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 .
Status of the Claims
Amendment filed 31 December 2025 is acknowledged. Claim 9 has been canceled. Claims 1, 3-5, and 10 have been amended. Claims 12-21 have been added. Claims 1-8 and 10-21 are pending. Claims 10 and 11 were withdrawn from consideration.
Election/Restrictions
New claims 12-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected method, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 2 June 2025.
Specification
The amendments to the title and the specification were received on 31 December 2025. These amendments to the title and the specification are acceptable.
Claim Objections
Claim 20 is objected to because of the following informalities:
Claim 20 recites the limitation, “wherein the imaging element is stacked on the circuit board via bump.” This appears to contain a typographical error and may be corrected as, “wherein the imaging element is stacked on the circuit board via a bump.”
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-8, 20, and 21 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 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-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 1 and 20 recite the limitation, “the imaging element.” There is insufficient antecedent basis for this limitation in the claim. For the purposes of applying art, the “imaging element” will be interpreted as the “imaging element substrate.”
Claims 2-8 and 21 are rejected for merely containing the flaws of the parent claim.
Claim Rejections - 35 USC § 103
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 1-8 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Lin et al. (US Patent Application Publication 2010/0200898, hereinafter Lin ‘898) of record.
With respect to claim 1, Lin ‘898 teaches (FIGs. 3C and 3E) an imaging element package substantially as claimed, comprising:
a circuit board (34) ([0097]);
an imaging element substrate (1) stacked on the circuit board (34) ([0039]); and
a light-transmissive substrate (11 and 12) stacked on the imaging element substrate (1) ([0070, 0073]),
wherein the light-transmissive substrate (11 and 12) is separated from the imaging element (1) by a void (26) ([0071]),
wherein an adhesive member (25) is provided on a peripheral edge of a light receiving surface of the imaging element substrate (1) to fix the light-transmissive substrate (11 and 12) ([0070]), and
wherein the light-transmissive substrate (11 and 12) has higher heat resistance than the imaging element substrate (1) (e.g. the light-transmissive substrate may be formed of glass or borosilicate [0070, 0073]; the imaging element substrate may be formed of silicon [0040]) ([0070, 0073]).
It is noted that 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, claimed properties or functions are presumed to be inherent. In re Best, 195 USPQ 430, 433 (CCPA 1977). It has also been held that products of identical chemical composition cannot have mutually exclusive properties. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties Applicant discloses and/or claims are necessarily present. In re Spada, 15 USQP2d 1655, 1658 (Fed. Cir. 1990). In this case, the light-transmissive substrate of Lin ‘898 would inherently have the property of a higher heat resistance than the imaging element substrate because the light-transmissive substrate is made of glass or borosilicate and the imaging substrate is made of silicon, which are the same materials as those disclosed.
Thus, Lin ‘898 is shown to teach all the features of the claim with the exception of wherein the light-transmissive substrate has a thickness equivalent to a thickness of the imaging element substrate.
However, Lin ‘898 teaches the light-transmissive substrate (11 and 12) having a thickness of, e.g., 170 mm (a glass substrate 11 of 100 mm [0070], a void 28 of 20 mm [0074], and a cut filter substrate 12 of 50 mm [0073]) and an imaging element substrate (1) having an equivalent thickness of, e.g., 170 mm ([0040]) as preferred thicknesses for said light-transmissive substrate and said imaging element substrate in a package having reduced manufacturing cost ([0007]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have formed the light-transmissive substrate of Lin ‘898 having a thickness equivalent to a thickness of the imaging element substrate as taught by Lin ‘898 as preferred thicknesses for said light-transmissive substrate and said imaging element substrate in a package having reduced manufacturing cost.
Further, the specification contains no disclosure of either the critical nature of the claimed equivalent thicknesses of the light-transmissive substrate and the imaging element substrate or any unexpected results arising therefrom. Where patentability is said to be based upon a particular chosen distance or upon another variable recited in the claim, Applicant must show that the chosen variable is critical. In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990).
With respect to claim 2, Lin ‘898 teaches wherein the light-transmissive substrate (11 and 12) includes an infrared cut filter substrate (12) ([0073]).
