UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`PO. Box 1450
`Alexandria, Virginia 2231371450
`www.uspto.gov
`
`15/774,552
`
`05/08/2018
`
`Tatsuya OKUNO
`
`MIYOP0139WOUS
`
`7992
`
`MARK D. SARALINO (PAN)
`RENNER, OTTO, BOISSELLE & SKLAR, LLP
`1621 EUCLID AVENUE
`19TH FLOOR
`CLEVELAND, OH 44115
`
`HANLEY~ BRITT D
`
`ART UNIT
`2875
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`07/06/2020
`
`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):
`
`ipdoeket@rennerotto.eom
`
`PTOL-90A (Rev. 04/07)
`
`

`

`017/09 A0170” Summary
`
`Application No.
`15/774,552
`Examiner
`BRITT D HAN LEY
`
`Applicant(s)
`OKUNO et al.
`Art Unit
`2875
`
`AIA (FITF) Status
`Yes
`
`- The MAILING DA TE of this communication appears on the cover sheet wit/7 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 CFR 1.136(a). In no event, however, may a reply be timely filed after SIX (6) MONTHS from the mailing
`date of this communication.
`|f 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).
`
`Status
`
`1). Responsive to communication(s) filed on 05/08/2018.
`CI A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`
`2a)[:] This action is FINAL.
`
`2b)
`
`This action is non-final.
`
`3)[:] 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 Expade Quay/e, 1935 CD. 11, 453 O.G. 213.
`
`Disposition of Claims*
`
`5)
`
`Claim(s)
`
`1—15 is/are pending in the application.
`
`5a) Of the above claim(s)
`
`is/are withdrawn from consideration.
`
`
`
`[:1 Claim(ss)
`
`is/are allowed.
`
`Claim(ss) 1 —6 and 10— 15 is/are rejected.
`
`Claim(ss)7—9is/are objected to.
`
`) ) ) )
`
`S)
`are subject to restriction and/or election requirement
`C] Claim(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
`
`httpfiwww.”smogovmatentsflnit_events[pph[index.'§p or send an inquiry to PPeredhack@gsptg.ggv.
`
`Application Papers
`
`10):] The specification is objected to by the Examiner.
`
`is/are: a)[:| accepted or b)D objected to by the Examiner.
`11):] The drawing(s) filed on
`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:
`
`a). All
`
`b)C] Some**
`
`c)C] None of the:
`
`1.. Certified copies of the priority documents have been received.
`
`2.[:] Certified copies of the priority documents have been received in Application No.
`
`SD 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)
`
`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) E] Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) CI Other-
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20200624
`
`

`

`Application/Control Number: 15/774,552
`Art Unit: 2875
`
`Page 2
`
`DETAILED ACTION
`
`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.
`
`Drawings
`
`The drawings are objected to under 37 CFR l.83(a). The drawings must show every
`
`feature of the invention specified in the claims. Therefore, the R3 and RZ of claim 10 must be
`
`shown or the feature(s) canceled from the claim(s). No new matter should be entered.
`
`Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to
`
`the Office action to avoid abandonment of the application. Any amended replacement drawing
`
`sheet should include all of the figures appearing on the immediate prior version of the sheet,
`
`even if only one figure is being amended. The figure or figure number of an amended drawing
`
`should not be labeled as ”amended." If a drawing figure is to be canceled, the appropriate
`
`figure must be removed from the replacement sheet, and where necessary, the remaining
`
`figures must be renumbered and appropriate changes made to the brief description of the
`
`several views of the drawings for consistency. Additional replacement sheets may be necessary
`
`to show the renumbering of the remaining figures. Each drawing sheet submitted after the
`
`filing date of an application must be labeled in the top margin as either ”Replacement Sheet" or
`
`”New Sheet" pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the
`
`applicant will be notified and informed of any required corrective action in the next Office
`
`action. The objection to the drawings will not be held in abeyance.
`
`

`

`Application/Control Number: 15/774,552
`Art Unit: 2875
`
`Page 3
`
`Claim Objections
`
`Claim 15 is objected to because ofthe following informalities: The phrase ”the light
`
`emitting device obtains white light" should be —— the light emitting device emits white light——.
`
`Appropriate correction is required.
`
`Claim Rejections - 35 USC § 112
`
`The following is a quotation of 35 U.S.C.112(b):
`(b) CONCLUSION—The specification shall conclude with one or more claims particularly pointing out
`and distinctly claiming the subject matter which the inventor or a joint inventor regards as the
`invention.
`
`The following is a quotation of 35 U.S.C.112(pre—A|A), second paragraph:
`The specification shall conclude with one or more claims particularly pointing out and distinctly
`claiming the subject matter which the applicant regards as his invention.
`
`Claims 10 and 11 rejected under 35 U.S.C. 112(b) or 35 U.S.C.112(pre—A|A), second
`
`paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject
`
`matter which the inventor or a joint inventor, or for pre—AIA the applicant regards as the
`
`invention.
`
`Regarding claim 10, the phrase ”at least a part ofthe planar emission surface is a planar
`
`surface that satisfies Ra 0.15 um and RZ 0.3 um" is unclear. The specification does not indicate
`
`how to measure R3 and R2. Also, since the drawings do not depict the structure that is measured
`
`by the variables, Examiner has no way to examine the claims.
`
`Regarding claim 11, the phrase ”occupancy ofthe planar surface with respect to an area
`
`of the planar emission surface is 36% or more and 65.5% or less" is unclear. From the
`
`specification, Examiner understands the limitation to mean that 36% to 65.5% of the planar
`
`

