Detailed Action
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 .
Response to Arguments
Applicant’s arguments, see Page 8, final paragraph of applicant’s arguments, filed 01/27/2026, with respect to the rejection(s) of claim(s) 1 and dependent claims under 35 U.S.C. 102(a)(2) over Takatsuka(US 20230094219 A1, hereafter Takatsuka) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Ejiri et al.(US 20230275112 A1, hereafter Ejiri). The amendments overcome the existing rejections. Furthermore, the argument against a hypothetical rejection of claims 23 and 24 under Takatsuka are accepted, as these are new claims not present before the non-final office action mailed 2025/10/27. However, new rejections for all pending claims are below.
Election/Restrictions
Claim 24 is withdrawn due to the election of Species I, Sub-species A in the reply to the restriction requirement mailed 2025/08/21. The limitation “wherein the resistive element is formed in a via-type pattern” does not appear to be shown in Figs. 4, 6, 7A and 7B in accordance with the election. Furthermore, this feature is only described as a part of embodiments directed to Figs. 12-14B in the specification(See paragraphs 0100-0108 of applicant’s specification).
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
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.
Claim 23 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. The limitation “wherein the first semiconductor region and the resistive element of the second semiconductor region are provided at a same height” does not appear to be a limitation in accordance with the elected species, nor does it appear to be described in the specification that this is the case.
Claim 23 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 23 recites the limitation "the resistive element of the second semiconductor region" in Lines 19-20. There is insufficient antecedent basis for this limitation in the claim. There does not appear to be a resistive element of the second semiconductor region recited earlier in the claim.
Claim Rejections - 35 USC § 102
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 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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(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.
Claim(s) 1-5, 7, 10-11, 13, 15-18, 21-22 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Ejiri.
Regarding Claim 1, Ejiri discloses:
A device(Fig. 24) including a first substrate(Fig. 24 [1]) including a first layer(Fig. 24 [1]) including a first surface(bottom) and a second surface(top), and a first wiring structure(Fig. 24 [6’/4]) located on the first layer(Fig. 24 [1]), the device(Fig. 24) comprising:
At least one avalanche photodiode(Fig. 24 [PD]) located on the first layer(Fig. 24 [1]); and
A resistive element(Fig. 24 [5a]) connected to the avalanche photodiode,
Wherein the first wiring structure(Fig. 24 [6’/4]) includes a first wire(Fig. 24 [6’ or 4]) configured to supply a first voltage to the avalanche photodiode(Fig. 24 [PD]), and a second wire(Fig. 24 [6’ or 4]) configured to supply a second voltage to the avalanche photodiode(Fig. 24 [PD]),
Wherein a distance between the resistive element(Fig. 24 [5a]) and the first surface of the first layer(Fig. 24 [1]) is greater than eat of a distance between the first wire(Fig. 24 [6’ or 4]) and the first surface of the first layer(Fig. 24 [1]) and a distance between the second wire(Fig. 24 [6’ or 4]) and the first surface of the first layer(Fig. 24 [1]),
Wherein a contact plug(Fig. 24 [5b/6]) is metal(See paragraphs 0097, 0070) and the contact plug(Fig. 24 [5b/6]) is connected to both a lower side of the resistive element(Fig. 24 [5a]) and an upper side of the resistive element(Fig. 24 [5a]), and
Wherein a material for the resistive element(Fig. 24 [5a]) is different from a material for the contact plug(See paragraph 0096).
Regarding Claim 2, Ejiri further discloses:
The first substrate(Fig. 24 [1]) further includes a second layer(Fig. 24 [41]) stacked on the first substrate(Fig. 24 [1])
Regarding Claim 3, Ejiri further discloses:
A shaping unit(See signal processing circuit, paragraphs 0179, 0189) configured to shape a waveform of an output signal from the avalanche photodiode(Fig. 24 [PD]), the shaping unit(See above) being located on the second layer(Fig. 24 [41]).
Regarding Claim 4, Ejiri further discloses:
The at least one avalanche photodiode(Fig. 24 [PD]) comprises a plurality of avalanche photodiodes(Fig. 24 [PD]), and
Wherein a first resistive element(Fig. 24 See figure below) connected to a first avalanche photodiode(Fig. 24 See figure below) and a second resistive element(Fig. 24 See figure below) connected to a second avalanche photodiode(Fig. 24 See figure below) are located on a same plane parallel to a surface of the first layer(Fig. 24 [1]), the first avalanche photodiode(Fig. 24 See figure below) and the second avalanche photodiode(Fig. 24 See figure below) being included in the plurality of avalanche photodiodes(Fig. 24 [PD]).
