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 .
Drawings
Figure 1 should be designated by a legend such as --Prior Art-- because only that which is old is illustrated. See MPEP § 608.02(g). Corrected drawings in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. The replacement sheet(s) should be labeled “Replacement Sheet” in the page header (as per 37 CFR 1.84(c)) so as not to obstruct any portion of the drawing figures. If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: 500 in Figure 5. See the Specification objections section for a recommended change to include reference number 500. Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The disclosure is objected to because of the following informalities:
Page 1, paragraph 1, line 2: Change “converting” to “converts”.
Page 11, paragraph 27, line 1: Add “500” after “ultraviolet light”.
Page 11, paragraph 27, line 2: Change “501and” to “501 and”.
Page 15, paragraph 40, line 5: Should the reference to “infrared conversion layer” be instead to “infrared reflection layer”? Otherwise ncv and nIR-r are the same. See paragraph 40, lines 3-5.
Appropriate correction is required.
Claim Objections
Claims 2-10 are objected to because of the following informalities:
Claim 2, line 2: Please provide antecedent basis for “the surface of the infrared conversion layer”.
Claims 3-5 are objected to for depending from objected-to base claim 2.
Claim 3, lines 2-3: Change “multiple layers” to “a multilayer”.
Claim 4, line 2: Please provide antecedent basis for “the top layer”.
Claim 5, line 4: Change “the ultraviolet light sensing-enhanced photodiode” to “the silicon photodiode”, which the infrared light is incident upon.
Claim 6, lines 1-2: Change “wherein the material of the infrared conversion layer” to “wherein the infrared conversion layer comprises a silicon material, the silicon material”.
Claim 6, line 4: Please provide antecedent basis for “the energy gap”.
Claim 6, lines 4-5: Please provide antecedent basis for “the equivalent energy level”.
Claim 7, lines 1-2: Change “wherein the material of the infrared conversion layer” to “wherein the infrared conversion layer comprises a silicon material, the silicon material”.
Claim 7, line 4: Please provide antecedent basis for “the energy gap”.
Claim 7, lines 4-5: Please provide antecedent basis for “the equivalent energy level”.
Claim 8, line 3: Review the term “the electronic conductive band energy level” and either provide antecedent basis or make the term consistent with claim 6, lines 4-5.
Claim 8, line 4: Please provide antecedent basis for “the band”.
Claim 9, line 3: Please provide antecedent basis for “the energy gap”.
Claim 9, line 4: Please provide antecedent basis for “the band”.
Claim 9, line 5: Please provide antecedent basis for “the proportion”.
Claim 10, lines 4-5: Please provide antecedent basis for “the infrared light total reflection stacked layer”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-5 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for embodiments in which the infrared conversion layer absorbs a second portion of the infrared light that the infrared conversion layer converts from ultraviolent light, does not reasonably provide enablement for all embodiment which this phenomenon occurs. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make the invention commensurate in scope with these claims.
Regarding claim 1: This claim requires the following:
an infrared conversion layer formed on a surface of the silicon photodiode for receiving an ultraviolet light, wherein the ultraviolet light irradiates the infrared conversion layer, the infrared conversion layer absorbs and converts the ultraviolet light to radiate an infrared light, and a first portion of the infrared light is propagated to the silicon photodiode and converted to a photoelectric current by the silicon photodiode, and a second portion of the infrared light is absorbed by the infrared conversion layer.
(emphasis added).
The conversion of one wavelength to another wavelength is known in the art. To the extent that prior art wavelength conversion layers do not absorb a second portion of the converted light, the disclosure does not provide direction for identifying all UV-to-IR converting materials that are capable of absorbing a portion of the resulting IR light. For these reasons, claim 1 is rejected for lack of enablement.
There are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is "undue." These factors include, but are not limited to:
(A) The breadth of the claims;
(B) The nature of the invention;
(C) The state of the prior art;
(D) The level of one of ordinary skill;
(E) The level of predictability in the art;
(F) The amount of direction provided by the inventor;
(G) The existence of working examples; and
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988).
(A) The breadth of the claims: As discussed above, the breadth of the claims encompasses all UV-to-IR wavelength converting materials that are capable of absorbing a portion of the resulting IR light.
(B) The nature of the invention: The invention is a semiconductor.
