www.uspto.gov
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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
`
`16/637,919
`
`02/10/2020
`
`YOSHIHISA NAGASAKI
`
`PAND.3PUSO1
`
`8220
`
`MARKD. SARALINO (PAN)
`RENNER, OTTO, BOISSELLE & SKLAR, LLP
`1621 EUCLID AVENUE
`ISTH FLOOR
`
`CLEVELAND, OH 44115
`
`CHIN, EDWARD
`
`2813
`
`03/01/2022
`
`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.
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`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`5a) Of the above claim(s) ___ is/are withdrawn from consideration.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.
`S)
`) © Claim(s)____is/are objected to.
`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) The drawing(s) filed on 02/10/20 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)L) None ofthe:
`b)L) Some**
`a)¥) All
`1.4) Certified copies of the priority documents have been received.
`2.2) 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)
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`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) (J Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
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`4)
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`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20220215
`
`Application No.
`Applicant(s)
`16/637,919
`NAGASAK| et al.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`EDWARD CHIN
`2813
`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
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`1) Responsive to communication(s) filed on 02/10/20.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
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`2a)L) 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.
`
`

`

`Application/Control Number: 16/637,919
`Art Unit: 2813
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`Page 2
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`Notice of Pre-AlA or AIA Status
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`The present application, filed on or after March 16, 2013, is being examined under the first
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`inventor to file provisions of the AIA.
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`Detailed Action
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`This office action is in response to applicant’s communication filed on 02/10/21. Claims 1-9 are
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`pendingin this application.
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`Information Disclosure Statement
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`The information Disclosure Statementsfiled on 03/11/20, 11/20/20, and 06/14/21 have been
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`received and are being considered.
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`Claim Rejections Under 35 U.S.C. §102
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`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis
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`for the rejections under this section made in this Office action:
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`A person shall be entitled to a patent unless —
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`(a)(2) the claimed invention was described in a patent issued under section 151, or in an application
`for patent published or deemed published under section 122(b), in which the patent or application, as
`the case may be, names another inventor and was effectively filed before the effective filing date of
`the claimed invention.
`
`Claims 1-5 and 7-9 are rejected under 35 U.S.C. §102 as being unpatentable over Pickett (US
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`20150179900 A1).
`
`Regarding claim 1, Pickett is directed towards a light emitting device and atleast at fig 5 disclose
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`a wavelength conversion member (see para [0014] disclosing wavelength conversion) comprising:
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`wavelength conversion particles(quantum dots, see para [0014]) each including a fluorescent
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`substance (see para [0014] disclosing phosphor)and a first matrix surrounding the fluorescent substance
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`(see para [0070] disclosing semiconductor material surrounding a crystalline core, see para [0009])); and
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`a second matrix having a thermal conductivity higher than a thermal conductivity of the first matrix and
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`

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`Application/Control Number: 16/637,919
`Art Unit: 2813
`
`Page 3
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`surrounding the wavelength conversion particles (see para [0021] disclosing a relatively high thermal
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`conductivity layer, resin).
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`Regarding claim 2, Pickett discloses the wavelength conversion member according to claim 1,
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`wherein the fluorescent substanceis at least one selected from a group consisting of a fluorescent
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`substance containing a quantum dot, a fluorescent substance containing a metal complex, and an
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`organic fluorescent substance (see para [0014] disclosing fluorescent substance).
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`Regarding claim 3, Pickett disclose the wavelength conversion memberaccording to claim 1,
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`wherein thefirst matrix includes at least one selected from a group consisting of a resin and glass (see
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`para [0021]).
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`Regarding claim 4, Pickett disclose the wavelength conversion memberaccording to claim 1,
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`wherein the second matrix includes an inorganic crystal (see para [0051)).
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`Regarding claim 5, Pickett discloses the wavelength conversion member according to claim 4,
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`wherein the inorganic crystal is a zinc oxide crystal (see para [0070] disclosing ZnO).
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`Regarding claim 7, Pickett discloses the wavelength conversion member according to claim 1,
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`wherein the wavelength conversion particles have an average particle size ranging from 0.1 um to 10
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`um, inclusive (see para [0025]).
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`Regarding claim 8, Pickett discloses the wavelength conversion member according to claim 1,
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`wherein the wavelength conversion particles each further include a protective layer covering the first
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`matrix (see para [0024] (for example, a silicone, an epoxy, a (meth)acrylate, a polymeric material, or the
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`like) in terms of ease of color rendering, processing, and reproducibility and offers greater quantum dot
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`stability to photo-oxidation.).
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`Regarding claim 9, Pickett discloses a light source comprising: a light-emitting element; and the
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`wavelength conversion member according to claim 1, the wavelength conversion member being
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`

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`Application/Control Number: 16/637,919
`Art Unit: 2813
`
`Page 4
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`disposed on an optical path of light emitted from the light- emitting element (see fig 10 disclosing a
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`device of claim 1).
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`Claim Rejections Under 35 U.S.C. §103
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`The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections
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`set forth in this Office action:
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`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.
`
`Claim 6 is rejected under 35 U.S.C. §103 as being unpatentable over Pickett as applied to claim
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`1 and further in view of Kazama (US 20160211409 A1).
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`Regarding claim 6, Pickett discloses the wavelength conversion member according to claim 5,
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`and Kazama further discloses wherein the zinc oxide crystal is a zinc oxide polycrystal in a c-axis
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`orientation. Pickett and Kazama arein the same or similar fields of endeavor. It would have been
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`obvious to combine Pickett and Kazama. Pickett and Kazama may be combined by forming the device of
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`Pickett in an orientation as disclosed in Kazama. One having ordinaryskill in the art would be motivated
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`to combine Pickett with Kazama in order to realize lattice matching, see paras [0021]-[0024].
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`Conclusion
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`Any inquiry concerning this communication or earlier communications from the examiner
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`should be directed to EDWARD CHIN whose telephone number is (571)270-1827. The examiner can
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`normally be reached M-F 9AM-5PM.
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`

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`Application/Control Number: 16/637,919
`Art Unit: 2813
`
`Page 5
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`Examiner interviewsare available via telephone, in-person, and video conferencing using a
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`
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`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor,
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`Steven Gauthier can be reached on (571) 270-0373. The fax phone number for the organization where
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`this application or proceedingis assigned is 571-273-8300.
`
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`
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`assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA)or
`
`571-272-1000.
`
`/EDWARD CHIN/
`Primary Examiner, Art Unit 2813
`
`