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 filed on 08/12/2025 with respect to Doble Patenting rejection have been fully considered but they are not persuasive. See the Doble Patenting rejection as shown below:
Applicant’s arguments filed on 08/12/2025 have been fully considered but they are no persuasive.
The Applicant argues that in regard to claims 1 and 13 that the combination of Maruyama and Zhang prior art, does not teach the limitation of “a non-diffusion part in each pixel region of the plurality of pixel regions, wherein the non-diffusion part is inside a diffusion part of separates the first diffusion part from the set of second diffusion parts.”
In response to this argument, the Examiner directs the applicant’s attention to the combination of Maruyama and Zhang prior art, which clearly teaches the recited limitation as follows:
Maruyama teaches a non-diffusion part (a portion of 43 that is located between adjacent diffusion part 42) in each pixel region (2A) of the plurality of pixel regions (2), wherein the non-diffusion part is inside a diffusion part (42) of from the set of second diffusion parts (42) (see Maruyama, Fig.3 as shown below).
In addition, Zhang teaches wherein the diffusion region includes the non-diffusion part (205) disposed at a middle part and the diffusion part (209) surrounding the non-diffusion part (205), wherein a non-diffusion part (205) in each pixel region of the plurality of pixel regions, wherein the non-diffusion part (205) is inside a diffusion part (209) of the set of second diffusion parts (209) (see Zhang, Figs.2A-2C as shown below, Fig.1, and ¶ [0047]- ¶ [0052]).
In addition, during patent examination, the pending claims must be "given their broadest reasonable interpretation consistent with the specification." In re Hyatt, 211 F.3d 1367, 1372, 54 USPQ2d 1664, 1667 (Fed. Cir. 2000). While the claims of issued patents are interpreted in light of the specification, prosecution history, prior art and other claims, this is not the mode of claim interpretation to be applied during examination. During examination, the claims must be interpreted as broadly as their terms reasonably allow. In re American Academy of Science Tech Center, F.3d, 2004 WL 1067528 (Fed. Cir. May 13, 2004) (The USPTO uses a different standard for construing claims than that used by district courts; during examination the USPTO must give claims their broadest reasonable interpretation.) This means that the words of the claim must be given their plain meaning unless applicant has provided a clear definition in the specification. In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989) >; Chef America, Inc. v. Lamb-Weston, Inc., 358 F.3d 1371, 1372, 69 USPQ2d 1857 (Fed. Cir. 2004).
The Examiner would further point out that “The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain.” In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)). Therefore, the combination of Maruyama and Zhang prior art reference does meet all the limitation in claims 1 and 13.
Claim Objections
Claim 2 is objected to because of the following informalities:
Claim 2 recites the limitation “an impurity" in line 2. There is insufficient antecedent basis for this limitation in the claim because it is unclear whether “an impurity” relates back to “an impurity” in claim 1, lines 11-12.
For purpose of compact prosecution, “an impurity” will be treated as if it were “the impurity.”
Appropriate correction is required.
Double Patenting
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.
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Claims 1, 3-4 and 7-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of U.S. Patent No. 11,769,782 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because application claims 1, 3-4, and 7-13 are anticipated by claims 1-12 of the patent, and it is not patentably distinct from claims 1-12 of the patent. See the Table as shown below:
Claims Under Examination
Patented claims
Claim 1
Anticipated by patented claim 1
Claim 3
Anticipated by patented claim 1
Claim 4
Anticipated by patented claim 10
Claim 7
Anticipated by patented claim 4
Claim 8
Anticipated by patented claim 5
Claim 9
Anticipated by patented claim 6
Claim 10
Anticipated by patented claim 7
Claim 11
Anticipated by patented claim 8
Claim 12
Anticipated by patented claim 9
Claim 13
Anticipated by patented claim 1
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(s) 1-7 and 9- 13 are rejected under 35 U.S.C. 103 as being unpatentable over Maruyama (WO 2017/150167 A1, hereinafter refer to Maruyama) in view of Zhang et al. (U.S.2019/0326458 A1, hereinafter refer to Zhang).
WO 2017/150167 A1 (hereinafter refer to Maruyama) is relied upon solely for the English language translation of WO 2017/150167 A1.
