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 .
Response to Amendment
Applicant’s amendment dated 11/17/2025, in which claims 1, 10, 20 were amended, claims 2-3, 13, 15 were cancelled, claims 21-22 were added, has been entered.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d) to foreign application KR10-2021-0117941 filed on 09/03/2021. The foreign application is not in English. The certified copy of the foreign priority application KR10-2021-0117941, an English translation of the non-English language foreign application KR10-2021-0117941 and a statement that the translation is accurate in accordance with 37 CFR 1.55 have been received.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 21-22 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 21, claim 21 each recites the limitation “a light absorption spectrum of the active layer has a peak at a wavelength of 1.5 µm or more” which cover a range up to infinity. However, the specification does not provide any description of a light absorption spectrum of the active layer has a peak at an infinity wavelength. Further, there is no description of any such steps whether conventional or inventive that demonstrates possession thereof or therefor. Accordingly, claim 21 was not in possession of Applicant at the time of filing.
Regarding claim 22, claim 22 each recites the limitation “a light absorption spectrum of the active layer has a peak at a wavelength of 1.5 µm to 2 µm”. However, the specification does not provide written support for the claimed range.
New or amended claims which introduce elements or limitations that are not supported by the as-filed disclosure violate the written description requirement. See, e.g., In re Lukach, 442 F.2d 967, 169 USPQ 795 (CCPA 1971) (subgenus range was not supported by generic disclosure and specific example within the subgenus range); In re Smith, 458 F.2d 1389, 1395, 173 USPQ 679, 683 (CCPA 1972) (an adequate description of a genus may not support claims to a subgenus or species within the genus). See also Purdue Pharma L.P. v. Faulding Inc., 230 F.3d 1320, 1328, 56 USPQ2d 1481, 1487 (Fed. Cir. 2000) ("[T]he specification does not clearly disclose to the skilled artisan that the inventors... considered the... ratio to be part of their invention.... There is therefore no force to Purdue’s argument that the written description requirement was satisfied because the disclosure revealed a broad invention from which the [later-filed] claims carved out a patentable portion"). See MPEP 2163.
Further, there is no description of any such steps whether conventional or inventive that demonstrates possession thereof or therefor. Accordingly, claim 22 was not in possession of Applicant at the time of filing.
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 (i.e., changing from AIA to pre-AIA ) 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.
Claims 1-3, 5-6, 8-12, 14, 16-19, 21-22 are rejected under 35 U.S.C. 103 as being unpatentable over Liang et al. (US Pub. 20150060773) and Suganuma et al. (US Pub. 20200212329).
Regarding claims 1, 21 and 22, Liang et al. discloses in Fig. 1 an organic photoelectric conversion device, comprising:
an upper electrode [20];
a lower electrode [18]; and
an active layer [14, 12 and 16] between the upper electrode [20] and the lower electrode [18][paragraph [0016]],
wherein the active layer [14, 12 and 16] includes [6,6]-Phenyl-C71-butyric acid methyl ester (PC70BM) [paragraph [0021]].
Liang et al. fails to disclose
wherein the active layer includes bis-(4-dimethylaminodithiobenzyl)-Ni(II) (BDN).
However, Liang et al. discloses in paragraph [0018], [0024] that the active layer includes an intermix layer including a mixture of both n-type organic semiconductor and p-type organic semiconductor.
Suganuma et al. discloses in Fig. 1, Fig. 2, paragraph [0037]-[0038], [0045], [0055]
wherein the active layer [30] includes bis-(4-dimethylaminodithiobenzyl)-Ni(II) (BDN).
Suganuma et al. further suggests in paragraph [0045], [0055], [0057]-0059], claims 1, 4, 9-11 that bis-(4-dimethylaminodithiobenzyl)-Ni(II) (BDN) can be used in combination with a fullerene and/or the derivative thereof. PC70BM is a fullerene derivative [See paragraph [0024] of Liang et al.].
Therefore it would have been obvious to select bis-(4-dimethylaminodithiobenzyl)-Ni(II) (BDN) based on its suitability for use as a material of the intermix layer in the device of Liang et al. Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945).