(C) The state of the prior art: The prior art discloses conversion of ultraviolet light to infrared light for use in a photodiode sensing device. See Zhu, Chinese Pat. Pub. No. CN215869409U, paragraphs 46 (wavelength conversion layer converts ultraviolet light to either visible or infrared light); 45 (silicon photodiode).
(D) The level of one of ordinary skill: One having ordinary skill in the art would have a bachelor’s degree in electrical engineering or materials science and 5 years of experience in the semiconductor industry.
(E) The level of predictability in the art: The level of predictability is high if all wavelength materials absorb the emitted wavelength, but low if the wavelength materials do not absorb the emitting wavelength.
(F) The amount of direction provided by the inventor: The inventor provides some examples relating to silicon-germanium as a heterogeneous infrared conversion layer, silicon-germanium quantum dots as the infrared conversion layer, or the use of homogeneous materials through P-type or N-type semiconductor impurities as the infrared conversion layer.
(G) The existence of working examples: The disclosure has three working examples, as discussed above.
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure: Given the information provided by the inventor, the state of the prior art, and the scope of the claims, the quantity of experimentation is undue. For these reasons, claim 1 is rejected for lack of enablement.
Claims 2-5 are rejected for depending from claim 1. (Claims 6-10 include references to the embodiments, and are therefore enabled.)
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 2-10 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.
Regarding claim 2, which depends from claim 1: This claim is rejected on two bases. First, claim 2, line 2, refers to “the surface of the infrared conversion layer”, but no antecedent basis has been provided for this item. Because antecedent basis has not been provided, claim 2 is rejected as indefinite. Second, claim 2, lines 3-8 require:
…when the ultraviolet light irradiates the ultraviolet light sensing-enhanced photodiode, the ultraviolet light passes through and is absorbed by the infrared conversion layer to be converted into the infrared light, the infrared conversion layer is used to reflect a third portion of the infrared light that is originally escaped from the infrared reflection layer so that the third portion of the infrared light is reflected into the silicon photodiode and is converted into the photoelectric current by the silicon photodiode.
(emphasis added). From the disclosure, the third portion of the infrared light is reflected by the presence of the infrared reflection layer, not the infrared conversion layer, and the third portion of the infrared light is originally escaped from the infrared conversion layer (see applicants’ Figure 5). Because the current language does not make sense, claim 2 is rejected as indefinite.
Claims 3-5 are rejected for depending from rejected base claim 2.
Regarding claim 3, which depends from claim 2: Claim 3, lines 2-4 refer to “multiple layers of high refractive index material dielectric films interlaced with low refractive index material dielectric films.” This language can be interpreted as more than one layer, each layer of the more than one layer having high refractive index material dielectric films interlaced with low refractive index material dielectric films. The language can also be interpreted as one multilayer with high refractive index material dielectric films interlaced with low refractive index material dielectric films. Because the language is confusing on this point, claim 3 is rejected as indefinite.
Regarding claim 4, which depends from claim 2: This claim refers to “the top layer of the ultraviolet light sensing-enhance photodiode” in lines 2-3. However, the top layer has not been defined. Because the top layer has not been defined, claim 4 is rejected as indefinite.
Regarding claim 5, which depends from claim 2: This claim refers to “the infrared light incident to the ultraviolet light sensing-enhanced photodiode” in line 4. However, the infrared light is incident to the silicon photodiode, as defined in claim 1, lines 6-7, not the device, in general—that is, the ultraviolet light sensing-enhanced photodiode. Because the location defined that this infrared light is incident on is confusing, claim 5 is rejected as indefinite.
Regarding claim 6, which depends from claim 1: This claim is rejected on three bases. First, “the silicon material” of lines 1-2 does not have antecedent basis. Because the silicon material does not have antecedent basis, claim 6 is rejected as indefinite.
Second, “the energy gap” of line 4 does not have antecedent basis. Because the energy gap does not have antecedent basis, claim 6 is rejected as indefinite.
Lastly, “the equivalent energy level” of lines 4-5 does not have antecedent basis. Because the equivalent energy level does not have antecedent basis, claim 6 is rejected as indefinite.
Claim 8 is rejected for depending from rejected base claim 6.
Regarding claim 7, which depends from claim 1: As with claim 6, this claim is rejected on three bases. First, “the silicon material” of lines 1-2 does not have antecedent basis. Because the silicon material does not have antecedent basis, claim 7 is rejected as indefinite.
