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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
`
`17/814,920
`
`07/26/2022
`
`Kouji OOMORI
`
`WASH1-66490
`
`8692
`
`mens
`
`OR
`PEA
`PEARNE & GORDON LLP
`1801 EAST 9TH STREET
`SUITE 1200
`CLEVELAND,OH 44114-3108
`
`GRAMLING,SEAN P
`
`2875
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`02/08/2023
`
`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):
`
`patdocket@ pearne.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`Application No.
`Applicant(s)
`17/814,920
`OOMORT etal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`SEAN P GRAMLING
`2875
`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 1/31/23.
`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.
`
`Disposition of Claims*
`1-2 and 4-7 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`Cj] Claim(s)
`is/are allowed.
`Claim(s) 1-2 and 4-7 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://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)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... Certified copies of the priority documents have been received.
`2.1) Certified copies of the priority documents have beenreceived 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)
`
`2) (J Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`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 20230203
`
`

`

`Application/Control Number: 17/814,920
`Art Unit: 2875
`
`Page 2
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`DETAILED ACTION
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`Amendment
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`Acknowledgmentis made of Amendmentfiled January 31, 2023. Claim 3 is
`
`canceled. Claim 1
`
`is amended. Claims 1-2 and 4-7 are pending.
`
`Claim Rejections - 35 USC § 103
`
`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
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`rejection if the prior art relied upon, and the rationale supporting the rejection, would be
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`the same under either status.
`
`The following is a quotation of 35 U.S.C. 103 which forms the basis for all
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`obviousnessrejections 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.
`
`Claims 1-2 and 4-7 are rejected under 35 U.S.C. 103 as being unpatentable
`
`over Lai (US 2009/0231851) in view of Engle et al (US 2008/0007696).
`
`Regarding claim 1, Lai discloses a base part 18 (see Fig. 3); an anisotropic heat
`
`conductive sheet 17 whose thermal conductivity in a surface direction is higher than a
`
`thermal conductivity in a thickness direction (see at least para [0025]), the anisotropic
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`heat conductive sheetincluding a first surface 17b that makes contact with a surface of
`
`

`

`Application/Control Number: 17/814,920
`Art Unit: 2875
`
`Page 3
`
`the base part 18; a solid state diode module (110,112) disposed at a second surface
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`17a on a side opposite to the first surface in the anisotropic heat conductive sheet, and
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`configured to emit light; and a cooling member 15 disposed at the second surface 17a
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`and separated from the solid state module, and an insulating member (insulating
`
`member 113 or 552; see Figs. 3 and 5 and para [0021]) (see particularly Figure 3 and
`
`paragraph [0028], additionally Figures 1-2 and 4-8 and paragraphs [0019]-[0027] and
`
`[0029]-[0034]).
`
`Lai generally teaches that the solid state diode module (110,112) can belight
`
`emitting diodes (see para [0020]), but does not specifically teach that the solid state
`
`diode module (110,112) be laser diodes. However, the use of laser diodes is well
`
`knownin the art and specifically taught in Engle (see Engle, at least Figure 3 and
`
`paragraph [0018]). Accordingly it would have been obvious to one of ordinary skill in
`
`the art at the time the invention was made to specify that the solid state diode module
`
`(110,112) in Lai be a laser diode module as taught by Engle in order to achieve the
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`stated objective of a solid state module with increased brightness for improved
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`illumination output and safety along a desired surface or area.
`
`Lai also does not specifically teach that a refrigerant flow inside the cooling
`
`member 15. However, cooling members having refrigerant flowing within are well
`
`knownin the art and specifically taught in Engle (see Engle, at least Figures 3-6 and
`
`paragraphs [0023]-[0026]) . Accordingly, it would have been obvious to one of ordinary
`
`skill in the art at the time the invention was made to provide the cooling member 15 in
`
`Lai with refrigerant flowing within as taught by Engle in order to improve the heat
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`

`

`Application/Control Number: 17/814,920
`Art Unit: 2875
`
`Page 4
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`dissipation qualities of the cooling member 15 for improved heattransfer from the
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`lighting components, thereby improving the efficiency and lifetime of the device.
`
`In the embodimentof Figure 3 which Examiner relies on, an insulating member
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`113 is taught but it is not disposed between the antisotropic heat conductive sheet 17
`
`and the cooling member 15 (see Figure 3 and para [0021]). However, Lau teaches ina
`
`different embodiment (see Figure 5 and insulating member 552) that the insulating
`
`member can be disposed between the antisotropic heat conductive sheet 57 and the
`
`cooling member 550. Accordingly, it would have been obvious to one of ordinary skill in
`
`the art at the time the invention was made to position the insulating member 113 in Lau
`
`between the anisotropic heat conductive sheet 17 and the cooling member 15 as
`
`suggested in a different embodimentin order to provide direct thermal contact between
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`the solid state module (110,112) and the heat conductive sheet 17 for improved heat
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`dissipation, and since it has been held that rearranging parts of an invention involves
`
`only routine skill in the art (see MPEP 2144.04(VI)(C)).
`
`Regarding claim 2, the apparatus in Lai can further comprise a plurality of the
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`laser diode modules or a plurality of the cooling members 15 (see at least Figures 1 and
`
`4 and the plurality of cooling members 15 and para [0030] which teachesa plurality of
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`cooling members 15 can be formed on sheet 17; Examiner also notes that each solid
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`state diode 112 can be designated its own “module”, thus a plurality of modules 112).
`
`Regarding claim 4, the laser diode module in Lai includes a semiconductor
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`element 112 configured to emit laser light when a current flows, and two conductive
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`members (the N-type elements 1134 and P-type elements 1132 can be designated as
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`two conductive members, both of which are indirectly in contact with second surface
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`