It would have been obvious to one of ordinary skill in the art before the time of the effective filling date of the invention to incorporate the teachings of Suganuma et al. into the method of Liang et al. to include wherein the active layer includes bis-(4-dimethylaminodithiobenzyl)-Ni(II) (BDN). The ordinary artisan would have been motivated to modify Liang et al. in the above manner for the purpose of providing suitable material of the active layer to achieve its desired function.
The combination of Liang et al., and Suganuma et al. discloses the active layer includes [6,6]-Phenyl-C71-butyric acid methyl ester (PC70BM) and bis-(4-dimethylaminodithiobenzyl)-Ni(II) (BDN) as claimed. Therefore, the BDN and PC70BM disclosed by Liang et al. and Suganuma et al. would form a charge transfer complex (CTC).
In other words, the combination of Liang et al. and Suganuma et al. discloses the claimed active layer includes the claimed charge transfer complex (CTC) composed of [6,6]-Phenyl-C71-butyric acid methyl ester (PC70BM) and bis-(4-dimethylaminodithiobenzyl)-Ni(II) (BDN). Therefore, the active layer disclosed by Liang et al. and Suganuma et al. would have the claimed property of “wherein a light absorption spectrum of the charge transfer complex has a peak at a wavelength higher than a light absorption spectrum of both the BDN and the PC70BM; a light absorption spectrum of the active layer has a peak at a wavelength of 1.5 µm or more; wherein a light absorption spectrum of the active layer has a peak at a wavelength of 1.5 µm to 2µm.”
“WHEN THE STRUCTURE RECITED IN THE REFERENCE IS SUBSTANTIALLY IDENTICAL TO THAT OF THE CLAIMS, CLAIMED PROPERTIES OR FUNCTIONS ARE PRESUMED TO BE INHERENT. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).” "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP 2112.01 (I) and (II).
In addition, Applicant has not provided criticality of the claimed range. It would have been obvious to modify Liang et al. and Suganuma et al. to provide a light absorption spectrum of the active layer has a peak at a wavelength of 1.5 µm or more; wherein a light absorption spectrum of the active layer has a peak at a wavelength of 1.5 µm to 2 µm for at least the purpose of optimization and routine experimentation to provide an active layer having desired property and to achieve desired device performance. The claimed ranges are merely optimizations, and as such are not patentable over the prior art. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382.
Alternatively,
Regarding claims 1, 21 and 22, Suganuma et al. discloses in Fig. 1, paragraph [0025], paragraph [0037]-[0038], [0045], [0055], claims 1, 4, 9-11 an organic photoelectric conversion device, comprising:
an upper electrode [20];
a lower electrode [10]; and
an active layer [30] between the upper electrode [20] and the lower electrode [10],
wherein the active layer [30] includes bis-(4-dimethylaminodithiobenzyl)-Ni(II) (BDN) and a fullerene and/or the derivative thereof [paragraph [0045], [0055], [0057]-0059], claims 1, 4, 9-11].
Suganuma et al. fails to disclose
the fullerene and/or the derivative thereof includes [6,6]-Phenyl-C71-butyric acid methyl ester (PC70BM).
Liang et al. discloses in paragraph [0021], [0024]
the fullerene and/or the derivative thereof includes [6,6]-Phenyl-C71-butyric acid methyl ester (PC70BM).
Liang et al. further discloses in paragraph [0018], [0024] that the active layer includes various mixture of one or more p-type materials and one or more n-type materials.
Therefore, it would have been obvious to select [6,6]-Phenyl-C71-butyric acid methyl ester (PC70BM) based on its suitability for use as a fullerene and/or the derivative thereof in the device of Suganuma et al. Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945).
It would have been obvious to one of ordinary skill in the art before the time of the effective filling date of the invention to incorporate the teachings of Liang et al. into the method of Suganuma et al. to include the active layer includes [6,6]-Phenyl-C71-butyric acid methyl ester (PC70BM). The ordinary artisan would have been motivated to modify Suganuma et al. in the above manner for the purpose of providing suitable fullerene material in the active layer to achieve desired conversion efficiency.
The combination of Liang et al., and Suganuma et al. discloses the active layer includes [6,6]-Phenyl-C71-butyric acid methyl ester (PC70BM) and bis-(4-dimethylaminodithiobenzyl)-Ni(II) (BDN) as claimed. Therefore, the BDN and PC70BM disclosed by Liang et al. and Suganuma et al. would form a charge transfer complex (CTC).