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Above: Fig. 24 of Ejiri with first and second avalanche photodiodes, first and second resistive elements denoted by examiner.
Regarding Claim 5, Ejiri further discloses:
The resistive element(Fig. 24 [5a]) includes either polycrystalline silicon or amorphous silicon(See paragraph 0096).
Regarding Claim 7, Ejiri further discloses:
The resistive element(Fig. 24 [5a]) includes a ceramic material(See paragraph 0096).
Regarding Claim 10, Ejiri further discloses:
The resistive element(Fig. 24 [5a]) includes a material with a resistivity greater than a resistivity of a major material of the first wire(Fig. 24 [4 or 6’]).
Regarding Claim 11, Ejiri further discloses:
The resistive element(Fig. 24 [5a]) includes a material with a resistivity greater than a resistivity of a major material in a via hole(Fig. 24 [4]) configured to supply a voltage to the avalanche photodiode(Fig. 24 [PD]).
Regarding Claim 13, Ejiri further discloses:
A resistive element(Fig. 24 [5a]) is connected to each of a cathode(Fig. 24 [51]) and an anode(Fig. 24 [1c]) of the avalanche photodiode(Fig. 24 [PD]).
Regarding Claim 15, Ejiri further discloses:
The first wire(Fig. 24 [4 or 6’]) and the second wire(Fig. 24 [4 or 6’) are located on the first substrate(Fig. 24 [1]), the first wire(Fig. 24 [4 or 6’]) and the second wire(Fig. 24 [4 or 6’]) serving as two channels configured to supply voltages to each of a cathode(Fig. 24 [51]) and an anode(Fig. 24 [1c]) of the avalanche photodiode(Fig. 24 [PD]).
Regarding Claim 16, Ejiri further discloses:
At least a part of the first wire(Fig. 24 [4]) overlaps the resistive element(Fig. 24 [5a]) in a planar view.
Regarding Claim 17, Ejiri further discloses:
A thickness of the resistive element(Fig. 24 [5a]) in a direction perpendicular to the first substrate(Fig. 24 [1]) is smaller than a thickness of the first wire[Fig. 24 [6’]) in the direction perpendicular to the first substrate(fig. 24 [1]).
Regarding Claim 18, Ejiri further discloses:
The first wire(Fig. 24 [4]) is located on a line connecting a multiplication region(Fig. 24 [1b/1c/1d]) of the avalanche photodiode(Fig. 24 [PD]) and a certain point in the resistive element(Fig. 24 [5a]).
Regarding Claim 21, Ejiri further discloses:
A system(Fig. 29) comprising:
The device(Fig. 24) according to claim 1, and
A processing unit(Fig. 29 [103]) configured to form an image using a signal output from the device(Fig. 24).
Regarding Claim 22, Ejiri discloses:
A moving body(Fig. 30-31) comprising:
The device(Fig. 24) according to claim 1; and
A control unit(Fig. 30 [251]) configured to control traveling of the moving body(Fig. 30-31) using a signal output from the device(Fig. 24, See paragraph 0233).
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.
Claim(s) 6, 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ejiri in view of Takatsuka.
Regarding Claim 6,
Ejiri discloses a device in accordance with the limitations of claim 1.
Ejiri does not teach or disclose the resistive element as including a metal thin-film material.
In the same field of endeavor, Takatsuka discloses a resistive element(Fig. 14 [133]) including a metal thin-film material(See paragraph 0191).
It would have been obvious to one of ordinary skill in the art at the time the application at hand was filed to modify the device disclosed by Ejiri along the lines of Takatsuka. One might have been motivated to use a metal thin-film resistor as one of ordinary skill in the art, with knowledge of the respective types of resistors, would naturally experiment across the known resistor types to find one that suits Eijiri’s device best. Performing this modification would have generated a predictable result in the creation of Eijiri’s device with a metal thin-film resistor.