`

`Application/Control Number: 17/814,920
`Art Unit: 2875
`
`Page 5
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`17a of sheet 17) to which an electrode is attached (see para [0024] which teaches
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`anode and cathode from power supply are attached to elements 1134,1132), the two
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`conductive members being configured to supply a current to the semiconductor element
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`112; and wherein one of the two conductive membersis in contact with the second
`
`surface (see at least Figure 3 and paragraph [0024)).
`
`Regarding claim 5, Lai does notillustrate the details of the electrodes of the
`
`power supply (see para [0024] which teaches that the power supply anode and cathode
`
`is not shown), thus Lai does not specifically teach that the electrode include a second
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`anisotropic heat conductive sheet 17. However, it would have been obvious to one of
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`ordinaryskill in the art at the time the invention was made to provide the electrode in Lai
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`with a second anisotropic heat conductive sheet 17 in order to improve heat dissipation
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`from the electrodes to prevent overheating at the conductive members 1134,1132 and
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`semiconductors 112 for improved efficiency and lifetime of the device, and since it has
`
`been held that mere duplication of the essential working parts of a device (the
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`conductive sheet 17 in Lai is an essential working part) involves only routine skill in the
`
`art (MPEP 2144.04(V1)(B)).
`
`Regarding claim 6, Lai teaches that the base part 18 can be formed of a
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`thermally conductive material (see para [0028]) but does not specifically teach thatit be
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`electrically insulating. However thermally conductive yet electrically insulating materials
`
`(e.g., ceramic) are common in the art and specifically taught in Lai (see para [0021]
`
`which teaches ceramic as a high heat conductive material yet insulating). Accordingly it
`
`would have been obvious to one of ordinary skill in the art at the time the invention was
`
`made to specify that the base part 18 in Lai include an electrically insulating materialin
`
`

`

`Application/Control Number: 17/814,920
`Art Unit: 2875
`
`Page 6
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`order to achieve dual objectives of dissipating heat from sheet 17 into the ambientair
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`while preventing electrical shorting and damage to the electrical components within the
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`apparatus, and since it has been held to be within the general skill of a worker in the art
`
`to select a known material on the basis ofits suitability for the intended use (MPEP
`
`2144.07).
`
`Regarding claim 7, the sheet 17 in Lai is disclosed asthin and flexible (see at
`
`least Figure 4 and para [0029]), but Lai does not specifically teach that the thickness of
`
`the sheet 17 be 0.1 mm to 1 mm. However, it would have been obvious to one of
`
`ordinary skill in the art at the time the invention was made to specify that the thickness
`
`of sheet 17 in Lai be in the claimed range in order to achieve the stated objective of
`
`providing a thin and flexible sheet, and since it has been held that where the general
`
`conditions of a claim are disclosedin the prior art, discovering the optimum or workable
`
`ranges involves only routine skill in the art (MPEP 2144.05).
`
`Responseto Arguments
`
`Applicant's arguments filed January 31, 2023 have been fully considered but they
`
`are not persuasive. Regarding claim 1, as set forth in the rejection above, Examiner
`
`respectfully disagrees with Applicant’s submission that the Lau reference does not
`
`teach “an insulating member disposed between the anisotropic heat conductive sheet
`
`and the cooling member’. As noted in the rejection above, the embodiment illustrated in
`
`Figure 5 of Lau teaches that the insulating member 552 can be disposed between the
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`antisotropic heat conductive sheet 57 and the cooling member 550 (see Figure 5).
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`Additionally, Examiner finds sufficient motivation/reason for positioning the insulating
`
`

`

`Application/Control Number: 17/814,920
`Art Unit: 2875
`
`Page 7
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`member 113 between the heat conductive sheet 17 and cooling member 15 in Figure 3
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`(in addition to supported case law), rendering claim 1 unpatentable over Lai in view of
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`Engle. Accordingly, the rejections of claims 1-2 and 4-7 under 35 USC 103 are
`
`maintained.
`
`Conclusion
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`THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time
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`policy as set forth in 37 CFR 1.136(a).
`
`A shortenedstatutory period for reply to this final action is set to expire THREE
`
`
`
`MONTHS from the mailing date of this action. In the eventafirst reply is filed within
`
`TWO MONTHS ofthe mailing date of this final action and the advisory action is not
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`mailed until after the end of the THREE-MONTH shortened statutory 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
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`the advisory action.
`
`In no event, however, will the statutory period for reply expire later
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`than SIX MONTHS from the mailing date ofthis final action.
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`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to SEAN P GRAMLING whosetelephone number is
`
`(571)272-9082. The examiner can normally be reached Monday-Friday 8:30am-5pm
`
`EST.
`
`Examiner interviews are available via telephone, in-person, and video
`
`conferencing using a USPTO supplied web-basedcollaboration tool. To schedule an
`
`

`

`Application/Control Number: 17/814,920
`Art Unit: 2875
`
`Page 8
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`interview, applicant is encouraged to use the USPTO Automated Interview Request
`
`(AIR) at http:/Avww.uspto.gov/interviewpractice.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
`
`supervisor, Diane Lee can be reached on (571) 272-2399. 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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`
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`
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`
`/SEAN P GRAMLING/
`Primary Examiner, Art Unit 2875
`
`