DETAILED ACTION
This action is responsive to the application No. 17/972,937 filed on October 25, 2022.
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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 03/31/2026 with the associated claims filed on 02/24/2026 responding to the Office action mailed on 12/01/2025 has been entered. The present Office action is made with all the suggested amendments being fully considered. Claims 4, 7, 12-17, and 19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention/species, there being no allowable generic or linking claim. Accordingly, pending in this Office action are claims 1-17 and newly added claims 18-19.
Election/Restrictions
Newly submitted claim 19 is directed to a species that is patentably distinct from the preciously elected species for the following reasons:
Species 1, reading on Fig. 1 (previously elected).
Species 12, (newly claimed) (Having an interconnection structure resting on a second surface of the substrate, the second surface being opposite to the first surface configured to receive light).
The species are independent or distinct because they have mutually exclusive characteristics. In addition, these species are not obvious variants of each other based on the current record.
Applicant is required under 35 U.S.C. 121 to elect a single disclosed species, or a single grouping of patentably indistinct species, for prosecution on the merits to which the claims shall be restricted if no generic claim is finally held to be allowable. Currently, no claim is generic to both species.
There is a search and/or examination burden for the patentably distinct species set forth above. Due to their mutually exclusive characteristics, the species require a different fields of search (e.g., employing different search queries); and/or the prior art applicable to one species would not likely be applicable to the other species.
Should applicant traverse on the ground that the species, or groupings of patentably indistinct species from which election is required, are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing them to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the species unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other species.
Upon the allowance of a generic claim, applicant will be entitled to consideration of claims to additional species which depend from or otherwise require all the limitations
of an allowable generic claim as provided by 37 CFR 1.141.
Applicant is reminded that upon the cancellation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Since applicant has received an action on the merits for the previously elected
species, pending claim 19 is withdrawn from consideration as being directed to a non-elected species. See 37 CFR 1.145 and MPEP § 821.03.
5 25 Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 1-3, 5, 6, 8-11, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Reznik (US 2007/0200055) in view of Numata (US 2015/0228687).
Regarding Claim 1, Reznik (see, e.g., Fig. 4(A) and Annotated Fig. 4(A)), teaches a pixelated filter wherein:
each pixel 110 of the pixelated filter comprises an interference filter IF comprising a stack of layers 127 (see, i.e., top layers 127), and a waveguide 130, each crossing all or part of the layers 127 of said interference filter IF (see, e.g., pars. 0026-0027); and
in each pixel 110 of the pixelated filter, the waveguide 130 is configured to guide at least one optical mode and so that an evanescent portion of said at least one guided mode is filtered by the interference filter IF of said pixel 110 (see, e.g., par. 0027);
wherein layers 127 of the stack of layers 127 of the interference filter IF are stacked on one another and are dielectric layers comprising layers made of a first dielectric material (i.e., silicon oxide, silicon nitride, etc.) and layers made of a second dielectric material (i.e., silicon oxide, silicon nitride, etc.), the layers 127 of the first dielectric material being alternated with the layers 127 of the second dielectric material, the layers 127 of the stack of layers 127 of the interference filter IF do not comprise any conductive element of an interconnection structure (see, e.g., par. 0044).
Reznik does not show that each pixel comprises a plurality of waveguides.
Numata (see, e.g., Fig. 2A), in similar image sensors to Reznik, on the other hand, teaches that to increase light collection efficiency, each pixel 110a comprises a plurality of waveguides 102 and 103 (see, e.g., par. 0027).
It would have been obvious to one of ordinary skill in the art at the time of filing to include a plurality of waveguides in each pixel of Reznik’s device, as taught by Numata, to increase light collection efficiency.
Additionally, the limitation that “the waveguides are configured to guide at least one optical mode and so that an evanescent portion of said at least one guided mode is filtered by the interference filter”, does not appear to structurally limit the claim as it is directed to (i) a manner of operating a device or (ii) function, property or characteristic of the semiconductor device.
If the claim limitations are directed to a function, property or characteristic of the apparatus, then “the examiner provides a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flow from the teachings of the applied prior art” (quoting Ex Parte Levy, 17 USPQ2s 1461, 1464 (Bd. Pat. App. & Inter. 1990 under Section 2112.1V of the MPEP), then the burden of proof is shifted to the Applicant to show that the apparatus taught by the prior art reference cannot function or does not have the property or characteristic as recited.
According to Section 2114 of the MPEP, "While features of an apparatus may berecited either structurally or functionally, claims directed to an apparatus must bedistinguished from the prior art in terms of structure rather than function. In reSchreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429,1431-32 (Fed. Cir. 1997) (Theabsence of a disclosure in a prior art reference relating to function did not defeat theBoard's finding of anticipation of claimed apparatus because the limitations at issuewere found to be inherent in the prior art reference); see also In re Swinehart, 439 F.2d210,212-13, 169 USPQ 226, 228-29 (CCPA 1971); In re Danly, 263 F.2d 844, 847, 120USPQ 528,531 (CCPA 1959). "[A]pparatus claims cover what a device is, not what adevice does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original)".
Construing the claim limitation that “the waveguides are configured to guide at least one optical mode and so that an evanescent portion of said at least one guided mode is filtered by the interference filter” as (ii) a function, property, or characteristics of the device, Reznik’s device, which teaches all of the claimed structural features as required by claim 1 and functional features as required by a standard light guide comprising a core region that has an index of refraction bigger than the index of refraction of the remaining dielectric layers, will behave as an interference filter guiding at least one optical mode and so that an evanescent portion of said at least one guided mode decays exponentially into the surrounding dielectrics.
