DETAILED ACTION
Pending Claims
Claims 1-17 are pending.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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 .
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
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 1-17 are rejected under 35 U.S.C. 103 as being unpatentable over Kawasaki et al. (JP 2016-189390 A) in view of Yoshikawa et al. (US 2017/0200841 A1).
Claims 5-9 are rejected under 35 U.S.C. 103 as being unpatentable over Kawasaki et al. (JP 2016-189390 A) in view of Yoshikawa et al. (US 2017/0200841 A1) and Yokoyama (US 2007/0228503 A1).
Regarding claims 1, 3, 12, and 15-17, Kawasaki et al. disclose: (1) a photoelectric conversion element (Abstract; paragraph 0022; Figure 2) comprising:
a first electrode layer (paragraphs 0034-0037);
a second electrode layer (paragraph 0038);
a photoelectric conversion layer provided between the first electrode layer and the second electrode layer (paragraphs 0046-0083);
an electron transport layer provided between the first electrode layer and the photoelectric conversion layer (paragraphs 0039-0045); and
a hole transport layer provided between the photoelectric conversion layer and the second electrode layer (paragraphs 0084-0129,
wherein the photoelectric conversion layer contains an aggregate of semiconductor quantum dots that contain a metal atom (paragraphs 0052-0071) and contains a ligand coordinated to the semiconductor quantum dot (paragraphs 0052-0054 & 0072-0083),
the hole transport layer contains an organic semiconductor (paragraphs 0084-0119); and
(12) wherein the ligand contains at least one selected from a ligand containing a halogen atom or a polydentate ligand containing two or more coordination moieties (paragraphs 0072-0077).
Kawasaki et al. fail to explicitly disclose: (1) the second electrode layer is formed of a metal material containing at least one metal atom selected from Au, Pt, Ir, Pd, Cu, Pb, Sn, Zn, Ti, W, Mo, Ta, Ge, Ni, Cr, or In; and (3) wherein the second electrode layer is formed of a metal material containing at least one metal atom selected from Au, Pd, Ir, or Pt. Rather, they disclose that the second electrode layer can be formed from a number of materials including gold, platinum, copper, and indium (see paragraph 0038; see also paragraph 0251).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the instantly claimed second electrode layer (formed from {Au, Pt, Ir, Pd, Cu, Pb, Sn, Zn, Ti, W, Mo, Ta, Ge, Ni, Cr, or In} or {Au, Pd, Ir, or Pt}) in the element of Kawasaki et al. because: Kawasaki et al. disclose that the second electrode layer can be formed from a number of materials including gold, platinum, copper, and indium.
Lastly, Kawasaki et al. disclose that their photoelectric conversion element is suitable for use in solar cells (see paragraphs 0238-0240). They fail to explicitly disclose: (1) a photodetector element; (15) wherein the photodetector element is a photodiode-type photodetector element; (16) an image sensor comprising the photodetector element; and (17) wherein the image sensor is an infrared image sensor.
Yoshikawa et al. disclose a related photoelectric conversion element (see Abstract). They demonstrate that photoelectric conversion elements are equally suitable for solar cells and photodetectors (see paragraphs 0004 & 0053). These include photodiode-type elements and infrared sensors (see paragraph 0126). In light of this, it has been found that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination – see MPEP 2144.07.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the photoelectric conversion element of Kawasaki et al. as a photodetector element because: (a) Kawasaki et al. disclose that their photoelectric conversion element is suitable for use in solar cells; (b) Yoshikawa et al. disclose a related photoelectric conversion element and demonstrate that photoelectric conversion elements are equally suitable for solar cells and photodetectors; (c) suitable photodetectors include photodiode-type elements and infrared sensors; and (d) it has been found that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination.
Regarding claim 2, the combined teachings of {Kawasaki et al. and Yoshikawa et al.} are as set forth above and incorporated herein. Kawasaki et al. fail to explicitly disclose: (2) wherein a content of an Ag atom in the second electrode layer is 98% by mass or less. Rather, they disclose that the second electrode layer can be formed from a number of materials including gold, platinum, copper, and indium (see paragraph 0038; see also paragraph 0251). None of the embodiments featuring gold, platinum, copper, and indium would have required any silver to be present, obviously satisfying the instantly claimed range of 98% by mass or less.
