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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
`
`16/639,647
`
`02/17/2020
`
`Takeshi ABE
`
`MIYO.4PUSO1
`
`5240
`
`MARKD. SARALINO (PAN)
`RENNER, OTTO, BOISSELLE & SKLAR, LLP
`1621 EUCLID AVENUE
`19TH FLOOR
`
`CLEVELAND, OH 44115
`
`EDMONDSON, LYNNE RENEE
`
`1734
`
`07/11/2022
`
`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)
`
`

`

`
`
`Disposition of Claims*
`1-9 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`5a) Of the above claim(s) ___ is/are withdrawn from consideration.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) 1-9 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://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) The drawing(s)filed on 2/17/20 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
`1.2) Certified copies of the priority documents have been received.
`2.2 Certified copies of the priority documents have been received in Application No.
`3.4 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 20220702
`
`Application No.
`Applicant(s)
`16/639,647
`ABE etal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`LYNNE EDMONDSON
`1734
`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 2/17/20.
`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.
`
`

`

`Application/Control Number: 16/639,647
`Art Unit: 1734
`
`Page 2
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`DETAILED ACTION
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`Notice of Pre-AlA or AIA Status
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`1.
`
`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 § 112
`
`2.
`
`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-AlA), 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.
`
`3.
`
`Claims 8 and 9 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AlA),
`
`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 applications subject
`
`to pre-AlA 35 U.S.C. 112, the applicant), regards as the invention.
`
`Claims 8 and9 recite the term “garnet-type crystal structure”. The term “type”
`
`rendersthe claims indefinite.
`
`While not a suggestion of claim language, in the interest of compact prosecution,
`
`the term “garnet-type crystal structure” is treated as ‘garnet crystal structure’.
`
`Appropriate correction is required.
`
`Claim Rejections - 35 USC § 103
`
`4.
`
`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
`
`

`

`Application/Control Number: 16/639,647
`Art Unit: 1734
`
`Page 3
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`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
`
`the same under either status.
`
`5.
`
`The following is a quotation of 35 U.S.C. 103 which forms the basis for all
`
`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.
`
`6.
`
`The instant claims contain the transitional phrase “comprising’. Per MPEP
`
`2111.03 ‘The transitional term “comprising”, which is synonymous with “including,”
`
`“containing,” or “characterized by,” is inclusive or open-ended and does not exclude
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`additional, unrecited elements or method steps’. This open-ended definition has been
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`taken into consideration in the following rejections.
`
`7.
`
`Claims 1-4 and 6-9 are rejected under 35 U.S.C. 103 as being unpatentable
`
`over US 2011/0227476 A1 to Zhang etal. (hereinafter Zhang).
`
`Regarding claim 1, Zhang discloses a light emitting device (para [0003])
`
`comprising:
`
`a solid-state (para [0005]) light emitting element (LED, para [0020]) that emits
`
`excitation light having a maximum intensity value within a wavelength range of between
`
`about 360 nm and about 500 nm (para [0020]), which overlaps the instantly claimed
`
`range of about 440 nm or more and less than 470 nm. See MPEP 2144.05(1), which
`
`states that ‘In the case where the claimed ranges “overlap or lie inside ranges disclosed
`
`by the prior art” a prima facie case of obviousnessexists’.
`
`

`

`Application/Control Number: 16/639,647
`Art Unit: 1734
`
`Page 4
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`Zhang further discloses that the device comprises a wavelength conversion
`
`member composed by combining a first wavelength converter (20), which includes a
`
`first phosphor (20) that is a particulate phosphor (Fig. 2D and para [0038]) and is an
`
`inorganic phosphor activated by Ce3+ (YAG:Ce or LUAG:Ce, para [0023]), anda
`
`second wavelength converter (80), which includes a second phosphor (para [0038]) that
`
`is an inorganic phosphor activated by Ce3+ (para [0024]), with each other,
`
`wherein the first phosphor emitsfirst fluorescence having a maximum intensity
`
`value within a wavelength range of between about 495 nm and about 560 nm (para
`
`0021]), which overlapsthe instantly claimed range of 470 nm or more and less than 530
`
`nm, and the second phosphor emits second fluorescence having a maximum intensity
`
`value within a wavelength range of between about 575 nm and about 680 nm (para
`
`[0027]), which overlaps the instantly claimed range of 580 nm or more and less than
`
`660 nm (see MPEP 2144.05(I), cited above), and
`
`the first wavelength converter has a dispersed state in which particles of the first
`
`phosphor (20) are not in contact with one another (Fig. 2D).
`
`Regarding claim 2, Zhang discloses the light emitting device according to claim
`
`wherein the second phosphor is a particulate phosphor (contained in layer 30,
`
`para [0038]), and
`
`the second wavelength converter (30) has a contact structure in which particles
`
`of the second phosphor are in contact with one another (via sintering, para [0045]). See
`
`

