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 .
Election/Restrictions
Applicant's election with traverse of Species II in the reply filed on 25 June 2026 is acknowledged. The traversal is on the ground(s) that independent claim 1 recites, among other features, an encapsulating structure disposed over the substrate and encapsulating the light-emitting element and the light- receiving element, and a shielding structure disposed over the encapsulating structure and comprising openings located over the light-emitting element and the light-receiving element. Claims 2-20 depend from claim 1 and likewise read on the elected Species II.
This is not found persuasive because the identified Species are patentably distinct because they have mutually exclusive characteristics (as shown in the embodiments’ figures and explained by the text associated with the embodiments’ figures). In addition, these Species are not obvious variants of each other based on the current record.
The requirement is still deemed proper and is therefore made FINAL.
However, Applicant’s election with traverse of Species II in the reply filed on 25 June 2026 was nonresponsive because the election did not include a Group within Species II. During a telephone conversation with Applicant’s representative, Aynsley Stier, Registration Number: 84,124 on 28 July 2026 an election was made to prosecute the invention of Species II, Group II-A, Figs. 8A, 8B and 9, claims 1-15, 19 and 20. Affirmation of this election must be made by applicant in replying to this Office action. Claims 16-18 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Objections
Claim 19 is objected to because of the following informalities:
19. The optical sensor device of claim 1, wherein the encapsulating structure comprises a material transparent to a near-infrared (NIR) short-wavelength (SWIR) .
Appropriate correction is required.
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.
Claim(s) 1, 2, 11-13, 15 and 19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Saxod et al. US 2020/0303565.
PNG
media_image1.png
253
480
media_image1.png
Greyscale
Saxod et al. US 2020/0303565
Regarding claim 1, Saxod et al. in Fig. 1 and [0042]-[0064] teach an optical sensor device 1 [0042], comprising:
a substrate 2 [0042];
a light-receiving element 10 (13, 14) [0046] comprising a first absorption region 13, and disposed on and electrically connected to the substrate 2;
a first light-emitting element 22 (24) [0051] disposed on and electrically connected to the substrate 2;
an encapsulating structure 4 [0042] disposed over the substrate 2, and encapsulating the first light-emitting element 22 and the light-receiving element 10; and
a shielding structure 31 disposed over the encapsulating structure, comprising a first opening located over the first light-emitting element 22, and a second opening located over the light-receiving element 10, wherein the first absorption region 13 comprises a non-shielded portion 13 exposed to an optical signal under the second opening of the shielding structure 31 and a shielded portion 14 shielded from the optical signal by the shielding structure 31.
Regarding claim 2, Saxod et al. in Fig. 1 and [0042]-[0064] teach the optical sensor device of claim 1, wherein the shielding structure 31 directly contacts the encapsulating structure 4.
Regarding claim 11, Saxod et al. in Fig. 1 and [0042]-[0064] teach the optical sensor device of claim 1, wherein the shielding structure 31 comprises a covering portion and a separation portion extending from the covering portion (annotated above) toward the substrate 2.
Regarding claim 12, Saxod et al. in Fig. 1 and [0042]-[0064] teach the optical sensor device of claim 11, wherein the separation portion (annotated above) is located between the first light-emitting element 22 (24) and the light-receiving element 10 (13, 14).
Regarding claim 13, Saxod et al. in Fig. 1 and [0042]-[0064] teach the optical sensor device of claim 11, wherein the separation portion (annotated above) is distant from the substrate 2 and the encapsulating structure 4 is filled between the separation portion (annotated above) and the substrate 2.
Regarding claim 15, Saxod et al. in Fig. 1 and [0042]-[0064] teach the optical sensor device of claim 1, wherein a topmost surface of the encapsulating structure 4 is coplanar with that of the shielding structure 31.
Regarding claim 19, Saxod et al. in Fig. 1 and [0042]-[0064] teach the optical sensor device of claim 1, wherein the encapsulating structure 4 [0059] e.g. molded material including 30, made of epoxy resin, same material purported in disclosure [00105]) comprises a material transparent to a NIR light or a SWIR light.
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.
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Saxod et al. US 2020/0303565.