Thus, Reznik’s device, would inherently function, or has the property orcharacteristic related to “guiding at least one optical mode and so that an evanescent portion of said at least one guided mode is filtered by the interference filter”.
Since the examiner has met or exceeded his burden of producing evidence with the basis in fact above, the burden has shifted to the Applicants to show otherwise.
Regarding Claim 2, Reznik and Numata teach all aspects of claim 1. Reznik (see, e.g., Fig. 4(A) and Annotated Fig. 4(A)), teaches that the waveguides 130 of each two neighboring pixels 110 of the pixelated filter are configured so that the guided optical modes of the two pixels 110 do not couple with one another (see, e.g., par. 0029).
See also the comments stated above in claim 1 regarding functional language which are considered repeated here.
Regarding Claim 3, Reznik and Numata teach all aspects of claim 1. Reznik (see, e.g., Fig. 4(A) and Annotated Fig. 4(A)), teaches that the pixelated filter is configured to rest on a surface of a plurality of photoactive elements 115 so that each photoactive element 115 is in front of a pixel 110 of the pixelated filter (see, e.g., par. 0026).
Regarding Claim 5, Reznik and Numata teach all aspects of claim 1. Reznik (see, e.g., Fig. 4(A) and Annotated Fig. 4(A)), teaches that in each pixel 110 of the pixelated filter, the layers 127 crossed by the waveguides 130 are dielectric layers (see, e.g., par. 0044), and each waveguide 130 is made of one or a plurality of materials each having a refraction index having its real part greater than the real part of the refraction index of each of the dielectric layers crossed by said waveguide 130 (see, e.g., par. 0031).
Regarding Claim 6, Reznik and Numata teach all aspects of claim 1. They do not teach that each waveguide has a substantially constant cross-section along its entire length.
However, this claim limitation is merely considered a change in the shape of the waveguides in Reznik’s/Numata’s device. The specific claimed shape, absent any criticality, is only considered to be an obvious modification of the shape of the waveguides30 in Reznik’s/Numata’s device, as the courts have held that changes in shape, without any criticality, are within the level of skill in the art. According to the courts, a particular shape, is nothing more than one among numerous shapes that a person having ordinary skill in the art will find obvious to provide using routine experimentation. See In re Dailey, 149 USPQ 47 (CCPA 1976).
Accordingly, since the applicant has not established the criticality (see next paragraph below) of the claimed constant cross-section of the waveguides, it would have been obvious to one of ordinary skill in the art at the time of filing to have the claimed constant cross-section of the waveguides in Reznik’s/Numata’s device.
CRITICALITY
The specification contains no disclosure of either the critical nature of the claimed constant cross-section or any unexpected results arising therefrom. Where patentability is said to be based upon particular chosen shape or upon another variable recited in a claim, the applicant must show that the chosen shape is critical. In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990).
See also Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree “will not sustain a patent”); In re Williams, 36 F.2d 436, 438 (CCPA 1929) (“It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions.”). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (identifying “the need for caution in granting a patent based on the combination of elements found in the prior art.”).
Regarding Claim 8, Reznik and Numata teach all aspects of claim 1. Numata (see, e.g., Fig. 2A), teaches that in each pixel 110a of the pixelated filter, the waveguides 102/103 (i.e., cores 104/105) of said pixel 110a are made of the same material and have a same cross-section (see, e.g., par. 0041).
Regarding Claim 9, Reznik and Numata teach all aspects of claim 1. Numata (see, e.g., Figs. 1, 2A-2B), teaches that in each pixel 110a of the pixelated filter, the waveguides 102/103 of said pixel 110a are organized in a network (see, e.g., pars. 0025-0026).
Regarding Claim 10, Reznik and Numata teach all aspects of claim 9. Numata (see, e.g., Figs. 2A-2B), teaches that in at least one of the pixels 110a of the pixelated filter, the network of waveguides 102/103 of said pixel 110a is symmetrical with respect to a central axis 2 of said pixel 110a and the waveguides 102/103 of the network each have a same cross-section, symmetrical with respect to a central longitudinal axis of said waveguide 110a (see, e.g., par. 0028).
Regarding Claim 11, Reznik and Numata teach all aspects of claim 1. Reznik (see, e.g., Fig. 4(A) and Annotated Fig. 4(A)), teaches a device 100 comprising:
a plurality of photoactive elements 115 (see, e.g., par. 0026); and
a pixelated filter according to claim 1, wherein the pixelated filter rests on the plurality of photoactive elements 115 so that each photoactive element 115 is in front of a pixel 110 of the pixelated filter.
Regarding Claim 18, Reznik and Numata teach all aspects of claim 10. Reznik (see, e.g., Fig. 4(A) and Annotated Fig. 4(A)), teaches that:
the device 100 comprises a substrate 101 comprising the photoactive elements 115 of the plurality of photoactive elements 115 (see, e.g., par. 0026);
the substrate 101 comprises a surface 101S configured to receive light (see, e.g., par. 0029);
the device 100 comprises an interconnection structure 120 resting on the surface of the substrate 101 configured to receive light (see, e.g., par. 0026);
the interconnection structure 120 comprises conductive elements 125 (see, e.g., par. 0026); and
PNG
media_image1.png
237
256
media_image1.png
Greyscale
the pixelated filter rests on the interconnection structure 120.
Response to Arguments
Applicant's arguments filed on 11/10/2025 with respect to the rejection of claim 1 have been fully considered but are moot in view of the new grounds of rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nelson Garcés whose telephone number is (571)272-8249. The examiner can normally be reached on M-F 9:00 AM - 5:30 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Wael Fahmy can be reached on (571)272-1705. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Nelson Garces/
Primary Examiner, Art Unit 2814
Prosecution Insights