DETAILED ACTION
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 .
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the 1) combined resin + recess of claim 13, 2) combined resin + recess +bank of claim 17, 3) recess + bank of claim 18 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 13, 17, 18 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
With respect to claim 13, claim 9 first defines the support/shield to be of resin which is shown in figures 1-6. Claim 13, depending from claim 9, then states the electrode pad is arranged in a recess (fig.7). The originally filed disclosure does not teach these two features to be usable together, nor does the priority document, nor the original claim set. This is further evidence by [0034] of the spec noting the support is of a different type in fig.7 as compared to fig.1-6. Therefore, it is not clear the Applicant was in possession of the claimed invention at the time of filing.
With respect to claim 17, claim 9 first defines the support/shield to be of resin which is shown in figures 1-6. Claim 13, depending from claim 9, then states the electrode pad is arranged in a recess (fig.7). Claim 17 then adds that the pad has a bank portion (fig.10). The originally filed disclosure does not teach these three features to be usable together, nor does the priority document, nor the original claim set. This is further evidence by [0034] of the spec noting the support is of a different type in fig.7 as compared to fig.1-6, and [0054-55] noting that the support is different than in fig.1-6, 7. Therefore, it is not clear the Applicant was in possession of the claimed invention at the time of filing.
With respect to claim 18, claim 11 first defines the support/shield to be of electrode material as shown in fig.7-12. Claim 14, depending from claim 11, then states the electrode pad is arranged in a recess (fig.7). Claim 18 then adds that the pad has a bank portion (fig.10). The originally filed disclosure does not teach these two features to be usable together, nor does the priority document, nor the original claim set. This is further evidence by [0034] of the spec noting the support is of a different type in fig.7 as compared to fig.1-6, and [0054-55] noting that the support is different than in fig.1-6, 7. Therefore, it is not clear the Applicant was in possession of the claimed invention at the time of filing.
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.
Claim 9, 11, 13, 16-18 (and all claims dependent therefrom; 10-18) 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.
Claims 9 and 11 at line 5 refer to “both end faces” without first defining the presence of multiple end faces, making the scope of the claims unclear.
For purposes of examination, the claims are understood to be read as “two end faces”.
The term “close” in claims 9, 11 is a relative term which renders the claim indefinite. The term “close” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
For purposes of examination, “close” is understood to mean within 1/3 of the device length.
With respect to claims 13, 16-18, each of these claims could be read to be replacing the support/shield set forth in claim 9/10 or 11/12, or adding to the shield, and therefore the scope of the claims are not clear.
For purposes of examination when applying art, the limitations are read as being additions to the shields/supports.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 13, 16-18 rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
With respect to claim 13, claim 9/10 says the shield is of a resin. Claim 13 then states the shield is of semiconductor due to using a recessed pad. Claim 13 is therefore not properly inheriting the limitations of claim 9/10 and then adding further limitation thereto as it has been written in a manner that suggests the shield is being replaced, and not clearly add to.
With respect to claim 16, claim 11/12 says the shield is of a stacked electrode structure. Claim 16 then states the shield is of a bank surrounding the pad. Claim 16 is therefore not properly inheriting the limitations of claim 11/12 and then adding further limitation thereto as it has been written in a manner that suggests the shield is being replaced, and not clearly add to.
With respect to claim 17, claim 9/10 says the shield is of a resin. Claim 17 then states the shield is of semiconductor due to using a recessed pad. Claim 17 is therefore not properly inheriting the limitations of claim 9/10 and then adding further limitation thereto as it has been written in a manner that suggests the shield is being replaced, and not clearly add to.
With respect to claim 18, claim 11/12 says the shield is of a stacked electrode structure. Claim 18 then states the shield is of a bank surrounding the pad. Claim 18 is therefore not properly inheriting the limitations of claim 11/12 and then adding further limitation thereto as it has been written in a manner that suggests the shield is being replaced, and not clearly add to.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
(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(s) 11, 12 is/are rejected under 35 U.S.C. 102a1/2 as being anticipated by Furushima et al. (US 2008/0151960).
