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 .
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 and 20 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.
Claim 1 recites the limitation "the light incident face" in line 10. There is insufficient antecedent basis for this limitation in the claim.
Further, it is unclear where the light incident face and a multi-layered wiring layer are located with respect to the rest of the light detecting device.
Claim 20 recites the limitation "the light incident face" in line 11. There is insufficient antecedent basis for this limitation in the claim.
Further, it is unclear where the light incident face and a multi-layered wiring layer are located with respect to the rest of the electronic apparatus.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-8, 11 and 18-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ettenberg (US 2018/0122851, of record).
Regarding claim 1, Ettenberg discloses, as shown in Figures 1A-12, a light detecting device comprising:
an element substrate (1-7) including an element region (6-7,9-10) and a peripheral region (near the edges of 1-7), wherein the element region includes a first wiring layer (13-17) and a semiconductor layer including a compound semiconductor material (InGaAs, InP, etc.), and the peripheral region is outside the element region in a plan view, and
a circuit substrate (18,20) that faces the element substrate and is electrically connected to the semiconductor layer through the first wiring layer, wherein an outer boundary of the element substrate is different from an outer boundary of the circuit substrate, and
the peripheral region includes a groove (79, Figure 9) extending from the light incident face (from photodiode 6) to a multi-layered wiring layer (15).
Regarding claim 2, Ettenberg discloses a side surface of the circuit substrate has a different shape from a side surface of the element substrate (Figure 1A).
Regarding claim 3, Ettenberg discloses the circuit substrate includes a second wiring layer (12,16,19) and a semiconductor substrate (18), and an area of the semiconductor substrate is larger than the element substrate (Figure 1A).
Regarding claim 4, Ettenberg discloses the semiconductor layer in the element substrate includes a photoelectric conversion layer, and the photoelectric conversion layer includes the compound semiconductor material [0004].
Regarding claim 5, Ettenberg discloses the semiconductor layer includes a diffusion region, and the diffusion region is configured to read electric charges generated from the photoelectric conversion layer [0004].
Regarding claim 6, Ettenberg discloses the device further comprising a first electrode (8) that is electrically connected to the diffusion region.
Regarding claim 7, Ettenberg discloses the device further comprising a second electrode (14) facing the first electrode, wherein the semiconductor layer is provided between the first and second electrodes.
Regarding claim 8, Ettenberg discloses the compound semiconductor material includes at least one of indium gallium arsenide, indium arsenic antimony, indium arsenide, indium antimony, and mercury cadmium telluride (Figures 1A, 1B).
Regarding claim 11, Ettenberg discloses each of the element substrate and the circuit substrate includes a contact electrode (21), and the element substrate and the circuit substrates are electrically connected through the contact electrode.
Regarding claim 18, Ettenberg discloses a side surface of the element substrate has a step shape.
Regarding claim 19, Ettenberg discloses the step shape of the side surface of the element substrate has a depth in a thickness direction and a width in a horizontal direction, and wherein the depth in the thickness direction is larger than the width in the horizontal direction.
Regarding claim 20, Ettenberg discloses, as shown in Figures 1A-12, an electronic apparatus that includes a light detecting device, the light detecting device comprising:
an element substrate (1-7) including an element region (6-7,9-10) and a peripheral region (near the edges of 1-7), wherein the element region includes a first wiring layer (13-17) and a semiconductor layer including a compound semiconductor material (InGaAs, InP, etc.), and the peripheral region is outside the element region in a plan view, and
a circuit substrate (18,20) that faces the element substrate and is electrically connected to the semiconductor layer through the first wiring layer, wherein an outer boundary of the element substrate is different from an outer boundary of the circuit substrate, and
the peripheral region includes a groove (79, Figure 9) extending from the light incident face (from photodiode 6) to a multi-layered wiring layer (15).
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.
Claim(s) 9-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ettenberg (US 2018/0122851, of record) in view of Humpston et al. (US 2006/0081983, of record).
Ettenberg discloses the claimed invention including the device as explained in the above rejection. Ettenberg does not disclose the device further comprising a color filter layer on a light incident surface of the element substrate and on-chip lenses on the color filter layer. However, Humpston et al. discloses a comprising a color filter layer on a light incident surface of the element substrate and on-chip lenses on the color filter layer. Note [0046] of Humpston et al. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to form the device of Ettenberg comprising a color filter layer on a light incident surface of the element substrate and on-chip lenses on the color filter layer, such as taught by Humpston et al. in order to direct the light into the detector.
Claim(s) 12-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ettenberg (US 2018/0122851, of record).
Regarding claims 12-13, Ettenberg discloses a pad (not shown but inherently under/over the bump 21) but does not disclose the material of the pad is Cu, or the element substrate and the circuit substrate are stacked with each other through Cu-Cu bonding by bump (21). However, it would have been obvious to one of ordinary skill in the art at the time the invention was made to form the pad or the bump of Ettenberg having the materials as that claimed by Applicant, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Regarding claims 14-15, Ettenberg discloses a side surface of the circuit substrate is flat. Ettenberg discloses a side surface of the element substrate has a step shape. Ettenberg does not disclose a side surface of the circuit substrate has a step shape. However, it would have been obvious to one of ordinary skill in the art at the time the invention was made to form the circuit substrate of Ettenberg having the shaped as claimed like the circuit substrate, since it has been held that change in form and/or shape of any element of prior patent must result in more than useful natural phenomenon that man has accumulated through common knowledge; even though use of new device greatly improves field and provides great utility, and commercial success is enjoyed because of long-felt need, these features cannot sustain patentability where involved is only extended application of obvious attributes from prior art.
Regarding claim 16, Ettenberg discloses the step shape of the side surface of the circuit substrate has a depth in a thickness direction and a width in a horizontal direction, and wherein the depth in the thickness direction is different from the width in the horizontal direction (Figures 1A, 1B).
Regarding claim 17, Ettenberg discloses the depth is larger than the width (Figures 1A,1B).
Response to Arguments
Applicant's arguments filed 06/17/2025 have been fully considered but they are not persuasive.
It is argued, at pages 6-7 of the Remarks, that Ettenberg does not disclose the peripheral region includes a groove extending from the light incident face to a multi-layered wiring layer. This argument is not convincing due to the USC 112 rejection as stated above. Further, Ettenberg discloses, as shown in Figure 9, the peripheral region includes a groove (79) extending from the light incident face (from photodiode 6) to a multi-layered wiring layer (15). Therefore, Applicant’s claims 1 and 20 do not distinguish over the Ettenberg reference.
Conclusion
THIS ACTION IS MADE FINAL. 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 HUNG K VU whose telephone number is (571)272-1666. The examiner can normally be reached Monday - Friday: 7am - 5pm.
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, JACOB CHOI can be reached at (469) 295-9060. 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.
/HUNG K VU/ Primary Examiner, Art Unit 2897