DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
2. Applicant’s amendment to the claims, filed on August 13, 2026, is acknowledged. Entry of amendment is accepted and made of record.
Response to Arguments/Remarks
3. Applicant’s arguments/remarks, see pgs. 7-16, with respect to the immediate allowance of the current application have been fully considered but are not persuasive.
Pertaining to the Applicant’s arguments/remarks, pgs. 7-10, regarding the obviousness to combine and problem addressed by the application:
The arguments are directed towards the prior arts method of manufacture and use, and the Applicants improved direct-electron imaging performance at the energies of interest through reduction of backscattering beneath the sensing region while still preserving sufficient mechanical support at the periphery to conclude that the prior art does not disclose the claimed detector as a whole.
The Examiner notes that claim 9 is directed towards a device, and for product-by-process limitations throughout the claim, it should be known that even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). The product-by-process of limitation of claim 9 “wherein a first section of the handling wafer has been selectively removed from a region corresponding to the pixel sensor leaving a second section of the handling wafer at a periphery of the pixel sensor” requires the structure of a second of a handling wafer at a periphery of the pixel sensor and the process of selective removal does not alter the final structure of the device such as to distinguish from the prior art(s) of record. The argued “reducing backscattering beneath an active direct-electron sensing region, or to mounting a detector through remaining peripheral support while incident electrons enter from the exposed back side of an epitaxial silicon layer” is not claimed and although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). With regards to the motivation for the combination, the office action of May 13, 2026 pgs. 4-5 provides rationale in accordance to MPEP 2143 to which no arguments are presented.
Pertaining to the Applicant’s arguments/remarks, pgs. 10-11, regarding claim 14:
The applicant argues “claim 14 recites the claimed detector after the substrate has been removed to the back side of the epitaxial silicon layer and after handling wafer material has been removed from the sensing region while remaining at the periphery. In that claimed detector, the remaining peripheral portion is what permits mounting while leaving the active region open for back-side entry of the incident radiation.”
The Examiner notes that claim 14 verbatim recites “The direct detector of claim 9, wherein the direct detector is configured to be mounted in a transmission electron microscope with an orientation such that ionizing radiation enters the detector from the back side of the epitaxial silicon layer.” (bolding added for emphasis). Not only does the claim not recite the limitations which are argued; but as emphasized, the limitations “configured to be mounted in a transmission electron microscope such that ionizing radiation enters the detector from the back side of the epitaxial silicon layer” is directed towards functional limitations, see MPEP 2173.05(g), because the limitations recite a feature “by what it does rather than by what it is” and “A functional limitation is often used in association with an element, ingredient, or step of a process to define a particular capability or purpose that is served by the recited element, ingredient or step. In Innova/Pure Water Inc. v. Safari Water Filtration Sys. Inc., 381 F.3d 1111, 1117-20, 72 USPQ2d 1001, 1006-08 (Fed. Cir. 2004)”.
In the current claim, the structure required to be capable of performing the function is one that is mountable and can detect radiation from the back side of the epitaxial silicon layer which does not distinguish from the cited prior art.
The combination discloses a structure which is capable of being mounted by the handling wafer side which is a rigid structure sufficient to provide mechanical support and radiation can be detected by the back side of the epitaxial silicon layer see V1 [0021] “collect and process the electrical signals generated by radiation incident on the absorber”; also see evidentiary reference M1 [0014] “The camera enclosure 4 seals the Transmission Electron Microscope (TEM) … The retractable camera further includes an imaging device 5, which may be one of the following: CCD, interline CCD, or a CMOS imager”.
Pertaining to the Applicant’s arguments/remarks, pgs. 10-12, regarding claim 10:
The arguments state Huang does not disclose all of the limitations of claim 9:
The Examiner notes that as seen in the office action pg. 6 of May 13, 2026 Huang is not relied on to disclose the limitations of claim 9, Huang is combined solely for the thickness of the epitaxial layer. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Applicant also provides a conclusory statement and points to benefits of the Applicants invention without addressing the obviousness motivation provided in the office action.
Pertaining to the Applicant’s arguments/remarks, pgs. 12-13, regarding claims 11-12:
The arguments state that the office action does not persuasive evidence that the person of ordinary skill in the art would have incorporated the teachings of Meynants in the combination of prior art or provide evidence that the combination would disclose the Applicant’s claims:
The Examiner notes that the item-to-item matching as well as motivation to combine as detailed in MPEP 2143 is provided in the office action of May 13, 2026 pgs. 7-8 for which the Applicant’s arguments merely present conclusory statements of disagreement and are not found persuasive.
