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 .
Election/Restrictions
Applicant’s election without traverse of species I in the reply filed on 07/24/26 is acknowledged.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 15-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
In claim 15-line 4, it appears that the second occurrence of “light emitter” should be –light receiver—since it is not clear how the light emitter can be spaced from itself. Clarification is required.
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.
Claim(s) 1-3, 7-8, 15-17, and 19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ho et al., US 2019/0346305.
Ho et al. shows the invention as claimed including an optoelectronic device, comprising:
A substrate 20;
A sensing element 22 disposed on the substrate 20;
A light emitting element 21 disposed on the substrate 20;
A first dam (for example, a lower portion of 23 or region 13) disposed on the substrate and covering a side of the sensing element (see, for example, figs. 1, 2A-6C and their descriptions); and
A second dam (for example, an upper portion of 23) disposed on the first dam; wherein the first dam and the second dam are located between the sensing element and the light emitting element (see paragraphs 0020-0047).
Regarding dependent claim 2, note that the first dam includes a main body and an extending portion (see, for example, figs. 1 and 2A) connected to the main body, and the extending portion extends to an upper surface of the sensing element.
With respect to dependent claim 3, note that the main body and the extending portion are tapered structures that taper from bottom to top (see semicircular shape of region 23).
As to dependent claim 7, Ho et al. discloses the device further comprising a first encapsulant 24 disposed on the substrate and covering the sensing element and the light emitting element.
Regarding dependent claim 8, Ho et al. discloses an optoelectronic device further comprising a second encapsulant (or peripheral edges of the first encapsulant) surrounding the first encapsulant.
As to independent claim 15, note that Ho et al. shows the invention as claimed including an optoelectronic device, comprising:
A substrate 20;
A light receiver 22 disposed on the substrate;
A light emitter 21 disposed on the substrate and spaced apart from the light emitter; and
A light blocking structure (for example, 23)disposed between the light receiver and the light emitter and covering a side and partially a top of the light receiver (see, for example, figs. 1, 2A-6C and their descriptions and paragraphs 0020-0047).
Concerning dependent claim 16, Ho et al. discloses wherein light blocking structure comprises a first dam (see region 23) that tapers from bottom to top.
With respect to dependent claim 17, Ho et al. discloses wherein the light blocking structure comprises a first dam (lower portion of dam 23) disposed on the carrier and a second dam (upper portion of dam 23) disposed on the top of the first dam.
As to dependent claim 19, Ho et al. discloses further comprising a first encapsulant 24 disposed on the carrier and covering the light emitter and the light receiver.
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(s) 4-6, 13, and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ho et al., US 2019/0346305.
Ho et al. is applied as above but does not expressly disclose the specific dimensions of the dam configuration. However, a prima facie case of obviousness is established because 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.
As to dependent claim 13, Ho et al. does not expressly disclose the relative Shore hardness of the first and second dams. However, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to determine through routine experimentation the optimum Shore hardness of the dam based upon a variety of factors including the desired resistance to deformation and potential damage and would not lend patentability to the instant application absent a showing of unexpected results.
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ho et al., US 2019/0346305 in view of Liu et al., US 2021/0305441.
Ho et al. is applied as above but does not expressly disclose carbon black disposed as part of the light shielding or dam structure. Liu et al. discloses the use of carbon black in dam configurations in light emitting and sensing structures (see, for example, paragraph 0073). In view of this disclosure, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to compose the light shielding or dam structure of Ho et al. with carbon black as suggested by Liu et al. because this material is shown to be suitable as a light shielding material. Concerning the concentration of carbon black, generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here 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).
Allowable Subject Matter
Claims 9-10 and 20 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Matsuyama, US 2009/0128794 discloses light emission structures and light receiving structures separated in a substrate (see abstract and fig. 1).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RICHARD A BOOTH whose telephone number is (571)272-1668. The examiner can normally be reached Monday to Friday, 8:30 to 5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christine Kim can be reached at 571-272-8458. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RICHARD A BOOTH/ Primary Examiner, Art Unit 2812
October 2, 2026
