is not directly connected to the side on the first surface and thus has a minimum distance to the side.
The courts have held, differences in distances will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such distances are critical. “Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Since the applicant has not established the criticality of having wherein the minimum distance d is 1/30 or more the length D of a side of the optical device in a direction parallel to the minimum distance d in the plan view as claimed by the applicant, and similar arrangements are known in the art (see Sato), it would have been obvious to one of the ordinary skill in the art to modify the arrangement in the device Kosuke in view of Sato.
Criticality: The specification contains no disclosure of either the critical nature of the claimed arrangement of distances 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 USPQ 2d 1934, 1936 (Fed Cir. 1990).
With respect to Claim 16, Kosuke discloses (Fig. 1-2) wherein part of the second lead frame portion is not directly connected to the side on the first surface and thus has a minimum distance to the side. However, Kosuke does not disclose wherein the minimum distance d is 1/3 or less the length D of a side of the optical device in a direction parallel to the minimum distance d in the plan view. However, it is noted that the specification fails to provide teachings about the criticality of having wherein the minimum distance d is 1/3 or less the length D of a side of the optical device in a direction parallel to the minimum distance d in the plan view.
On the other hand, and in the same field of endeavor, Sato teaches (Fig 1-2) an optical device comprising an optical element (1) configured to detect or emit light, a first lead frame portion (horizontal portion 3b in which the wire connects to the terminals of the optical element) having one penetrating opening hole (opening containing element 1), and a second lead frame portion (vertical portion 3a) different from the first lead portion. Further, Sato teaches wherein part of the second lead frame portion is not directly connected to the side on the first surface and thus has a minimum distance to the side.
The courts have held, differences in distances will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such distances are critical. “Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Since the applicant has not established the criticality of having wherein the minimum distance d is 1/3 or less the length D of a side of the optical device in a direction parallel to the minimum distance d in the plan view as claimed by the applicant, and similar arrangements are known in the art (see Sato), it would have been obvious to one of the ordinary skill in the art to modify the arrangement in the device Kosuke in view of Sato.
Criticality: The specification contains no disclosure of either the critical nature of the claimed arrangement of distances 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 USPQ 2d 1934, 1936 (Fed Cir. 1990).
Response to Arguments
Applicant’s arguments with respect to claims 1-16 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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.
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/Q.A.B/ Examiner, Art Unit 2814
/WAEL M FAHMY/Supervisory Patent Examiner, Art Unit 2814
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