In other words, the combination of Liang et al. and Suganuma et al. discloses the claimed active layer includes the claimed charge transfer complex (CTC) composed of [6,6]-Phenyl-C71-butyric acid methyl ester (PC70BM) and bis-(4-dimethylaminodithiobenzyl)-Ni(II) (BDN). Therefore, the active layer disclosed by Liang et al. and Suganuma et al. would have the claimed property of “wherein a light absorption spectrum of the charge transfer complex has a peak at a wavelength higher than a light absorption spectrum of both the BDN and the PC70BM; a light absorption spectrum of the active layer has a peak at a wavelength of 1.5 µm or more; wherein a light absorption spectrum of the active layer has a peak at a wavelength of 1.5 µm to 2µm.”
“WHEN THE STRUCTURE RECITED IN THE REFERENCE IS SUBSTANTIALLY IDENTICAL TO THAT OF THE CLAIMS, CLAIMED PROPERTIES OR FUNCTIONS ARE PRESUMED TO BE INHERENT. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).” "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP 2112.01 (I) and (II).
In addition, Applicant has not provided criticality of the claimed range. It would have been obvious to modify Liang et al. and Suganuma et al. to provide a light absorption spectrum of the active layer has a peak at a wavelength of 1.5 µm or more; wherein a light absorption spectrum of the active layer has a peak at a wavelength of 1.5 µm to 2µm for at least the purpose of optimization and routine experimentation to provide an active layer having desired property and to achieve desired device performance. The claimed ranges are merely optimizations, and as such are not patentable over the prior art. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382.
Regarding claims 5 and 8, Suganuma et al. discloses in paragraph [0082]
wherein the active layer [30] has a thickness of about 50 nm to about 100 nm;
wherein the active layer [30] has a thickness of about 400 nm to about 600 nm.
Additionally, Applicant has not provided any criticality of the claimed range. It would have been obvious to modify Liang et al. and Suganuma et al. to provide the claimed range for at least the purpose of optimization and routine experimentation to provide an active layer having sufficient thickness to improve conversion efficiency of the active layer [paragraph [0082] of Suganuma et al.]. The claimed ranges are merely optimizations, and as such are not patentable over the prior art. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382.
Regarding claim 6, Liang et al. further discloses in Fig. 1, paragraph [0019] wherein the active layer [14, 12 and 16] further includes poly-3-hexylthiophene (P3HT).
Regarding claim 9, Liang et al. discloses in paragraph [0001], an image sensor comprising the organic photoelectric conversion device. The combination of Liang et al. and Suganuma et al. discloses the organic photoelectric conversion device as claimed in claim 1. Consequently, the combination of Liang et al. and Suganuma et al. discloses an image sensor comprising the organic photoelectric conversion device as claimed in claim 1.
Regarding claims 10 and 14, Liang et al. discloses in Fig. 1 an organic photoelectric conversion device, comprising:
an upper electrode [20];
a lower electrode [18]; and
an active layer [14, 12 and 16] between the upper electrode [20] and the lower electrode [18][paragraph [0016]],
wherein the active layer [14, 12 and 16] includes a second organic material,
wherein the second organic material includes [6,6]-phenyl-C71-butyric acid methyl ester (PC70BM), [6,6]-phenyl-C61-butyric acid methyl ester (PCOBM), bis(1-[3- (methoxycarbonyl)propvll-1-phenyl)-[6,6]C62 (bis-PCBM), poly{[N,N-bis(2- octyldodecyl)-naphthalene-1,4,5,8-bis(dicarboximide)-2,6-diyll-alt-5,5-(2,29- bisthiophene)} (N2200), perylene diimide (PDI), or naphthalene diimide (NDI)[[6,6]-phenyl-C71-butyric acid methyl ester (PC70BM)][paragraph [0021]];
wherein the second organic material includes an acceptor [[6,6]-phenyl-C71-butyric acid methyl ester (PC70BM).]
Liang et al. fails to disclose
wherein the active layer includes a first organic material;
wherein the first organic material is represented by Chemical Formula 1a, Chemical Formula 1b, Chemical Formula 1c, or Chemical Formula 1d.
However, Liang et al. discloses in paragraph [0018], [0024] that the active layer includes an intermix layer including a mixture of both n-type organic semiconductor and p-type organic semiconductor.
