Prosecution Insights
Last updated: July 17, 2026
Application No. 19/137,881

LIGHTING MODULE WITH TOP CONTACT AND SURFACE MOUNT LEDS

Non-Final OA §102§103
Filed
Jun 11, 2025
Priority
Dec 14, 2022 — provisional 63/432,494 +1 more
Examiner
SONG, ZHENG B
Art Unit
2875
Tech Center
2800 — Semiconductors & Electrical Systems
Assignee
Lumileds LLC
OA Round
1 (Non-Final)
70%
Grant Probability
Favorable
1-2
OA Rounds
1y 0m
Est. Remaining
85%
With Interview

Examiner Intelligence

Grants 70% — above average
70%
Career Allowance Rate
541 granted / 772 resolved
+2.1% vs TC avg
Strong +15% interview lift
Without
With
+15.1%
Interview Lift
resolved cases with interview
Fast prosecutor
2y 1m
Avg Prosecution
25 currently pending
Career history
796
Total Applications
across all art units

Statute-Specific Performance

§103
91.5%
+51.5% vs TC avg
§102
2.3%
-37.7% vs TC avg
§112
5.6%
-34.4% vs TC avg
Black line = Tech Center average estimate • Based on career data from 772 resolved cases

Office Action

§102 §103
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 . The preliminary amendment filed 6/11/2025 has been entered. Priority Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55. 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) 1-5, 8, 14-16 and 18-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Martinez-Perez et al. (US 2017/0198879) (hereinafter Martinez). Claim 1: Martinez-Perez discloses a lighting assembly comprising: a heat sink (210, fig. 3) (heat dissipation element, see para [0042]);a printed circuit board (PCB) (220, fig. 3) (PCB, see para [0041]);first light emitting diode (LED) (240, fig. 3) mounted on the heat sink (210); and a second LED (230, fig. 3) mounted on the PCB (220); the first and second LEDs (240, 230) being electrically connected (see para [0041] – [0045]) to circuitry on the PCB (220); wherein no part of the first LED (240) is mounted on the PCB (220) and no part of the second LED (230) is mounted on the heat sink (210). Claim 2: Martinez-Perez discloses the first LED (140, fig. 1) is a top-contact LED (140 in direct contact with 110, see fig. 1 and para [0043]) and the second LED (130, fig. 1) is a surface mount LED (130 is mounted on surface of 120, fig. 1) (note: the limitations “top-contact LED” and “surface mount LED” do not impart additional structure since the limitations merely describe how the LED is affixed). Claim 3: Martinez-Perez discloses the first LED (140, 240, figs. 1 and 3) is electrically connected to the circuitry (see para [0044]) on the PCB (120) by an electrical conductor (260) that is bonded (wire bonding, see para [0046] – [0047]) at a first conductor end (end of 260 connected to 240, fig. 3) to a first LED contact surface (surface of 240 connected to 260, fig. 3) and is bonded at a second conductor end (end of 220 connected to 260, fig. 3) to a first PCB conductor pad (pad of 220 connected to 260, fig. 3). Martinez-Perez discloses the claimed invention except for ultrasonically bonding. It has been held that “Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966. Claim 4: Martinez-Perez discloses the electrical conductor (260, fig. 3) is either a ribbon-shaped conductor having a substantially rectangular cross-section or a wire-shaped conductor (wires, see para [0046]) having a substantially circular cross-section (see fig. 3). Claim 5: Martinez-Perez discloses the first LED (240, fig. 3) is affixed to the heat sink (210) by thermally-conductive adhesive (thermal adhesive, see para [0042]). Claim 8: Martinez-Perez discloses the PCB (220) is mounted on the heat sink (110) adjacent to the first LED (240). Claim 14: Martinez-Perez discloses an automotive headlamp comprising: an electronics module (200, fig. 3) comprising: a heat sink (210, fig. 3) (heat dissipation element, see para [0042]); a printed circuit board (PCB) (220, fig. 3) (PCB, see para [0041]); a top-contact light emitting diode (LED) (240, fig. 3) mounted on the heat sink (210); and a surface mount LED (230, fig. 3) mounted on the PCB (220); the top-contact and surface mount LEDs (240, 230) being electrically connected to circuitry (see para [0041] – [0045]) on the PCB (220); wherein no part of the top-contact LED (240) is mounted on the PCB (220) and no part of the surface mount LED (230) is mounted on the heat sink (210); and a lens assembly (250, fig. 3) comprising; a first optical element (part of 250 corresponding to 240) for directing light emitted