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
Response to Arguments
Applicant' s arguments with respect to claim 1 have been considered but are moot because the arguments do not apply to any of the references being used in the current rejection.
Election/Restrictions
Applicant’s election without traverse of Species I, including claims 1-2, 5-7, and 9-10, in the reply filed on 04/03/2026 is acknowledged. Amended claim 19 is withdrawn from consideration as being directed to a non-elected species. Therefore, only claims 1-2, 5-7, and 9-10 are pending for examination.
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.
Claims 1-2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hashizume (US 6,147,817).
Regarding claim 1, Hashizume (figures 1-2) discloses an optical apparatus comprising:
a housing including a bottom wall and a first member constituting at least a part of the housing (14 and 16);
an optical component accommodated in the housing and configured to transmit or reflect light (lens 12); and
a second member (base 36) fixed to the first member and including at least one opening configured to accommodate a part of the optical component (lens 12, figure 1), the second member being configured to support the optical component via an adhesive agent (38), wherein
the adhesive agent (38) is arranged at positions approximately symmetric to each other with respect to a center line passing through a center of gravity of the optical component and extending in a first direction that is vertical to the bottom wall, in a third direction that is perpendicular to the first direction (direction 0-0), and
the optical component is suspended from the second member (12 and 36).
The limitation “the optical component is suspended from the second member” is a product by process claim. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. 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, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP §2113.
Regarding claim 2, Hashizume (figures 1-2) discloses an optical device accommodated in the housing and configured to perform at least one of reception of light, transmission of light, and change of optical properties (semiconductor 10; The semiconductor device 10 may comprise a light-emitting device such as a semiconductor laser, a light-emitting diode, or the like, or a light-detecting device such as a photodiode, a photodiode with a built-in preamplifier; see at least column 6, lines 30-40).
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, 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 6-7 and 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Hashizume (US 6,147,817) in view of Haruhiko (JPH09145962).
Regarding claim 6, Hashizume discloses the limitations as shown in the rejection of claim 1 above. However, Hashizume is silent regarding wherein the opening of the second member is a through opening configured to penetrate through the second member in a first direction. Haruhiko (figures 3-4) teaches wherein the opening of the second member is a through opening configured to penetrate through the second member in a first direction (figure 1; between the end portion and the optical semiconductor chip 1 of the cylindrical body guide groove 31, the rectangular cross section of the clearance groove 39 which is perpendicular to the cylindrical body guide groove 31; see at least page 7, first paragraph). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the opening as taught by Haruhiko in order to simplify the manufacturing stops and achieve a compact photoelectric conversion element that is freely optical coupling detachable.
Regarding claim 7, Haruhiko (figures 3-4) discloses wherein the through opening of the second member is a through hole that is separated from an edge of the second member in a second direction that crosses the first direction (figure 1; between the end portion and the optical semiconductor chip 1 of the cylindrical body guide groove 31, the rectangular cross section of the clearance groove 39 which is perpendicular to the cylindrical body guide groove 31; see at least page 7, first paragraph).
Regarding claim 9, Haruhiko (figures 3-4) discloses wherein the optical component includes a flange at a position deviated from the opening in the first direction such that the flange overlaps with a rim of the opening in the first direction (closely flange 52 on the outer surface of the side wall 12 of the package 10, to secure the entire peripheral surface of the flange 52 by laser welding or the like to the side wall 12; see at least page 8. 8th paragraph).
Regarding claim 10, Haruhiko (figures 3-4) discloses wherein the adhesive agent bonds the second member and the flange (closely flange 52 on the outer surface of the side wall 12 of the package 10, to secure the entire peripheral surface of the flange 52 by laser welding or the like to the side wall 12; see at least page 8. 8th paragraph).
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 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LAUREN NGUYEN whose telephone number is (571)270-1428. The examiner can normally be reached on Monday - Thursday, 8:00 AM -6:00 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jennifer Carruth, can be reached at 571-272-9791. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LAUREN NGUYEN/Primary Examiner, Art Unit 2871
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