Regarding Claim 1: Maruyama discloses a solid-state imaging element (see Maruyama, Fig.3 as shown below and abstract), comprising:
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a photoelectric conversion layer (41/N-type) of a first electrical conductivity type, wherein the photoelectric conversion layer (41/N-type) includes a plurality of pixel regions (2) (see Maruyama, Fig.3 as shown above);
an electrode (53a) for each pixel region (2A) of the plurality of pixel regions (2), wherein the electrode (53) is electrically coupled to the photoelectric conversion layer (41) (see Maruyama, Fig.3 as shown above);
a semiconductor layer (43/N-types/InP) between the electrode (53a) and the photoelectric conversion layer (41/InGaAs), wherein the semiconductor layer (43/InP) has a bandgap larger than a bandgap of the photoelectric conversion layer (41/InGaAs) (note: compound semiconductor material such as InP were known to have a larger bandgap than compound semiconductor materials of InGaAs) (see Maruyama, Fig.3 as shown above);
a plurality of diffusion parts (42) in each pixel region (2A) of the plurality of pixel regions (2), wherein each diffusion part (42) of the plurality of diffusion parts (42) includes an impurity of a second electrical conductivity type (p+ type), and the impurity is diffused into the photoelectric conversion layer (41) from the semiconductor layer (43) (see Maruyama, Fig.3 as shown above),
the plurality of diffusion parts (42) includes a first diffusion part and a set of second diffusion parts (42) (see Maruyama, Fig.3 as shown above),
the first diffusion part (42) is in a middle part of each pixel region (2A) of the plurality of pixel regions (2) (see Maruyama, Fig.3 as shown above), and
the set of second diffusion parts (42) is in a vicinity of an edge of each pixel region (2A) of the plurality of pixel regions (2) (see Maruyama, Fig.3 as shown above).
a non-diffusion part (a portion of 43 that is located between adjacent diffusion part 42) in each pixel region (2A) of the plurality of pixel regions (2), wherein the non-diffusion part is inside a diffusion part (42) of from the set of second diffusion parts (42) (see Maruyama, Fig.3 as shown above).
Note: patentability of a product does not depend on its method of production.
In addition, Zhang teaches wherein the diffusion region includes the non-diffusion part (205) disposed at a middle part and the diffusion part (209) surrounding the non-diffusion part (205), wherein a non-diffusion part (205) in each pixel region of the plurality of pixel regions, wherein the non-diffusion part (205) is inside a diffusion part (209) of the set of second diffusion parts (209) (see Zhang, Figs.2A-2C as shown below, Fig.1, and ¶ [0047]- ¶ [0052]).
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Thus, Maruyama and Zhang each disclose a photodetector device having diffusion parts. A person of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Maruyama and Zhang to enable non-diffusion part of Maruyama inside a diffusion part of the set of second diffusion parts as taught by Zhang in order to improve the charge collection efficiency of a target pixel and reducing the charge crosstalk effect between the pixels.
Regarding Claim 2: Maruyama as modified teaches a solid-state imaging element as set forth in claim 1 as above. The combination of Maruyama and Zhang further teaches wherein an impurity concentration of the impurity of the second electrical conductivity type is zero in a portion of the photoelectric conversion layer (41) present in the non-diffusion part (see Maruyama, Fig.3 as shown above).
Regarding Claim 3: Maruyama as modified teaches a solid-state imaging element as set forth in claim 1 as above. The combination of Maruyama and Zhang is silent upon explicitly disclosing wherein the first diffusion part has a density lower than a density of each second diffusion part of the set of second diffusion parts.
With respect to the density of diffusion part, the combination of Maruyama and Zhang recognizes that the density of diffusion part is a result effective variable. Thus, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the combination of Maruyama’s and Zhang’s density of diffusion part to have the first diffusion part has a density lower than a density of each second diffusion part of the set of second diffusion parts. One would have chosen the density of diffusion part according to a result effective variable balancing the need to PN junctions.
