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 .
Election/Restrictions
Applicant's election with traverse of Group II and the species represented by the compound of Formula (3), corresponding to claims 1-12 and 17-20, in the reply filed on 12/18/2025 is acknowledged. The traversal is on the ground(s) that the specific chemical structure (defined by Formula (1) and its sub-formulas) constitutes an essential structural contribution that links all claims. This is not found persuasive because, as set forth in the Restriction Requirement, it is necessary to search for one of the inventions in a manner that is not likely to result in finding art pertinent to the other invention(s) (e.g., searching different classes/subclasses or electronic resources, or employing different search queries, a different field of search is shown, even though the two are classified together. The compounds must be evaluated for novelty and obviousness independent of their method of making and use. Because these inventions are independent or distinct for the reasons given in the Restriction Requirement and there would be a serious burden on the examiner if restriction is not required because the inventions require separate classification thereof, a different field of search, and separate status in the art (see MPEP § 808.02), restriction for examination purposes as indicated is proper.
The requirement is still deemed proper and is therefore made FINAL.
Claims 13-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention/species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 12/18/2025.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-2 and 7-12 are rejected under 35 U.S.C. 103 as being unpatentable over Kurdyukova et al. (“Synthesis, Spectral Properties, and Solvatochromism of Merocyanine Dyes Based on Bis (2,2,3,3,4,4,5,5-octocluropentyl)- 4,5-dinitro-9H-fluorene-2, 7-disulfonate” – cited on 08/14/2024 IDS, hereinafter referred to as Kurdyukova) in view of Hirose et al. (WO 2018016570 – see equivalent 11,730,004, both references cited on 10/22/2023 IDS, hereinafter referred to as Hirose).
Regarding claims 1 and 2, Kurdyukova discloses a photoelectric conversion element (page 1722, line 8 of left column), wherein the photoelectric conversion element contains the compound below (page 1724, compound VIII).
PNG
media_image1.png
172
210
media_image1.png
Greyscale
While Kurdyukova does disclose a merocyanine dye (compound VIII; first full paragraph of right column of page 1723) and further discloses the spectra of II-IV and VIII-X contained two intense bands in the visible and near-IR regions and weak bands in the 320-380 nm wavelength region (page 1723, right column, lines 7-9 of first full paragraph), Kurdyukova does not explicitly disclose, in the following order, a conductive film, a photoelectric conversion film containing the compound, and a transparent conductive film.
Hirose discloses a photoelectric conversion element (abstract) comprising a merocyanine dye in the photoelectric conversion layer (C10/L55) and further discloses a conductive film (C10/L1 - bottom electrode 21), a photoelectric conversion film (C10/L46 – photoelectric conversion layer 23A), and a transparent conductive film (C11/L57-58 – top electrode 25).
It would have been obvious to one or ordinary skill in the art at the time the invention was filed to include the merocyanine dye (compound VIII) of Kurdyukova in the photoelectric conversion film of Hirose, because as taught by Hirose, the organic semiconductor material included in the photoelectric conversion layer is not limited, in particular (C10/L44-47). Hirose further discloses the preferable use of a merocyanine-based dye (C10/L54-55) as the organic semiconductor material included in the photoelectric conversion layer 23A (C10/L45-46). Additionally, as evidenced by Hirose, the use of a merocyanine-based dye in a photoelectric conversion layer amounts to the use of a known material in the art for its intended use to achieve an expected result, and one skilled in the art would have a reasonable expectation of success when including the merocyanine-based dye of Kurdyukova in a photoelectric conversion layer of a photoelectric conversion element based on the teaching of Hirose.
Regarding claim 7, modified Kurdyukova discloses all the claim limitations as set forth above. Modified Kurdyukova further discloses the photoelectric conversion film further includes an n-type organic semiconductor (Hirose – C10/L43), and the photoelectric conversion film has a bulk hetero structure formed in a state where the compound represented by Formula (1) and the n-type organic semiconductor are mixed to each other (Hirose – C10/L17-34).
Regarding claim 8, modified Kurdyukova discloses all the claim limitations as set forth above. Modified Kurdyukova further discloses the n-type organic semiconductor includes a fullerene (Hirose - C10/L38, C23/L37).
Regarding claim 9, modified Kurdyukova discloses all the claim limitations as set forth above. Modified Kurdyukova further discloses the photelectric conversion film further contains a p-type organic semiconductor (Hirose – C10/L42).
Regarding claim 10, modified Kurdyukova discloses all the claim limitations as set forth above. Modified Kurdyukova further discloses interlayers between the conductive film and the transparent conductive film, in addition to the photoelectric conversion film (Hirose – C9/L54, C11/L6; lower and upper interlayers 22 and 24, respectively).
Regarding claim 11, modified Kurdyukova discloses all the claim limitations as set forth above.
With regard to the limitation “An imaging element comprising the photelectric conversion element,” the limitation is directed to the manner in which the apparatus is intended to be used, and it is noted that a recitation directed to the manner in which a claimed apparatus is intended to be used does not distinguish the claimed apparatus from the prior art, if the prior art has the capability to so perform. See MPEP 2111.02, 2112.01 and 2114-2115.