Suganuma et al. discloses in Fig. 1, Fig. 2, paragraph [0037]-[0038], [0045], [0055]
the active layer [30] includes a first organic material [bis-(4-dimethylaminodithiobenzyl)-Ni(II) (BDN)];
wherein the first organic material [bis-(4-dimethylaminodithiobenzyl)-Ni(II) (BDN)] is represented by Chemical Formula 1a
PNG
media_image1.png
198
351
media_image1.png
Greyscale
Suganuma et al. further suggests in paragraph [0045], [0055], [0057]-0059], claims 1, 4, 9-11 that bis-(4-dimethylaminodithiobenzyl)-Ni(II) (BDN) can be used in combination with a fullerene and/or the derivative thereof. PC70BM is a fullerene derivative [See paragraph [0024] of Liang et al.].
Therefore it would have been obvious to select bis-(4-dimethylaminodithiobenzyl)-Ni(II) (BDN) based on its suitability for use as a material of the intermix layer in the device of Liang et al. Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945).
It would have been obvious to one of ordinary skill in the art before the time of the effective filling date of the invention to incorporate the teachings of Suganuma et al. into the method of Liang et al. to include wherein the active layer includes a first organic material; wherein the first organic material is represented by Chemical Formula 1a. The ordinary artisan would have been motivated to modify Liang et al. in the above manner for the purpose of providing suitable material of the active layer to achieve its desired function.
The combination of Liang et al., and Suganuma et al. discloses the active layer includes [6,6]-Phenyl-C71-butyric acid methyl ester (PC70BM) and bis-(4-dimethylaminodithiobenzyl)-Ni(II) (BDN) as claimed. Therefore, the BDN and PC70BM disclosed by Liang et al. and Suganuma et al. would form a charge transfer complex (CTC).
In other words, the combination of Liang et al. and Suganuma et al. discloses the claimed active layer includes the claimed charge transfer complex (CTC) composed of [6,6]-Phenyl-C71-butyric acid methyl ester (PC70BM) and bis-(4-dimethylaminodithiobenzyl)-Ni(II) (BDN). Therefore, the active layer disclosed by Liang et al. and Suganuma et al. would have the claimed property of “wherein a light absorption spectrum of the charge transfer complex has a peak at a wavelength higher than a light absorption spectrum both of the first organic material and the second organic material; a light absorption spectrum of the active layer has a peak at a wavelength of 1.5 µm or more.”
“WHEN THE STRUCTURE RECITED IN THE REFERENCE IS SUBSTANTIALLY IDENTICAL TO THAT OF THE CLAIMS, CLAIMED PROPERTIES OR FUNCTIONS ARE PRESUMED TO BE INHERENT. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).” "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP 2112.01 (I) and (II).
In addition, Applicant has not provided criticality of the claimed range. It would have been obvious to modify Liang et al. and Suganuma et al. to provide a light absorption spectrum of the active layer has a peak at a wavelength of 1.5 µm or more for at least the purpose of optimization and routine experimentation to provide an active layer having desired property and to achieve desired device performance. The claimed ranges are merely optimizations, and as such are not patentable over the prior art. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382.
Alternatively,
Regarding claims 10 and 14, Suganuma et al. discloses in Fig. 1, paragraph [0025], paragraph [0037]-[0038], [0045], [0055], claims 1, 4, 9-11 an organic photoelectric conversion device, comprising:
an upper electrode [20];
a lower electrode [10]; and
an active layer [30] between the upper electrode [20] and the lower electrode [10],
wherein the active layer [30] includes a first organic material [p-type organic semiconductor] and a second organic material [n-type organic semiconductor],
wherein the first organic material is represented by Chemical Formula 1a, Chemical Formula lb, Chemical Formula 1c, or Chemical Formula id [bis-(4-dimethylaminodithiobenzyl)-Ni(II) (BDN) represented by Chemical Formula 1a
PNG
media_image1.png
198
351
media_image1.png
Greyscale
], and
wherein the second organic material includes a fullerene and/or the derivative thereof [paragraph [0045], [0055], [0057]-0059], claims 1, 4, 9-11].
Suganuma et al. fails to disclose
the fullerene and/or the derivative thereof includes [6,6]-Phenyl-C71-butyric acid methyl ester (PC70BM);
wherein the second organic material includes an acceptor.
