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 .
Claim Rejections - 35 USC § 103
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) 1 and 4-8 are rejected under 35 U.S.C. 103 as being unpatentable over Kunimoto et al. (U.S. 2019/0280164 A1, hereinafter refer to Kunimoto) in view of Sekine et al. (U.S. 2022/0392883 A1, hereinafter refer to Sekine).
Regarding Claim 1: Kunimoto discloses a method of manufacturing an optical member (see Kunimoto, Figs.1-9, 12, and 16-17 as shown below and ¶ [0001]), the method comprising:
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providing a polycrystalline wavelength conversion member (1/10) comprising phosphor particles (3) and having a first surface and a second surface opposite to the first surface (note: the wavelength conversion member (1/10) includes a phosphor particles and inorganic matrix 2. When laser is used to form the breaking grooves 13, the inorganic matrix 2 necessarily become in the crystalline from due to laser irradiation) (see Kunimoto, Figs.6-9, 12, and 16-17 as shown above and ¶ [0048]);
forming a modified portion (breaking grooves 13) inside the wavelength conversion member by focusing laser light inside the wavelength conversion member (see Kunimoto, Figs.6-9, 12, and 16-17 as shown above and ¶ [0048]); and
cleaving the wavelength conversion member (1/10) with the modified portion (breaking grooves 13) being a starting point, which comprises pressing (30) the wavelength conversion member (1/10) from a first surface side (see Kunimoto, Figs.6-9, 12, and 16-17 as shown above and ¶ [0050]- ¶ [0052]).
Kunimoto is silent upon explicitly disclosing wherein forming a modified portion inside the wavelength conversion member by focusing laser light inside the wavelength conversion member; and
cleaving the wavelength conversion member with the modified portion being a starting point, which comprises pressing the wavelength conversion member from a first surface side.
For support see SeKine which teaches wherein forming a modified portion (LM) inside the wavelength conversion member (80/member) by focusing laser light inside the wavelength conversion member (80/member) (see Sekine, Figs.3J-3K as shown below and ¶ [0061]); and
cleaving the wavelength conversion member (80/member) with the modified portion (LM) being a starting point, which comprises pressing the wavelength conversion member (80/member) from a first surface side (see Sekine, Figs.3J-3K as shown below, ¶ [0025], and ¶ [0061]).
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Thus, it would have been within the scope of one of ordinary skill in the art before effective filing date of the claimed invention to combine the teachings of Kunimoto and Sekine to enable the Kunimoto’s wavelength conversion member to be divided according to the teachings of Sekine because one of ordinary skill in the art before effective filing date of the claimed invention would have been motivated to look to alternative suitable methods of dividing the disclosed wavelength conversion member step of Kunimoto and art recognized suitability for preventing or mitigating warpage of the semiconductor device has been recognized to be motivation to combine. MPEP § 2144.07.
Regarding Claim 4: Kunimoto as modified teaches a method of manufacturing an optical member as set forth in claim 1 as above. The combination of Kunimoto and Sekine further teaches wherein, in the step of forming the modified portion, the modified portion (LM) is formed at a position spaced apart from the first surface and the second surface (see Sekine, Figs.3J-3K as shown above).
Regarding Claim 5: Kunimoto as modified teaches a method of manufacturing an optical member as set forth in claim 1 as above. The combination of Kunimoto and Sekine is silent upon explicitly disclosing wherein, in the step of forming the modified portion, the modified portion is formed in a region having a depth of greater than 0 and 10 μm or less from the second surface of the wavelength conversion member.
However, the combination of Kunimoto and Sekine teaches step of forming the modified portion (Fig.3J, LM/ Figs.1-6, breaking grooves 13), the modified portion is formed in a region having a depth of greater than 0 or less from the second surface of the wavelength conversion member (Fig.3J, 80/ Figs.1-6, 1/10) (see Sekine, Figs.3J-3K as shown above and see Kunimoto, Figs.6-9, 12, and 16-17 as shown above and ¶ [0048]).
Hence, it would have been obvious to one of ordinary skill in the art of making semiconductor devices to determine the workable or optimal value for the depth of modified portion of the wavelength conversion member through routine experimentation and optimization to prevent separation failure because the depth of modified portion of the wavelength conversion member is a result-effective variable and there is no evidence indicating that it is critical or produces any unexpected results and it has been held that it is not inventive to discover the optimum or workable ranges of a result-effective variable within given prior art conditions by routine experimentation. See MPEP § 2144.05
Regarding Claim 6: Kunimoto as modified teaches a method of manufacturing an optical member as set forth in claim 1 as above. The combination of Kunimoto and Sekine is silent upon explicitly disclosing wherein a length of the modified portion in a depth direction of the wavelength conversion member is 2% or more and 30% or less of a thickness of the wavelength conversion member.