Regarding claim 12, modified Kurdyukova discloses all the claim limitations as set forth above.
With regard to the limitation “An optical sensor comprising the photelectric conversion element,” the limitation is directed to the manner in which the apparatus is intended to be used, and it is noted that a recitation directed to the manner in which a claimed apparatus is intended to be used does not distinguish the claimed apparatus from the prior art, if the prior art has the capability to so perform. See MPEP 2111.02, 2112.01 and 2114-2115.
Claims 1-12 and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Hirose et al. (WO 2018016570 – see equivalent 11,730,004, both references cited on 10/22/2023 IDS, hereinafter referred to as Hirose) in view of Sato et al. (US 3,925,084) and further in view of Yoshioka et al. (WO 2020/013246 – see equivalent US 2021/0135128 – both cited on 10/22/2023 IDS).
Regarding claims 1-6 and 17-20, Hirose discloses a photoelectric conversion
element (abstract) comprising, in the following order: a conductive film (C10/L1 - bottom electrode 21); a photoelectric conversion film (C10/L46 – photoelectric conversion layer 23A); and a transparent conductive film (C11/L57-58 – top electrode 25).
While Hirose does disclose the organic semiconductor material included in the photoelectric conversion layer is not limited, in particular (C10/L44-47), and that it is possible to preferably use a cyanine-based dye (C10/L55); Hirose does not explicitly disclose a compound represented by Formula (1).
Sato discloses the cyanine dye represented by the formula below (compound 5
in column 9).
PNG
media_image2.png
186
395
media_image2.png
Greyscale
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to use the cyanine dye (compound 5 in column 9) of Sato as the cyanine dye in Hirose, because as taught by Hirose, the organic semiconductor material included in the photoelectric conversion layer is not limited, in particular (C10/L44-47), and that it is possible to preferably use a cyanine-based dye (C10/L55). Additionally, as evidenced by Hirose, the use of a cyanine-based dye in a photoelectric conversion layer amounts to the use of a known material in the art for its intended use to achieve an expected result, and one skilled in the art would have a reasonable expectation of success when including the cyanine-based dye of Sato in the photoelectric conversion layer of the photoelectric conversion element of Hirose.
While modified Hirose does disclose the cyanine dye represented by the formula above (Sato - compound 5 in column 9); modified Hirose does not explicitly disclose Ra1 and Ra2 each independently represent an aryl group which may have a substituent,
-C(RL1)(RL2)(RL3), or a heteroaryl group which may have a substituent, and at least two of RL1, RL2, or RL3 each independently represent an alkyl group which may have a substituent, an aryl group which may have a substituent, or a heteroaryl group which may have a substituent.
Yoshioka discloses a photoelectric conversion element (abstract) comprising a photoelectric conversion film containing a polymethine compound (compound at top left of page 11).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to form the polymethine compound of modified Hirose (Sato – compound 5 in column 9) such that Ra1 and Ra2 each independently represent an aryl group, as disclosed by Yoshioka, because as evidenced by Yoshioka, the use of aryl groups in the Ra1 and Ra2 location of a polymethine compound is known in the art, and one skilled in the art would have a reasonable expectation that compounds similar in structure will have similar properties.
A prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. "An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties." In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979).
Regarding claim 7, modified Hirose discloses all the claim limitations as set forth above. Modified Hirose further discloses the photoelectric conversion film further includes an n-type organic semiconductor (Hirose – C10/L43), and the photoelectric conversion film has a bulk hetero structure formed in a state where the compound represented by Formula (1) and the n-type organic semiconductor are mixed to each other (Hirose – C10/L17-34).
Regarding claim 8, modified Hirose discloses all the claim limitations as set forth above. Modified Hirose further discloses the n-type organic semiconductor includes a fullerene (Hirose - C10/L38, C23/L37).
Regarding claim 9, modified Hirose discloses all the claim limitations as set forth above. Modified Hirose further discloses the photelectric conversion film further contains a p-type organic semiconductor (Hirose – C10/L42).
Regarding claim 10, modified Hirose discloses all the claim limitations as set forth above. Modified Hirose further discloses interlayers between the conductive film and the transparent conductive film, in addition to the photoelectric conversion film (Hirose – C9/L54, C11/L6; lower and upper interlayers 22 and 24, respectively).
Regarding claim 11, modified Hirose discloses all the claim limitations as set forth above.
With regard to the limitation “An imaging element comprising the photelectric conversion element,” the limitation is directed to the manner in which the apparatus is intended to be used, and it is noted that a recitation directed to the manner in which a claimed apparatus is intended to be used does not distinguish the claimed apparatus from the prior art, if the prior art has the capability to so perform. See MPEP 2111.02, 2112.01 and 2114-2115.
Regarding claim 12, modified Hirose discloses all the claim limitations as set forth above.
With regard to the limitation “An optical sensor comprising the photelectric conversion element,” the limitation is directed to the manner in which the apparatus is intended to be used, and it is noted that a recitation directed to the manner in which a claimed apparatus is intended to be used does not distinguish the claimed apparatus from the prior art, if the prior art has the capability to so perform. See MPEP 2111.02, 2112.01 and 2114-2115.