Liang et al. discloses in paragraph [0021], [0024]
the fullerene and/or the derivative thereof includes [6,6]-Phenyl-C71-butyric acid methyl ester (PC70BM);
wherein the second organic material includes an acceptor [[6,6]-phenyl-C71-butyric acid methyl ester (PC70BM).]
Liang et al. further discloses in paragraph [0018], [0024] that the active layer includes various mixture of one or more p-type materials and one or more n-type materials.
Therefore, it would have been obvious to select [6,6]-Phenyl-C71-butyric acid methyl ester (PC70BM) based on its suitability for use as a fullerene and/or the derivative thereof in the device of Suganuma et al. Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945).
It would have been obvious to one of ordinary skill in the art before the time of the effective filling date of the invention to incorporate the teachings of Liang et al. into the method of Suganuma et al. to include the active layer includes [6,6]-Phenyl-C71-butyric acid methyl ester (PC70BM); wherein the second organic material includes an acceptor. The ordinary artisan would have been motivated to modify Suganuma et al. in the above manner for the purpose of providing suitable fullerene material in the active layer to achieve desired conversion efficiency.
The combination of Liang et al., and Suganuma et al. discloses the active layer includes [6,6]-Phenyl-C71-butyric acid methyl ester (PC70BM) and bis-(4-dimethylaminodithiobenzyl)-Ni(II) (BDN) as claimed. Therefore, the BDN and PC70BM disclosed by Liang et al. and Suganuma et al. would form a charge transfer complex (CTC).
In other words, the combination of Liang et al. and Suganuma et al. discloses the claimed active layer includes the claimed charge transfer complex (CTC) composed of [6,6]-Phenyl-C71-butyric acid methyl ester (PC70BM) and bis-(4-dimethylaminodithiobenzyl)-Ni(II) (BDN) . Therefore, the active layer disclosed by Liang et al. and Suganuma et al. would have the claimed property of “wherein a light absorption spectrum of the charge transfer complex has a peak at a wavelength higher than a light absorption spectrum both of the first organic material and the second organic material.”
“WHEN THE STRUCTURE RECITED IN THE REFERENCE IS SUBSTANTIALLY IDENTICAL TO THAT OF THE CLAIMS, CLAIMED PROPERTIES OR FUNCTIONS ARE PRESUMED TO BE INHERENT. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).” "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP 2112.01 (I) and (II).
Regarding claim 11 and claim 12, the combination of Liang et al., and Suganuma et al. discloses the active layer includes a first organic material [bis-(4-dimethylaminodithiobenzyl)-Ni(II) (BDN)] and a second organic material includes [6,6]-Phenyl-C71-butyric acid methyl ester (PC70BM) as claimed. Therefore, the BDN and PC70BM disclosed by Liang et al., and Suganuma et al. would possess the properties of “a light absorption spectrum of the first organic material does not have a peak at a wavelength of 1.5 µm or more, and a light absorption spectrum of each of the second organic material does not have a peak at a wavelength of 1.5 µm or more” and “a light absorption spectrum of the first organic material has a peak at a wavelength greater than or equal to 1.0 µm and less than 1.5 µm”. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP 2112.01 (II).
Regarding claims 16-18, Liang et al. further discloses in Fig. 1, paragraph [0019], [0028]
wherein the active layer [14, 12 and 16] further includes a third organic material [poly-3-hexylthiophene (P3HT)] and the third organic material [poly-3-hexylthiophene (P3HT)] includes a donor;
wherein: the active layer [14, 12 and 16] further includes a third organic material [poly-3-hexylthiophene (P3HT)], and the third organic material includes poly-3-hexylthiophene (P3HT);
wherein: the active layer [14, 12 and 16] further includes a third organic material [poly-3-hexylthiophene (P3HT)], and a light absorption spectrum of the third organic material [poly-3-hexylthiophene (P3HT)] does not have a peak at a wavelength of 1.5 µm or more.
Regarding claim 19, Liang et al. discloses in paragraph [0001], an image sensor comprising the organic photoelectric conversion device. The combination of Liang et al. and Suganuma et al. discloses the organic photoelectric conversion device as claimed in claim 10. Consequently, the combination of Liang et al. and Suganuma et al. discloses an image sensor comprising the organic photoelectric conversion device as claimed in claim 10.
