DETAILED ACTION
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claim 3 is/are rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 1 of prior U.S. Patent No. 11,581,349. This is a statutory double patenting rejection. See table below.
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 1-2 and 4-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,581,349. Although the claims at issue are not identical, they are not patentably distinct from each other because of the reasons listed in the table below (showing the claims, with some inserted element numbers, and comments in square brackets [ ] ), wherein only obvious differences in wording are present, and most claims of 18/109211 are merely broader than the corresponding claims of 11,581,349.
US Patent 11,581,349
(“Parent Application”)
US Application 18/109211
1. An optical structure comprising:
photosensors 602/603 located on a front side 609 of a semiconductor substrate (500 or 601);
an optical refraction layer 734 (Fig. 12A)
located on a backside 709 of the semiconductor substrate,
having a first refractive index, and
including planar distal surface portions (portions of 734 that contact 742) and non- planar distal surface portions 734N including random protrusions 734R;
a grid structure 740
located on the planar distal surface portions (portions of 734 that contact 742) and
including openings (areas between grids 740, generally filled later with 770) that overlie the non-planar distal surface portions (734N); and
an optically transparent layer 770
vertically extending through the openings in the grid structure and
contacting the non-planar distal surface portions and
having a second refractive index that is different from the first refractive index,
thereby providing a refractive interface with the non-planar distal surface portions that refracts incident light in random directions;
and an array of masking structures 750 (Fig. 13C)
located outside areas of the non-planar distal surface portions (734N) of the optically refractive layer, and
having sidewalls that overlie, and contact, a respective portion of a top surface of the grid structure,
wherein the optically transparent layer (770) overlies the array of masking structures.
1. An optical structure comprising:
photosensors 602/603 located on a front side 609 of a semiconductor substrate (500 or 601);
an optical refraction layer 734 (Fig. 12A)
located on a backside 709 of the semiconductor substrate,
having a first refractive index, and
including planar distal surface portions (portions of 734 that contact 742) and non- planar distal surface portions 734N including random protrusions 734R;
a grid structure 740
located on the planar distal surface portions (portions of 734 that contact 742) and
including openings (areas between grids 740, generally filled later with 770) that overlie the non-planar distal surface portions (734N);
[See an optically transparent layer below]
[Broader than claim 1 of parent, does not have the four dotted details of 770 that it has]
an array of masking structures 750 (Fig. 13C)
located outside areas of the non-planar distal surface portions (734N) of the optically refractive layer, and
having sidewalls that overlie, and contact, a respective portion of a top surface of the grid structure; and
an optically transparent layer 770
overlying the array of masking structures.
2. The optical structure of Claim 1, wherein the optically transparent layer vertically extends through the openings in the grid structure and contacts the non-planar distal surface portions.
[This claim adds the first and second dots of 770 in parent claim 1.
This claim has everything except 3rd and 4th dots of 770 in parent claim 1.]
3. The optical structure of Claim 2, wherein the optically transparent layer has a second refractive index that is different from the first refractive index, thereby providing a refractive interface with the non-planar distal surface portions that refracts incident light in random directions.
[This claim adds the third and fourth dots of 770 in parent claim 1.
This claim is the same as claim 1 of the parent application]
4. The optical structure of Claim 1, wherein the optical refraction layer comprises a semiconductor material or a dielectric material.
4. The optical structure of Claim 1, wherein the optical refraction layer comprises a semiconductor material or a dielectric material.
[This claim is merely broader than claim 4 of the parent application, by not having the 4 dots of 770 described in parent claim 1.]
5. The optical structure of Claim 1, wherein the grid structure comprises at least a metallic grid structure 744 having reflective sidewalls.
5. The optical structure of Claim 1, wherein the grid structure comprises at least a metallic grid structure 744 having reflective sidewalls.
[This claim is merely broader than claim 5 of the parent application, by not having the 4 dots of 770 described in parent claim 1.]
6. The optical structure of Claim 1, wherein:
an entirety of the grid structure (742/744) contacts a first subset of the planar distal surface portions; and
the first subset of the planar distal surface portions is more distal from the semiconductor substrate than a most distal point among the non-planar distal surface portions is from the semiconductor substrate.
6. The optical structure of Claim 1, wherein:
an entirety of the grid structure (742/744) contacts a first subset of the planar distal surface portions; and
the first subset of the planar distal surface portions is more distal from the semiconductor substrate than a most distal point among the non-planar distal surface portions is from the semiconductor substrate.
[This claim is merely broader than claim 6 of the parent application, by not having the 4 dots of 770 described in parent claim 1.]
7. The optical structure of Claim 6, further comprising
an array of masking structures 750 (Fig. 12C, 13C) overlying the grid structures,
wherein the array of masking structures contacts a respective one of a second subset of the planar distal surface portions.
7. The optical structure of Claim 6, wherein the array of masking structures
contacts a respective one of a second subset of the planar distal surface portions.