Regarding claim 14, Saxod et al. in Fig. 1 and [0042]-[0064] teach the optical sensor device of claim 11 but do not expressly disclose wherein the separation portion has a stepped shape which includes a narrower part and a wider part, and wherein the narrower part is closer to the substrate than the wider part.
However, the Applicant has not presented persuasive evidence that the claimed “wherein the separation portion has a stepped shape which includes a narrower part and a wider part, and wherein the narrower part is closer to the substrate than the wider part” is for a particular purpose that is critical to the overall claimed invention (i.e. the invention would not work without a separation portion has a stepped shape which includes a narrower part and a wider part, and the narrower part is closer to the substrate than the wider part).
Also, the Applicant has not shown that “wherein the separation portion has a stepped shape which includes a narrower part and a wider part, and wherein the narrower part is closer to the substrate than the wider part” produces a result that was new or unexpected enough to patentably distinguish the claimed invention over the cited prior art. Instead, paragraph [00123] “In another embodiment, the separation portion 852 has a shape other than the stepped shape. For example, as shown in the optical sensor device 1002 in FIG. 10B, the separation portion 852 of the shielding structure 850 has a single-step (e.g., rectangular or sloped shape) and contacts the substrate 860 in the cross-sectional view.”. Therefore, no rationale is given that the invention will not function without a separation portion has a stepped shape which includes a narrower part and a wider part, and the narrower part is closer to the substrate than the wider part. Thus, the claimed wherein the separation portion has a stepped shape which includes a narrower part and a wider part, and wherein the narrower part is closer to the substrate than the wider part is not critical to the invention.
Examiner would like to note that MPEP §2144.04.IV(B) guideline, where change of shape is a Legal Precedent as Source of Supporting Rationale. See In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container 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 container was significant.).
In view of the above, as there is no persuasive evidence that the particular configuration of “wherein the separation portion has a stepped shape which includes a narrower part and a wider part, and wherein the narrower part is closer to the substrate than the wider part” is significant; the claimed limitation of “wherein the separation portion has a stepped shape which includes a narrower part and a wider part, and wherein the narrower part is closer to the substrate than the wider part” is a matter of choice which a person of ordinary skill in the art would have found obvious as per MPEP §2144.04.IV(B) guideline. Therefore, the claimed limitation of “wherein the separation portion has a stepped shape which includes a narrower part and a wider part, and wherein the narrower part is closer to the substrate than the wider part” is not patentable over Saxod et al.
Claim(s) 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Saxod et al. as applied to claim 1 above, and further in view of Okushiba US .
Regarding claim 20, Saxod et al. in Fig. 1 and [0042]-[0064] teach the optical sensor device of claim 1, but do not expressly disclose wherein the light-receiving element comprises a photoelectronic device having a detecting region comprising germanium.
Okushiba in Fig. 2a and [0035] teaches a light emitting element 3a upon application between the light emitting-side first electrode 31a made of an alloy of gold, antimony, gold and germanium or Ni-based alloy, and the light emitting element-side second electrode 31b, the active layer 30d gives light. Therefore, the light emitting element serves as a light source.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teachings of Okushiba in the device of Saxod et al. for the purpose of providing light in the sensor device.
Allowable Subject Matter
Claims 3, 4-10 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.
The following is a statement of reasons for the indication of allowable subject matter: the prior art neither anticipates nor renders obvious, in the context of the claims,
Regarding claim 3, further comprising a second light-emitting element disposed on and electrically connected to the substrate, wherein the first light-emitting element and the second light-emitting element are exposed under the first opening of the shielding structure.
Regarding claim 4, wherein the shielding structure comprises a third opening separated from the second opening and located over the light-receiving element.
Claims 5-10 directly or indirectly depend from claim 4 and are therefore allowable.
Although various prior art references disclose several individual limitations in the claims, these references, and their combinations, neither anticipate nor render obvious the above identified limitation(s), as structured and interrelated in the context of the claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SONYA D MCCALL-SHEPARD whose telephone number is (571)272-9801. The examiner can normally be reached M-F: 8:30 AM-5:00 PM.
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, Julio J. Maldonado can be reached at (571)272-1864. 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. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Sonya McCall-Shepard/ Primary Examiner, Art Unit 2898
Prosecution Insights