Regarding Claim 4: Maruyama as modified teaches a solid-state imaging element as set forth in claim 1 as above. The combination of Maruyama and Zhang further teaches wherein each pixel region (2A) of the plurality of pixel regions (2) includes:
a first interface between the photoelectric conversion layer (41) and each diffusion part (42) of the plurality of diffusion parts (42) (see Maruyama, Fig.3 as shown above), and
a second interface between the semiconductor layer (43) and each diffusion part (42) of the plurality of diffusion parts (42) (see Maruyama, Fig.3 as shown above).
The combination of Maruyama and Zhang is silent upon explicitly disclosing wherein an area of the first interface is smaller than an area of the second interface.
With respect to the area of the interface, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the combination of Maruyama’s and Zhang’s the area of the interface to have an area of the first interface is smaller than an area of the second interface since the area of the interface can be adjusted. Further, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties (Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985)).
Regarding Claims 5 and 6: Maruyama as modified teaches a solid-state imaging element as set forth in claim 1 as above. The combination of Maruyama and Zhang is silent upon explicitly disclosing wherein a shape of each diffusion part of the plurality of diffusion parts corresponds to a circular planar shape (as claimed in claim 5).
However, the combination of Maruyama and Zhang teaches wherein a shape of each diffusion part (205/209) of the plurality of diffusion parts corresponds to a quadrangular shape (see Zhang, Figs.2A-2C as shown above).
Hence, the configuration of the claimed diffusion part was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed diffusion part was significant.
Regarding Claim 7: Maruyama as modified teaches a solid-state imaging element as set forth in claim 1 as above. The combination of Maruyama and Zhang further teaches wherein a cap layer (51) in the non-diffusion part, wherein the cap layer (51) is between the semiconductor layer (43) and the electrode (53) (see Maruyama, Fig.3 as shown above).
Regarding Claim 9: Maruyama as modified teaches a solid-state imaging element as set forth in claim 1 as above. The combination of Maruyama and Zhang further teaches wherein the photoelectric conversion layer (41) includes a group Ill-V semiconductor compound (see Maruyama, Fig.3 as shown above and pages.4-5).
Regarding Claim 10: Maruyama as modified teaches a solid-state imaging element as set forth in claim 9 as above. The combination of Maruyama and Zhang further teaches wherein the group III-V semiconductor compound includes one of indium phosphide, indium gallium arsenide, gallium arsenide antimonide, gallium antimonide, indium arsenide, indium antimonide, indium gallium arsenide phosphide, or indium gallium aluminum arsenide (see Maruyama, Fig.3 as shown above and pages.4-5).
Regarding Claim 11: Maruyama as modified teaches a solid-state imaging element as set forth in claim 1 as above. The combination of Maruyama and Zhang further teaches wherein the semiconductor layer (43) includes a group Ill-V semiconductor compound (see Maruyama, Fig.3 as shown above and page.5).
Regarding Claim 12: Maruyama as modified teaches a solid-state imaging element as set forth in claim 11 as above. The combination of Maruyama and Zhang further teaches wherein the group III-V semiconductor compound includes one of indium gallium arsenide, gallium arsenide antimonide, indium gallium arsenide phosphide, indium gallium aluminum arsenide, indium phosphide, indium aluminum arsenide, indium aluminum arsenide antimonide, or aluminum arsenide antimonide (see Maruyama, Fig.3 as shown above and page.5).
