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 .
This Office Action is in response to amendments and remarks filed April 6, 2026. Claim 41-49 and 51-61 are currently pending.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on May 19, 2026 has been entered.
Response to Arguments
Applicant’s arguments, see arguments and amendments, filed April 6, 2026, with respect to the rejection(s) of claim(s) 1, 52 and 59 under 35 USC 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a ground(s) of rejection in view of Non-Statutory Double Patent remans in view of US 11348965 and US 12027565.
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.
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.
Claims 41-49 and 51-61 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11348965 in view of Tashiro et al. (US 20170162616).
In regards to claims 41, 52 and 59, 11348965 teaches an imaging device (claims 1, 15 and 16), comprising: a plurality of pixels, each pixel of the plurality of pixels including a first photoelectric conversion unit disposed above and at a light-incident side of a substrate (claim 1, lines 1-7), the first photoelectric conversion unit including: a first electrode, a photoelectric conversion layer disposed above the first electrode; a second electrode disposed above the photoelectric conversion layer; a third electrode disposed at a same layer as the first electrode; an insulating material disposed between the third electrode and the photoelectric conversion layer, wherein a portion of the insulating material is disposed between the first electrode and the third electrode (claim 1, lines 9 38, claim 7); and a transfer control electrode disposed between the first electrode and the third electrode, wherein during a charge storage operation, a potential applied to the transfer control electrode is less than a potential applied to the third electrode (claim 1, lines 9-38 and claim 4, the fourth electrode is the transfer electrode) and wherein the third electrode is configured to be applied with at least two different voltages, and wherein the third electrode is configured to be applied with a first voltage during a charge storage period and is configured to be applied with a second voltage lower than the first voltage during a charge transfer period (claims 2 and 3), but does not specifically teach wherein the transfer control electrode is connected to a driving circuit. Tashiro teaches a transfer control electrode (111) disposed between a first electrode (150) and a third electrode (112), wherein the transfer control electrode (111) is connected to a driving circuit (fig. 2 and 12, paragraph 77 and 177-179). It would have been obvious to one of ordinary skill in the art at the time the invention was filed to include a driving circuit connected to various electrodes in order to control the potential of the electrodes at different times to move charges in a desired manner providing for more efficient charge transfer and reduction in noise for improved image formation. The method of claim 59 is also taught by the above combination of 11348965 in claims 2-4 and 20 and Tashiro.
In regards to claims 42-49, 51, 53-58, 60 and 61, the limitations are either taught but dependent claims 2-14 and 17-20 or are obvious additions to claim 41, 52 and 59.
Claims 41-49 and 51-61 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12027565 in view of Tashiro et al. (US 20170162616).
In regards to claims 41, 52 and 59, 12027565 teaches as electronic device including an imaging device (claims 1, 8 and 15), the imaging device comprising: a plurality of pixels, each pixel of the plurality of pixels including a first photoelectric conversion unit disposed above and at a light-incident side of a substrate (claim 1, lines 2-6), the first photoelectric conversion unit including: a first electrode; a photoelectric conversion layer disposed above the first electrode; a second electrode disposed above the photoelectric conversion layer; a third electrode disposed at a same layer as the first electrode; an insulating material disposed between the third electrode and the photoelectric conversion layer, wherein a portion of the insulating material is disposed between the first electrode and the third electrode; and a transfer control electrode disposed between the first electrode and the third electrode (claim 1, lines 7-32), and wherein the third electrode is configured to be applied with at least two different voltages, and wherein the third electrode is configured to be applied with a first voltage during a charge storage period and is configured to be applied with a second voltage lower than the first voltage during a charge transfer period (claim 1, lines 20-33), but does not specifically teach wherein the transfer control electrode is connected to a driving circuit. Tashiro teaches a transfer control electrode (111) disposed between a first electrode (150) and a third electrode (112), wherein the transfer control electrode (111) is connected to a driving circuit (fig. 2 and 12, paragraph 77 and 177-179). It would have been obvious to one of ordinary skill in the art at the time the invention was filed to include a driving circuit connected to various electrodes in order to control the potential of the electrodes at different times to move charges in a desired manner providing for more efficient charge transfer and reduction in noise for improved image formation. The method of claim 59 is also taught by the above combination of 12027565 in claim 15 and Tashiro.
In regards to claims 42-50, 51, 53-58, 60 and 61, the limitations are either taught but dependent claims 2-7, 9-14 and 16-20 or are obvious additions to claim 41, 52 and 59.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNIFER D BENNETT whose telephone number is (571)270-3419. The examiner can normally be reached 9AM-6PM EST M-F.
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/JENNIFER D BENNETT/Examiner, Art Unit 2878
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