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 .
Response to Amendment
The application as filed, filed August 29, 2024, included an original claim set and a preliminary amendment claim set. In response to a Notice of Missing Requirements, mailed February 20, 2025, Applicant filed an additional claim set, filed February 27, 2025, that appeared to be identical to the original, unamended, claim set. A telephone call with Bill Boshnick on June 29, 2026 confirmed that the preliminary amendment claim set should be the examined claim set.
Disposition of Claims
Claims 1-14 are pending and rejected.
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 "the same angle" at which the excitation light and the fluorescen must be shown or the features canceled from the claims. 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 Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier.
Such claim limitation is:
"a light emitting element that emits excitation light" in Claim 1, as described in Para. [0045] of Applicant’s specification.
Because this claim limitation is being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it is being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this limitation interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation to avoid it being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation recites sufficient structure to perform the claimed function so as to avoid it being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112(a)
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 2-11 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, at the time the application was filed, had possession of the claimed invention.
Regarding Claim 2, Claim 2 recites the limitations “the phosphor covers the light emitting element”, “a thickness [D1] of the light emitting device is a thickness from a first surface of the light emitting element… in contact with the installation surface to a second surface of the light emitting element… opposite… the first surface of the light emitting element [emphasis added]”, “a thickness [D2] of the phosphor is a thickness from a first surface of the phosphor… in contact with the installation surface to a second surface of the phosphor… opposite… the first surface of the phosphor [emphasis added]” and “D2/D1 ≤ 3.5 [i.e., 0 < D2/D1 ≤ 3.5]” on Lines 3-4, Lines 5-8, Lines 9-11 & Line 15, respectively. Applicant’s disclosure does not provide sufficient written description to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor, at the time the application was filed, had possession of wherein 0 < D2/D1 < 1.
While, inter alia, Paras. [0067] – [0068], [0096] & [0113] – [0126] recite 0 < D2/D1 ≤ 3.5 and provides sufficient written description to convey Applicant had possession of 1 ≤ D2/D1 ≤ 3.5, Applicant’s disclosure lacks sufficient written description convey Applicant’s possession of 0 < D2/D1 < 1. Specifically, Applicant defines D1 as a thickness of the blue LED 27b from a bottom surface of the blue LED 27b —contacting the top surface 28a of the substrate 28— to the light emitting surface of the blue LED 27b (see Para. [0067] & Fig. 5). Applicant further defines D2 as a thickness of the yellow phosphor 27y from a bottom surface of the yellow phosphor 27y —contacting the top surface 28a of the substrate 28 (i.e., the bottom surface of the blue LED 27b)— to the light emitting surface of the yellow phosphor 27y (see Para. [0068] & Fig. 5). Finally, Applicant requires and that the yellow phosphor 27y must cover/surround the blue LED 27b (see Para. [0097]). Given that the bottom surface of the blue LED 27b and the bottom surface of the yellow phosphor 27y are at the same height/location and that yellow phosphor 27y must cover/surround the blue LED 27b, D2/D1 cannot be less than 1 or D2 would be smaller than D1. Applicant’s specification, therefore, has not provided sufficient written description of the yellow phosphor 27y covering/surrounding the blue LED 27b and have D2/D1< 1.
Regarding Claims 3-11, Claims 3-11 are rejected as being dependent upon claims previously rejected under 35 U.S.C. § 112(a).
Claim Rejections - 35 USC § 112(b)
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 1-14 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.
Regarding Claim 1, Claim 1 recites the limitations “the thickness of the light emitting element”, “the thickness of the phosphor”, “the same angle” and “the same direction” on Lines 9 & 11-12, respectively. There is insufficient antecedent basis for these limitations in the claims. For the purpose of examination, “the thickness of the light emitting element”, “the thickness of the phosphor”, “the same angle” and “the same direction” are being interpreted as “a thickness of the light emitting element”, “a thickness of the phosphor”, “a same angle” and “a same direction”.
Regarding Claim 1, Claim 1 recites the limitation “the excitation light… emitted from the light source unit” on Line 10. It is unclear whether this “excitation light… emitted from the light source” is the same as the “excitation light [emitted from the light emitting element]” previously recited on Line 2, or a separate, different excitation light. For the purpose of examination, “the excitation light… emitted from the light source unit” is being interpreted as “an excitation light… emitted from the light source unit”.
Regarding Claim 1, Claim 1 recites the limitation “the fluorescence emitted from the light source unit” on Line 10. It is unclear whether this “fluorescence emitted from the light source unit” is the same as the “fluorescence [emitted by the phosphor]” previously recited on Line 3, or a separate, different fluorescence. For the purpose of examination, “the fluorescence emitted from the light source unit” is being interpreted as “a fluorescence emitted from the light source unit”.