by the top-contact LED (240) and a second optical element (part of 250 corresponding to 230) for directing light emitted by the surface mount LED (230) (note: the term element can be interpreted broadly as parts of single component). Claim 15: Martinez-Perez discloses the top-contact LED (240, fig. 3) is electrically connected to the circuitry (see para [0041] – [0045]) on the PCB (210) by an electrical conductor (260) that is bonded (wire bonding, see para [0046] – [0047]) at a first conductor end (end of 260 connected to 240, fig. 3) to a first LED contact surface (surface of 240 connected to 260, fig. 3) and is bonded at a second conductor end (end of 260 connected to 220, fig. 1) to a first PCB conductor pad (pad of 220 connected to 260). Martinez-Perez discloses the claimed invention except for ultrasonically bonding. It has been held that “Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966. Claim 16: Martinez-Perez discloses the top-contact LED (240) is affixed to the heat sink (210) by thermally-conductive adhesive (thermal adhesive, see para [0042]). Claim 18: Martinez-Perez discloses the first optical element (250, fig. 3) is a reflector or a total internal reflection lens (light guide with total reflection, see para [0040]). Claim 19: Martinez-Perez discloses the second optical element (250) is a reflector, a total internal reflection lens or a light pipe (light pipe, see para [0040]). Claim 20: Martinez-Perez discloses the first optical element (portion of 250 corresponding to 240, fig. 3) and the second optical element (portion of 250 corresponding to 230) are configured to form a composite light beam (combined beam of 230 and 240) comprising the light emitted by the top-contact LED (240) and the light emitted by the surface mount LED (230). 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. Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Martinez-Perez et al. (US 2017/0198879) in view of Tsuchiya et al. (US 12,345,387) (hereinafter Tsuchiya). Claim 6: Martinez-Perez teaches the second LED (230, fig. 3) is electrically connected to the circuitry on the PCB (220). However, Martinez-Perez fails to teach the second LED is electrically connected to the circuitry on the PCB by solder. Tsuchiya teaches a second LED (11, fig. 1) is electrically connected to the circuitry on the PCB (14, fig. 1) by solder (15, fig. 1). Therefore, in view of Tsuchiya, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to solder the second LED to be electrically connected to the circuitry on the PCB by solder, in order to enhance electrical connection of the LED to the circuit. Claim(s) 7 and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Martinez-Perez et al. (US 2017/0198879) in view of Ichikawa et al. (US 2022/0154905) (hereinafter Ichikawa). Claim 7: Martinez-Perez fails to teach the first LED has a higher light output than the second LED. Ichikawa teaches a first LED (110, fig. 1) has a higher light output (high beam mode, see para [0080]) than a second LED (120, fig. 1). Therefore, in view of Ichikawa, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the first and second LED of Martinez-Perez with the first and second LED of Ichikawa where the first LED has a higher light output than the second LED, in order to increase the brightness of the lighting assembly. Claim 17: Martinez-Perez fails to teach the top-contact LED has a higher light output than the surface mount LED. Ichikawa teaches a top-contact LED (110, fig. 1) has a higher light output (high beam mode, see para [0080]) than a surface mount LED (120, fig. 1). Therefore, in view of Ichikawa, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the top-contact LED and surface mount LED of Martinez-Perez with the top-contact LED and surface mount LED of Ichikawa where the top-contact LED has a higher light output than the surface mount LED, in order to increase the brightness of the lighting assembly. Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Martinez-Perez et al. (US 2017/0198879) in view of Feichtinger et al. (US 2019/0131208) (hereinafter Feichtinger). Claim 9: Martinez-Perez fails to teach the PCB comprises an insulated metal substrate. Feichtinger teaches a PCB (3, fig. 1) comprising an insulated metal substrate (insulated metal substrate, see para [0004]). Therefore, in view of Feichtinger, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the PCB of Martinez-Perez with an insulated metal substrate, in order to improve heat resistance of the PCB thereby increasing protection during a soldering process [Feichtinger, 0017]. Claim(s) 10-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Martinez-Perez et al. (US 2017/0198879) in view of Kille et al. (US 2009/0116252) (hereinafter Kille) and Oraw et al. (US 2016/0035924) (hereinafter Oraw). Claim 10: Martinez-Perez teaches a method of manufacturing a lighting assembly comprising light emitting diodes (LEDs) comprising: adhering (thermal adhesive, see para [0042]) a top-contact LED (240, fig. 3) to a heat sink (210, fig. 3) (heat dissipation element, see para [0042]); a surface mount LED (230, fig. 3) on a printed circuit board (PCB) (120, fig. 3); bonding (wire bonding, see para [0046] – [0047]) an electrical conductor (260, fig. 3) to a third electrical contact (contact of 240 connected to 260, fig. 3) on the top-contact LED (240); and bonding (wire bonding, see para [0046] – [0047]) the electrical conductor (260) to a fourth electrical contact (contact of 220 connected to 260, fig. 3) on the PCB (220); wherein no part of the top-contact LED (240) is mounted on the PCB (220) and no part of the surface mount LED (230) is mounted on the heat sink (210). However, Martinez-Perez fails to teach soldering first electrical contacts of the surface mount LED to second electrical contacts on the printed circuit board (PCB); and ultrasonically bonding the electrical conductor to a third electrical contact; and ultrasonically bonding the electrical conductor to the fourth electrical contact. Kille teaches soldering (soldered to pads, see para [0002]) first electrical contacts (11, 12, fig. 4) of a surface mount LED (10, fig. 3) to second electrical contacts (22, 23, fig. 4) on a printed circuit board (20, fig. 4). Oraw teaches ultrasonically bonding (see para [0216]). Therefore, in view of Kille, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to solder first electrical contacts of the surface mount LED to second electrical contacts on the printed circuit board, in order to enhance the electrical connection of the components together. Therefore, in view of Oraw, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use ultrasonic bonding instead of bonding for the third electrical contact and fourth electrical contact to the electrical conductor, in order to enhance the bonding of the two components together without heat damage. Claim 11: Martinez-Perez teaches adhering (thermal adhesive, see para [0042]) the top contact LED (240) to the heat sink (210) with a thermally conductive adhesive (thermal adhesive, see para [0042]). Claim 12: Martinez-Perez teaches the electrical conductor (260) being an electrically conductive wire (metal wires, see para [0046]) or an electrically conductive ribbon. Claim 13: Martinez-Perez teaches mounting the PCB (220) onto the heatsink (210). Conclusion The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Yamamichi et al. (US 2007/0279927) and Kuriki et al. (US 2017/0211761) disclose a similar lighting assembly. Any inquiry concerning this communication or earlier communications from the examiner should be directed to ZHENG B SONG whose telephone number is (571)272-9402. The examiner can normally be reached Monday-Friday: 9AM - 5PM. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jong-Suk (James) Lee can be reached at 571-272-7044. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /ZHENG SONG/Primary Examiner, Art Unit 2875
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Prosecution Timeline

Jun 11, 2025
Application Filed
Jun 04, 2026
Non-Final Rejection mailed — §102, §103 (current)

Precedent Cases

Applications granted by this same examiner with similar technology

Patent 12680664
LIGHTING APPARATUS
1y 5m to grant Granted Jul 14, 2026
Patent 12674558
LIGHT SOURCE SYSTEM AND LIGHTING SYSTEM
1y 5m to grant Granted Jul 07, 2026
Patent 12654796
SNOWMOBILE HOOD
2y 0m to grant Granted Jun 16, 2026
Patent 12656640
DISPLAY SCREEN
1y 11m to grant Granted Jun 16, 2026
Patent 12655956
HEAD LAMPS FOR VEHICLES
1y 5m to grant Granted Jun 16, 2026
Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

1-2
Expected OA Rounds
70%
Grant Probability
85%
With Interview (+15.1%)
2y 1m (~1y 0m remaining)
Median Time to Grant
Low
PTA Risk
Based on 772 resolved cases by this examiner. Grant probability derived from career allowance rate.

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