CTNF 18/490,304 CTNF 91751 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Double Patenting 08-33 AIA 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. The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA/25, or PTO/AIA/26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer. 08-34 AIA Claim s 1-2, 19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11233210 B2 . Although the claims at issue are not identical, they are not patentably distinct from each other because : Regarding claim 1 , claim 1 of US 11233210 B2 teaches a light detecting element comprising: a phase difference detection ( the “phase different detection” is treated as part of the label or intended use of the pixel pairs, which does not carry patentable weight in the structure claim ) pixel pair ( the pair of pixels described in claim 1 of 11233210, column 29 lines 13-62 ) including first ( column 29 lines 51-55 of claim 1 of US 11233210 ) and second ( column 29 lines 56-59 of claim 1 of US 11233210 ) phase difference detection pixels, each phase difference detection pixel of the first and second phase difference detection pixels including a first photoelectric conversion unit ( unit formed by the upper electrode, the first lower electrode, and a portion of photoelectric conversion film disposed between the upper electrode and the first lower electrode in column 29 lines 26-27 of claim 1 of US 11233210 ) arranged at an upper side of a semiconductor substrate, wherein the first photoelectric conversion unit includes a first photoelectric conversion film ( the portion of photoelectric conversion film disposed between the upper electrode and the first lower electrode in column 29 lines 26-27 of claim 1 of US 11233210 ) sandwiched between an upper electrode ( column 29 lines 17-18 of claim 1 of US 11233210 ) and a lower electrode ( column 29 lines 19-21 of claim 1 of US 11233210 ) and the lower electrode comprises a first lower electrode and a second lower electrode surrounding the first lower electrode ( column 29 lines 60-62 of claim 1 of US 11233210 ). Regarding claim 2 , even though claim 1 of US 11233210 does not explicitly state whether the first pixel is on the left or the right of the second pixel, there are only two options for the arrangement of these two pixels. Furthermore, the claim also does not specify the orientation as relative to what view. So claim 2 also reads on claim 1 of US 11233210. Regarding claim 19 , claim 1 of US 11233210 teaches an electronic device comprising: a light detecting element ( claim 1 of 11233210, column 29 line 9 ) including a phase difference detection pixel pair ( the pair of pixels described in claim 1 of 11233210, column 29 lines 13-62 ) including first ( column 29 lines 51-55 of claim 1 of US 11233210 ) and second ( column 29 lines 56-59 of claim 1 of US 11233210 ) phase difference detection pixels, each phase difference detection pixel of the first and second phase difference detection pixels including a first photoelectric conversion unit ( unit formed by the upper electrode, the first lower electrode, and a portion of photoelectric conversion film disposed between the upper electrode and the first lower electrode in column 29 lines 26-27 of claim 1 of US 11233210 ) arranged at an upper side of a semiconductor substrate ( column 29 line 10 of claim 1 of US 11233210 ) and a second photoelectric conversion unit ( unit formed by the portion of photoelectric conversion film disposed between the upper electrode and the second lower electrode in column 29 lines 27-28 of claim 1 of US 11233210 ) arranged within the semiconductor substrate, wherein the first photoelectric conversion unit includes a first photoelectric conversion film ( portion of photoelectric conversion film disposed between the upper electrode and the first lower electrode in column 29 lines 26-27 of claim 1 of US 11233210 ) sandwiched between an upper electrode ( column 29 lines 17-18 of claim 1 of US 11233210 ) and a lower electrode ( first lower electrode in column 29 lines 19-21 of claim 1 of US 11233210 ) and the lower electrode comprises a first lower electrode and a second lower electrode surrounding the first lower electrode ( column 29 lines 60-62 of claim 1 of US 11233210 ); and an optical unit ( column 29 line 36 of claim 1 of US 11233210 ) configured to receive incident light and form an image on an imaging surface of the light detecting element . 08-34 AIA Claim s 7-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 4 and 6 of U.S. Patent No. 11233210 B2, respectively . Although the claims at issue are not identical, they are not patentably distinct from each other because : Claim 7 reads on claim 4 of US 11233210. Claims 8 and 9 read on claim 6 of US 11233210 . Allowable Subject Matter Claims 1-2, 7-9, and 19 would be allowable if rewritten or amended to overcome the double patenting rejection(s), set forth in this Office action. 12-151-08 AIA 07-43 12-51-08 Claim s 3-6, 10-18 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. 