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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
`
`17/237,793
`
`04/22/2021
`
`Shinichiro NOZAKI
`
`083710-3299
`
`1080
`
`McDermott Will and Emery LLP
`The McDermott Building
`500 North Capitol Street, N.W.
`Washington, DC 20001
`
`NGUYEN, TUAN N
`
`2828
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`09/29/2022
`
`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):
`
`mweipdocket@mwe.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`Disposition of Claims*
`1-12 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`5a) Of the above claim(s) ___ is/are withdrawn from consideration.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) 1-12 is/are rejected.
`1) Claim(s)__is/are objectedto.
`Cj} Claim(s)
`are subjectto restriction and/or election requirement
`* 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 4/22/2021 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.
`3.4.) 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 4/22/2021.
`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 20220923
`
`Application No.
`Applicant(s)
`47/237,793
`NOZAKI, Shinichiro
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`TUAN N NGUYEN
`2828
`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 2 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 4/22/2021.
`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: 17/237,793
`Art Unit: 2828
`
`Page 2
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`DETAILED ACTION
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`Notice of Pre-AIA or AIA Status
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`The present application, filed on or after March 16, 2013, is being examined underthe
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`first inventorto file provisions of the AJA.
`
`Double Patenting
`
`1.
`
`The nonstatutory double patenting rejection is based on a judicially created doctrine
`
`grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or
`
`improper timewise extension of the “right to exclude” granted by a patent and to prevent possible
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`harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where
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`the conflicting claimsare not identical, but at least one examined application claim is not
`
`patentably distinct from the reference claim(s) because the examined application claim is either
`
`anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg,
`
`140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d
`
`2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van
`
`Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619
`
`(CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
`
`A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may
`
`be used to overcome an actual or provisional rejection based on nonstatutory double patenting
`
`provided the reference application or patent either is shown to be commonly ownedwith the
`
`examinedapplication, or claims an invention madeasa result of activities undertaken within the
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`scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination
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`underthe first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP §
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`

`

`Application/Control Number: 17/237,793
`Art Unit: 2828
`
`Page 3
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`2146 et seq. for applications not subject to examination underthe first inventorto file provisions
`
`of the AJA.A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
`
`The USPTOInternet website contains terminal disclaimer forms which maybeused.
`
`Please visit www.uspto.gov/patent/patents-forms. Thefiling date of the application in which the
`
`form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA/25, or
`
`PTO/AIA/26) should be used. A web-based eTerminal Disclaimer may befilled out completely
`
`online using web-screens. An eTerminal Disclaimerthat meets all requirements is auto-
`
`processed and approved immediately upon submission. For more information about eTerminal
`
`Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-Ljsp.
`
`2.
`
`Claim 1, (3, 4) are provisionally rejected on the ground of nonstatutory double patenting
`
`as being unpatentable over claims 1, 6, (7, 8) of (US 11, 018,472). Although the claimsat issue
`
`are not identical, they are not patentably distinct from each other because
`
`Both recites a semiconductor laser device comprising: a mountsection; a first wiring, a
`
`second wiring and a third wiring connected to an upper surface of the mountsection; a first
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`semiconductor laser element having an electrode at an upper side and an electrode at a lower
`
`side; and the electrode at the lowerside of the first semiconductor laser elementis joined to an
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`upper surface of the first wiring; wherein: the first semiconductor laser elementhasa front side
`
`whichis a laser emission end surface, a back side opposite to the front side and sides between the
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`front side and the backside; the first L shape portion has a portion opposite to the side of thefirst
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`semiconductor laser element and a portion opposite to the back side of the first semiconductor
`
`laser element.
`
`