Regarding claim 4, the combined teachings of {Kawasaki et al. and Yoshikawa et al.} are as set forth above and incorporated herein. Kawasaki et al. fail to explicitly disclose: (4) wherein a work function of the second electrode layer is 4.6 eV or more. However, the skilled artisan would have expected the teachings of Kawasaki et al. to obviously embrace embodiments capable of exhibiting a work function of 4.6 eV or more because the teachings of Kawasaki et al. obviously satisfy all the material/chemical limitations of the instantly claimed second electrode.
Therefore, the skilled artisan would have expected the element resulting from the combined teachings of {Kawasaki et al. and Yoshikawa et al.} to obviously embrace embodiments with a second electrode capable of exhibiting a work function of 4.6 eV or more because: the teachings of Kawasaki et al. obviously satisfy all the material/chemical limitations of the instantly claimed second electrode.
Regarding claims 5-9, the combined teachings of {Kawasaki et al. and Yoshikawa et al.} are as set forth above and incorporated herein. Kawasaki et al. fail to explicitly disclose an embodiment:
(5) wherein the organic semiconductor contained in the hole transport layer is a compound represented by any of Formulae 1-1 to 1-6:
PNG
media_image1.png
170
108
media_image1.png
Greyscale
PNG
media_image2.png
160
162
media_image2.png
Greyscale
PNG
media_image3.png
164
166
media_image3.png
Greyscale
PNG
media_image4.png
208
418
media_image4.png
Greyscale
PNG
media_image5.png
222
226
media_image5.png
Greyscale
PNG
media_image6.png
170
176
media_image6.png
Greyscale
(see claim for variable details);
(6) wherein: {at least one of Arl to Ar3 of Formula 1-1} or {at least one of Ar4 to Ar8 of Formula 1-2} or {at least one of Ar9 to Ar15 of Formula 1-3} or {at least one of Ar16 to Ar24 of Formula 1-4} or {at least one of Ar25 to Ar33 of Formula 1-5} or {at least one of Ar34 to Ar42 of Formula 1-6} has an electron donating group;
(7) wherein the electron donating group is an alkyl group, an alkenyl group, an alkynyl group, an aryl group, a heterocyclic group, an alkoxy group, an aryloxy group, an alkylthio group, an amino group, a hydroxy group, or a silyl group;
(8) wherein the organic semiconductor contained in the hole transport layer is a compound represented by Formula 3-1 or 3-2,
PNG
media_image7.png
268
298
media_image7.png
Greyscale
PNG
media_image8.png
268
282
media_image8.png
Greyscale
(see claim for variable details);
(9) wherein at least one of Ar43 to Ar46 of Formula 3-1 has an electron donating group, and at least one of Ar47 to Ar52 of Formula 3-2 has an electron donating group.
Rather, they disclose that the hole transport layer contains a p-type compound semiconductor (charge transport agent) (see paragraphs 0084-0090). These include aromatic amine derivatives (see paragraphs 0085-0088). Specifically, these include triphenylamine derivatives, such as MTDATA (see paragraphs 0087-0088). Furthermore, the teachings of Yokoyama demonstrate that MTDATA as the following structure:
PNG
media_image9.png
282
312
media_image9.png
Greyscale
(see paragraph 0054).
This satisfies structure 1-5 of instant claims (5-7) and structure 3-2 of instant claims (8 & 9).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the instantly claimed organic semiconductor in the hole transport layer of the element resulting from the combined teachings of {Kawasaki et al. and Yoshikawa et al.} because: (a) Kawasaki et al. disclose that the hole transport layer contains a p-type compound semiconductor (charge transport agent), including aromatic amine derivatives; (b) the aromatic amine derivatives of Kawasaki et al. include triphenylamine derivatives; and (c) the triphenylamine derivatives of Kawakas et al. include MTDATA. Furthermore: (d) the teachings of Yokoyama demonstrate that MTDATA satisfies structure 1-5 of instant claims (5-7) and structure 3-2 of instant claims (8 & 9).
