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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Specification
The disclosure is objected to because of the following informalities:
Page 7, paragraph 36, line 5: Change “is” to “to be”.
Page 11, paragraph 48, line 5: Change 1b to 1c. Compare with lines 2-3.
Appropriate correction is required.
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.
Claim 11 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for values closer to 0.1 mm, does not reasonably provide enablement for higher values, such as 1 meter, 1 kilometer, and so on. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the invention commensurate in scope with these claims.
Regarding claim 11, which depends from claim 1: Claim 1 defines an engaging protrusion disposed on a periphery of the upper surface of the lead frame. Claim 11, which depends from claim 1, requires a length, a width, or a height of the engaging protrusion to be greater than 0.1mm. While a length, width, or height greater than but near 0.1mm is reasonable, lengths, widths, and heights that are significantly larger than 0.1mm, such as a meter, or a kilometer, or greater, are not reasonable. For these reasons, claim 11 is rejected for lack of enablement of the full scope of the claim.
There are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is "undue." These factors include, but are not limited to:
(A) The breadth of the claims;
(B) The nature of the invention;
(C) The state of the prior art;
(D) The level of one of ordinary skill;
(E) The level of predictability in the art;
(F) The amount of direction provided by the inventor;
(G) The existence of working examples; and
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988).
(A) The breadth of the claims: The breadth of the claims encompasses a length, a width, or a height of greater than 0.1mm, as well as much larger lengths, widths, and heights of a meter, a kilometer, or more.
(B) The nature of the invention: The invention is a semiconductor.
(C) The state of the prior art: The prior art discloses small scale packages on the scale of millimeters. See, e.g., Ukawa, U.S. Pat. Pub. No. 2020/0251617, paragraph 47 (discussion of reflecting layer thickness of up to 10 mm).
(D) The level of one of ordinary skill: One having ordinary skill in the art would have a bachelor’s degree in electrical engineering or materials science and 5 years of experience in the semiconductor industry.
(E) The level of predictability in the art: The level of predictability is high for lengths, widths, and heights of the engaging protrusion near, but greater than, 0.1mm, but is low for lengths, widths, and heights of the engaging protrusion that are significantly higher than a height, width, or length of greater than 0.1mm.
(F) The amount of direction provided by the inventor: The inventor provides direction for the lower end of the range, but none for the upper, undefined portion of the range.
(G) The existence of working examples: The disclosure has no working examples.
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure: Given the information provided by the inventor, the state of the prior art, and the scope of the claims, the quantity of experimentation is undue. For this reason, claim 11 is rejected for lack of enablement for the full scope of the claim.
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 11 is 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.
Regarding claim 11, which depends from claim 1: Claim 1 defines an engaging protrusion disposed on a periphery of the upper surface of the lead frame. Claim 11, which depends from claim 1, requires a length, a width, or a height of the engaging protrusion to be greater than 0.1mm. However, no upper limit is defined. Because no upper limit is defined, claim 11 is rejected as indefinite.
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.
Claims 1-3, 8-12, 16, and 20 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Ukawa, U.S. Pat. Pub. No. 2020/0251617, Figures 10 and 1A-4, [hereinafter Ukawa ’617] with evidence from Ukawa, U.S. Pat. Pub. No. 2014/0291716 [hereinafter Ukawa ’716].
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Regarding claim 1: Ukawa ’617 Figure 10, which incorporates by reference Ukawa ’617 Figures 1A-4, discloses a package structure (10A), comprising: a lead frame (20) having an upper surface, a lower surface, and a side surface, wherein the side surface is between the upper surface and the lower surface; a first connecting piece (20A) disposed at a center of the upper surface; a light-emitting diode (40) disposed on the first connecting piece (20A); an engaging protrusion (50) disposed on a periphery of the upper surface; and an encapsulant (80, 70), which includes what Ukawa ’617 describes as a phosphorescent material, such as cerium-activated yttrium-aluminum-garnet phosphors (YAG:Ce), disposed on the upper surface and covering the light-emitting diode (40) and the engaging protrusion (50). Ukawa ’617 specification ¶¶ 110-114, 37-90.
Ukawa ’716, directed to similar subject matter, discloses that cerium-activated yttrium-aluminum-garnet (YAG:Ce) is a fluorescent material. Ukawa ’716 specification ¶ 75. Thus, Ukawa ’617 discloses a fluorescent encapsulant.
To the extent that Ukawa ’617 Figure 10 does not incorporate by reference Ukawa ’617 Figures 1A-4, one having ordinary skill in the art at a time before the effective filing date would be motivated to modify Ukawa ’617 Figure 10 to include elements from Ukawa ’617 Figures 1A-4 because the modification would have involved the substitution of an equivalent known for the same purpose. Furthermore, to the extent that Ukawa ’617 does not disclose a fluorescent encapsulant by use of evidence from Ukawa ’716, one having ordinary skill in the art at a time before the effective filing date would be motivated to modify Ukawa ’617 to use the fluorescent encapsulant of Ukawa ’716 because the modification would have involved the substitution of an equivalent known for the same purpose.
Regarding claim 2, which depends from claim 1: Ukawa ’617 discloses that the lead frame (20) has a corner, and the engaging protrusion (50) is on the corner of the lead frame (20) and extends along two adjacent sides of the lead frame (20). See Ukawa ’617 Figures 1A, 1B.
Regarding claim 3, which depends from claim 1: Ukawa ’617 discloses a step portion (30), wherein the step portion (30) is between the engaging protrusion (50) and the lead frame (20B of leadframe (20)). See id.
Regarding claim 8, which depends from claim 1: Ukawa ’617 discloses the lead frame (20) has one side, and the engaging protrusion (50) is on the side of the lead frame (20) and extends toward a corner of the lead frame (20). Ukawa ’617 specification ¶ 56 (describing square shape of engaging protrusion (50) in alternate embodiment).
