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.
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.
Claim(s) 1-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Min et al., US 2019/0378716.
Min et al. shows the invention substantially as claimed including a thin film 30 (see process claim S1-2) formed on a substrate, and comprising a platinum group metal chalcogenide, for example, RuS2 and RuSe2, and a thickness of from 1-10,000 nm (see paragraph 0014, 0043-0050, 0056 and fig. 2B).
Min et al. does not expressly disclose the thickness of the film being from 0.5-500 nanometers. However, a prima facie case of obviousness exists because the range of Min et al. is substantially within the claimed range and therefore a prima facie case of obviousness is established. Moreover, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the primary reference of Min et al. so as to form the film in the claimed range depending upon the desired application of the layer. Furthermore, no criticality or unexpected results have been shown with regard to the narrower range.
Regarding dependent claim 2, note that Min et al. does not expressly disclose the thickness of the film being from 0.5-200 nanometers. However, a prima facie case of obviousness exists because the range of Min et al. is substantially within the claimed range and therefore a prima facie case of obviousness is established. Moreover, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the primary reference of Min et al. so as to form the film in the claimed range depending upon the desired application of the layer. Furthermore, no criticality or unexpected results have been shown with regard to the narrower range.
With respect to dependent claim 3, note that in Min et al. the layer 130 has an insular (island) shape.
As to dependent claims 4 and 6-7, note that the substrate can be a semiconductor (see paragraph 0040) and the thin film 30 is formed on the substrate.
Regarding dependent claim 5, note that the device is a light receiving element (see abstract regarding optical sensor).
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-7 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 RICHARD A BOOTH whose telephone number is (571)272-1668. The examiner can normally be reached Monday to Friday, 8:30 to 5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christine Kim can be reached at 571-272-8458. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RICHARD A BOOTH/ Primary Examiner, Art Unit 2812
April 21, 2026
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