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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address; COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`17/045,390
`
`10/05/2020
`
`Tatsuya OKUNO
`
`NIIP21PUSO1
`
`2403
`
`MARKD. SARALINO (PAN)
`RENNER, OTTO, BOISSELLE & SKLAR, LLP
`1621 EUCLID AVENUE
`ISTH FLOOR
`
`CLEVELAND, OH 44115
`
`FALLAHKHAIR, ARMAN B
`
`2875
`
`09/07/2021
`
`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):
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`ipdocket @rennerotto.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`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`5a) Of the above claim(s) ___ is/are withdrawn from consideration.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) 1-9 is/are rejected.
`(1 Claim(s)__is/are objectedto.
`Cj) 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://www.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)0) The drawing(s) filedon__ is/are: a)(J 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)1) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`c)Z None ofthe:
`b)() Some**
`a)C All
`1.2 Certified copies of the priority documents have been received.
`2.1.) Certified copies of the priority documents have been received in Application No.
`3.1.) 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 6/10/21.
`U.S. Patent and Trademark Office
`
`3) (J Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
`
`4)
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20210901
`
`Application No.
`Applicant(s)
`17/045,390
`OKUNO etal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`ARMAN B FALLAHKHAIR
`2875
`Yes
`
`
`
`-- The MAILING DATEofthis 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 7/16/21.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`2a)¥) This action is FINAL.
`2b) (J 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.
`
`

`

`Application/Control Number: 17/045,390
`Art Unit: 2875
`
`Page 2
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`Notice ofPre-AIA or AIA Status
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`The present application,filed on or after March 16, 2013, is being examined
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`underthefirst inventorto file provisions of the AIA.
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`Response to Amendments
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`Applicant’ submission dated 7/16/21 has been entered.
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`Information Disclosure Statement
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`The information disclosure statement (IDS) submitted on 6/10/21 is being
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`considered by the examiner.
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`Claim Rejections - 35 USC § 103
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`The followingis a quotation of 35 U.S.C. 103 which formsthebasisfor all
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`obviousnessrejections set forth in this Office action:
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`A patentfor a claimed invention may not be obtained, notwithstanding that the claimed
`inventionis not identically disclosed as set forth in section 102,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 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 mannerin which the invention was made.
`
`Claim 1-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over ABU-
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`AGEEL (WO 2009092041 provided in the IDS of 6/10/21 also published as US
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`8096668) in view of RAINS (US 2010/0259918).
`
`Regarding claim 1, ABU-AGEELdiscloses an illumination device (see FIG.s 2A-
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`12B), comprising: a housing (514 and 1160 FIG. 4B) including an opening portion; a
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`wavelength converting component (513 FIG. 4B) whichis disposed inside the housing
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`and radiates wavelength-convertedlight after a laser beam (from 410 FIG. 2B) enters
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`the wavelength converting component, the wavelength-converted light having a
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`different wavelength from a wavelength of the laser beam; an optical film (such as 517.
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`518 FIG. 4B) which covers the opening portion, the optical film having optical
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`

`

`Application/Control Number: 17/045,390
`Art Unit: 2875
`
`Page 3
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`properties; and a light structure (521 FIG. 4B) whichis disposed onat least part of an
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`inner wall of the housing andis capableof reflecting the laser beam reflected by at least
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`the optical film out of the laser beam reflected by the wavelength converting component
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`and incident on the optical film, wherein the light structure is disposed on an inner
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`surface of a bottom portion of the housing and an inner surface of a side wall portion of
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`the housing (see embodiment of FIG.s 2-4 and 5G).
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`ABU-AGEELdoesnot explicitly show the optical properties of the optical film
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`being such that a transmittance for the wavelength-convertedlight is 80% or more and a
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`transmittance for the laser beam at a peak wavelength is 80% orless of a transmittance
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`for the wavelength-convertedlight at a peak wavelength, and the light structure being a
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`light diffusing structure diffusely reflecting.
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`RAINS(see FIG.s 1-10) teachesa light diffusing structure (see 29 FIG. 1 and
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`‘diffuse reflectivity’ {[0032], see 79 FIG. 4 and {[0075]) is disposed onat least part of
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`an innerwall of a housing (27 FIG.1) reflects the beam reflected by at least the optical
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`element (such as 26 FIG.1).
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`Therefore, it would have been obviousto one of ordinaryskills in the art before
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`the claimed invention waseffectively filed to incorporate a diffuse reflective structure,
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`such as taught by RAINS,with the illumination device of ABU-AGEELin order to
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`improve the uniformityof illumination.
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`Furthermore, although ABU-AGEELdoesnotexplicitly teach the 80%
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`transmittance, it would have been obviousto oneof ordinary skills in the art before the
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`claimed invention waseffectively filed that the film of ABU-AGEELis structurally and
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`functionally equivalent to the claimed film and absent persuasive evidence that the
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`claimed 80%é is critical, any modification or alteration to have an optimal transmittance,
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`

