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 .
DETAILED ACTION
Applicant’s arguments, filed 4/28/25, with respect to claims 1-21 have been fully considered and are persuasive. The rejection of claims 1-21 has been withdrawn.
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.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-3, 12-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yakushiji et al. (CN 106233466(cited by applicant)) in view Nihei et al. (U.S. Patent Publication No. 2013/0099225).
Referring to figures 1-3, Yakushiji et al. teaches an image pickup element comprising a first electrode, an organic photoelectric conversion layer, and a second electrode in order (see paragraph# 38, figure 1), the organic photoelectric conversion layer including a first organic semiconductor material having the following structural formula (1): where R.sub.1 and R.sub.2 are each groups independently selected from hydrogen, an aromatic hydrocarbon group, a heterocyclic group, a halogenated aromatic group, and a fused heterocyclic group, each group having an optional substituent, (see chemical formulas 20, 21 39, 41, paragraph# 60-73, 100);
the aromatic hydrocarbon group is selected from the group consisting of a phenyl group, a naphthyl group, an anthryl group, a phenanthryl group, a pyrenyl group, and a benzopyrenyl group, wherein the heterocyclic group is selected from the group consisting of a pyridyl group, a pyradyl group, a pyrimidyl group, a quinolyl group, an isoquinolyl group, a pyrrolyl group, an indolenyl group, an imidazolyl group, a thienyl group, a furyl group, a pyranyl group, and a pyridonyl group, wherein the halogenated aromatic group is selected from the group consisting of a halogenated phenyl group, a halogenated naphthyl group, an halogenated anthryl group, a halogenated phenanthryl group, a halogenated pyrenyl group, and a halogenated benzopyrenyl group; and wherein the fused heterocyclic group is selected from the group consisting of a benzoquinolyl group, an anthraquinolyl group, and a benzothienyl group (see paragraphs# 60-73).
However, the reference does not clearly teach the first electrode is disposed on a substrate and a portion of the second electrode is disposed on the substrate (in claims 1, 2, 18, 19).
Nihei et al. teaches a photoelectric conversion element and solid-state imaging device having the first electrode (21) is disposed on a substrate (20) and a portion of the second electrode (22) is disposed on the substrate (20, see figure 1).
Therefore, it would have been obvious to a person or ordinary skill in the requisite art at the time of the invention was filed would provide the first electrode is disposed on a substrate and a portion of the second electrode is disposed on the substrate in Yakushiji et al. as taught by Nihei et al. because it is known in the semiconductor art to a photoelectric conversion element and solid-state imaging device.
Regarding to claim 2, an image pickup element constituted by laminating at least a first electrode, an organic photoelectric conversion layer, and a second electrode in order (see paragraph# 38, figure 1) the photoelectric conversion layer including a first organic semiconductor material having the following structural formula (2) see chemical formulas 20, 21 39, 41, paragraph# 60).
Regarding to claim 3, the organic photoelectric conversion layer further includes a second organic semiconductor material, the second organic semiconductor material includes either fullerene or a fullerene derivative (see paragraph# 25).
Regarding to claim 12, the hole mobility of the first organic semiconductor material is 1x10-5 cm2/V.s or more (see paragraphs# 117, 119, 121).
Regarding to claim 13, the first electrode and the second electrode include a transparent conductive material (see paragraph# 92, 117).
Regarding to claim 14, wherein one of the first electrode and the second electrode includes a transparent conductive material, and the other of the first electrode or the second electrode includes a metallic material (see paragraphs# 60-73).
Regarding to claim 15, a laminated image pickup element constituted by laminating at least two image pickup elements according to claim 1 (see chemical formulas 20, 21, 39, 41). .
Regarding to claim 16, a solid-state image pickup device comprising a plurality of image pickup elements according to claim 1 (see figure 1, see paragraph# 4+).
Regarding to claim 17, a solid-state image pickup device comprising a plurality of laminated image pickup elements according to claim 15 (see figure 1, see paragraph# 4+).