Regarding claim 9, which depends from claim 1: Ukawa ’617 discloses that the engaging protrusion (50) is disposed around the lead frame (20). See Ukawa ’617 Figures 1A, 1B.
Regarding claim 10, which depends from claim 1: Ukawa ’617 discloses that a material of the engaging protrusion (50) is different from a material of the lead frame (20). See Ukawa ’617 specification ¶¶ 49 (materials of securing member (20C), 45, 46, 55 (materials of first and second leads (20A, 20B), 60, 61 (materials of engaging protrusion (50)).
Regarding claim 11, which depends from claim 1: Ukawa ’617 discloses a thickness of a reflective film on the first lead (20A) and the second lead (20B) is approximately 20 nm to 10 µm, more preferably in the range of 100 nm to 3 µm, and states that the thicknesses of the first lead (20A) and the second lead (20B) can be appropriately selected in ranges known in the art. Ukawa specification ’617 ¶ 47. Thus, the thickness of the first and second leads (20A, 20B) are at least 100 nm, or 0.1 µm, based on the most preferable embodiment for the reflective film. From Ukawa ’617 Figure 1B, the height of engaging protrusion (50) is greater than the thickness of the first and second leads (20A, 20B), and because the engaging protrusion (50) surrounds the light emitting device (40), the length of the engaging protrusion is greater than a thickness of the first and second leads (20A, 20B). Thus, a length or a height of the engaging protrusion (50) would be greater than 0.1 mm. To the extent that Ukawa ’617 does not anticipate claim 11, one having ordinary skill in the art at a time before the effective filing date would have reason, based on the scale of the reflective film on the leads, to know that a length or a height of the engaging protrusion (50) would be greater than 0.1 mm. For these reasons, claim 11 is obvious.
Regarding claim 12, which depends from claim 1: Ukawa ’617 discloses the light-emitting diode is a blue LED, and the fluorescent encapsulant comprises yellow light conversion materials. Ukawa ’617 specification ¶ 114; Ukawa ’716 specification ¶ 75.
Regarding claim 16, which depends from claim 1: Ukawa ’617 discloses a second connecting piece (60) disposed on the upper surface, and the second connecting piece (60) is between the engaging protrusion (50) and the first connecting piece (20A). See, e.g., Ukawa ’617 Figure 1A. See also Ukawa ’617 specification ¶ 41.
For purposes of rejecting claim 20, the following rejection of claim 1 is provided:
Regarding claim 1: Ukawa ’617 Figure 10, which incorporates by reference Ukawa ’617 Figures 1A-4, discloses a package structure (10A), comprising: a lead frame (20) having an upper surface, a lower surface, and a side surface, wherein the side surface is between the upper surface and the lower surface; a first connecting piece (20A) disposed at a center of the upper surface; a light-emitting diode (40) disposed on the first connecting piece (20A); an engaging protrusion (30, 50) disposed on a periphery of the upper surface; and an encapsulant (80, 70), which includes what Ukawa ’617 describes as a phosphorescent material, such as cerium-activated yttrium-aluminum-garnet phosphors (YAG:Ce), disposed on the upper surface and covering the light-emitting diode (40) and the engaging protrusion (30, 50). Ukawa ’617 specification ¶¶ 110-114, 37-90.
Ukawa ’716, directed to similar subject matter, discloses that cerium-activated yttrium-aluminum-garnet (YAG:Ce) is a fluorescent material. Ukawa ’716 specification ¶ 75. Thus, Ukawa ’617 discloses a fluorescent encapsulant.
Regarding claim 20, which depends from claim 1: Ukawa ’617 discloses the engaging protrusion (30, 50) is wavy or stepped in a side view. See Ukawa ’617 Figure 1B. See also Ukawa ’617 specification ¶¶ 76, 77, 123.
Allowable Subject Matter
Claims 4-7, 13-15, and 17-19 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.
The following is a statement of reasons for the indication of allowable subject matter:
With regard to claim 4: The claim has been found allowable because the prior art of record does not disclose “in a plan view, an area of the step portion is larger than an area of the engaging protrusion”, in combination with the remaining limitations of the claim.
With regard to claim 5: The claim has been found allowable because the prior art of record does not disclose “the engaging protrusion has a first through hole, and a part of the fluorescent encapsulant is in the first through hole”, in combination with the remaining limitations of the claim.
With regard to claim 6: The claim has been found allowable because the prior art of record does not disclose “the step portion has a second through hole, and a part of the fluorescent encapsulant is in the second through hole”, in combination with the remaining limitations of the claim.
With regard to claim 7: The claim has been found allowable because the prior art of record does not disclose “the engaging protrusion has a first through hole, the step portion has a second through hole, and a part of the fluorescent encapsulant is in the first through hole and the second through hole”, in combination with the remaining limitations of the claim.
With regard to claim 13: The claim has been found allowable because the prior art of record does not disclose “a white encapsulant disposed on the fluorescent encapsulant”, in combination with the remaining limitations of the claim.
With regard to claims 14 and 15: The claims have been found allowable due to their dependency from claim 13 above.
With regard to claim 17: The claim has been found allowable because the prior art of record does not disclose “a supporting piece disposed in the lead frame, wherein a mechanical strength of the supporting piece is higher than a mechanical strength of the lead frame”, in combination with the remaining limitations of the claim.
With regard to claims 18 and 19: The claims have been found allowable due to their dependency from claim 17 above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VICTORIA KATHLEEN HALL whose telephone number is (571)270-7567. The examiner can normally be reached Monday-Friday, 8 a.m.-5 p.m.
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/Victoria K. Hall/Primary Examiner, Art Unit 2897