`

`Application/Control Number: 17/237,793
`Art Unit: 2828
`
`
`Page 4
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`Current Application
`eo devi
`
`US (11,018,472)
`
`£. A semiconducior laser device comprising:
`a mint section:
`
`
`
`
`Waar easekt ttsche
`
`
`a first wirhag and a second witring commectad to sn bpper
`surface of the maul section,
`& first senviconduetor laser clernent having - clectrode at
`
`an upper side, an electrodeaia lower side anda rid
`Whe SECTORS Stl ‘fhe inver side oF theTryst semlcondictar
`
`joined la an upper sprface af the fest
`a third wy
`ne joined ta the electrode at the upper suri
`
`
`
`of the fies semiconductor daser element,
`where:
`
`the Hirst senmconducter laser ehoment bas a front side
`which is 3 kewer emission end serfsxee, a back side
`opposite te the fear side and aides between the fhont
`
`z
`sithe
`and the backside, the second wiving tachides an [.
`
`shape portion in plan view,
`the {- shape portion has a porting apposite wo the side of
`first semiconductor laser clement and a portion
` the
`appesite to the Gack side of the first semiconductor
`laser clement, and
`
`.
`os
`4
`las
`
`ditt ofthe second wirtas on De back sich is Jarges hart
`
`
`a width of the
`cond wiring on the
`front side along ¢
`
`
`deeetion perperdicular ie a longinidinal deection of
`the first semiconductor laser element.
`
`§ A semeoncductor laser dewice conaprising:
`a pout section:
`a first wiring and a second wiring connected fo an upser
`aurfice of the meant section:
`a Tlrst semuiconductar laser elarient having 8a Glacteads at
`
`
`an opper skle, an electrode at a lower side and a ridge,
`whe elecinade at the lower side of the first
`semiconducteyr
`
`
`
`
`relemernt is soldered to an upper surface ofthe firs!
`
`wirkren: and
`a third wiring soldered io the eleciyode at the upper
`surface of the first semiconductor
`faser ebement,
`whergin
`
`:semicaridefer laser element kas a frort side
`the first
`
`
`which
`is a baer
`emission end surface, a back side
`OpPastke 1 the frome side and skies between the from
`side and the back side, the secend wiring includes an 1.
`shape in pla view,
`the 1 shape portion Sas a portica apposite to the side al
`the first seacendacter laser element and a portion
`
`appesite to Ue
`ck side of the first semiconductor
`
`
`y SleMen, aE
`
`a width of thesecond wirtag on the back shite ic k
`irger than
`
`a vadkh ofthe second wirmie or the [rant st
`ealong a
`FECLoF
`Airection perpendicukir to a fongnudinal di
`the thst semiconductor laser clement.
`
`The semiconductor laser device according to claim 6
`
`further crunprising a second semiconductor laser element
`having an electrodeal an upper side, an clectrade at a fower
`side atl a sdge, wherein the third wiring is electrically
`counected ta the cleotide al the lower side af ther second
`semioinduetor laser ehemert,
`.
`
`8. The seuticonduotor inser devies sooording to claim 7,
`
`
`wherein the fret sexnicondncturloser cleme
`the
`secand
`
`
`senidowadueter laser claneat are commeckat in, sectes.
`
`

`

`Application/Control Number: 17/237,793
`Art Unit: 2828
`
`Page 5
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`Even though (US 11, 018,472) did not state the third wiring includes a second L shape
`
`portion in plan view, and the second L shape portion has a portion opposite to a side of first L
`
`shape portion. However, a nonstatutory obviousness-type of double patenting rejection is
`
`appropriate where the conflicting claims are not identical, but at least one examined application
`
`claim is not patentably distinct from the reference claim(s)because the examination application is
`
`either anticipated by for being broader, or would have been obvious overthe reference claim in
`
`using the knownstructure such as L shape wiring and equivalent structure thereof.
`
`Allowable Subject Matter
`
`2.
`
`Claims 1-12 are allowed.
`
`Inoueet al. (US 7,561,610) and Hasegawa (US 4,977,570) are considered as pertinent
`
`priorart.
`
`3.
`
`The following is an examiner’s statement of reasons for allowance:
`
`With respect to claim 1, Inoueet al. ‘610 showsand discloses a semiconductorlaser
`
`device comprising: a mountsection (Fig 10, J], 15: 15); a first wiring, a second, and a third
`
`wiring connected to an upper surface of the mount section (Fig 10, 11, 15: 22b, 23, 22c); a first
`
`semiconductor laser element having an electrode at an upper side and an electrode at a lower side
`
`(Fig 10, 11, 15: 22b, 23); and the electrode at the lowerside of the first semiconductor laser
`
`elementis joined to an uppersurface ofthe first wiring (Fig 10, 11, 15, 20, 24, 25: lower
`
`electrode joined to upperis joined to upper surface offirst wiring); wherein: thefirst
`
`semiconductor laser element has a front side which is a laser emission end surface, a back side
`
`opposite to the front side and sides between the front side and the back side (Col 4: 35-40).
`
`