Regarding Claim 13: Maruyama discloses an imaging apparatus (see Maruyama, Fig.3 as shown above and abstract), comprising:
a solid-state imaging element, wherein the solid-state imaging element (see Maruyama, Fig.3 as shown above and abstract) includes:
a photoelectric conversion layer (41/N-type) of a first electrical conductivity type, wherein the photoelectric conversion layer (41/N-type) includes a plurality of pixel regions (2) (see Maruyama, Fig.3 as shown above);
an electrode (53) for each pixel region (2A) of the plurality of pixel regions (2), wherein the electrode (53) is electrically coupled to the photoelectric conversion layer (41) (see Maruyama, Fig.3 as shown above);
a semiconductor layer (43) between the electrode (53) and the photoelectric conversion layer (41), wherein the semiconductor layer (43/N-types/InP) has a bandgap larger than a bandgap of the photoelectric conversion layer (41/InGaAs) (note: compound semiconductor material such as InP were known to have a larger bandgap than compound semiconductor materials of InGaAs) (see Maruyama, Fig.3 as shown above);
a plurality of diffusion parts (42) in each pixel region (2A) of the plurality of pixel regions (2) (see Maruyama, Fig.3 as shown above),
wherein each diffusion part (42) of the plurality of diffusion parts (42) includes an impurity of a second electrical conductivity type, and the impurity is diffused into the photoelectric conversion layer (41) from the semiconductor layer (43) (see Maruyama, Fig.3 as shown above),
the plurality of diffusion parts (42) includes a first diffusion part (42) and a set of second diffusion parts (42), the first diffusion part (42) is in a middle part of each pixel region (2A) of the plurality of pixel regions (2) (see Maruyama, Fig.3 as shown above), and
the set of second diffusion parts (42) is in a vicinity of an edge of each pixel region (2A) of the plurality of pixel regions (2) (see Maruyama, Fig.3 as shown above); and
a non-diffusion part (a portion of 43 that is located between adjacent diffusion part 42) in each pixel region (2A) of the plurality of pixel regions (2), wherein the non-diffusion part is inside a diffusion part (42) of the set of second diffusion parts (42) (see Maruyama, Fig.3 as shown above).
Note: patentability of a product does not depend on its method of production.
In addition, Zhang teaches wherein the diffusion region includes the non-diffusion part (205) disposed at a middle part and the diffusion part (209) surrounding the non-diffusion part (205), wherein a non-diffusion part (209) in each pixel region of the plurality of pixel regions, wherein the non-diffusion part (205) is inside a diffusion part (209) of the set of second diffusion parts (209) (see Zhang, Figs.2A-2C as shown above, Fig.1, and ¶ [0047]- ¶ [0052]).
Thus, Maruyama and Zhang each disclose a photodetector device having diffusion parts. A person of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Maruyama and Zhang to enable non-diffusion part of Maruyama inside a diffusion part of the set of second diffusion parts as taught by Zhang in order to improve the charge collection efficiency of a target pixel and reducing the charge crosstalk effect between the pixels.
Claim(s) 8 is rejected under 35 U.S.C. 103 as being unpatentable over Maruyama (WO 2017/150167 A1, hereinafter refer to Maruyama) and Zhang et al. (U.S.2019/0326458 A1, hereinafter refer to Zhang) as applied to claim 7 above, and further in view of Yoshida et al. (WO 2017/098769 A1, hereinafter refer to Yoshida).
WO 2017/150167 A1 (hereinafter refer to Maruyama) is relied upon solely for the English language translation of WO 2017/150167 A1.
WO 2017/098769 A1 (hereinafter refer to Yoshida) is relied upon solely for the English language translation of WO 2017/098769 A1.
Regarding Claim 8: Maruyama as modified teaches a solid-state imaging element as applied to claim 7 above. The combination of Maruyama and Zhang is silent upon explicitly disclosing wherein the cap layer includes a group Ill-V semiconductor compound.
Before effective filing date of the claimed invention the disclosed group Ill-V semiconductor compound material were known for forming a cap layer as a passivation film for the light receiving element.
For support see Yoshida, which teaches wherein the cap layer (13) includes a group Ill-V semiconductor compound (see Yoshida, Fig.1 and pages.3-4).
The combination of Maruyama and Zhang teaches the claimed invention except for the material of cap layer. Hence, it would have been obvious to one having ordinary skill in the art at the time the invention was made to combine the teachings of Maruyama, Zhang, and Yoshida to enable the known cap layer materials as taught by Yoshida in order to form a cap layer as a passivation film for the light receiving element., since it has been held to be within the general skill of a worker in the art to select a known material on the base of its suitability, for its intended use involves only ordinary skill in the art. In re Leshin, 125 USPQ 416.
Conclusion
THIS ACTION IS MADE FINAL. 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 BITEW A DINKE whose telephone number is (571)272-0534. The examiner can normally be reached M-F 7 a.m. - 5 p.m..
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Davienne Monbleau can be reached at (571)272-1945. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BITEW A DINKE/ Primary Examiner, Art Unit 2812