Regarding Claim 1, Claim 1 recites the limitation “the excitation light and the fluorescence… are emitted in substantially the same direction from the first emission surface or the second emission surface, respectively [emphasis added]” on Lines 10-12. It is unclear:
a) whether the excitation light is only emitted from the first emission surface and the fluorescence is only emitted from the second emission surface;
b) whether the excitation light and the fluorescence are both emitted from the first emission surface or both emitted from the second emission surface; or
c) whether the excitation light is emitted from either the first emission surface or the second emission surface and the fluorescence is emitted from either the first emission surface or the second emission.
For the purpose of examination, “the excitation light and the fluorescence… are emitted in substantially the same direction from the first emission surface or the second emission surface, respectively” is being interpreted as wherein the excitation light is emitted from either the first emission surface or the second emission surface and the fluorescence is emitted from either the first emission surface or the second emission and both are emitted in the same direction.
Regarding Claim 2, Claim 2 recites the limitation “a thickness of the light emitting element” on Line 5 and Line 13, respectively. It is unclear whether this “thickness of the light emitting element” is the same as the “thickness of the light emitting element” previously recited on Line 9 of Claim 1, or a separate, different thickness. For the purpose of examination, “a thickness of the light emitting element” is being interpreted as “the thickness of the light emitting element”.
Regarding Claim 2, Claim 2 recites the limitation “a thickness of the phosphor” on Line 9 and Line 13, respectively. It is unclear whether this “thickness of the phosphor” is the same as the “thickness of the phosphor” previously recited on Line 9 of Claim 1, or a separate, different thickness. For the purpose of examination, “a thickness of the phosphor” is being interpreted as “the thickness of the phosphor”.
Regarding Claim 6, Claim 6 recites the limitation “an incident surface facing the second surface [emphasis added]” on Line 3. It is unclear whether this second surface is the same as the “second surface of the light emitting element” previously recited on Lines 6-7 of Claim 2, the “second surface of the phosphor” previously recited on Line 10 of Claim 2, or a separate, different second surface. For the purpose of examination, “an incident surface facing the second surface” is being interpreted as “an incident surface facing the second surface of the phosphor”.
Regarding Claim 14, Claim 14 recites the limitation “a plurality of light source units” on Line 8. It is unclear whether these “plurality of light source units” include the “light source unit” previously recited on Line 2 of Claim 1, or separate, different light source units. For the purpose of examination, “a plurality of light source units” is being interpreted as “a plurality of light source units which includes the light source unit”.
Regarding Claims 3-5 & 7-13, Claims 3-5 & 7-13 are rejected as being dependent upon claims previously rejected under 35 U.S.C. § 112(b).
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.
Claims 1 & 12-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tamura et al. (hereinafter "Tamura") (US 2018/0100627).
Regarding Claim 1, Tamura discloses an endoscope illumination device (Fig. 1, 10; [0027]) comprising:
a light source unit (Fig. 2, a light emission assembly 16, 110, 120, 130; [0038] & [0039]) that includes a light emitting element (Fig. 2, 16; [0038]) that emits excitation light (Fig. 5, first excitation light; [0038]) and a phosphor (Fig. 2, 110; [0039]) that is excited by the excitation light ([0040]) to emit fluorescence (Fig. 5, first wavelength-converted light; [0040]), and emits illumination light (illumination light; [0038]) in which the excitation light and the fluorescence are mixed ([0029]); and
a light distribution lens (Fig. 2, 140; [0044]) having an emission surface (Fig. 2, 142; [0045]) that emits the illumination light incident from the light source unit ([0045]), wherein
the emission surface includes a first emission surface (Figs. 2 & 5, a surface of a first portion of 140 which is above C; [0048]) and a second emission surface (Figs. 2 & 5, a surface of a second portion of 140 which is below C; [0048]) formed in different regions in the emission surface (see Figs. 2 & 5), and
the thickness of the light emitting element and the thickness of the phosphor are defined such that the excitation light (Fig. 5, first excitation light diffused light emitted from 122 of the light emission assembly; [0043] & [0044]) and the fluorescence emitted from the light source unit (Fig. 5, first wavelength-converted light emitted from 122 of the light emission assembly; [0045]) at the same angle ([0045]) and incident on the light distribution lens ([0045]) are emitted in substantially the same direction from the first emission surface or the second emission surface, respectively (see Fig. 5).
Regarding Claim 12, Tamura discloses the endoscope illumination device according to Claim 1. Tamura further discloses wherein a light distribution angle of the illumination light is 180° or greater (see Fig. 5).
Regarding Claim 13, Tamura discloses the endoscope illumination device according to Claim 1. Tamura further discloses wherein the illumination light is white light ([0078]).
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 14 is rejected under 35 U.S.C. 103 as being unpatentable over Komoro et al. (hereinafter "Komoro") (WO 2021/090796) in view of Tamura et al. (hereinafter "Tamura") (US 2018/0100627).