Regarding claims 10 and 11, the combined teachings of {Kawasaki et al. and Yoshikawa et al.} are as set forth above and incorporated herein. Kawasaki et al. fail to explicitly disclose an embodiment: (10) wherein the semiconductor quantum dot contains a Pb atom; and (11) wherein the semiconductor quantum dot contains PbS. Rather, they contemplate the use of various core-shell semiconductor nanoparticles as quantum dots (see paragraphs 0055-0071). These include materials having PbS, PbSe and PbTe cores (see paragraphs 0057-0058).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the instantly claimed semiconductor quantum dots in the photoelectric conversion layer of the element resulting from the combined teachings of {Kawasaki et al. and Yoshikawa et al.} because: (a) Kawasaki et al. contemplate the use of various core-shell semiconductor nanoparticles as quantum dots; and (b) the core-shell semiconductor nanoparticles of Kawasaki et al. include materials having PbS, PbSe and PbTe cores.
Regarding claims 13 and 14, the combined teachings of {Kawasaki et al. and Yoshikawa et al.} are as set forth above and incorporated herein. Kawasaki et al. fail to disclose: (13) wherein the ligand containing a halogen atom is an inorganic halide; and (14) wherein the inorganic halide contains a Zn atom. However, the scope of these claims remains open to a ligand containing a halogen atom or a polydentate ligand containing two or more coordination moieties. Accordingly, the combined teachings of {Kawasaki et al. and Yoshikawa et al.} satisfy these claims because: Kawasaki et al. disclose a polydentate ligand containing two or more coordination moieties.
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 conflicting claims 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); 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 owned with the examined 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 § 2146 et seq. 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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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 www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-4 and 12-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 10-11 of copending Application No. 18/171,385 (US 2023/0295494 A1) in view of Kawasaki et al. (JP 2016-189390). This is a provisional nonstatutory double patenting rejection.
Claims 15-17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 10-11 of copending Application No. 18/171,385 (US 2023/0295494 A1) in view of Kawasaki et al. (JP 2016-189390) and Yoshikawa et al. (US 2017/0200841 A1). This is a provisional nonstatutory double patenting rejection.
Regarding claims 1-4 and 12, copending claims 10-11 (dependent from copending claim 1) satisfy the instantly claimed photodetector element except for: (1 & 12) wherein the second electrode layer is formed of a metal material containing at least one metal atom selected from Au, Pt, Ir, Pd, Cu, Pb, Sn, Zn, Ti, W, Mo, Ta, Ge, Ni, Cr, or In; (2) wherein a content of an Ag atom in the second electrode layer is 98% by mass or less; (3) wherein the second electrode layer is formed of a metal material containing at least one metal atom selected from Au, Pd, Ir, or Pt; and (4) wherein a work function of the second electrode layer is 4.6 eV or more.
The prior art teachings of Kawasaki et al. are as set forth above and incorporated herein. Kawasaki et al. demonstrate that gold, platinum, copper, and indium are recognized in the art as suitable second electrode materials for this type of element (see paragraph 0038; see also paragraph 0251). In light of this, it has been found that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination – see MPEP 2144.07.
Regarding claims 13 and 14, the combined teachings of {the copending claims and Kawasaki et al.} fail to disclose: (13) wherein the ligand containing a halogen atom is an inorganic halide; and (14) wherein the inorganic halide contains a Zn atom. However, the scope of these claims remains open to a ligand containing a halogen atom or a polydentate ligand containing two or more coordination moieties. Accordingly, the combined teachings satisfy these claims because: the copending claims disclose a polydentate ligand containing two or more coordination moieties.
Regarding claims 15-17, the combined teachings of {the copending claims and Kawasaki et al.} fail to disclose: (15) wherein the photodetector element is a photodiode-type photodetector element; (16) an image sensor comprising the photodetector element; and (17) wherein the image sensor is an infrared image sensor.
The prior art teachings of Yoshikawa et al. are as set forth above and incorporated herein. Yoshikawa et al. disclose a related photoelectric conversion element (see Abstract). They demonstrate that photoelectric conversion elements are equally suitable for solar cells and photodetectors (see paragraphs 0004 & 0053). These include photodiode-type elements and infrared sensors (see paragraph 0126). In light of this, it has been found that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination – see MPEP 2144.07.
Communication
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL J FEELY whose telephone number is (571)272-1086. The examiner can normally be reached Monday-Friday 8am-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, Randy Gulakowski can be reached at (571)272-1302. 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.
/MICHAEL J FEELY/Primary Examiner, Art Unit 1766
November 1, 2025