`

`Application/Control Number: 16/639,647
`Art Unit: 1734
`
`Page 5
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`evidentiary reference, US 2011/0084293 A1 to Mueller-Machetal. (hereinafter Mueller-
`
`Mach), which teaches that sintering connects particles (para [0023)).
`
`Regarding claim 3, Zhang discloses the light emitting device according to claim
`
`1, wherein the second wavelength converter (30) is a sintered body (Fig. 2D) thatis
`
`composedbysintering the second phosphor (para [0042] and [0059]). The reference is
`
`silent regarding sintered ceramics that have a plurality of air gaps in an inside or
`
`sintered ceramics that do not have a plurality of air gaps in an inside. However, it would
`
`be obvious to one of ordinary skill in the art that the sintered ceramic would either have
`
`air gaps or not haveair gaps. A fully dense sintered ceramic is expected to have no air
`
`gaps. A partially dense sintered ceramic is expected to haveair gaps (porosity).
`
`Regarding claim 4, Zhang discloses the light emitting device according claim 1,
`
`wherein the excitation light (from light source 15) enters the wavelength conversion
`
`member soasto directly irradiate the second wavelength converter (30), and a light
`
`component transmitting through the wavelength conversion member is output as output
`
`light (para [0031] and Fig. 2D).
`
`Regarding claim 6, Zhang discloses the light emitting device according to claim
`
`1, wherein the first phosphor is at least one of aluminate and silicate (para [0023)).
`
`Regarding claim 7, Zhang discloses the light emitting device according to claim
`
`1, wherein the second phosphor is a silicate (para [0025]).
`
`

`

`Application/Control Number: 16/639,647
`Art Unit: 1734
`
`Page 6
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`Regarding claims 8 and 9, Zhang discloses the light emitting device according to
`
`claim 1, wherein the first phosphor is aluminate having a garnet crystal structure (para
`
`[0023]) and the second phosphor is silicate having a garnetcrystal structure (para
`
`[0025)).
`
`These rejections are based on the interpretation set forth in para #3, above.
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`8.
`
`Claims 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over US
`
`2012/0199858 A1 to Fujii et al. (hereinafter Fujii).
`
`Regarding claim 1, Fujii discloses a light emitting device (para [0010])
`
`comprising:
`
`a solid-state (para [0005]) light emitting element (LED 22, para [0044]) that emits
`
`excitation light having a maximum intensity value within a wavelength range of about
`
`360 nm to about 500 nm (para [0010]), which overlaps the instantly claimed range of
`
`440 nm or more and less than 470 nm (see MPEP 2144.05(I), cited above); and
`
`a wavelength conversion member composed by combiningafirst wavelength
`
`converter (phosphor 12, Fig. 6), which includesafirst phosphor that is a particulate
`
`phosphor (conventional phosphor powder 12 defined as YAG:Ce, para [0006]) and is an
`
`inorganic phosphor activated by Ce3+ (YAG:Ce, para [0006]), and a second wavelength
`
`converter (WCC 26), which includes a second phosphor that is an inorganic phosphor
`
`activated by Ce3+ (para [0045]), with each other.
`
`Fujii discloses that the first phosphor is YAG:Ce (para [0006], as discussed
`
`above) which emits first fluorescence having a maximum intensity value of 500 nm to
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`