`

`Application/Control Number: 17/237,793
`Art Unit: 2828
`
`Page 6
`
`Inoueet al. “610 did not teach the second wiring includesa first L shape portion in which
`
`a part thereof is cut out in plan view, the first L shape portion has a portion opposite to the side
`
`of the first semiconductor laser element and a portion opposite to the back side of the first
`
`semiconductor laser element, the third wiring includes a second L shape portion in plan view,
`
`and the second L shapeportion has a portion opposite to a side of first L shape portion.
`
`Hasegawa‘570 of analogous art showsand discloses of semiconductor laser with stripe
`
`electrodes having pads for wire bonding formed on a substrate where the pad portion has a width
`
`greater than that of the stripe-like portion to prevent short circuit and ease of mounting (Fig 4-8;
`
`Col 1-2). However, Inoueet al. ‘610 and Hasegawa ‘570 did not teach the second wiring
`
`includesa first L shape portion in which a part thereof is cut out in plan view, the first L shape
`
`portion has a portion opposite to the side of the first semiconductor laser element and a portion
`
`opposite to the back side ofthe first semiconductor laser element; Inoueet al. ‘610 and
`
`Hasegawa‘570 did not teach the third wiring includes a second L shape portion in plan view,
`
`and the second L shapeportion has a portion opposite to a side of first L shape portion. The
`
`referencesfail to disclose the structural and functional arrangementrequired as cited by the
`
`claim.
`
`Claims 2-12 are also allowable as they directly depend on claims1.
`
`Any comments considered necessary by applicant must be submitted no later than the
`
`paymentofthe issue fee and, to avoid processing delays, should preferably accompanythe issue
`
`fee. Such submissions should be clearly labeled "Comments on Statement of Reasonsfor
`
`Allowance."
`
`

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`Application/Control Number: 17/237,793
`Art Unit: 2828
`
`Page 7
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`COMMUNICATION
`
`3.
`
`The prior art made of record and not relied upon is considered pertinent to applicant’s
`
`disclosure. It is cited primarily to show the productof the instant invention.
`
`Hata et al. ‘138 of analogous art shows and discloses a semiconductor laser apparatus
`
`where the pad electrode is in L shape (Fig /5, 16, 19, 20; Section [112-114] 12-15 L electrode
`
`pads).
`
`4.
`
`Any inquiry concerning this communication or earlier communications from the
`
`examinershould be directed to TUAN N NGUYENwhosetelephone numberis (571)272-1948.
`
`The examiner can normally be reached M-F.
`
`Examinerinterviews are available via telephone, in-person, and video conferencing using
`
`a USPTO supplied web-based collaboration tool. To schedule an interview, applicantis
`
`encouraged to use the USPTO Automated Interview Request (AIR) at
`
`http://www.uspto.gov/interviewpractice.
`
`If attempts to reach the examinerby telephone are unsuccessful, the examiner’s
`
`supervisor, MinSun Harveycan be reached on (571) 272-1835. The fax phone numberfor the
`
`organization wherethis application or proceedingis assigned is 571-273-8300.
`
`Information regarding the status of published or unpublished applications may be
`
`obtained from Patent Center. Unpublished application information in Patent Center is available
`
`to registered users. To file and manage patent submissions in Patent Center, visit:
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`

`

`Application/Control Number: 17/237,793
`Art Unit: 2828
`
`Page 8
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`at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service
`
`Representative, call 800-786-9199 (IN USA OR CANADA)or 571-272-1000.
`
`/TUAN N NGUYEN/
`Primary Examiner, Art Unit 2828
`
`