[This claim is merely broader than claim 7 of the parent application, by not having the 4 dots of 770 described in parent claim 1.]
8. The optical structure of Claim 7, wherein the second subset of the planar distal surface portions is more proximal to the semiconductor substrate than the first subset of the planar distal surface portions is to the semiconductor substrate.
8. The optical structure of Claim 7, wherein the second subset of the planar distal surface portions is more proximal to the semiconductor substrate than the first subset of the planar distal surface portions is to the semiconductor substrate.
[This claim is merely broader than claim 8 of the parent application, by not having the 4 dots of 770 described in parent claim 1.]
9. The optical structure of Claim 7, wherein:
the optically transparent layer (770) contacts a first subset of sidewalls of the grid structure (e.g. areas under 790s, Fig. 15B); and
the array of masking structures (750) contacts a second subset of the sidewalls of the grid structure (e.g. areas between 790s, Fig. 15B).
9. The optical structure of Claim 7, wherein:
the optically transparent layer (770) contacts a first subset of sidewalls of the grid structure (e.g. areas under 790s, Fig. 15B); and
the array of masking structures (750) contacts a second subset of the sidewalls of the grid structure (e.g. areas between 790s, Fig. 15B).
[This claim is merely broader than claim 9 of the parent application, by not having the 4 dots of 770 described in parent claim 1.]
10. An optical structure comprising:
photosensors 602/603 located on a front side 609 of a semiconductor substrate (500 or 601),
wherein each of the photosensors comprises a respective subpixel located within an array of pixels and each of the photosensors is electrically connected to a respective sensing circuit 640-660 located on the front side of the semiconductor substrate;
an optical refraction layer 734 (Fig. 12A)
located on a backside of the semiconductor substrate,
having a first refractive index, and
including planar distal surface portions (portions of 734 that contact 742) and non- planar distal surface portions 734N including random protrusions 734R;
a grid structure 740
located on the planar distal surface portions and
including openings that overlie the non-planar distal surface portions; and
an optically transparent layer 770
vertically extending through the openings in the grid structure and
contacting the non-planar distal surface portions and
having a second refractive index that is different from the first refractive index,
thereby providing a refractive interface with the non-planar distal surface portions that refracts incident light in random directions; and
an array of masking structures 750 (Fig. 13C)
located outside areas of the non-planar distal surface portions of the optically refractive layer, and
having sidewalls that overlie, and contact, a respective portion of a top surface of the grid structure,
wherein the optically transparent layer overlies the array of masking structures.
10. An optical structure comprising:
photosensors 602/603 located on a front side 609 of a semiconductor substrate (500 or 601),
wherein each of the photosensors comprises a respective subpixel located within an array of pixels, and each of the photosensors is electrically connected to a respective sensing circuit 640-660 located on a front side surface of the semiconductor substrate;
an optical refraction layer 734 (Fig. 12A)
located on a backside of the semiconductor substrate,
having a first refractive index, and
including planar distal surface portions (portions of 734 that contact 742) and non- planar distal surface portions 734N
[Broader than claim 11, because it doesn’t require the “including random protrusions” 734R that it does]
a grid structure 740
located on the planar distal surface portions and
including openings that overlie the non-planar distal surface portions; and
[See an optically transparent layer, below]
[Broader than claim 11 of parent, does not have the four dotted details of 770 that it has]
an array of masking structures 750 (Fig. 13C)
located outside areas of the non-planar distal surface portions of the optically refractive layer, and
having sidewalls that overlie, and contact, a respective portion of a top surface of the grid structure,
an optically transparent layer 770 that overlies the array of masking structures.
11. The optical structure of Claim 10, wherein the optically transparent layer vertically extends through the openings in the grid structure and contacts the non-planar distal surface portions.
[This claim adds the first two dotted details of 770 that parent claim 10 has; this claim is merely broader than claim 10 of parent because it does not have the third and fourth dotted details of 770 that it has]
12. The optical structure of Claim 11, wherein the optically transparent layer
has a second refractive index that is different from the first refractive index,
thereby providing a refractive interface with the non-planar distal surface portions that refracts incident light in random directions.
[This claim is the same as claim 10 of the parent application]
11. The image sensor of Claim 10, wherein each masking structure within the array of masking structures
is located over, and
has an areal overlap in a plan view
with, a respective one of the sensing circuits.
13. The optical structure of Claim 10, wherein each masking structure within the array of masking structures
is located over, and
has an areal overlap in a plan view
with, a respective one of the sensing circuits.
[This claim is merely broader than claim 11 of the parent application]
12. The image sensor of Claim 10, wherein the masking structures
do not contact or overlie first sidewalls of the grid structure that face toward a respective one of the openings in the grid structure, and
contact second sidewalls of the grid structure that face away from a most proximal one of the openings in the grid structure.