`

`Application/Control Number: 15/774,552
`Art Unit: 2875
`
`Page 4
`
`emission surface satisfies the limitation Ra 0.15 um and RZ 0.3 um. As shown above, the
`
`limitation ”Ra 0.15 um and RZ 0.3 um" is unclear, and thus claim 11 remains unclear.
`
`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 rejection if the
`
`prior art relied upon, and the rationale supporting the rejection, would be the same under
`
`either status.
`
`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.
`
`The factual inquiries set forth in Graham v. John Deere C0,, 383 U.S. 1, 148 USPQ 459
`
`(1966), that are applied for establishing a background for determining obviousness under 35
`
`U.S.C.103 are summarized as follows:
`
`1. Determining the scope and contents of the prior art.
`
`2. Ascertaining the differences between the prior art and the claims at issue.
`
`3. Resolving the level of ordinary skill in the pertinent art.
`
`4. Considering objective evidence present in the application indicating obviousness or
`
`nonobviousness.
`
`

`

`Application/Control Number: 15/774,552
`Art Unit: 2875
`
`Page 5
`
`This application currently names joint inventors. In considering patentability ofthe
`
`claims the examiner presumes that the subject matter of the various claims was commonly
`
`owned as of the effective filing date of the claimed invention(s) absent any evidence to the
`
`contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and
`
`effective filing dates of each claim that was not commonly owned as of the effective filing date
`
`of the later invention in order for the examiner to consider the applicability of 35 U.S.C.
`
`102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
`
`Claims 1—6 and 12—15is/are rejected under 35 U.S.C. 103 as being unpatentable over
`
`Tamaki et al. (US 20130257264 A1).
`
`Regarding claim 1, Tamaki discloses:
`
`1. (Original) A wavelength converter comprising: a plurality of phosphor particles (31); and a
`
`binder layer (32) that adheres the plurality of adjacent phosphor particles to one another (”The
`
`coating layer 32 is a light—transmitting film that covers the particles of the granular inorganic
`
`phosphor 31 and fixes the particles, the substrate 2, and the particles together. That is, the
`
`coating layer 32 has a function as a protective layer of the inorganic phosphor 31, a function as
`
`a binder, and a function as a heat conduction path.")
`
`Ta maki teaches that the binder layer can have a thickness in the range of 10nm — 50
`
`micrometers (par 156). Tamaki also teaches that the gaps 33 may be filled with a filler such as a
`
`nano—inorganic particles that can be the same material as that of the coating layer 32,
`
`equivalent to the binder layer (par 165). In the same paragraph, Tamaki teaches an atomic layer
`
`deposition method (ALD method) for depositing the binder layer 32.
`
`

`

`Application/Control Number: 15/774,552
`Art Unit: 2875
`
`Page 6
`
`While Tamaki does not teach a specific average particle size ofthe binder,
`
`it appears
`
`that the average particle size ofthe binder particles would fall within the claimed range based
`
`on the disclosed average thickness of the binder layer being 10 nm—50 nm (’coating layer’
`
`section). Ta maki also teaches ”The optimum value ofthe porosity depends on the particle
`
`diameter of the inorganic phosphor 31 and the film thickness of the coating layer 32” (’void’
`
`section).
`
`Accordingly, even absent a specific disclose average particle size of the binder, it
`
`appears that the average particle size is within the claimed range, and further, it would have
`
`been obvious for a person of ordinary skill in the art before the effective filing date of the
`
`claimed invention to optimize the particle size of the binder in order to effectively scatter light
`
`while maintaining sufficient wavelength conversion (’void’ section).
`
`Regarding claim 2, Tamaki discloses:
`
`2. (Original) The wavelength converter according to claim 1, wherein the average particle size
`
`D50 of the nanoparticles is 10 nm or more and less than 100 nm (see comments regarding
`
`particle size under claim 1).
`
`Regarding claim 3, Tamaki discloses:
`
`3. (Currently Amended) The wavelength converter according to claim 1, wherein the phosphor
`
`particles include phosphor particles in which a luminance maintenance rate is 80% or less, the
`
`luminance maintenance rate being obtained by dividing a luminance of the phosphor particles,
`
`which are already burnt at 1200°C or more in an atmosphere, by a luminance ofthe phosphor
`
`particles, which are not still burnt at 1200°C or more in the atmosphere (since Tamaki disclose
`
`