Arguments for claim 9 which have already been presented and addressed are responded in kind.
Pertaining to the Applicant’s arguments/remarks, pgs. 13-14, regarding claims 13:
The arguments state that the office action does not persuasive evidence that the person of ordinary skill in the art would have incorporated the teachings of Hynecek in the combination of prior art or provide evidence that the combination would disclose the Applicant’s claims:
The Examiner notes that the item-to-item matching as well as motivation to combine as detailed in MPEP 2143 is provided in the office action of May 13, 2026 pgs. 8-10 for which the Applicant’s arguments merely present conclusory statements of disagreement and are not found persuasive.
Arguments for claim 9 which have already been presented and addressed are responded in kind.
Pertaining to the Applicant’s arguments/remarks, pg. 14, regarding claims 14:
The arguments state that the cited references do not disclose the claimed detector:
The Examiner notes that the conclusory statements of disagreement are not found persuasive.
Further, repeated arguments which have already been addressed are responded in kind.
Note by the Examiner
4. For clarity, the reference to specific claim numbers are presented in bold. Cited claim limitations are presented in bold the first time they are associated with a particular prior art disclosing the cited limitations, and subsequent reference to the already disclosed claim limitations are presented un-bolded. Certain elements from prior art which are not required by the claims are also presented un-bolded if they are particularly pertinent to understanding how the references are being combined. Item-to-item matching and Examiner explanations for 102 &/or 103 rejections have been provided in parenthesis.
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.
5. Claims 9-14 are rejected under 35 U.S.C. 103 as obvious over Von Kanel (US 2017/0373110 A1), hereinafter as V1, in view of Kub et al. (US 2014/0367824 A1), hereinafter as K1
6. Regarding Claim 9, V1 discloses a direct detector (see in particular Fig. 5A-K see [0085] “pixel detector”; note, the differences of Figs. 5A-K are discussed in [0085-0089] and similarities aforementioned embodiments are not repeated) for imaging ionizing radiation (see Figs. 5A-K and [0084] “electrons or holes are collected by charge collector implants 338 of pixel detector 310”), the detector comprising:
(Note, for product-by-process limitations throughout the claim, it should be known that even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985); currently, the claim does not recite process limitations which result in a structural distinction from the structure disclosed by the cited prior art)
a monolithic active pixel sensor (see [0085] “monolithic pixel detector 410”) including an epitaxial silicon layer (element 418, see [0087] “epitaxial absorber layer 418” and [0089] “absorber layer 418 maybe a Si wafer”) disposed on a substrate (element 480, see [0086] “wafer 480”) and a CMOS layer (element 412’, see [0087] “CMOS wafer 412’”) disposed on the epitaxial silicon layer; and
a handling wafer (element 460, see [0086] “handling wafer 460”) bonded to a front side (top side in the provided cross sectional view) of the CMOS layer,
wherein the substrate has been removed down to a back side of the epitaxial silicon layer (see Fig. 5(I) element 480 is removed to a backside of element 418), and
V1 does not explicitly disclose wherein a first section of the handling wafer has been selectively removed from a region corresponding to the pixel sensor leaving a second section of the handling wafer at a periphery of the pixel sensor.
K1 discloses (see in particular Fig. 16) wherein a first section (center opening portion separating sides portions of element 40) of the handling wafer (element 40, see [0058] “support substrate structures 40”) has been selectively removed from a region corresponding to the pixel sensor (see [0076] “UV/EUV photodetector 32”) leaving a second section of the handling wafer at a periphery of the pixel sensor (see Fig. 16 and [0077] “As seen in FIG. 16, a silicon support substrate 40 can be optionally thinned and then a portion of the silicon support substrate 40 can be etched to expose the graphene surface 10a while leaving a portion of the silicon support substrate 40 on the surface of the remainder of the graphene layer 10 to act as top side mechanical support for the apparatus”).
The thinned handling wafer as taught by K1 is incorporated as a thinned handling wafer of V1.
It would have been obvious to one having ordinary skill in the art at the time the invention was effectively filed to incorporate the teachings of K1 with V1 because the combination allows for an opening for which radiation is provided less impeded access to a portion of the sensor region than the peripheral areas while also providing mechanical support (see K1 Fig. 16 and [0077]); and the combination is simple substitution of one known element for another to obtain predictable results – simple substitution of one known handling wafer shape for another in a similar device for which the options are provided as selectable alternatives (see K1 Fig. 15 versus Fig. 16).
