DETAILED ACTION
This Office Action is response to the Amendment filed on September 25, 2025.
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 1-5 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 added limitation of the uneven portions having a plurality of height differences relative to one of the light sensitive regions. The limitation in question is confusing since it appears to be the same as previous limitations pertaining to the height differences. The amended limitation in question will be ignored until the applicant corrects or clarifies it.
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1 and 5 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Wang et al. (US Pub. 2020/0301053 A1).
In re claim 1, Wang et al. shows (fig. 5a-5c) a solid-state imaging device comprising: a semiconductor substrate (not labeled, containing regions PD) having a main surface provided with a plurality of light sensitive regions (PD); and an insulating film (52-2, 52-3; [0038, 0053-0054]) provided on the main surface of the semiconductor substrate, wherein a plurality of gently continuous uneven portions (52-2, 52-3) are formed on a surface on the side opposite to the main surface of the semiconductor substrate in the insulating film, and wherein a plurality of height differences of the uneven portions exist in the light sensitive region (PD),
In re claim 5, Wang et al. shows (fig. 5a-5c) wherein the main surface of the semiconductor substrate is a flat surface (via film 51).
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 2-4 are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (US Pub. 2020/0301053 A1) as applied to claim 1 above, and further in view of the cited case law.
In re claims 2-4, Wang does not specifically disclose the height differences of the even portions. However, it would have been obvious to one of ordinary skill in the art at the time the invention was made to form the insulating layer uneven portions having any desired height, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Response to Arguments
Applicant’s arguments with respect to claims 1-5have 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. See the 356 USC 112 2nd Paragraph Rejection above.
The applicant further argues that the cited prior art reference does not disclose all of the elements of the claims, specifically that Wang does not disclose the “gently continuous” element as recited in the claims. The examiner believes that Wang discloses all of the elements of the claims and that the rejection is proper. The applicant’s own specification gives no specific further limiting definition of to the term “gently continuous.” Thus the regions of Wang would also be considered gently continuos.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Itabashi (US Pub. 2020/0052023 A1), Sato (US Pub. 2017/0141151 A1), Kurihara (US Pub. 2015/0303226 A1), Iwasaki (US Pub. 2013/0032914 A1), Adkisson (US Pub. 2009/0286346 A1), Nishikido (WO-2018012314 A1), Kasuya (WO-2017150616 A1), Bang (KR-20080060573 A), Aihara (JP-2019102623 A), Amada (JP-2014241351 A), and Shiraishi (JP-2006073885 A) disclose various elements of the claims including an insulating film formed on the substrate of an imaging device over the light receiving region of the device.
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 MATTHEW E WARREN whose telephone number is (571)272-1737. The examiner can normally be reached Mon-Fri 10am - 6pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joshua Benitez can be reached at 571-270-1435. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MATTHEW E WARREN/Primary Examiner, Art Unit 2815