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 .
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 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.
Examiner’s Comment – Interview Summary
The Examiner contacted Attorney George Howarah on February 4, 2026 in order to propose an Examiner’s Amendment to claims 1 and 8, as follows:
1. (Currently Amended) A pixel array, comprising:
a pixel sensor;
a polydimethylsiloxane (PDMS) layer above the pixel sensor; and
a planarization layer is formed either above the PDMS layer or below the PDMS layer.
8. (Currently Amended) A pixel array, comprising:
a pixel sensor;
a plurality of planarization layers above the pixel sensor; and
a polydimethylsiloxane (PDMS) layer above the pixel sensor,
wherein the PDMS layer is formed either
directly on the pixel sensor and below the plurality of planarization layers, or
between the plurality of planarization layers.
However, the Attorney stated that they would prefer that the Examiner mail an new Office Action.
Response to Arguments
Applicant's arguments filed December 29, 2025 have been fully considered but they are not persuasive.
Applicant argues, that “[i]n response to the Examiner's indication of allowable subject matter in claims 2, 4, 9, and 11[[, ,]] without prejudice or disclaimer, Applicant amended independent claim 1 to include the allowable subject matter of claims 2 and 4 in the alternative, and has amended independent claim 8 to include the subject matter of claims 9 and 11 in the alternative. Since the Examiner indicated that claims 2, 4, 9, and 11 "would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims," Applicant submits that amended independent claims 1 and 8, and the claims that depend thereon, are in immediate condition for allowance.”
With respect to the amendment to claim 1, the Examiner notes that the newly added limitation was already recited in the claim, and is now repeated in claim 1. Additionally, to clarify the interpretation of the limitations of claim 1, relied upon in the previous grounds of rejection, the Examiner notes that the claim limitation of “a planarization layer above or below the PDMS layer[, wherein the planarization layer is above or below the PDMS layer]”, is simply interpreted as the pixel array having both a planarization layer and a PDMS layer, since it includes the planarization layer being formed anywhere other than being co-planar with the PDMS layer. And as such, the rejections of claim 1 in view of 1) U.S. Patent No. 11,495,635 and Tay (US Pub. 2011/0089514); 2) U.S. Patent No. 11,996,435 and Tay (US Pub. 2011/0089514); and 3) Nam et al. (US Pub. 2019/0067347) and Tay (US Pub. 2011/0089514), are maintained below.
Applicant's arguments with respect to claim 8 have been considered but are moot in view of the new ground(s) of rejection. Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action.
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 1 and 6-7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 16 of U.S. Patent No. 11,495,635 in view of Tay (US Pub. 2011/0089514). Although the claims at issue are not identical, they are not patentably distinct from each other because:
With respect to claims 1 and 6-7:
Application
Patent 11,495,635
Claim 1
Claim 16
1. A pixel array, comprising:
a pixel sensor;
a polydimethylsiloxane (PDMS) layer above the pixel sensor; and
a planarization layer above or below the PDMS layer, wherein the planarization layer is above or below the PDMS layer.
16. A pixel array, comprising:
a pixel sensor; and
a polydimethylsiloxane (PDMS) antireflective coating above the pixel sensor, …
Claim 6
Claim 16
6. The pixel array of claim 1, wherein the PDMS layer comprises one or more structures.
16. … a polydimethylsiloxane (PDMS) antireflective coating above the pixel sensor, comprising:
…
a second portion having a non-planar surface including a plurality of structures …
Claim 7
Claim 16
7. The pixel array of claim 1, wherein the PDMS layer is planar, flat, or smooth.
16. … a polydimethylsiloxane (PDMS) antireflective coating above the pixel sensor, comprising:
a first portion having a planar surface; and …
In view of the foregoing, claims 1 and 6-7 of the instant application are substantially identical claim 16 of US Patent No. 11,495,635, as indicated above, with the exception that claim 1 of the instant application further include limitation of “a planarization layer above or below the PDMS layer, wherein the planarization layer is above or below the PDMS layer” in claim 1.
The Examiner also notes that the claim limitation of “a planarization layer above or below the PDMS layer, wherein the planarization layer is above or below the PDMS layer”, is simply interpreted as the pixel array having both a planarization layer and a PDMS layer, since it includes the planarization layer being formed anywhere other than being co-planar with the PDMS layer.
Additionally, the Examiner notes that in analogous art, Tay (US Pub. 2011/0089514) discloses an image sensor having a pixel array, and wherein the pixel array includes a plurality of planarization layers above the pixel sensor (paragraph 0007, and figure 1: 6 & 10). Tay teaches that the use of a plurality of planarization layers above the pixel sensor is preferred in order to compensate for top surface irregularities due to the wires, since a flat surface is essential for conventional color filter formation by lithography and provide a flat surface for the formation of microlens (paragraph 0007). Therefore, it would have been obvious to one of ordinary skill, at the time of the invention, to modify the primary reference to include one or more planarization layers above the pixel sensor, in order to compensate for top surface irregularities due to the wires, since a flat surface is essential for conventional color filter formation by lithography and provide a flat surface for the formation of microlens, as suggested by Tay.