14. The optical structure of Claim 10, wherein the masking structures
do not contact or overlie first sidewalls of the grid structure that face toward a respective one of the openings in the grid structure, and
contact second sidewalls of the grid structure that face away from a most proximal one of the openings in the grid structure.
[This claim is merely broader than claim 12 of the parent application]
13. The image sensor of Claim 10, wherein the grid structure comprises a composite grid structure including a vertical stack of
a metallic grid structure 744 having reflective sidewalls and
a dielectric grid structure 742.
15. The optical structure of Claim 10, wherein the grid structure comprises a composite grid structure including a vertical stack of
a metallic grid structure 744 having reflective sidewalls and
a dielectric grid structure 742.
[This claim is merely broader than claim 13 of the parent application]
14. The image sensor of Claim 10, further comprising:
an array of color filters 780 overlying the optically transparent layer; and
an array of lenses 790 that overlie the array of color filters.
16. The optical structure of Claim 10, further comprising:
an array of color filters 780 overlying the optically transparent layer; and
an array of lenses 790 that overlie the array of color filters.
[This claim is merely broader than claim 14 of the parent application]
17. An optical structure comprising:
photosensors 602/603 located on a front side of a semiconductor substrate (500 or 601);
an optical refraction layer 734 (Fig. 12A)
located on a backside of the semiconductor substrate,
having a first refractive index, and
including planar distal surface portions (portions of 734 that contact 742) and non- planar distal surface portions 734N including random protrusions 734R
a grid structure 740
located on the planar distal surface portions and
including openings that overlie the non-planar distal surface portions;
an optically transparent layer 770
vertically extending through the openings in the grid structure and
contacting the non-planar distal surface portions and
having a second refractive index that is different from the first refractive index,
thereby providing a refractive interface with the non-planar distal surface portions that refracts incident light in random directions; and
a masking material layer 750 (Fig. 13C) overlying portions of the grid structure,
wherein the optically transparent layer contacts an entirety of all sidewalls of the openings in the grid structure, and
edges of the masking material layer overlie a top surface of the grid structure.
17. An optical structure comprising:
photosensors 602/603 located on a front side of a semiconductor substrate (500 or 601);
an optical refraction layer 734 (Fig. 12A)
located on a backside of the semiconductor substrate and
comprising lanar distal surface portions (portions of 734 that contact 742) and non- planar distal surface portions 734N;
[Merely broader than claim 17 of parent, which requires 734 to have “a first refractive index” (which is inherent) and to “include random protrusions”]
a grid structure 740
located on the optical refraction layer and
comprising openings therein;
[merely broader than claim 17 of parent application, which requires 740 to be “on the planar distal surface portions” and that the openings “overlie the non-planar distal surface portions”]
an optically transparent layer 770
vertically extending through the openings in the grid structure and
contacting the non-planar distal surface portions; and
[merely broader than claim 17 of parent application, which requires 770 to have a “second refractive index that is different from the first refractive index” and “provide a refractive interface with the non-planar distal surface poritons that refracts incident light in random directions”]
a masking material layer 750 (Fig. 13C) overlying portions of the grid structure,
wherein the optically transparent layer contacts an entirety of all sidewalls of the openings in the grid structure, and
edges of the masking material layer overlie a top surface of the grid structure.
18. The optical structure of Claim 17, wherein:
the optical refraction layer has a first refractive index; and
the optically transparent layer has a second refractive index that is different from the first refractive index, thereby providing a refractive interface with the non-planar distal surface portions that refracts incident light in random directions.
[Claim 18 is merely broader than claim 17 of the parent application, because the limitations herein merely complete the requirements that it requires of 770, without adding anything.]
19. The optical structure of Claim 17, wherein the openings in the grid structure overlie the non-planar distal surface portions.
[Claim 19 is merely broader than claim 17 of the parent application, because the limitations herein merely complete the requirements that it requires of 770, without adding anything.]
18. The optical structure of Claim 17, wherein:
an entirety of the grid structure
contacts a first subset of the planar distal surface portions; and
the first subset of the planar distal surface portions is more distal from the semiconductor substrate than a most distal point among the non-planar distal surface portions is from the semiconductor substrate.
20. The optical structure of Claim 17, wherein:
the grid structure
contacts a first subset of the planar distal surface portions; and
the first subset of the planar distal surface portions is more distal from the semiconductor substrate than a most distal point among the non-planar distal surface portions is from the semiconductor substrate.
[Claim 20 is merely broader than claim 18 of the parent application]
Conclusion
Conclusion / Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kevin Parendo who can be contacted by phone at (571) 270-5030 or by direct fax at (571) 270-6030. The examiner can normally be reached Monday-Friday from 9 am to 4 pm ET.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Billy Kraig, can be reached at (571) 272-8660. The fax number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Kevin Parendo/Primary Examiner, Art Unit 2896