Attorney’s Docket Number: 127523.0000001
Filing Date: 03/21/2024
Claimed Foreign Priority Date: 03/22/2023 (JP2023-044913)
Applicants: Tamura et al.
Examiner: Younes Boulghassoul
DETAILED ACTION
This Office action responds to the application filed on 03/21/2024.
Remarks
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . The application serial no. 18/612,487 filed on 03/21/2024 has been entered. Pending in this Office Action are claims 1-12.
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 11 is rejected under 35 U.S.C. 103 as obvious over Kususe et al. (US2023/0100081).
The applied reference has a common Assignee and common Inventors with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
Regarding Claim 11, Kususe (see, e.g., Fig. 3A and Par. [0180]-[0186]) shows most aspects of the instant invention including a method of manufacturing a light-emitting device (e.g., light emitting device 100), the method comprising:
- preparing a package including a recessed portion (e.g., recess 31) comprising an inner lateral surface (e.g., inner lateral face 33a) and a bottom surface (e.g., upper face 32a of the bottom portion 32) having a placement region on which a light-emitting element (e.g., light emitting element 4) is placeable (see, e.g., Par. [0182]-[0183])
- mixing at least first particles comprising a light reflecting material (e.g., boron nitride having an average particle size of 10 μm) and second particles (e.g., silica having an average particle size of 0.3 μm) having a smaller average particle diameter than the first particles, to prepare a mixture having thixotropy (see, e.g., Par. [0184]: uniformly viscous mixture was obtained)
- applying the mixture to at least one of the bottom surface or the inner lateral surface (see, e.g., Par. [0185])
- curing the mixture to form a light-reflective member (e.g., light reflecting member 5) comprising a light reflecting surface inclined with respect to the bottom surface in a direction from the inner lateral surface toward the placement region so as not to reach the placement region (see, e.g., Fig. 3A and Par. [0186]).
However, while Kususe is silent about the first particles and second particles being such that the second particles have a lower average aspect ratio than the first particles, and a lower total reflectance than the first particles, Kususe discloses that the materials of the first and second particles are identical in composition to the first and second particles of the instant invention (i.e., boron nitride and silica respectively, see Specification, Par. [0041],[0045]), and have similar relative average particle size (e.g., average particle size of boron nitride bigger than silica).
Accordingly, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to have the second particles having a lower average aspect ratio and a lower total reflectance than the first particles in the mixture of Kususe, at least because the mixture comprises identical first and second particle materials having similar relative average particle sizes, and it is suitable for implementing a light reflecting member, as disclosed by Kususe himself, and the court has held that “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) .
Allowable Subject Matter
Claims 1-10 and 12 are allowable allowed.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 1, the prior art fails to disclose or suggest a light-emitting device comprising: wherein the light reflecting surface is inclined with respect to the bottom surface in a direction from the inner lateral surface toward the light-emitting element, and has different light reflection characteristics at different positions with different heights from the bottom surface to the light reflecting surface.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The additional references cited disclose light-emitting devices including light-reflective members including reflective particles and methods of manufacturing the same, and having some aspects similar to the instant inventions.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Younes Boulghassoul at (571) 270-5514. The examiner can normally be reached on Monday-Friday 9am-6pm EST (Eastern Standard Time), or by e-mail via younes.boulghassoul@uspto.gov. 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, Wael Fahmy can be reached on (571) 272-1705. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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/YOUNES BOULGHASSOUL/Primary Examiner, Art Unit 2814
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