Claims 4 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Liang et al. (US Pub. 20150060773) in view of Suganuma et al. (US Pub. 20200212329) as applied to claim 1 and claim 6 above and further in view of Obana et al. (US Pub. 20200131202).
Regarding claim 4 and claim 7, the combination of Liang et al. and Suganuma et al. discloses the active layer includes [6,6]-Phenyl-C71-butyric acid methyl ester (PC70BM) and bis-(4-dimethylaminodithiobenzyl)-Ni(II) (BDN) and poly-3-hexylthiophene (P3HT) as claimed. Therefore, the active layer disclosed by Liang et al. and Suganuma et al. would have the claimed property of “an external quantum efficiency (EQE) of the organic photoelectric conversion device at -5 V for light having a wavelength of about 1,300 nm is 0.07% or more” or “an external quantum efficiency (EQE) of the organic photoelectric conversion device at -5 V for light having a wavelength of about 1,300 nm is 0.67% or more”. “WHEN THE STRUCTURE RECITED IN THE REFERENCE IS SUBSTANTIALLY IDENTICAL TO THAT OF THE CLAIMS, CLAIMED PROPERTIES OR FUNCTIONS ARE PRESUMED TO BE INHERENT. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).” "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP 2112.01 (I) and (II).
Liang et al. and Suganuma et al. fails to disclose
a lower transport layer between the active layer and the lower electrode; and
an upper transport layer between the active layer and the upper electrode.
Obana et al. discloses in Fig. 2, paragraph [0059]
a lower transport layer [240] between the active layer [120] and the lower electrode [110]; and
an upper transport layer [250] between the active layer [120] and the upper electrode [130].
It would have been obvious to one of ordinary skill in the art before the time of the effective filling date of the invention to incorporate the teachings of Obana et al. into the method of Liang et al. and Suganuma et al. to include a lower transport layer between the active layer and the lower electrode; and an upper transport layer between the active layer and the upper electrode. The ordinary artisan would have been motivated to modify Liang et al. and Suganuma et al. in the above manner for the purpose of improving the photoelectric conversion efficiency [paragraph [0059] of Obana et al.].
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Liang et al. (US Pub. 20150060773) in view of Awaga et al. (US Pub. 20180248143) and Obana et al. (US Pub. 20200131202)
Regarding claim 20, Liang et al. discloses in Fig. 1 an image sensor, comprising:
an organic photoelectric conversion device;
wherein the organic photoelectric conversion device includes:
a lower electrode [18]; and
an active layer [14, 12 and 16] on the lower electrode [18][paragraph [0016]]
an upper electrode [20] on the active layer [14, 12 and 16];
the active layer [14, 12 and 16] includes a second organic material, wherein the second organic material includes [6,6]-phenyl-C71-butyric acid methyl ester (PC70BM), [6,6]-phenyl-C61-butyric acid methyl ester (PCOBM), bis(1-[3- (methoxycarbonyl)propvll-1-phenyl)-[6,6]C62 (bis-PCBM), poly{[N,N-bis(2- octyldodecyl)-naphthalene-1,4,5,8-bis(dicarboximide)-2,6-diyll-alt-5,5-(2,29- bisthiophene)} (N2200), perylene diimide (PDI), or naphthalene diimide (NDI)[[6,6]-phenyl-C71-butyric acid methyl ester (PC70BM)][paragraph [0021]].
Liang et al. fails to disclose
wherein the active layer includes a first organic material;
wherein the first organic material is represented by Chemical Formula 1a, Chemical Formula 1b, Chemical Formula 1c, or Chemical Formula 1d.
However, Liang et al. discloses in paragraph [0018], [0024] that the active layer includes an intermix layer including a mixture of both n-type organic semiconductor and p-type organic semiconductor.
Awaga et al. discloses in Fig. 1 and paragraph [0039] and [0046]
the active layer [13A] includes a first organic material [bis-(4-dimethylaminodithiobenzyl)-Ni(II) (BDN)];
wherein the first organic material [bis-(4-dimethylaminodithiobenzyl)-Ni(II) (BDN)] is represented by Chemical Formula 1a
PNG
media_image1.png
198
351
media_image1.png
Greyscale
Awaga et al. further discloses bis-(4-dimethylaminodithiobenzyl)-Ni(II) (BDN) is a material shows characteristics of both n-type organic semiconductor and p-type organic semiconductor.
