DETAILED ACTION
This office action is in response to the Applicant Amendment on 1/5/2026.
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 .
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, 8, and 10 - 12 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 limitation "the second side" in second to last line and the limitations “the insulating layer” and “the first side” in the last line. There is insufficient antecedent basis for these limitations in the claim. Claims 2 – 5, 8, and 10 – 12 depend on claim 1.
Claim 3 introduces the limitations “a first side” in the second line, “a second side” in the third line, and “an insulating layer” in the fourth line. It is unclear if these are the same limitations as cited in claim 1 above or if the intention is to introduce new elements. Based on the claims of 7/27/2023, it was assumed by Examiner that these elements of claim 3 are the same elements of claim 1. Claims 4 – 5, 8, and 10 – 12 depend on claim 3.
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.
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Murata (US 2019/0103431).
Regarding claim 1, Murata teaches an optical sensor, comprising (Figure 5):
a plurality of electrodes 63 (Paragraph 0044) adjacent to one another;
an organic photoelectric conversion layer 62 (Paragraph 0045) that includes an active layer 62 and is laminated in common on the plurality of electrodes 63, the active layer converting incident light into an electric charge; and
a light shielding layer 55B (center, Paragraph 0049) covering at least a part of the active layer 62 between the adjacent electrodes 63 on a light receiving side that receives the incident light; and
an auxiliary light shielding layer 55A that covers at least a part of the active layer between the adjacent electrodes 63 on a second side (see rejection under section 112, also, first side and second side are not defined in a manner to exclude Murata), wherein
the auxiliary light shielding layer 55A is laminated on an insulating layer 51 (Paragraph 0042) on a first side (also see rejection under section 112).
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.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Murata (US 2019/0103431) in view of Kubota et al. (US 2022/0278177).
Regarding claim 2, Murata does not teach that the light shielding layer is formed of a black resin. Kubota et al. teaches that a light shielding layer can be formed of a black resin (Paragraph 0199). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use black resin for the light shielding layer of Murata since resins are generally inert and nonconductive, therefore will not interact undesirably with electronic elements. Further, it has been held that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination (Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), also see In re Leshin, 125 USPQ 416, (1960)). Please also see MPEP §2144.07.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Murata (US 2019/0103431) in view of Enoki et al. (US 2014/0160327).
Regarding claim 3, Murata teaches a first side (top) where the organic photoelectric conversion layer 62 is laminated in common on the plurality of electrodes 63 and a second side (bottom) opposite to the first side (please note that the second side can be opposite to the first side regarding layer 56); and an insulating layer 51 (Paragraph 0041) including a plurality of openings respectively corresponding to the plurality of electrodes 63, and the organic photoelectric conversion layer 62 is laminated on the insulating layer 51 on the first side.
Murata does not teach that a surface of the insulating layer 51 on the first side is disposed closer to the first side than a surface of the electrode 63 on the first side. Enoki et al. teaches (Figure 20, Paragraph 0093 - 0094) that a surface of an insulating layer 15 on a first side is disposed closer to the first side (top) than a surface of an electrode 14 on the first side. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Murata such that a surface of the insulating layer on the first side is disposed closer to the first side than a surface of the electrode on the first side in the manner taught by Enoki et al. since doing so may allow one to control the contact surfaces between the electrode and the organic photoelectric conversion layer.
Allowable Subject Matter
Claims 4 – 5, 8, and 10 – 12 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: the prior art of record neither anticipates nor renders obvious the subject matter of claim 4 and claim 8. Claims 4 and 8 include all the features previously indicated as allowable in the Non-Final Rejection of 10/14/2025. Claim 5 depends on claim 4. Claims 10 – 12 depend on claim 8.
Response to Arguments
Applicant's arguments filed 1/5/2026 have been fully considered but they are not persuasive.
Previous claim 7 (of 7/27/23) depended on claims 6, 4, 3, and 1. The features of claims 4 and 3 have not been included in the amendment to claim 1, therefore, the scope of current claim 1 is different from claim 7 filed on 7/27/2023. Applicant should note the difference and incompatibility of claims 4 and 8 with each other. For instance, including the features of claim 4 into claim 1 would cause a conflict with the features of claim 8.
Conclusion
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 SUN MI KIM KING whose telephone number is (571)270-1431. The examiner can normally be reached Monday - Friday, 8:30 AM - 5:00 PM MST.
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/SUN MI KIM KING/Examiner, Art Unit 2813
/STEVEN B GAUTHIER/Supervisory Patent Examiner, Art Unit 2813