`

`Application/Control Number: 15/774,552
`Art Unit: 2875
`
`Page 7
`
`some of the same phosphor particles as the instant application, those phosphor particles will
`
`have the same properties, see ’color mixing’ section).
`
`Regarding claim 4, Tamaki discloses:
`
`4. (Currently Amended) The wavelength converter according to claim 1, wherein the binder
`
`layer includes nanogaps (voids 33) which are gaps.
`
`It does not appear that Tamaki teaches a specific size of the gaps. However, as shown
`
`under claim 1, optimizing the gap size to effectively scatter light while maintaining sufficient
`
`wavelength conversion (’void’ section) would have been obvious for a person of ordinary skill in
`
`the art before the effective filing date of the claimed invention.
`
`Regarding claim 5, Tamaki discloses:
`
`5. (Currently Amended) The wavelength converter according to claim 1, wherein at least some
`
`parts of phosphor particle—surrounded regions surrounded by the phosphor particles adhered
`
`to one another via the binder layer do not include binder pores, the binder pores being gaps
`
`having a pore size of 0.3 pm or more in the binder layer (voids can be filled, see section ’void
`
`filling’).
`
`Regarding claim 6, Tamaki discloses:
`
`6. (Currently Amended) The wavelength converter according to claim 1, wherein the
`
`wavelength converter includes the binder pores in a ratio of 39% by volume or less (’void’
`
`dection: ’The porosity is preferably about 1 to 50%, more preferably 5 to 30%. The optimum
`
`value ofthe porosity depends on the particle diameter of the inorganic phosphor 31 and the
`
`film thickness of the coating layer 32. By setting the porosity to 1% or more, incident light can
`
`

`

`Application/Control Number: 15/774,552
`Art Unit: 2875
`
`Page 8
`
`be effectively scattered, By setting it to 50% or less, even when the phosphor layer 3 is thinned,
`
`the content of the inorganic phosphor 31 sufficient for color conversion can be obtained.").
`
`Regarding claim 12, Tamaki discloses:
`
`12. (Currently Amended) A wavelength conversion member comprising: a substrate (2); and the
`
`wavelength converter according to claim 1 formed on the substrate (figure 1a).
`
`Regarding claim 13, Tamaki discloses:
`
`13. (Original) The wavelength conversion member according to claim 12, wherein the
`
`wavelength converter that is single is provided on a surface ofthe substrate that is single
`
`(figure 1a).
`
`Regarding claim 13, Tamaki discloses:
`
`14. (Currently Amended) A light emitting device, wherein the light emitting device obtains
`
`white light by using the wavelength converter according to claim 1 (white light, see section
`
`’operating of light emitting device’).
`
`Regarding claim 15, Tamaki discloses:
`
`15. (New) A light emitting device, wherein the light emitting device obtains white light by using
`
`the wavelength conversion member according to claim 12 (white light, see section ’operating
`
`of light emitting device’).
`
`Allowable Subject Matter
`
`Claims 7—9 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 ofthe base claim and
`
`any intervening claims.
`
`

`

`Application/Control Number: 15/774,552
`Art Unit: 2875
`
`Page 9
`
`The following is a statement of reasons for the indication of allowable subject matter:
`
`the prior art or record fails to teach or suggest the wavelength converter ”further comprising
`
`high heat dissipation portions having a particle size of 1 pm or more and made of a material in
`
`which thermal conductivity at 25°C is higher than thermal conductivity of the nanoparticles at
`
`25°C, each of the high heat dissipation portions being provided between adjacent portions of
`
`the binder layer". Claims 8—9 depend from claim 7 and therefore contain the same allowable
`
`subject matter.
`
`Claims 10—11 would be allowable if rewritten to overcome the rejection(s) under 35
`
`U.S.C. 112(b) or 35 U.S.C. 112 (pre—AIA), 2nd paragraph, set forth in this Office action and to
`
`include all ofthe limitations of the base claim and any intervening claims.
`
`the prior art or record fails to teach or suggest the wavelength converter ”wherein the
`
`wavelength converter has a planar emission surface on a surface of the wavelength converter
`
`itself, and at least a part ofthe planar emission surface is a planar surface that satisfies Ra 0.15
`
`um and R2 0.3 um". Claim 11 depends from claim 10.
`
`Conclusion
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to BRITT D HANLEY whose telephone number is (571)270—3042.
`
`The examiner can normally be reached on M—F, 9—5.
`
`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
`
`

`

`Application/Control Number: 15/774,552
`Art Unit: 2875
`
`Page 10
`
`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, Rajarshi Chakraborty can be reached on (571) 272—7242. The fax phone numberfor
`
`the organization where this application or proceeding is assigned is 571—273—8300.
`
`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 https://ppair—my.uspto.gov/pair/PrivatePair. Should you have questions on access
`
`to the Private PAIR system, contact the Electronic Business Center (EBC) at 866—217—9197(toll—
`
`free). Ifyou 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.
`
`BRITT D. HANLEY
`
`Primary Examiner
`Art Unit 2875
`
`/Britt D Hanley/
`
`Primary Examiner, Art Unit 2875
`
`