13-03-01 AIA The following is a statement of reasons for the indication of allowable subject matter: Regarding claim 1 , the prior art does not disclose or fairly suggest a light detecting element comprising: “a phase difference detection pixel pair including first and second phase difference detection pixels, each phase difference detection pixel of the first and second phase difference detection pixels including a first photoelectric conversion unit arranged at an upper side of a semiconductor substrate, wherein the first photoelectric conversion unit includes a first photoelectric conversion film sandwiched between an upper electrode and a lower electrode and the lower electrode comprises a first lower electrode and a second lower electrode surrounding the first lower electrode”. Regarding claim 19 , the prior art does not disclose or fairly suggest an electronic device comprising: “a light detecting element including a phase difference detection pixel pair including first and second phase difference detection pixels, each phase difference detection pixel of the first and second phase difference detection pixels including a first photoelectric conversion unit arranged at an upper side of a semiconductor substrate and a second photoelectric conversion unit arranged within the semiconductor substrate, wherein the first photoelectric conversion unit includes a first photoelectric conversion film sandwiched between an upper electrode and a lower electrode and the lower electrode comprises a first lower electrode and a second lower electrode surrounding the first lower electrode” along with other limitations of the claim. The closest prior art are Yamaguchi (US 2011/0019042 A1), Maehara (US 2006/0196533 A1), Kawai (US 2011/0109776 A1), Takase et al. (US 2015/0195466 A1), and Takamiya et al. (US 2011/0273602 A1). Yamaguchi teaches an imaging element comprising of an organic imaging element stacked above two photodiodes ( see Figs. 1 & 4 of Yamaguchi ). But Yamaguchi does not disclose that the lower electrode ( 38a in Fig. 1 of Yamaguchi ) is divided into two portions. Maehara teaches an imaging element comprising of an upper electrode ( transparent counter electrode in Fig. 1 of Maehara ), an organic photoelectric conversion layer ( 8 - 9 ), and a lower electrode ( 14 ) which is divided into a first portion and a second portion. Each of the first and second portions is connected to a charge storage region ( 25 ). However, Maehara does not teach that either the first or second portion is connected to the ground, or in other words, a ground connection coupled to one of the first and second portions of the lower electrode. Kawai teaches an imaging element comprising of an upper electrode ( 34 in Fig. 9 of Kawai ), an organic photoelectric conversion layer ( 32 ), and a lower electrode ( 31a/b ) which is divided into a first portion ( 31a ) and a second portion ( 31b ). Each of the first and second portions is connected to a charge storage region ( 33a/b ). These are used for phase different focus detection technique. Takase teaches an imaging element comprising of an upper electrode ( 105 in Fig. 3A / B & 7A / B of Takase ), an organic photoelectric conversion layer ( 104 ), and a lower electrode which is divided into a first portion ( 103A/B ) and a second portion ( 103C in Fig. 3A and 304D in Fig. 7A ). Takase teaches the first portion of the lower electrode is connected to a floating diffusion region ( 25 ) and the second portion of the lower electrode is connected to the ground by a wiring layer ( 102 ). Takamiya teaches an imaging device ( 107 in Figs. 1, 5-6B of Takamiya ). The imaging device comprises an array of imaging pixels ( see Fig. 5 of Takamiya ) that includes pairs of focus detection pixels ( 1-3 , 1-3 in Figs. 5-6B ) utilizing phase difference technique ( see description on bottom half of [0042] of Takamiya ). The focus detection pixels have similar structure as the normal imaging pixels ( see Figs. 6A-B ) except the coverage of the lower electrode ( 51 in Fig. 5-6B ). In plan view, the lower electrodes of each pair ( for example 51-1 1 / 51-2 1 and 51-3 1 / 51-4 1 ) are arranged so that their centers of gravity of the light are displaced from one another ( see Fig. 5 ). As a consequence, one of the lower electrodes ( 51-2 1 ) of one pixel of the pair is larger than each of the two lower electrodes ( 51-3 1 / 51-4 1 ) of the other pixel in the pair in plan view. However, none of the above reference teaches that the lower electrode comprises a first lower electrode and a second lower electrode surrounding the first lower electrode . Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to TUAN A HOANG whose telephone number is (571)270-0406. The examiner can normally be reached Monday-Friday 8-9am, 10am-6pm 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, Jessica Manno can be reached at (571) 272-2339. 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. 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If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /Tuan A Hoang/Primary Examiner, Art Unit 2898 Application/Control Number: 18/490,304 Page 2 Art Unit: 2898 Application/Control Number: 18/490,304 Page 3 Art Unit: 2898 Application/Control Number: 18/490,304 Page 4 Art Unit: 2898 Application/Control Number: 18/490,304 Page 5 Art Unit: 2898 Application/Control Number: 18/490,304 Page 6 Art Unit: 2898 Application/Control Number: 18/490,304 Page 7 Art Unit: 2898 Application/Control Number: 18/490,304 Page 8 Art Unit: 2898 Application/Control Number: 18/490,304 Page 9 Art Unit: 2898 Application/Control Number: 18/490,304 Page 10 Art Unit: 2898
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