Awaga et al. further discloses in paragraph [0039] that the active layer [13A] comprises properly a multi-laminated film or mixture of the semiconductors to achieve its function.
Therefore it would have been obvious to select bis-(4-dimethylaminodithiobenzyl)-Ni(II) (BDN) based on its suitability for use as a material of the intermix layer in the device of Liang et al. Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945).
It would have been obvious to one of ordinary skill in the art before the time of the effective filling date of the invention to incorporate the teachings of Awaga et al. into the method of Liang et al. to include wherein the active layer includes a first organic material; wherein the first organic material includes bis-(4-dimethylaminodithiobenzyl)-Ni(II) (BDN). The ordinary artisan would have been motivated to modify Liang et al. in the above manner for the purpose of providing suitable material of the active layer to achieve its desired function.
The combination of Liang et al. and Awaga et al. discloses the active layer includes a first organic material represented by Chemical Formula 1a [bis-(4-dimethylaminodithiobenzyl)-Ni(II) (BDN)] and a second organic material includes [6,6]-Phenyl-C71-butyric acid methyl ester (PC70BM) as claimed. Therefore, the BDN and PC70BM disclosed by Liang et al. and Awaga et al. would form a charge transfer complex (CTC).
Therefore, the active layer including BDN and PC70BM disclosed by Liang et al. and Awaga et al. would have the claimed property of “a light absorption spectrum of the charge transfer complex has a peak at a wavelength higher than a light absorption spectrum both of the first organic material and the second organic material.”
“WHEN THE STRUCTURE RECITED IN THE REFERENCE IS SUBSTANTIALLY IDENTICAL TO THAT OF THE CLAIMS, CLAIMED PROPERTIES OR FUNCTIONS ARE PRESUMED TO BE INHERENT. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).” "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP 2112.01 (I) and (II).
Liang et al. and Awaga et al. fails to disclose the image sensor, comprising:
a semiconductor substrate;
a charge storage in the semiconductor substrate;
an insulating layer on the semiconductor substrate;
the organic photoelectric conversion device on the insulating layer; and
a wiring connecting between the organic photoelectric conversion device and the charge storage,
wherein: the lower electrode connected to the wiring.
Obana et al. discloses in Fig. 4, Fig. 6
a semiconductor substrate [310][paragraph [0070];
a charge storage [355] in the semiconductor substrate [310][paragraph [0070];
an insulating layer [360 and 380] on the semiconductor substrate [310][paragraph [0074], [0076]];
an organic photoelectric conversion device [100] on the insulating layer [360 and 380][paragraph [0077]]; and
a wiring [385] connecting between the organic photoelectric conversion device [100] and the charge storage [355][paragraph [0076]],
wherein: the lower electrode [110] connected to the wiring [385][paragraph [0076]].
It would have been obvious to one of ordinary skill in the art before the time of the effective filling date of the invention to incorporate the teachings of Obana et al. into the method of Liang et al. and Awaga et al. to include a semiconductor substrate; a charge storage in the semiconductor substrate; an insulating layer on the semiconductor substrate; the organic photoelectric conversion device on the insulating layer; and a wiring connecting between the organic photoelectric conversion device and the charge storage, wherein: the lower electrode connected to the wiring. The ordinary artisan would have been motivated to modify Liang et al. and Awaga et al. in the above manner for the purpose of providing suitable configurations of a compact image sensor [paragraph [0069], [0083] of Obana et al.].
Response to Arguments
Applicant's arguments filed 05/29/2025 have been fully considered but they are not persuasive.
The Affidavit under 37 CFR 1.132 filed 11/17/2025 is insufficient to overcome the rejection of claims 1, 4-12, 14, 16-22 under 35 U.S.C. 103 as being unpatentable over Liang et al. (US Pub. 20150060773) and Suganuma et al. (US Pub. 20200212329) as set forth in the last Office action and restated in this Office Action because of the following reasons:
Applicant acknowledged that “Most of the reported literature on the use of BDN as an electronic material shows that BDN primarily utilized as a standalone material.” Thus, Applicant seems to admit that not all of the prior art suggests using BDN as a standalone material or discouraging the combination of BDN with other materials. Applicant has also not provided any evidence to show that no skill in the art would try to combine BDN with another material. In contrast, the cited art, Suganuma et al., suggests in paragraph [0037], [0038], [0045], [0055], [0057]-[0059], claims 1, 4, 9-11 that bis-(4-dimethylaminodithiobenzyl)-Ni(II) (BDN) can be used in combination with a fullerene and/or the derivative thereof. PC70BM is a fullerene derivative [See paragraph [0024] of Liang et al.]. Therefore, it would have been obvious to bis-(4-dimethylaminodithiobenzyl)-Ni(II) (BDN) can be used in combination with PC70BM.