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`Application/Control Number: 17/045,390
`Art Unit: 2875
`
`Page 4
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`to perform the desired function according to a preferred application, is within the
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`ordinaryskills in the art.
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`Regarding claim 2, similar to the explanation above, it would have been obvious
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`to one of ordinaryskills in the art before the claimed invention waseffectivelyfiled to
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`incorporate an optical film with optimal transmittance in accordanceto the preferred
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`application of the assembly, such that the transmittance of the optical film for the
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`wavelength-converted light is 90% or more,in orderto achieve a desired efficiency of
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`the illumination.
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`Regarding claims 3-5, absent persuasive evidence that the type of the diffusing
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`structureis significant to the intended inventive subject matter, it would have been
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`obviousto one of ordinary skills in the art before the claimed invention waseffectively
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`filed to utilize any known typeoflight diffusing structure, such asalight diffusion film
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`disposed on the innerwall, a set of aggregates of a transparent inorganicfiller, or a
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`convexo-concavestructure disposed on the innerwall, optimal for the ilumination
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`desired for the application of the assembly.
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`Regarding claim 6, it would have been obvious to one of ordinary skills in the art
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`before the claimed invention waseffectively filed to pick an optimal roughnessfor the
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`convexo-concavestructuresof the light diffusing structure, such that the convexo-
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`concave structure includes a convexo-concave surface having a surface roughnessRaof
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`10 pm or more,in orderto achieve a preferred uniformity in diffusion in accordance to
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`the application of the assembly.
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`Regarding claim 7, RAINSfurther teachesthelight diffusing structureis a
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`concave surface (space in the housing) defined by a curved surface (such as FIG.s 3, 6-
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`10) of the innerwall.
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`

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`Application/Control Number: 17/045,390
`Art Unit: 2875
`
`Page 5
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`The motivation to combine is sameasin claim 1 above.
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`Regarding claim 8, ABU-AGEELfurtherdiscloses a light source which emits the
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`laser beam (col. 7 line 27).
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`Regarding claim 9, ABU-AGEELfurtherdiscloses the optical film is disposed
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`opposite to the inner surface of the bottom portion of the housing, and the wavelength
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`converting componentis placed on the inner surface of the bottom portion of the
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`housing (structurally evident in FIG.s 2-4 and 5G).
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`Response to Arguments
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`Applicant’s arguments dated 7/16/21 have been considered but are moot because
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`the new groundofrejection does not rely on any reference applied in the prior rejection
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`of record for any teaching or matter specifically challenged in the argument.
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`Conclusion
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`Applicant's amendmentandthe information disclosure statement of 6/10/21
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`necessitated the new ground(s) of rejection presented in this Office action. Accordingly,
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`THIS ACTION IS MADEFINAL. See MPEP § 706.07(a). Applicant is remindedof
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`the extension of timepolicy as set forth in 37 CFR 1.136(a).
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`A shortened statutory period for reply to this final action is set to expire THREE
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`MONTHSfrom the mailing date of this action. In the eventa first reply is filed within
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`TWO MONTHSof the mailing date of this final action and the advisoryaction is not
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`mailed until after the end of the THREE-MONTHshortenedstatutory period, then the
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`shortened statutory period will expire on the date the advisory action is mailed, and any
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`extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the
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`advisory action. In no event, however, will the statutory period for reply expire later
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`than SIX MONTHSfrom thedate of this final action.
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`

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`Application/Control Number: 17/045,390
`Art Unit: 2875
`
`Page 6
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to Arman B. Fallahkhair whose telephone numberis 571-
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`272-7950. Examinerinterviewsare available via telephone, in-person, and video
`
`conferencing using a USPTO supplied web-basedcollaboration tool. To schedule an
`
`interview, applicant may contact the examiner by phone, emailat
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`arman.fallahkhair@uspto.gov or the USPTO Automated Interview Request at
`
`uspto.gov/interviewpractice. If attempts to reach the examinerby telephone are
`
`unsuccessful, the examiner’s supervisor, Raj Chakraborty, can be reached via email
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`rajarshi.chakraborty@uspto.gov or by phone 571-272-7242. The fax phone numberfor
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`the organization wherethis application or proceedingis assigned is 571-273-8300.
`
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`
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`
`/ARMAN B FALLAHKHAIR/
`Examiner, Art Unit 2875
`
`