`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMlVHSSIONER FOR PATENTS
`PO. Box 1450
`Alexandria1 Virginia 22313-1450
`www.uspto.gov
`
`
`
`
`
`15/223,833
`
`07/29/2016
`
`Masumi ABE
`
`NHPP0171US
`
`9028
`
`07/26/2018 —MARK D. SARALINO (PAN) m
`7590
`51921
`RENNER, OTTO, BOISSELLE & SKLAR, LLP
`TRUONG’ BAO Q
`1621 EUCLID AVENUE
`19TH FLOOR
`
`PAPER NUMBER
`
`CLEVELAND, OH 44115
`
`2875
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`07/26/2018
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
`following e—mail address(es):
`
`ipdocket @rennerott0.c0m
`
`PTOL—90A (Rev. 04/07)
`
`

`

`
`
`Applicant(s)
`Application No.
` 15/223,833 ABE ET AL.
`
`Examiner
`Art Unit
`AIA (First Inventor to File)
`Office Action Summary
`
`2875BAO Q. TRUONG $2213
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE g MONTHS FROM THE MAILING DATE OF
`THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR1.136(a).
`after SIX (6) MONTHS from the mailing date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1 .704(b).
`
`In no event, however, may a reply be timely filed
`
`Status
`
`1)IZI Responsive to communication(s) filed on 5/14/2018.
`El A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`
`2b)|:l This action is non-final.
`2a)|Z| This action is FINAL.
`3)I:I An election was made by the applicant in response to a restriction requirement set forth during the interview on
`
`; the restriction requirement and election have been incorporated into this action.
`
`4)|:| Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`
`closed in accordance with the practice under Exparte Quay/e, 1935 CD. 11, 453 O.G. 213.
`
`Disposition of Claims*
`
`5)IZI C|aim(s) fl is/are pending in the application.
`5a) Of the above claim(s) M is/are withdrawn from consideration.
`
`3) D Interview Summary (PTO-413)
`1) D Notice of References Cited (PTO-892)
`Paper No(s)/Mai| Date.
`.
`.
`4) I:I Other'
`2) I] Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`
`Paper No(s)/Mai| Date .
`US. Patent and Trademark Office
`PTOL—326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20180723
`
`is/are allowed.
`6 El Claim s)
`s M is/are rejected.
`
`is/are objected to.
`
`) )
`
`_
`
`
`are subject to restriction and/or election requirement.
`9)I:I C|aim(s
`)
`* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway program at a
`
`participating intellectual property office for the corresponding application. For more information, please see
`
`
`
`
`hit
`:i/wwwusnto. ov/ atentS/init events/
`h/index.‘s orsend an inquiry to PPI-iieedback{®usgtc.00v.
`
`Application Papers
`
`10)I:l The specification is objected to by the Examiner.
`11)|Xl The drawing(s) filed on 7/29/2016is/are: a)lX| accepted or b)I:I objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`
`12)IXI Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`
`a)IZl All
`
`b)|:l Some” c)I:l None of the:
`
`1.IXI Certified copies of the priority documents have been received.
`2.|:l Certified copies of the priority documents have been received in Application No.
`3.|:| Copies of the certified copies of the priority documents have been received in this National Stage
`
`application from the International Bureau (PCT Rule 17.2(a)).
`** See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`
`
`

`

`Application/Control Number: 15/223,833
`
`Page 2
`
`Art Unit: 2875
`
`1.
`
`The present application, filed on or after March 16, 2013, is being examined
`
`under the first inventor to file provisions of the AIA.
`
`DETAILED ACTION
`
`Election/Restrictions
`
`2.
`
`Applicant’s election without traverse of Species | including claims 1-8 in the reply
`
`filed on 2/14/2018 is acknowledged. Species ll, Embodiment 2, includes figures 12-16,
`
`has been indicated in the election/restriction requirement, which was mailed out on
`
`01/18/2018.
`
`3.
`
`Newly amended independent claim 1 directed to an invention that is independent
`
`or distinct from the invention originally claimed for the following reasons: claim 1 has
`
`been amended to recite “a first sealing layer that contains a phosphor and seals the
`
`light-emitting element; and a second sealing layer that contains a cerium oxide and is
`
`disposed above the first sealing layer, wherein the first sealing layer contains (a) an
`
`amount of the cerium oxide less than an amount of the cerium oxide contained in the
`
`second sealing layer or (b) no cerium oxide”.
`
`In the present application, the detail description includes embodiment 2, shown in
`
`figures 12-16, paragraphs [0101] to [0112], the embodiment 2 discloses “a first sealing
`
`layer (13a) that contains a phosphor (14)” and “a second sealing layer (13b) that
`
`contains a cerium oxide (19) and is disposed above the first sealing layer (133)”, and
`
`the first sealing layer contains no cerium oxide”.
`
`