Second, “the energy gap” of line 4 does not have antecedent basis. Because the energy gap does not have antecedent basis, claim 7 is rejected as indefinite.
Lastly, “the equivalent energy level” of lines 4-5 does not have antecedent basis. Because the equivalent energy level does not have antecedent basis, claim 7 is rejected as indefinite.
Regarding claim 8, which depends from claim 6: This claim is rejected on three bases. First, line 3 refers to “the electronic conduction ban energy level”. As an initial point, this term does not have antecedent basis. Therefore, claim 8 is rejected as indefinite. Next, to the extent that the term refers to the equivalent energy level of claim 6, lines 4-5, the term is confusing because the term is not the same as the term in claim 6. Thus, claim 8 is rejected as indefinite.
Lastly, line 4 refers to “the band”. However, antecedent basis has not been provided for “the band”. Because antecedent basis is missing, claim 8 is rejected as indefinite.
Regarding claim 9, which depends from claim 1: This claim is rejected on three bases. First, line 3 refers to “the energy gap”. However, the energy gap does not have antecedent basis. Because antecedent basis is missing, claim 9 is rejected as indefinite.
Second, line 4 refers to “the band”. However, antecedent basis has not been provided for “the band”. Because antecedent basis is missing, claim 9 is rejected as indefinite.
Lastly, line 5 refers to “the proportion”. However, antecedent basis has not been provided for “the proportion”. Because antecedent basis is missing, claim 9 is rejected as indefinite.
Regarding claim 10, which depends from claim 1: This claim is rejected on two bases. First, lines 4-5 refer to “the infrared light total reflection stacked layer”. However, antecedent basis is missing for the infrared light total reflection stacked layer in claim 10 and its parent claim, claim 1. (Claim 3 refers to “an infrared light total reflection stacked layer”.) Because antecedent basis is missing in claims 1 and 10, claim 10 is rejected as indefinite.
Second, the claim requires the following:
wherein the infrared conversion layer is a structure including silicon germanium (SixGe1-x) quantum dots and a two-dimensional periodic array pattern is defined on a dielectric material or a semiconductor material through photolithography etching technology in the infrared light total reflection stacked layer.
(emphasis added).
This language can be interpreted as:
wherein the infrared conversion layer is a structure including silicon germanium (SixGe1-x) quantum dots and (1) a two-dimensional periodic array pattern is defined on a dielectric material or (2) a semiconductor material through photolithography etching technology in the infrared light total reflection stacked layer; or
wherein the infrared conversion layer is (1) a structure including silicon germanium (SixGe1-x) quantum dots and a two-dimensional periodic array pattern is defined on a dielectric material or (2) a semiconductor material through photolithography etching technology in the infrared light total reflection stacked layer.
Option (a) includes the quantum dots in both parts (1) and (2), while option (b) includes the quantum dots in only part (1). Because the language is not clear, claim 10 is rejected as indefinite.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim 1 is rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Zhu, Chinese Pat. Pub. No. CN215869409U (published Feb. 18, 2022).
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Regarding claim 1: Zhu Figure 1 or Figure 2 discloses an ultraviolet light sensing-enhanced photodiode (100 (Figure 1), 100a (Figure 2)), including: a silicon photodiode (120); and an infrared conversion layer (140 (Figure 1); 142 (Figure 2)) formed on a surface of the silicon photodiode (120) for receiving an ultraviolet light, wherein the ultraviolet light irradiates the infrared conversion layer (140/142), the infrared conversion layer (140/142) absorbs and converts the ultraviolet light to radiate an infrared light, and a first portion of the infrared light is propagated to the silicon photodiode (120) and converted to a photoelectric current by the silicon photodiode (120), and a second portion of the infrared light is absorbed by the infrared conversion layer (140/142) (inherently). Zhu specification ¶¶ 44-51.
Allowable Subject Matter
Claims 2-10 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 and if the Section 112(a) rejections, the Section 112(b) rejections, and the claim objections were addressed. Due to the state of the claim language, the Office is not prepared to identify specific allowable claim language.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VICTORIA KATHLEEN HALL whose telephone number is (571)270-7567. The examiner can normally be reached Monday-Friday, 8 a.m.-5 p.m.
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/Victoria K. Hall/Primary Examiner, Art Unit 2897