[Mooney et al. (US 2010/0032576 A1), hereinafter as M1, is utilized herein as evidence]
7. Regarding Claim 14, V1,K1 disclose the direct detector of claim 9.
V1,K1 do not explicitly disclose wherein the direct detector is configured to be mounted in a transmission electron microscope such that ionizing radiation enters the detector from the back side of the epitaxial silicon layer (The limitations “configured to be mounted in a transmission electron microscope such that ionizing radiation enters the detector from the back side of the epitaxial silicon layer” is directed towards functional limitations, see MPEP 2173.05(g), because the limitations recite a feature “by what it does rather than by what it is” and “A functional limitation is often used in association with an element, ingredient, or step of a process to define a particular capability or purpose that is served by the recited element, ingredient or step. In Innova/Pure Water Inc. v. Safari Water Filtration Sys. Inc., 381 F.3d 1111, 1117-20, 72 USPQ2d 1001, 1006-08 (Fed. Cir. 2004)”.
In the current claim, the structure required to be capable of performing the function is one that is mountable and can detect radiation from the back side of the epitaxial silicon layer which does not distinguish from the cited prior art.
The combination discloses a structure which is capable of being mounted by the handling wafer side which is a rigid structure sufficient to provide mechanical support and radiation can be detected by the back side of the epitaxial silicon layer see V1 [0021] “collect and process the electrical signals generated by radiation incident on the absorber”; also see evidentiary reference M1 [0014] “The camera enclosure 4 seals the Transmission Electron Microscope (TEM) … The retractable camera further includes an imaging device 5, which may be one of the following: CCD, interline CCD, or a CMOS imager”).
8. Claim 10 is rejected under 35 U.S.C. 103 as obvious over Von Kanel (US 2017/0373110 A1), hereinafter as V1, in view of Kub et al. (US 2014/0367824 A1), hereinafter as K1, In view of Huang et al. (US 2016/0190191 A1), hereinafter as H1
9. Regarding Claim 10, V1,K1 disclose the direct detector of claim 9.
V1,K1 do not disclose wherein the epitaxial layer is approximately 4 μm to 20 μm in thickness.
H1 discloses wherein the epitaxial layer is approximately 4 μm to 20 μm in thickness (see [0017] “CMOS image sensor” and [0018] “the semiconductor layer 112 is formed from epitaxial silicon and/or epitaxial germanium … thickness of the semiconductor layer 112 ranges from 0.1 micrometers to 20 micrometers”” See MPEP 2144.05 I. "In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)").
The thickness of the epitaxial layer as taught by H1 is incorporated as a thickness of the epitaxial layer of V1,K1.
It would have been obvious to one having ordinary skill in the art at the time the invention was effectively filed to incorporate the teachings of H1 with V1,K1 because the combination is simple substitution of one known element for another to obtain predictable results – simple substitution of one epitaxial semiconductor layer for another in a similar device to obtain predictable results (see H1 [0017-0018]).
10. Claims 11-12 are rejected under 35 U.S.C. 103 as obvious over Von Kanel (US 2017/0373110 A1), hereinafter as V1, in view of Kub et al. (US 2014/0367824 A1), hereinafter as K1, in view of Meynants (US 2020/0194474 A1), hereinafter as M1.
11. Regarding Claim 11, V1,K1 disclose the direct detector of claim 9.
V1,K1 do not explicitly disclose wherein the monolithic active pixel sensor further includes: a depletion region in the epitaxial silicon layer, a photodiode in the depletion region, a pinned layer on the photodiode, and a floating diffusion region in the epitaxial silicon layer.
M1 discloses (see Fig. 1) wherein the monolithic active pixel sensor further includes: a depletion region (see [0047] “photodiode depletion layer”) in the epitaxial silicon layer (element SL, see [0046] “semiconductor layer SL, which may be silicon”), a photodiode (see [0048] “a pinned photodiode is shown, which comprises an n-type implant in a p-epitaxial layer”) in the depletion region, a pinned layer (see [0048] “The diode is pinned by a p+ surface layer”) on the photodiode, and a floating diffusion region (see [0048] “floating diffusion sense node SN”) in the epitaxial silicon layer (see Fig. 1).
The details of the active pixel sensor as taught by M1 is incorporated as the details of the active pixel sensor of V1,K1.