Regarding to claim 18, a photoelectric conversion element constituted by laminating at least a first electrode, an organic photoelectric conversion layer, and a second electrode in order order (see paragraph# 38, figure 1), the organic photoelectric conversion layer including a first organic semiconductor material having the following structural formula (1): where R.sub.1 and R.sub.2 are each groups independently selected from hydrogen, an aromatic hydrocarbon group, a heterocyclic group, a halogenated aromatic group, and a fused heterocyclic group, each group having an optional substituent, the aromatic hydrocarbon group is selected from the group consisting of a phenyl group, a naphthyl group, an anthryl group, a phenanthryl group, a pyrenyl group, and a benzopyrenyl group, wherein the heterocyclic group is selected from the group consisting of a pyridyl group, a pyradyl group, a pyrimidyl group, a quinolyl group, an isoquinolyl group, a pyrrolyl group, an indolenyl group, an imidazolyl group, a thienyl group, a furyl group, a pyranyl group, and a pyridonyl group, wherein the halogenated aromatic group is selected from the group consisting of a halogenated phenyl group, a halogenated naphthyl group, an halogenated anthryl group, a halogenated phenanthryl group, a halogenated pyrenyl group, and a halogenated benzopyrenyl group; and wherein the fused heterocyclic group is selected from the group consisting of a benzoquinolyl group, an anthraquinolyl group, and a benzothienyl group (see paragraphs# 60-73).
Regarding to claim 19, the first organic semiconductor material is represented by the following structural formula (2) (see chemical formulas 20, 21 39, 41, paragraph# 60-73, 100).
Regarding to claim 20, the organic photoelectric conversion layer further includes a second organic semiconductor material, the second organic semiconductor material includes either fullerene or a fullerene derivative (see paragraph# 25).
Claim(s) 10-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yakushiji et al. (CN 106233466(cited by applicant)) in view Nihei et al. (U.S. Patent Publication No. 2013/0099225) as applied to claims 1-3, 12-20 above.
Referring to figures 1-3, Yakushiji et al. in view of Nihei et al. teaches an image pickup element comprising a first electrode, an organic photoelectric conversion layer, and a second electrode in order (see paragraph# 38, figure 1), the organic photoelectric conversion layer including a first organic semiconductor material having the following structural formula (1): where R.sub.1 and R.sub.2 are each groups independently selected from hydrogen, an aromatic hydrocarbon group, a heterocyclic group, a halogenated aromatic group, and a fused heterocyclic group, each group having an optional substituent, (see chemical formulas 20, 21 39, 41, paragraph# 60-73, 100).
However, the reference does not clearly teach the specific energy distribution in claims 10-11.
In re claims 10-11, the specific energy distribution is obvious because it is a matter of determining optimum process condition by routine experimentation with a limited number of species. In re Jones, 162 USPQ 224 (CCPA 1955)(the selection of optimum ranges within prior art general conditions is obvious) and In re Boesch, 205 USPQ 215 (CCPA 1980)(discovery of optimum value of result effective variable in a known process is obvious). In such a
situation, applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to prior art range. See M.P.E.P 2144.05 III. It would have been obvious to a person of ordinary skill in the requisite art at the time of the invention was made to optimize the energy distribution, since it has been held that where the general conditions of a claim are disclosed in the prior art (i.e.- the energy distribution), discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233 (CCPA 1955), In re Woodruff, 919 F.2d 1575, 1578 (FED. Cir. 1990).
Therefore, it would have been obvious to a person or ordinary skill in the requisite art at the time of the invention was filed would provide the specific energy distribution in Yakushiji et al. because it is known in the semiconductor art to improve the durability of the semiconductor device.
Double Patenting
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 harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the claims at issue are 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); and 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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP §§ 706.02(l)(1) - 706.02(l)(3) for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/forms/. The filing 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 be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-21 are stand rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. 10,608,049 and claims 1-20 of U.S. Patent No. 11,411,051. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of present application are covered by the claims of the U.S. Patent. They correspond as follows:
17/842,522
10,608,049
11,411,051
1
1
1
2
16
2
3
1
1
4
1
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2
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12
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18
1, 19
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16
2, 20
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1, 19
21
18
4
The features of claims of the present application are covered by the claims of the U.S. Patent Nos. 10,608,049 and 11,411,051 as set forth above. The difference between the present application and U.S. Patents are that the claims of the present application are broader than the claim of the patent. The Patents claims anticipate the claims of the present application as detailed above.
Therefore, the instant claims are within the scoped of the cited prior art claims.
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 Thanh Nguyen whose telephone number is (571) 272-1695, or by Email via address Thanh.Nguyen@uspto.gov. The examiner can normally be reached on Monday-Thursday from 6:00AM to 3:30PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Yara Green, can be reached on (571) 270-3035. The fax phone number for this Group is (571) 273-8300.
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/THANH T NGUYEN/Primary Examiner, Art Unit 2893