With respect to claim 11, Furushima discloses an optical semiconductor device (fig.1) comprising: a semiconductor layer in which a plurality of crystal layers (fig.2 #32, [0056], note semi growth forms crystalline structure) are stacked on a semiconductor substrate (fig.2 #31) and a resonator extending in a direction perpendicular to a stacking direction is formed (fig.2 in/out, fig.4 between coatings); a reflective film covering both end faces of the semiconductor layer in the extending direction of the resonator (fig.4 #55/56); an electrode pad (fig.1 #39, [0069]) that is locally formed by stacking metal layers ([0069]) on a mounting surface (fig.2 top of #32) opposite to a surface on which a rear surface electrode is disposed (fig.2 #37) among surfaces perpendicular to the stacking direction of the semiconductor layer so as to have a bonding surface to be connected to a bonding wire (fig.1 #52), and is for injecting a current into the semiconductor layer between the electrode pad and the rear surface electrode ([0068]); a support member (fig.1 #49s, can be considered to include portion of pad upon which they are mounted) that is arranged at each of positions on the mounting surface close to both the end faces (fig.1 #49 top and bottom), has a flat surface having a maximum height from the mounting surface in the stacking direction (as seen in fig.4), and supports a holder when the reflective film is coated (see fig.10 #30b); and a shielding mechanism (fig.4 #49s) in which a portion higher than the bonding surface in the stacking direction (fig.4 note dotted line higher than pads) extends between each of sides of the mounting surface that are adjacent to both the end faces and the bonding surface (#49s extend in two directions as seen in fig.1 and fig.4) so as to cover a region in which the bonding surface is formed in a direction perpendicular to the extending direction on the mounting surface (fig.1/4 covers region near bonding surface), wherein the support member is constituted with an electrode pattern formed in a stacked structure as with the electrode pad ([0078] made of metal and formed atop the pads such that portions of pads can be considered to constitute the support structures).
With respect to claim 12, Furushima discloses the support member functions as the shield ([0078]).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 9, 10, 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Furushima in view of Yoneda (US 2008/0017868) and Hongo et al. (US 2013/0028280).
With respect to claim 9, Furushima teaches an optical semiconductor device (fig.1) comprising: a semiconductor layer in which a plurality of crystal layers (fig.2 #32, [0056], note semi growth forms crystalline structure) are stacked on a semiconductor substrate (fig.2 #31) and a resonator extending in a direction perpendicular to a stacking direction is formed (fig.2 in/out, fig.4 between coatings); a reflective film covering both end faces of the semiconductor layer in the extending direction of the resonator (fig.4 #55/56); an electrode pad (fig.1 #39, [0069]) that is locally formed by stacking metal layers ([0069]) on a mounting surface (fig.2 top of #32) opposite to a surface on which a rear surface electrode is disposed (fig.2 #37) among surfaces perpendicular to the stacking direction of the semiconductor layer so as to have a bonding surface to be connected to a bonding wire (fig.1 #52), and is for injecting a current into the semiconductor layer between the electrode pad and the rear surface electrode ([0068]); a support member (fig.1 #49s, can be considered to include portion of pad upon which they are mounted) that is arranged at each of positions on the mounting surface close to both the end faces (fig.1 #49 top and bottom), has a flat surface having a maximum height from the mounting surface in the stacking direction (as seen in fig.4), and supports a holder when the reflective film is coated (see fig.10 #30b); and a shield (fig.4 #49s) in which a portion higher than the bonding surface in the stacking direction (fig.4 note dotted line higher than pads) extends between each of sides of the mounting surface that are adjacent to both the end faces and the bonding surface (#49s extend in two directions as seen in fig.1 and fig.4) so as to cover a region in which the bonding surface is formed in a direction perpendicular to the extending direction on the mounting surface (fig.1/4 covers region near bonding surface). Furushima further teaches the support/shields to be in a variety of locations (fig.11-15), and openings for the bonding surface (fig.1 space left for attaching wires), but does not teach the flat surface extends along each of sides of the mounting surface that are adjacent to both the end faces, and the flat surface is continuous from one end side to the other end side in the extending direction. Yoneda teaches a related device (fig.2a) which makes use of a support/shield (fig.2a A’s) which are used to block end face coatings from the pad ([0112]) and that fully surrounding structure shields the pad more effectively (fig.13b [0144]). It would have been obvious to one of ordinary skill in the art before the filing of the instant application to adapt the extent of the support/shields of Furushima such that the flat surface extends along each of sides of the mounting surface that are adjacent to both the end faces, and the flat surface is continuous from one end side to the other end side in the extending direction by completely surrounding the pad/bonding areas with a continual support/shield as demonstrated by Yoneda in order to more effectively block the coating from reaching the pads (Yoneda, [0144]).
Furushima further does not teach the support member is made of resin. Hongo teaches a related device (fig.2a/b) with a shield/support type structure (fig.2a/b #40s) which is capable of blocking coating (fig.2a/b #40s physically stop coating #50f/r) and that the shield/support is of resin ([0071]). It would have been obvious to one of ordinary skill in the art before the filing of the instant application to adapt the shield/support material of Furushima to make use of resin as demonstrated by Hongo in order to prevent electrical shorts (see also MPEP 2144.07).