`

`Application/Control Number: 15/223,833
`
`Page 3
`
`Art Unit: 2875
`
`Since applicant has received an action on the merits for the originally presented
`
`invention, this invention has been constructively elected by original presentation for
`
`prosecution on the merits. Accordingly, independent claim 1 has been withdrawn from
`
`consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and
`
`MPEP § 821.03. In view of that, claims 2—8 dependent on claim 1 have been also
`
`withdrawn from consideration.
`
`Priority
`
`4.
`
`Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
`
`Claim Rejections - 35 USC § 102
`
`5.
`
`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 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.
`
`6.
`
`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.
`
`7.
`
`Claim(s) 12—14 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by
`
`Ohbayashi et al. [US 2013/0092967 A1].
`
`Regarding claim 12, Ohbayashi et al. discloses a method for manufacturing a
`
`light-emitting apparatus, the method comprising: mounting a light-emitting element [10]
`
`

`

`Application/Control Number: 15/223,833
`
`Page 4
`
`Art Unit: 2875
`
`on a substrate [80]; and determining an amount of a cerium oxide to be added to a light-
`
`transmissive resin material according to a peak wavelength of a light emission spectrum
`
`of the light-emitting element mounted, wherein the light-transmissive resin material to
`
`which the amount of the cerium oxide determined is added seals the light-emitting
`
`element mounted (figures 1-2, paragraphs 0035, 0043, 0044, whole document).
`
`Regarding claim 13, Ohbayashi et al. discloses when the peak wavelength of the
`
`light emission spectrum of the light-emitting element mounted is in a range from 430 nm
`
`to 470 nm, the amount of the cerium oxide to be added to the light-transmissive resin
`
`material is determined to be 0.050 wt% or less (paragraph 0043).
`
`Regarding claim 14, Ohbayashi et al. discloses when the peak wavelength of the
`
`light emission spectrum of the light-emitting element mounted is in a range from 365 nm
`
`to 425 nm, the amount of the cerium oxide to be added to the light-transmissive resin
`
`material is determined to be 0.030 wt% or less (paragraphs 0035 and 0043).
`
`Response to Amendment
`
`8.
`
`Applicant's amendments and arguments filed 5/14/2018 have been fully
`
`considered but they are not persuasive. The applicant has received an action on the
`
`merits for the originally presented invention; this invention has been constructively
`
`elected by original presentation for prosecution on the merits. Accordingly, claims 1-8
`
`has been withdrawn from consideration as being directed to a non-elected invention.
`
`See 37 CFR 1.142(b) and MPEP § 821.03. Moreover, Ohbayashi et al. discloses the
`
`features of newly submitted claims 12-14, which have been indicated as above.
`
`

`

`Application/Control Number: 15/223,833
`
`Page 5
`
`Art Unit: 2875
`
`Conclusion
`
`9.
`
`THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time
`
`policy as set forth in 37 CFR 1.136(a).
`
`A shortened statutory period for reply to this final action is set to expire THREE
`
`MONTHS from the mailing date of this action.
`
`In the event a first reply is filed within
`
`TWO MONTHS of the mailing date of this final action and the advisory action is not
`
`mailed until after the end of the THREE-MONTH shortened statutory period, then the
`
`shortened statutory period will expire on the date the advisory action is mailed, and any
`
`extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of
`
`the advisory action.
`
`In no event, however, will the statutory period for reply expire later
`
`than SIX MONTHS from the mailing date of this final action.
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to BAO Q. TRUONG whose telephone number is
`
`(571 )272—2383. The examiner can normally be reached on Monday-Friday (8:00 AM -
`
`4:00 PM).
`
`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, Mai Anh T can be reached on (571) 272-1995. The fax phone number for
`
`the organization where this application or proceeding is assigned is 571 -273-8300.
`
`

`

`Application/Control Number: 15/223,833
`
`Page 6
`
`Art Unit: 2875
`
`Information regarding the status of an application may be obtained from the
`
`Patent Application Information Retrieval (PAIR) system. Status information for
`
`published applications may be obtained from either Private PAIR or Public PAIR.
`
`Status information for unpublished applications is available through Private PAIR only.
`
`For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
`
`you have questions on access to the Private PAIR system, contact the Electronic
`
`Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a
`
`USPTO Customer Service Representative or access to the automated information
`
`system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
`
`/BAO Q TRUONG/
`
`Primary Examiner
`Art Unit 2875
`
`