With respect to claim 3, Lin ‘898 teaches wherein the light-transmissive substrate (11 and 12) includes: a glass substrate (11) superimposed and fixed on the imaging element substrate (1) via the void (26) by the adhesive member (25) provided on the peripheral edge of the light receiving surface of the imaging element substrate; and the infrared cut filter substrate (12) stacked on the glass substrate via a transparent resin layer (27) ([0070-0071, 0073]).
With respect to claim 4, Lin ‘898 teaches wherein the light-transmissive substrate (11 and 12) includes: a glass substrate (11) superimposed and fixed on the imaging element substrate (1) via the void (26) by the adhesive member (25) provided on the peripheral edge of the light receiving surface of the imaging element substrate; and the infrared cut filter (12) substrate superimposed and fixed on the glass substrate via the void (28) by the adhesive member (27) provided on the peripheral edge of the light receiving surface of the glass substrate ([0070-0071, 0073-0074]).
With respect to claim 5, Lin ‘898 teaches wherein the light-transmissive substrate (11 and 12) includes the infrared cut filter substrate (12) superimposed and fixed on the imaging element substrate (1) via the void (28) by the adhesive member (27) provided on the peripheral edge of the light receiving surface of the imaging element substrate ([0070-0071, 0073-0074]).
With respect to claim 6, Lin ‘898 teaches further comprising a frame body (45) having a frame shape stacked on the circuit board (34), wherein the imaging element substrate (1) and the light-transmissive substrate (11 and 12) are housed in a region surrounded by the frame body ([0107]).
With respect to claim 7, Lin ‘898 teaches further comprising a filling member (43) having a higher elastic modulus than the imaging element substrate (1), space between the imaging element substrate (1) and the light-transmissive substrate (11 and 12) and the frame body (45) being filled with the filling member ([0105]).
With respect to claim 8, Lin ‘898 teaches wherein the light-transmissive substrate (11 and 12) has a coefficient of thermal expansion having a difference within several ppm/°C. from a coefficient of thermal expansion of the imaging element substrate (1) ([0070, 0073]).
It is noted that 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, claimed properties or functions are presumed to be inherent. In re Best, 195 USPQ 430, 433 (CCPA 1977). It has also been held that products of identical chemical composition cannot have mutually exclusive properties. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties Applicant discloses and/or claims are necessarily present. In re Spada, 15 USQP2d 1655, 1658 (Fed. Cir. 1990). In this case, the light-transmissive substrate of Lin ‘898 would inherently have the property of a coefficient of thermal expansion having a difference within several ppm/°C. from a coefficient of thermal expansion of the imaging element substrate because the light-transmissive substrate is made of glass or borosilicate and the imaging substrate is made of silicon, which are the same materials as those disclosed.
With respect to claim 21, Lin ‘898 teaches wherein a dam material (38) fixes the frame body (45) to the circuit board (34) ([0098]).
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Lin ‘898 as applied to claim 1 above, and further in view of Yamazaki et al. (Japanese Kokai Publication 2009-290033, hereinafter Yamazaki ‘033) of record.
With respect to claim 20, Lin ‘898 teaches the device as described in claim 1 above with the exception of the additional limitation wherein the imaging element is stacked on the circuit board via bump.
However, Yamazaki ‘033 teaches (FIG. 1) an imaging element (21 and 22) stacked on a circuit board (3) via a bump (28) as an art-recognized means to provide electrical interconnection between said imaging element and said circuit board ([0056]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have formed the imaging element of Lin ‘898 stacked on the circuit board via bump as taught by Yamazaki ‘033 as an art-recognized means to provide electrical interconnection between said imaging element and said circuit board.
Response to Arguments
Applicant’s amendments to the specification and the title are sufficient to overcome the objections to the drawings and the title made in the non-final rejection filed 1 October 2025. The objections to the drawings and the title have been withdrawn.
Applicant’s amendments to claims 3 and 4 are sufficient to overcome the 35 U.S.C. 112(b) rejection of claims 3 and 4 made in the non-final rejection filed 1 October 2025. The 35 U.S.C. 112(b) rejection of claims 3 and 4 has been withdrawn.
Applicant’s arguments with respect to amended claim(s) 1 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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.
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/C.M.R./Examiner, Art Unit 2893
/YARA B GREEN/Supervisor Patent Examiner, Art Unit 2893