Regarding Claim 14, Komoro, as best understood, discloses an endoscope (Fig. 1, 10; [0009]) comprising:
an insertion tube (Fig. 1, 14; [0009]);
an imaging unit (Fig. 4, 362; [0030]) provided at a distal end portion of the insertion tube (Figs. 1 & 4, 13; [0010]); and
an endoscope illumination device (Fig. 4, an illumination assembly comprising 39 and 41; [0015] & [0023]) comprising:
a light source unit (Fig. 8, 519; [0058]) that includes a light emitting element (Fig. 10, 51; [0058]) that emits excitation light ([0058] & [0059]) and a phosphor (Fig. 10, 511; [0058]) that is excited by the excitation light to emit fluorescence ([0058] & [0059]), and emits illumination light in which the excitation light and the fluorescence are mixed ([0059] & [0060]); and
a light distribution lens (Figs. 3 & 4, 39) having an emission surface (Fig. 4, an emission surface of 39; [0065]) that emits the illumination light incident from the light source unit ([0065]), wherein
the emission surface includes a first emission surface (Fig. 5, a front of 39; [0065]) and a second emission surface (Fig. 5, a side of 39; [0065]) formed in different regions in the emission surface ([0065]), and
a thickness of the light emitting element (Fig. 10, H1; [0069]) and a thickness of the phosphor (Fig. 10, H2; [0069]);
the endoscope illumination device being provided around the imaging unit (see Fig. 4), wherein
the light distribution lens is formed in an annular shape so as to surround the imaging unit (see Fig. 4), and
a plurality of the light source units are arranged around the imaging unit at intervals ([0037]).
Komoro fails to explicitly disclose wherein the thickness of the light emitting element and the thickness of the phosphor are defined such that the excitation light and the fluorescence emitted from the light source unit at the same angle and incident on the light distribution lens are emitted in substantially the same direction from the first emission surface or the second emission surface, respectively.
However, Tamura teaches an endoscope (Fig. 1, 1; [0027]) comprising:
an insertion tube (Fig. 1, 20; [0028]);
an imaging unit (Fig. 1, 51; [0031]) provided at a distal end portion of the insertion tube (see Fig. 1); and
an endoscope illumination device (Fig. 1, 10; [0027]) comprising:
a light source unit (Fig. 2, a light emission assembly 16, 110, 120, 130; [0038] & [0039]) that includes a light emitting element (Fig. 2, 16; [0038]) that emits excitation light (Fig. 5, first excitation light; [0038]) and a phosphor (Fig. 2, 110; [0039]) that is excited by the excitation light ([0040]) to emit fluorescence (Fig. 5, first wavelength-converted light; [0040]), and emits illumination light (illumination light; [0038]) in which the excitation light and the fluorescence are mixed ([0029]); and
a light distribution lens (Fig. 2, 140; [0044]) having an emission surface (Fig. 2, 142; [0045]) that emits the illumination light incident from the light source unit ([0045]), wherein
the emission surface includes a first emission surface (Figs. 2 & 5, a surface of a first portion of 140 which is above C; [0048]) and a second emission surface (Figs. 2 & 5, a surface of a second portion of 140 which is below C; [0048]) formed in different regions in the emission surface (see Figs. 2 & 5), and
the thickness of the light emitting element and the thickness of the phosphor are defined such that the excitation light (Fig. 5, first excitation light diffused light emitted from 122 of the light emission assembly; [0043] & [0044]) and the fluorescence emitted from the light source unit (Fig. 5, first wavelength-converted light emitted from 122 of the light emission assembly; [0045]) at the same angle ([0045]) and incident on the light distribution lens ([0045]) are emitted in substantially the same direction from the first emission surface or the second emission surface, respectively (see Fig. 5);
the endoscope illumination device being provided around the imaging unit (see Fig. 1), wherein the light distribution lens is formed in an annular shape ([0047]).
The advantage of the same-angle-same-direction-defined thicknesses of the light emitting element and the phosphor is to reduce color unevenness (Tamura; [0085]).
Therefore, it would have been obvious before the effective filing date of the claimed invention to someone with ordinary skill in the art to modify the thicknesses of the light emitting element and the phosphor as disclosed by Komoro, to be the same-angle-same-direction-defined thicknesses of the light emitting element and the phosphor as taught by Tamura, to reduce color unevenness (Tamura; [0085]).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
US 2020/0088988; US 2019/0038120; US 2016/0066777; US 2015/0099932; US 2015/0085469; US 2012/0200687; US 2011/0245820; US 2010/0080016; US 2010/0080016; US 2009/0129051; US 2008/0192458 and US 2004/0246744.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHEN FLOYD LONDON whose telephone number is (571)272-4478. The examiner can normally be reached Monday - Friday: 10:00 am ET - 6:00pm ET.
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/STEPHEN FLOYD LONDON/Examiner, Art Unit 3795
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