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 .
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 and 4-12 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 and 4-6, 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 (3).
Sato discloses the cyanine dye represented by the formula below (compound 5
in column 9).
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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).
It is further noted that while modified Hirose does not explicitly disclose a number of ring member atoms of the ring represented by B1 in Formula (Q1) is 5 to 6, 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 (3) 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 and 4-12 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 and 4-6, 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).
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186
395
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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).
It is further noted that while modified Hirose does not explicitly disclose a number of ring member atoms of the ring represented by B1 in Formula (Q1) is 5 to 6, 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 (3) 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.
Allowable Subject Matter
It is noted that the limitations of claim 4 and claim 6, in conjunction with a limitation requiring a number of ring member atoms of the ring represented by B2 in Formula (Q3) is 5 to 6, and in conjunction with the limitations of claim 1, from which claim 4 and claim 6 both depend, respectively, would result in an allowable claim because the limitations of the resulting claim would be commensurate with the results shown in Table 1 which correspond with Examples 1 through 8, Example 17, and Example 18.
Response to Arguments
Applicant's arguments filed 05/22/2026 have been fully considered but they are not persuasive. Specifically, Applicant argues that as stated in paragraph [0158] of the as-filed specification, when the number of ring member atoms of the ring represented by B1 is 5 to 6, the effects of the present application are further improved. Applicant further argues this technical effect is corroborated by the experimental data in Table 1 which demonstrates that nearly all embodiments falling within the claimed specific range exhibit superior performance.
In response to Applicant’s arguments, Examples 1 through 8, Example 17, and Example 18 in Table 1 of the as-filed specification present data resulting from the use of the Formula (4) compound to produce the photoelectric film, Formula (Q3), and the number of ring member atoms being 5 or 6. The limitations of claim 1 are not commensurate in scope with the parameters/conditions/materials set forth in Table 1 of the as-filed specification. As set forth above, the limitations of claim 4 and claim 6, in conjunction with a limitation requiring a number of ring member atoms of the ring represented by B2 in Formula (Q3) is 5 to 6, and in conjunction with the limitations of claim 1, from which claim 4 and claim 6 both depend, respectively, would result in an allowable claim because the limitations of the resulting claim would be commensurate with the results shown in Table 1 which correspond with Examples 1 through 8, Example 17, and Example 18.
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 TAMIR AYAD whose telephone number is (313) 446-6651. The examiner can normally be reached Monday - Friday, 8:30am - 5pm EST.
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/TAMIR AYAD/Primary Examiner, Art Unit 1726
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