www.uspto.gov
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`16/755,018
`
`04/09/2020
`
`Masahiro NAKAMURA
`
`MIYO.5PUSO1
`
`1043
`
`MARKD. SARALINO (PAN)
`RENNER, OTTO, BOISSELLE & SKLAR, LLP
`1621 EUCLID AVENUE
`ISTH FLOOR
`
`CLEVELAND, OH 44115
`
`PATEL,VIP
`
`2879
`
`09/02/2022
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`Thetime 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 @rennerotto.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`Office Action Summary
`
`Application No.
`16/755,018
`Examiner
`Vip Patel
`
`Applicant(s)
`NAKAMURA, Masahiro
`Art Unit
`AIA (FITF) Status
`2879
`Yes
`
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom 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) MONTHSfrom 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, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`
`
`1) Responsive to communication(s) filed on 4-9-20.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`2a)() This action is FINAL. 2b)¥)This action is non-final.
`3)02 An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
`4)\0) 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 Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`Disposition of Claims*
`1-9 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`C) Claim(s)__ is/are allowed.
`Claim(s) 1,4-6 and 8-9 is/are rejected.
`Claim(s) 2-3and7 is/are objected to.
`C] Claim(s
`are subjectto restriction and/or election requirement
`S)
`“If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http:/Awww.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) ) ) )
`
`Application Papers
`10)() The specification is objected to by the Examiner.
`11)M The drawing(s)filed on 4-9-20 is/are: a) accepted or b)() 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)[¥] Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`c)() None ofthe:
`b)( Some**
`a) All
`1.4] Certified copies of the priority documents have been received.
`2.1.) Certified copies of the priority documents have been received in Application No.
`3.2.) Copies of the certified copies of the priority documents have been receivedin 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)
`
`1) ([] Notice of References Cited (PTO-892)
`
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date
`U.S. Patent and Trademark Office
`
`3)
`
`(LJ Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) (J Other:
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20220827
`
`

`

`Application/Control Number: 16/755,018
`Art Unit: 2879
`
`Page 2
`
`Notice of Pre-AlA 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
`
`obviousnessrejections setforth 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 ofthistitle, if the differences
`between the claimed invention andthe prior art are such that the claimed invention as a whole
`would have been obvious before the effectivefiling 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 whichthe invention was made.
`
`Claims 1, 4-6, and 8-9 are rejected under 35 U.S.C. 103 as being unpatentable
`
`over WO 2017/098963 Ai (D1) and common knowledgein the art.
`
`Document 1 describes a wavelength conversion element in which a wavelength
`
`conversion member 10 containing inorganic phosphor particles 1 constituting an oxide
`
`phosphor having a garnet structure, for example, and sinterable ceramic particles
`
`constituting sinterable alumina particles, for example, is laminated with a heat-radiating
`
`layer 3. Paragraph [0027] indicates that the mean particle size of the sinterable ceramic
`
`particles is preferably 0.08-1 um, and this corresponds to the “inorganic material
`
`particles” of claim 1, having a “mean particle size of 1 um or less”. Paragraph [0023]
`
`indicates that the inorganic phosphor particles 1 are bound by means of the sinterable
`
`ceramic particles 2, and in addition, it can be seen from figure 1 that the sinterable
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`ceramic particles are also bound together.
`
`

`

`Application/Control Number: 16/755,018
`Art Unit: 2879
`
`Page 3
`
`A wavelength conversion element containing an oxide phosphor having a garnet
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`structure and polycrystalline alumina is well known in the art as evidence by WO
`
`2017/053747 Ai (D2), as described in paragraph [0024].
`
`Thus, it would have been obvious before the effective filing date of the claimed
`
`invention to a person having ordinary skill in the art to provide a wavelength conversion
`
`element containing an oxide phosphor having a garnet structure and polycrystalline
`
`alumina as thought by common knowledge in the art in the device of D1 for the purpose
`
`of obtaining enhanced wavelength converter. Furthermore, the thermal conductivity of
`
`alumina is 2 w/mK or greater. This common knowledge is evidenced by JP 2016-72252
`
`(D3) in table 1
`
`in paragraph [0018].
`
`Regarding claim 5, an oxide phosphor and a nitride phosphor are notorious
`
`known examples of inorganic phosphors (please, see paragraph [0033] of JP 2017-
`
`173370).
`
`Regarding claims 4 and 8, laminating a phosphor on a metallic substrate having
`
`excellent heat radiation properties is a well-known feature. Please see paragraph [0030]
`
`of JP 2017-173370).
`
`In addition, paragraph [0039] of document 3 indicates that a metal
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`reflective film having high reflectance is formed, so it would be easy for a person skilled
`
`in the art to impart high reflectance to a phosphor side of a substrate by applying the
`
`feature described in document 3 to the invention described in document 1.
`
`Regarding claim 9, D1-D3 and JP 2016-72252 (D4) cited the common knowledge
`
`of a barrier film having barrier properties with respect to oxygen and moisture being
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`formed on a phosphor surface, as described in paragraph [0080] of document 4, for
`
`example.
`
`

`

`Application/Control Number: 16/755,018
`Art Unit: 2879
`
`Page 4
`
`Allowable Subject Matter
`
`Claims 2-3 and 7 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. Above claims would be
`
`allowable since prior art does not teach inter-inorganic material particle air gaps, in-air-
`
`gap inorganic portion and specific particle radius, detail of a diluted-acid pressed
`
`inorganic sintered body, and metal oxide of zinc oxide or magnesium oxide.
`
`Contact Information
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to Vip Patel whose telephone number is (571) 272-2458.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
`
`supervisor, Oluseye “Seye” Iwarere can be reached on (571) 270-5112. The fax phone
`
`number for the organization where this application or proceeding is assigned is 571 -
`
`273-8300.
`
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`
`

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`Application/Control Number: 16/755,018
`Art Unit: 2879
`
`Page 5
`
`/Vip Patel/
`Primary Examiner
`AU 2879
`
`