Claims 1-12 and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Hirose et al. (WO 2018016570 – see equivalent 11,730,004, both references cited on 10/22/2023 IDS, hereinafter referred to as Hirose) in view of Sato et al. (US 3,925,084) and further in view of Brooker et al. (US 3,431,111).
Regarding claims 1-6 and 17-20, Hirose discloses a photoelectric conversion
element (abstract) comprising, in the following order: a conductive film (C10/L1 - bottom electrode 21); a photoelectric conversion film (C10/L46 – photoelectric conversion layer 23A); and a transparent conductive film (C11/L57-58 – top electrode 25).
While Hirose does disclose the organic semiconductor material included in the photoelectric conversion layer is not limited, in particular (C10/L44-47), and that it is possible to preferably use a cyanine-based dye (C10/L55); Hirose does not explicitly disclose a compound represented by Formula (1).
Sato discloses the cyanine dye represented by the formula below (compound 5
in column 9).
PNG
media_image2.png
186
395
media_image2.png
Greyscale
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to use the cyanine dye (compound 5 in column 9) of Sato as the cyanine dye in Hirose, because as taught by Hirose, the organic semiconductor material included in the photoelectric conversion layer is not limited, in particular (C10/L44-47), and that it is possible to preferably use a cyanine-based dye (C10/L55). Additionally, as evidenced by Hirose, the use of a cyanine-based dye in a photoelectric conversion layer amounts to the use of a known material in the art for its intended use to achieve an expected result, and one skilled in the art would have a reasonable expectation of success when including the cyanine-based dye of Sato in the photoelectric conversion layer of the photoelectric conversion element of Hirose.
While modified Hirose does disclose the cyanine dye represented by the formula above (Sato - compound 5 in column 9); modified Hirose does not explicitly disclose Ra1 and Ra2 each independently represent an aryl group which may have a substituent,
-C(RL1)(RL2)(RL3), or a heteroaryl group which may have a substituent, and at least two of RL1, RL2, or RL3 each independently represent an alkyl group which may have a substituent, an aryl group which may have a substituent, or a heteroaryl group which may have a substituent.
Brooker discloses a cyanine dye represented by formula (I) (C2/L40) and further discloses R and R1 in formula (I) are each represented by an aryl group (C3/L11).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to form the cyanine dye of modified Hirose (Sato – compound 5 in column 9) such that Ra1 and Ra2 each independently represent an aryl group, as disclosed by Brooker, because as evidenced by Brooker, the use of aryl groups in the Ra1 and Ra2 location of a cyanine dye compound is known in the art, and one skilled in the art would have a reasonable expectation that compounds similar in structure will have similar properties.
A prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. "An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties." In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979).
Regarding claim 7, modified Hirose discloses all the claim limitations as set forth above. Modified Hirose further discloses the photoelectric conversion film further includes an n-type organic semiconductor (Hirose – C10/L43), and the photoelectric conversion film has a bulk hetero structure formed in a state where the compound represented by Formula (1) and the n-type organic semiconductor are mixed to each other (Hirose – C10/L17-34).
Regarding claim 8, modified Hirose discloses all the claim limitations as set forth above. Modified Hirose further discloses the n-type organic semiconductor includes a fullerene (Hirose - C10/L38, C23/L37).
Regarding claim 9, modified Hirose discloses all the claim limitations as set forth above. Modified Hirose further discloses the photelectric conversion film further contains a p-type organic semiconductor (Hirose – C10/L42).
Regarding claim 10, modified Hirose discloses all the claim limitations as set forth above. Modified Hirose further discloses interlayers between the conductive film and the transparent conductive film, in addition to the photoelectric conversion film (Hirose – C9/L54, C11/L6; lower and upper interlayers 22 and 24, respectively).
Regarding claim 11, modified Hirose discloses all the claim limitations as set forth above.
With regard to the limitation “An imaging element comprising the photelectric conversion element,” the limitation is directed to the manner in which the apparatus is intended to be used, and it is noted that a recitation directed to the manner in which a claimed apparatus is intended to be used does not distinguish the claimed apparatus from the prior art, if the prior art has the capability to so perform. See MPEP 2111.02, 2112.01 and 2114-2115.
Regarding claim 12, modified Hirose discloses all the claim limitations as set forth above.
With regard to the limitation “An optical sensor comprising the photelectric conversion element,” the limitation is directed to the manner in which the apparatus is intended to be used, and it is noted that a recitation directed to the manner in which a claimed apparatus is intended to be used does not distinguish the claimed apparatus from the prior art, if the prior art has the capability to so perform. See MPEP 2111.02, 2112.01 and 2114-2115.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TAMIR AYAD whose telephone number is (313) 446-6651. The examiner can normally be reached Monday - Friday, 8:30am - 5pm EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey Barton can be reached at (571) 272-1307. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at (866) 217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call (800) 786-9199 (IN USA OR CANADA) or (571) 272-1000.
/TAMIR AYAD/Primary Examiner, Art Unit 1726