Regarding Claim 12,
Ejiri discloses a resistive element(Fig. 24 [5a]) and a cathode(Fig. 24 [51]).
Ejiri does not teach or disclose the resistive element overlaps a cathode of the avalanche photodiode in a planar view.
In the same field of endeavor, Takatsuka discloses:
A resistive element(Fig. 14 [133]) overlaps a cathode(Fig. 12 [106]) of the avalanche photodiode(Fig. 14 [210]) in planar view.
It would have been obvious to one of ordinary skill in the art at the time the application at hand was filed to modify the device disclosed by Ejiri along the lines of Takatsuka. One might have been motivated to form the cathode as overlapping the resistive element as to reverse the polarity of the device disclosed by Ejiri, wherein in the current embodiment of Ejiri’s device, the anode and cathode are in a reverse order when compared to the device disclosed by Takatsuka. Producing the device in this way would have generated a predictable result in the creation of Ejiri’s photodiode device with the diode direction disclosed by Takatsuka.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ejiri in view of Olariu(US 20090170237 A1, hereafter Olariu).
Regarding Claim 8, Ejiri discloses a device according to the limitations of claim 1. Ejiri does not teach or disclose the resistive element includes an organic material.
In an analagous field of endeavor, Olariu discloses a resistor which is organic(See paragraph 0022).
It would have been obvious to one of ordinary skill in the art at the time the application at hand was filed to modify the device disclosed by Ejiri along the lines of Olariu. One might have been motivated to produce the resistive element out of an organic material due to the low-temperature processing involved in producing an organic resistance material. Performing this modification would have generated a predictable result in the creation of Ejiri’s device with a resistive element containing an organic material.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ejiri in view of Wang et al.(US 20210066514 A1, hereafter Wang).
Regarding Claim 9,
Ejiri discloses a device in accordance with the limitations of claim 1.
Ejiri does not teach or disclose a ratio between a shortest side and a longest side of the resistive element is more than or equal to 10.
In the same field if endeavor, Wang discloses a ratio between a shortest side and a longest side of a resistive element(fig. 2 [130]) as between 10 and 100(see paragraph 0036).
It would have been obvious to one of ordinary skill in the art at the time the application at hand was filed to modify the device disclosed by Ejiri along the lines of Wang. One might have been motivated to use Wang’s dimensions as Ejiri does not offer a dimension recommendation in the construction of their resistor, thus necessitating an examination of the prior art for a teaching on the recommended ratio between a shortest side and longest side. Performing this production would have generated a predictable result in the creation of Ejiri’s device with a resistor that has a ratio between the shortest side and longest side of more than equal to 10.
Claim(s) 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ejiri in view of Kokubun(US 20210305289 A1, hereafter Kokubun).
Regarding Claim 20,
Ejiri discloses a device in accordance with the limitations of claim 1.
Ejiri does not teach or disclose that the resistive element has a resistance value of more than or equal to 50 kilo ohms.
In the same field of endeavor, Kokubun discloses a resistor(Fig. 2 [22]), which is the same component as the resistor disclosed in Ejiri, as having a resistance of several hundred kilo ohms(See paragraph 0027).
It would have been obvious to one of ordinary skill in the art at the time the application at hand was filed to modify the device disclosed by Ejiri along the lines of Kokubun. One might have been motivated to use Kokubun’s suggestion of resistance as Ejiri does not provide a set resistance range, and one looking to produce their device would need a teaching as to the resistance of a quenching resistor. Performing this modification would have generated a predictable result in the creation of Ejiri’s device with a quenching resistor with a resistance in accordance with Kokubun’s teaching.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Otake et al.(US 20220020789 A1, hereafter Otake) discloses a photodiode with a cathode and anode. Ogi(US 20230384431 A1) discloses a photodiode with a circuit below the avalanche photodiode. Iwashina et al.(US 20210344864 A1) discloses a quenching resistor farther from a first surface of a photodiode than a first or second wiring.
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 MARSHALL MU-NUO HATFIELD whose telephone number is (703)756-1506. The examiner can normally be reached Mon-Thus 11:00 AM-9:00PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Fernando Toledo can be reached at 571-272-1867. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/FERNANDO L TOLEDO/Supervisory Patent Examiner, Art Unit 2897
/MARSHALL MU-NUO HATFIELD/Examiner, Art Unit 2897