“In the blend of BDN and PC70BM, absorption at long wavelengths (above 1.5 um) does not always appear, depending on the processing conditions” was not disclosed in the specification. It is further noted that Applicant has not described any “specific conditions” and the above experimental information was not described in the original specification. Paragraph [0076] of the specification only states “the BDN:PC70BM mixed film also had a peak at a wavelength of about 1,500 nm or more. This peak may be because BDN and PC70BM form a CTC, and the bandgap of the CTC is less than a bandgap of BDN and a bandgap of PC70BM.” Applicant’s statement in the Affidavit indicates that Applicant’s specification has failed to comply with written description requirement. Applicant’s specification fails to provide detail description of the claimed invention to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same. (See also pages 29-31 of Office Action mailed 08/15/2025).
Prior arts of the record do not suggest any restriction on conditions for combination of bis-(4-dimethylaminodithiobenzyl)-Ni(II) (BDN) with PC70BM. Thus, the property of a light absorption spectrum of the charge transfer complex has a peak at a wavelength of about 1,500 nm or more of the combination of bis-(4-dimethylaminodithiobenzyl)-Ni(II) (BDN) with PC70BM is expected.
Additionally, as stated in previous Office Action and restated in this Office Action, the claimed range of above 1.5 µm or from 1.5 µm to 2 µm is rejected under the 112(a) rejection for lacking of written support for the claimed range.
It is noted that current amended claims 1, 4-12, 14, 16-20 do not include the limitation of a wavelength of about 1.5 µm or more. Therefore, arguments about a wavelength of about 1.5 µm or more would not overcome the 103 rejections of claims 1, 4-12, 14, 16-20.
The combination of Liang et al., and Suganuma et al. discloses the active layer includes [6,6]-Phenyl-C71-butyric acid methyl ester (PC70BM) and bis-(4-dimethylaminodithiobenzyl)-Ni(II) (BDN) as claimed. Therefore, the BDN and PC70BM disclosed by Liang et al. and Suganuma et al. would form a charge transfer complex (CTC). Without a specific restriction, the BDN and PC70BM disclosed by Liang et al. and Suganuma et al. would include any composition of BDN and PC70BM and thus would form a charge transfer complex (CTC). In other words, the combination of Liang et al. and Suganuma et al. discloses the claimed active layer includes the claimed charge transfer complex (CTC) composed of [6,6]-Phenyl-C71-butyric acid methyl ester (PC70BM) and bis-(4-dimethylaminodithiobenzyl)-Ni(II) (BDN).
Therefore, the active layer disclosed by Liang et al. and Suganuma et al. would have the claimed property of “wherein a light absorption spectrum of the charge transfer complex has a peak at a wavelength higher than a light absorption spectrum of both the BDN and the PC70BM”.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
"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." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. See also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). See MPEP 2112.01 I
Until now, Applicant has not provided any evidence to show that the active layer including [6,6]-Phenyl-C71-butyric acid methyl ester (PC70BM) and bis-(4-dimethylaminodithiobenzyl)-Ni(II) (BDN) as disclosed by Liang et al. and Suganuma et al. would not possessed the claimed property. “arguments presented by applicant cannot take the place of factually supported objective evidence. See, e.g., In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984).”
Consequently, Applicant’s arguments are not persuasive. The claims stand rejected and the Action is made FINAL.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SOPHIA T NGUYEN whose telephone number is (571)272-1686. The examiner can normally be reached 9:00am -5:00 pm, Monday-Friday.
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 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, BRITT D HANLEY can be reached at (571)270-3042. The fax phone number for the organization where this application or proceeding is 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: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) 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.
/SOPHIA T NGUYEN/Primary Examiner, Art Unit 2893