With respect to claim 10, Furushima teaches the support member functions as the shield ([0078]).
With respect to claim 13, Furushima, as modified, teaches the device outlined above, but does not teach the electrode pad is arranged inside a recess formed by recessing the semiconductor layer in the stacking direction, and a portion of the semiconductor layer surrounding the recess functions as the shield. Yoneda teaches a related device (fig.2a) which makes use of a support/shield (fig.2a A’s) which are used to block end face coatings from the pad ([0112]), the electrode pad is arranged inside a recess formed by recessing the semiconductor layer in the stacking direction (fig.13a), and a portion of the semiconductor layer surrounding the recess functions as the shield ([0144]). It would have been obvious to one of ordinary skill in the art before the filing of the instant application to adapt the support/shields of Furushima such that the electrode pad is arranged inside a recess formed by recessing the semiconductor layer in the stacking direction, and a portion of the semiconductor layer surrounding the recess functions as the shield as demonstrated by Yoneda in order to more effectively block the coating from reaching the pads (Yoneda, [0144]).
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Furushima in view of Hongo.
With respect to claim 14, Furushima, teaches the device outlined above, but does not teach the electrode pad is arranged inside a recess formed by recessing the semiconductor layer in the stacking direction, and a portion of the semiconductor layer surrounding the recess functions as the shield. Yoneda teaches a related device (fig.2a) which makes use of a support/shield (fig.2a A’s) which are used to block end face coatings from the pad ([0112]), the electrode pad is arranged inside a recess formed by recessing the semiconductor layer in the stacking direction (fig.13a), and a portion of the semiconductor layer surrounding the recess functions as the shield ([0144]). It would have been obvious to one of ordinary skill in the art before the filing of the instant application to adapt the support/shields of Furushima such that the electrode pad is arranged inside a recess formed by recessing the semiconductor layer in the stacking direction, and a portion of the semiconductor layer surrounding the recess functions as the shield as demonstrated by Yoneda in order to more effectively block the coating from reaching the pads (Yoneda, [0144]).
Claim(s) 15, 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Furushima in view of Nakanishi et al. (US 2018/0287339).
With respect to claims 15, 16, Furushima teaches the device outlined above, but does not teach a bank that surrounds the bonding surface and functions as the shield is formed in the electrode pad. Nakanishi teaches a related device (fig.2a/b) which includes a bank (fig.2a/b #114a-d) that surrounds a bonding surface (fig.2a/b #113c) and functions as a shield ([0047-48]) is formed in the electrode pad. It would have been obvious to one of ordinary skill in the art before the filing of the instant application to adapt the device of Furushima such that a bank that surrounds the bonding surface and functions as the shield is formed in the electrode pad as demonstrated by Nakanishi in order to further protect the pad from unwanted coating (Nakanishi, [0047-48]).
Claim(s) 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Furushima, Yoneda, Hongo in view of Nakanishi.
With respect to claim 17, Furushima, as modified, teaches the device outlined above, but does not teach a bank that surrounds the bonding surface and functions as the shield is formed in the electrode pad. Nakanishi teaches a related device (fig.2a/b) which includes a bank (fig.2a/b #114a-d) that surrounds a bonding surface (fig.2a/b #113c) and functions as a shield ([0047-48]) is formed in the electrode pad. It would have been obvious to one of ordinary skill in the art before the filing of the instant application to adapt the device of Furushima such that a bank that surrounds the bonding surface and functions as the shield is formed in the electrode pad as demonstrated by Nakanishi in order to further protect the pad from unwanted coating (Nakanishi, [0047-48]).
Claim(s) 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Furushima and Hongo in view of Nakanishi.
With respect to claim 18, Furushima, as modified, teaches the device outlined above, but does not teach a bank that surrounds the bonding surface and functions as the shield is formed in the electrode pad. Nakanishi teaches a related device (fig.2a/b) which includes a bank (fig.2a/b #114a-d) that surrounds a bonding surface (fig.2a/b #113c) and functions as a shield ([0047-48]) is formed in the electrode pad. It would have been obvious to one of ordinary skill in the art before the filing of the instant application to adapt the device of Furushima such that a bank that surrounds the bonding surface and functions as the shield is formed in the electrode pad as demonstrated by Nakanishi in order to further protect the pad from unwanted coating (Nakanishi, [0047-48]).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Please see the attached pto892 form for a list of related art.
Note the secondary art cited above is closely related to both claims 9 and 11.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TOD THOMAS VAN ROY whose telephone number is (571)272-8447. The examiner can normally be reached M-F: 8AM-430PM.
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/TOD T VAN ROY/Primary Examiner, Art Unit 2828
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