However, the combination of Kunimoto and Sekine teaches wherein a length of the modified portion (Fig.3J, LM/ Figs.1-6, breaking grooves 13) in a depth direction of the wavelength conversion member (Fig.3J, 80/ Figs.1-6, 1/10) is more than 0% and less than 100% of a thickness of the wavelength conversion member (Fig.3J, 80/ Figs.1-6, 1/10) (see Sekine, Figs.3J-3K as shown above and see Kunimoto, Figs.6-9, 12, and 16-17 as shown above and ¶ [0048]).
Hence, it would have been obvious to one of ordinary skill in the art of making semiconductor devices to determine the workable or optimal value for the length of the modified portion in a depth direction of the wavelength conversion member through routine experimentation and optimization to prevent separation failure because the length of the modified portion in a depth direction of the wavelength conversion member is a result-effective variable and there is no evidence indicating that it is critical or produces any unexpected results and it has been held that it is not inventive to discover the optimum or workable ranges of a result-effective variable within given prior art conditions by routine experimentation. See MPEP § 2144.05
Regarding Claim 7: Kunimoto as modified teaches a method of manufacturing an optical member as set forth in claim 1 as above. The combination of Kunimoto and Sekine is silent upon explicitly disclosing wherein a width of the modified portion in a direction parallel to the second surface of the wavelength conversion member is 1 μm or more and 10 μm or less.
However, the combination of Kunimoto and Sekine teaches wherein a width of the modified portion (Fig.3J, LM/ Figs.1-6, breaking grooves 13) in a direction parallel to the second surface of the wavelength conversion member (Fig.3J, 80/ Figs.1-6, 1/10) is more than 0% and less than 100%(see Sekine, Figs.3J-3K as shown above and see Kunimoto, Figs.6-9, 12, and 16-17 as shown above and ¶ [0048]).
Hence, it would have been obvious to one of ordinary skill in the art of making semiconductor devices to determine the workable or optimal value for the width of the modified portion in a direction parallel to the second surface of the wavelength conversion member through routine experimentation and optimization to prevent separation failure because the width of the modified portion in a direction parallel to the second surface of the wavelength conversion member is a result-effective variable and there is no evidence indicating that it is critical or produces any unexpected results and it has been held that it is not inventive to discover the optimum or workable ranges of a result-effective variable within given prior art conditions by routine experimentation. See MPEP § 2144.05
Regarding Claim 8: Kunimoto as modified teaches a method of manufacturing an optical member as set forth in claim 1 as above. The combination of Kunimoto and Sekine further teaches wherein: in the step of forming the modified portion (LM), the modified portion (LM) is formed in a linear shape in a top view (see Sekine, Figs.7-8), and
in the step of cleaving the wavelength conversion member (1/10), the wavelength conversion member (1/10) is pressed along the linear-shaped modified portion (13) (see Kunimoto, Fig.1 as shown above and ¶ [0048]).
Claim(s) 2-3 are rejected under 35 U.S.C. 103 as being unpatentable over Kunimoto et al. (U.S. 2019/0280164 A1, hereinafter refer to Kunimoto) and Sekine et al. (U.S. 2022/0392883 A1, hereinafter refer to Sekine) as applied to claim 1 above, and further in view of Kunimoto (U.S. 2022/0281137 A1, hereinafter refer to Kunimoto’137).
Regarding Claim 2: Kunimoto as modified teaches a method of manufacturing an optical member as applied to claim 1 above. The combination of Kunimoto and Sekine is silent upon explicitly disclosing wherein, in the step of cleaving the wavelength conversion member, a support member is disposed on the second surface of the wavelength conversion member, and the wavelength conversion member is pressed from the first surface side by a pressing member.
For support see Kunimoto’137, which teaches wherein, in the step of cleaving the wavelength conversion member (11), a support member (26) is disposed on the second surface of the wavelength conversion member (11), and the wavelength conversion member (11) is pressed from the first surface side by a pressing member (26) (see Kunimoto’137, Fig.10 as shown below, and ¶ [0006]).
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Thus, it would have been within the scope of one of ordinary skill in the art before effective filing date of the claimed invention to combine the teachings of Kunimoto, Sekine, and Kunimoto’137 to enable the combination of Kunimoto’s and Sekine wavelength conversion member to be divided according to the teachings of Kunimoto’137 because one of ordinary skill in the art before effective filing date of the claimed invention would have been motivated to look to alternative suitable methods of dividing the disclosed wavelength conversion member step of the combination of Kunimoto and Sekine and art recognized suitability for preventing shape defects in the plate-like members has been recognized to be motivation to combine. MPEP § 2144.07.