It would have been obvious to one having ordinary skill in the art at the time the invention was effectively filed to incorporate the teachings of M1 with V1,K1 because the combination allows for a resonant-cavity photodiode which allows to design especially small pixels and can produce a standing wave, which can be optimized by tuning the thicknesses of the layers to generate electrons inside the photodiode depletion layer (see M1 [0012, 0047]); and
the combination is simple substitution of one known element for another to obtain predictable results – simple substitution of one known specific active pixel sensor for another in a similar CMOS image sensor device to obtain predictable results (see M1 [0047-0048]).
12. Regarding Claim 12, V1,K1,M1 disclose the direct detector of claim 11, wherein (see M1) the epitaxial layer is a p-type silicon layer (see Fig. 1 element “p-epitaxial layer”), wherein the photodiode is an n-type photodiode (see Fig. 1 element “n (photodiode”)) embedded in a depletion region (see [0047] “photodiode depletion layer”), wherein the pinned layer is p++-type silicon (see [0048] “The diode is pinned by a p+ surface layer”; Note, the manner in which the claim is currently recited does not provide a specific doping concentration threshold to distinguish between p-type, p+-type, and p++-type, nor is there is there a universal definition in the art or special definition in the Applicant’s specification to distinguish from the p+ taught by the prior art; the interpretation is taken that the claimed p++-type silicon is more heavily doped than the epitaxial p-type silicon layer but a specific concentration is not required), and wherein the floating diffusion region is an n-type silicon material (see [0048] “floating diffusion sense node SN, which is shown as an n+ area”).
13. Claim 13 is rejected under 35 U.S.C. 103 as obvious over Von Kanel (US 2017/0373110 A1), hereinafter as V1, in view of Kub et al. (US 2014/0367824 A1), hereinafter as K1, in view of Meynants (US 2020/0194474 A1), hereinafter as M1, in view of Hynecek (US 2015/0060951 A1), hereinafter as Hynecek
14. Regarding Claim 13, V1,K1,M1 disclose the direct detector of claim 11.
V1,K1,M1 as previously combined to not explicitly disclose wherein the CMOS layer includes: a metallization pattern on the front side of the CMOS layer, including a photodiode contact, a floating diffusion region contact, and a gate contact, and a read-out circuit connected to the floating diffusion region contact.
H1 discloses (see Fig. 3 and [0027] “photodiode (PD)”) wherein the CMOS layer (layer above element 301) includes: a metallization pattern (metal plugs in element 312, see [0034] “IL oxide layers 312 may be used for interconnect isolation and may include conductive interconnects such as metal pixel wiring. Active circuit components in pixel 300 may be connected to metal wiring in IL oxide layers 312 using conductive material such as metal via 314 (sometimes referred to as metal plugs). Metal plugs 314 may be deposited in contact via holes in layer 312 such as contact via holes 313.”) on the front side of the CMOS layer (top side), including a photodiode contact (contact of element GND connecting to the photodiode of element 30), a floating diffusion region contact (contact of element FD, see [0032] “floating diffusion (FD)”), and a gate contact (gate contact of element TX, see [0030] “transfer gate 310 (Tx1)”), and a read-out circuit (see [0017] “During a readout cycle, the Tx2 gates of the selected row are pulsed”) connected to the floating diffusion region contact (see [0017] “During a readout cycle, the Tx2 gates of the selected row are pulsed … This causes the charge carriers to flow to the floating diffusion region and change its potential from its reset level 227.” And [0032] “floating diffusion (FD) diode such as floating diffusion node 304 may be used to sense charge transferred from storage diode region 320 (e.g., charge that is accumulated in photodiode 30 and then transferred to storage diode region 320). Floating diffusion node 304 may be connected to a pixel source follower (SF) transistor gate (not shown). Floating diffusion node 304 may he reset by applying a pulse to reset gate 325 (Rx).”).
The specific metallization pattern implementation for the photodiode related circuitry of the CMOS layer as taught by H1 is incorporated as specific metallization pattern implementation for the photodiode related circuitry of the CMOS layer of V1,K1,M1.
It would have been obvious to one having ordinary skill in the art at the time the invention was effectively filed to incorporate the teachings of H1 with V1,K1,M1 because the combination provides active components connected to metal wiring using conductive material such as metal vias (see H1 [0034]); furthermore, the combination is simple substitution of one known element for another to obtain predictable results – simple substitution of one known CMOS circuit connection layer configuration and material for another in a similar device to obtain predictable results (see H1 Fig. 3 and [0032, 0034]).
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 SAMUEL PARK whose telephone number is (303)297-4277. The examiner can normally be reached Normal Schedule: M-F Sometime between 6:30 a.m. - 7:00 p.m..
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/SAMUEL PARK/Examiner, Art Unit 2818
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