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`Application/Control Number: 16/639,647
`Art Unit: 1734
`
`Page 7
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`650 nm under blue light. See evidentiary reference, “Synthesis and Characterization of
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`Ce-Doped Y3AlsO12 (YAG:Ce) Nanopowders Usedfor Solid-State Lighting” by Chung et
`
`al. (hereinafter Chung) (page 1). 500 nm to 650 nm overlapsthe instantly claimed
`
`range of 470 nm or more andless than 530 nm. See MPEP 2144.05(l), cited above.
`
`Evidentiary reference Chung also states that YAG:Ce has a maximum intensity of 520
`
`nm under excitation of around 442 nm (page 4), which falls within the instantly claimed
`
`wavelength range. Fujii further discloses that the second phosphor (in WCC 26) emits
`
`second fluorescence having a maximum intensity value within a wavelength range of
`
`about 520 nm to about 590 nm (para [0054]), which overlaps the instantly claimed range
`
`of 580 nm or more and less than 660 nm (see MPEP 2144.05(I), cited above), and
`
`the first wavelength converter has a dispersed state (para [0053]) in which
`
`particles of the first phosphor (12) are not in contact with one another (Fig. 6).
`
`Regarding claim 2, Fujii discloses the light emitting device according to claim 1,
`
`wherein the second phosphor is a particulate phosphor (para [0067]), and
`
`the second wavelength converter has a contact structure in which particles of the
`
`second phosphor are in contact with one another (via sintering under pressure, para
`
`[0067]).
`
`Regarding claim 3, Fujii discloses the light emitting device according to claim 1,
`
`wherein the second wavelength converter (WCC 26)is a sintered bodythatis
`
`composedbysintering the second phosphor and hasa plurality of air gaps (porosity) in
`
`an inside (para [0045)).
`
`

`

`Application/Control Number: 16/639,647
`Art Unit: 1734
`
`Page 8
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`Regarding claim 4, Fujii discloses the light emitting device according claim 1,
`
`wherein the excitation light (from LED 22) enters the wavelength conversion member so
`
`as to directly irradiate the second wavelength converter (WCC 26), andalight
`
`component transmitting through the wavelength conversion member is output as output
`
`light (Fig. 6 and para [0058)).
`
`Regarding claim 5, Fujii discloses the light emitting device according to claim 1,
`
`wherein the excitation light (from LED 22) enters the wavelength conversion member so
`
`as to directly irradiate the first wavelength converter (12) (Fig. 6 and para [0010]). The
`
`reference is silent regarding the limitation “and a light component reflected by the
`
`wavelength conversion member is output as outputlight”. However, the devices and
`
`phosphor compositions overlap. See MPEP 2112.01(1), which states that ‘Where the
`
`claimed and prior art products are identical or substantially identical in structure or
`
`composition, or are producedbyidentical or substantially identical processes, a prima
`
`facie case of either anticipation or obviousness has been established..."When the PTO
`
`shows a sound basis for believing that the products of the applicant and the prior art are
`
`the same, the applicant has the burden of showing that they are not."... Therefore, the
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`prima facie case can be rebutted by evidence showing that the prior art products do not
`
`necessarily possess the characteristics of the claimed product’. The devices and
`
`phosphor compositions overlap. Therefore, one of ordinary skill in the art would expect
`
`a light component reflected by the first wavelength conversion member to be output as
`
`output light, absent evidenceto the contrary.
`
`

`

`Application/Control Number: 16/639,647
`Art Unit: 1734
`
`Page 9
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`Regarding claim 6, Fujii discloses the light emitting device according to claim 1,
`
`wherein the first phosphor is an aluminate (YAG:Ce, para [0006], as discussed above).
`
`Regarding claim 7, Fujii discloses the light emitting device according to claim 1,
`
`wherein the second phosphor is selected from a group that includessilicates (para
`
`[0045}).
`
`Regarding claims 8 and 9, Fujii discloses the light emitting device according to
`
`claim 1, wherein the first phosphor is aluminate having a garnet crystal structure
`
`(YAG:Ce, para [0006]) and the second phosphor is selected from a group that includes
`
`silicates having a garnet crystal structure (Ca3Sc2Si3012:Ce, para [0045)).
`
`These rejections are based on the interpretation set forth in para #3, above.
`
`Conclusion
`
`9.
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to LYNNE EDMONDSON whosetelephone number is
`
`(571)272-2678. The examiner can normally be reached M-F 10-6:30.
`
`Examiner interviews are available via telephone, in-person, and video
`
`conferencing using a USPTO supplied web-basedcollaboration tool. To schedule an
`
`interview, applicant is encouraged to use the USPTO Automated Interview Request
`
`(AIR) at http:/Awww.uspto.gov/interviewpractice.
`
`

`

`Application/Control Number: 16/639,647
`Art Unit: 1734
`
`Page 10
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
`
`supervisor, Jonathan Johnson can be reached on 571-272-1177. 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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`
`/L.E./
`Examiner, Art Unit 1734
`
`/Matthew E. Hoban/
`Primary Examiner, Art Unit 1734
`
`