Regarding Claim 3: Kunimoto as modified teaches a method of manufacturing an optical member as set forth in claim 2 as above. The combination of Kunimoto, Sekine, and Kunimoto’137 further teaches wherein, in the step of cleaving the wavelength conversion member (11), the support member (26) is elastically deformed by the pressing of the wavelength conversion member (11) (see Kunimoto’137, Fig.10 as shown above).
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.
Claim(s) 9 and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kunimoto et al. (U.S. 2019/0280164 A1, hereinafter refer to Kunimoto).
Regarding Claim 9: Kunimoto discloses a light emitting device (see Kunimoto, Fig.12 as shown above and ¶ [0001]) comprising:
a light emitting element (51) (see Kunimoto, Fig.12 as shown above);
an optical member (1/10) disposed over the light emitting element (51) and having a plate shape (see Kunimoto, Fig.12 as shown above); and
a covering member (41) covering lateral surfaces of the optical member (1/10) and lateral surfaces of the light emitting element (41) (see Kunimoto, Fig.12 as shown above),
wherein: an upper surface of the optical member (1/10) is exposed from the covering member (41) (see Kunimoto, Fig.12 as shown above),
the optical member (1/10) is a polycrystalline wavelength conversion member comprising phosphor particles (3) (see Kunimoto, Figs.12 and 16-17 as shown above), the optical member includes:
a first region where surfaces of phosphor particles (3) are exposed (see Kunimoto, Figs.12 and 16-17 as shown above) and
a second region where cross sections of phosphor particles (3) are exposed (see Kunimoto, Figs.12 and 16-17 as shown above), and
the first region and the second region are located at different positions on a lateral surface of the wavelength conversion member (1/10) in a height direction thereof (see Kunimoto, Figs.12 and 16-17 as shown above).
Regarding Claim 12: Kunimoto discloses a light emitting device as set forth in claim 9 as above. Kunimoto further teaches wherein the first region is provided over all of the lateral surfaces of the optical member (1/10) along outer edges of a lower surface of the optical member (1/10) (see Kunimoto, Figs.12 and 16-17 as shown above).
Claim Rejections - 35 USC § 103
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) 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over Kunimoto et al. (U.S. 2019/0280164 A1, hereinafter refer to Kunimoto) as applied to claim 9 above, and further in view of Shimizu et al. (U.S. 2020/0243726 A1, hereinafter refer to Shimizu).
Regarding Claim 10: Kunimoto discloses a light emitting device as applied to claim 9 above. Kunimoto is silent upon explicitly disclosing wherein a surface roughness of the first region is greater than a surface roughness of the second region.
For support see Shimizu, which teaches wherein a surface roughness of the first region (2/Raout) is greater than a surface roughness of the second region (1/ Rain) (see Shimizu, Figs.1-2 as shown below, ¶ [0008], ¶ [0039], and ¶ [0050]- ¶ [0051]).
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Thus, it would have been obvious to one of ordinary skill in the art before effective filing date of the claimed invention to combine the teachings of Kunimoto and Shimixu to enable the surface roughness of the first region to be greater than a surface roughness of the second region as taught by Shimizu in order to obtain an excellent aesthetic appearance when not irradiated with excitation light and an excellent luminescence intensity.
Regarding Claim 11: Kunimoto as modified teaches a light emitting device as set forth in claim 10 as above. The combination of Kunimoto and Shimizu further teaches wherein an arithmetic average surface roughness Ra of the first region (2/Raout) is 2.0 μm or more and 3.0 μm or less (0.08 to 0.22 μm), and an arithmetic average surface roughness Ra of the second region (1/ Rain) is 0.5 μm or more and 1.0 μm or less (0.05 μm or more) (see Shimizu, Figs.1-2 as shown above, ¶ [0008], ¶ [0039], and ¶ [0050]- ¶ [0051]).
The combination of Kunimoto and Shimizu teaches smaller ranges of the arithmetic average surface roughness Ra of the first region and the second region as shown above; however, it would have been obvious to one of ordinary skill in the art of making semiconductor devices to determine the workable or optimal value for the arithmetic average surface roughness Ra of the first region and the second region through routine experimentation and optimization to obtain an excellent aesthetic appearance when not irradiated with excitation light and an excellent luminescence intensity because the arithmetic average surface roughness Ra of the first region and the second region is a result-effective variable and there is no evidence indicating that it is critical or produces any unexpected results and it has been held that it is not inventive to discover the optimum or workable ranges of a result-effective variable within given prior art conditions by routine experimentation. See MPEP § 2144.05
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BITEW A DINKE whose telephone number is (571)272-0534. The examiner can normally be reached M-F 7 a.m. - 5 p.m..
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Davienne Monbleau can be reached at (571)272-1945. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BITEW A DINKE/Primary Examiner, Art Unit 2812
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