Consequently, based on the interpretation of the claim limitation of “a planarization layer above or below the PDMS layer, wherein the planarization layer is above or below the PDMS layer”, indicated above, the combination of US Patent No. 11,495,635 and Tay is considered to include the pixel array, comprising a pixel sensor, a polydimethylsiloxane (PDMS) layer above the pixel sensor, and a planarization layer.
Claims 1 and 6-7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 16 of U.S. Patent No. 11,996,435 in view of Tay (US Pub. 2011/0089514). Although the claims at issue are not identical, they are not patentably distinct from each other because:
With respect to claims 1 and 6-7:
Application
Patent 11,996,435
Claim 1
Claim 16
1. A pixel array, comprising:
a pixel sensor;
a polydimethylsiloxane (PDMS) layer above the pixel sensor; and
a planarization layer above or below the PDMS layer, wherein the planarization layer is above or below the PDMS layer.
16. A pixel array, comprising:
a pixel sensor; and
a polydimethylsiloxane (PDMS) antireflective coating over the pixel sensor, …
Claim 6
Claim 16
6. The pixel array of claim 1, wherein the PDMS layer comprises one or more structures.
16. … a polydimethylsiloxane (PDMS) antireflective coating over the pixel sensor, comprising:
…
a second portion comprising one or more structures.
Claim 7
Claim 16
7. The pixel array of claim 1, wherein the PDMS layer is planar, flat, or smooth.
16. … a polydimethylsiloxane (PDMS) antireflective coating over the pixel sensor, comprising:
a first portion having a planar surface; …
In view of the foregoing, claims 1 and 6-7 of the instant application are substantially identical claim 16 of US Patent No. 11,996,435, as indicated above, with the exception that claim 1 of the instant application further include limitation of “a planarization layer above or below the PDMS layer, wherein the planarization layer is above or below the PDMS layer” in claim 1.
The Examiner also notes that the claim limitation of “a planarization layer above or below the PDMS layer, wherein the planarization layer is above or below the PDMS layer”, is simply interpreted as the pixel array having both a planarization layer and a PDMS layer, since it includes the planarization layer being formed anywhere other than being co-planar with the PDMS layer.
Additionally, the Examiner notes that in analogous art, Tay (US Pub. 2011/0089514) discloses an image sensor having a pixel array, and wherein the pixel array includes a plurality of planarization layers above the pixel sensor (paragraph 0007, and figure 1: 6 & 10). Tay teaches that the use of a plurality of planarization layers above the pixel sensor is preferred in order to compensate for top surface irregularities due to the wires, since a flat surface is essential for conventional color filter formation by lithography and provide a flat surface for the formation of microlens (paragraph 0007). Therefore, it would have been obvious to one of ordinary skill, at the time of the invention, to modify the primary reference to include one or more planarization layers above the pixel sensor, in order to compensate for top surface irregularities due to the wires, since a flat surface is essential for conventional color filter formation by lithography and provide a flat surface for the formation of microlens, as suggested by Tay.
Consequently, based on the interpretation of the claim limitation of “a planarization layer above or below the PDMS layer, wherein the planarization layer is above or below the PDMS layer”, indicated above, the combination of US Patent No. 11,996,435 and Tay is considered to include the pixel array, comprising a pixel sensor, a polydimethylsiloxane (PDMS) layer above the pixel sensor, and a planarization layer.
Claim Rejections - 35 USC § 112
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.
Claim 8 is 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.
Claim 8 recites the limitation “wherein at least one of: the PDMS layer is directly on the pixel sensor and below the plurality of planarization layers, or the PDMS layer is between the plurality of planarization layers” in lines 5-8. The Examiner notes that as recited, the use of the phrase “at least one of” allows the claim to be interpreted as having three options, comprising:
1) the PDMS layer is directly on the pixel sensor and below the plurality of planarization layers,
2) the PDMS layer is between the plurality of planarization layers, or
3) the PDMS layer is directly on the pixel sensor and below the plurality of planarization layers, and the PDMS layer is between the plurality of planarization layers,
because the phrase “at least one” includes the use of more than one option, i.e., both options, to be used in combination with one another. However, the since the first option (1) requires the PDMS layer to be directly on the pixel sensor and below the plurality of planarization layers, and the second option (2) requires the PDMS layer to between planarization layers, it is not possible for these two options to be used in combination with one another, as the third option (3) requires, since options one and two are clear alternatives to one another. Consequently, absent clarity, one skilled in the art would not be put on fair notice regarding the metes and bounds of the claimed subject matter.
The Examiner suggests adopting language similar to the proposed Examiner’s Amendment indicated above, in the section titled “Examiner’s Comments – Interview Summary”.
Claim Rejections - 35 USC § 103
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 1 is rejected under 35 U.S.C. 103 as being unpatentable over Nam et al. (US Pub. 2019/0067347), in view of Tay (US Pub. 2011/0089514).
In regard to claim 1, note Nam discloses a pixel array (paragraph 0058, and figure 1: 100), comprising a pixel sensor (paragraphs 0058, 0078-0082, and figures 2 & 5: 111), a polydimethylsiloxane (PDMS) layer above the pixel sensor (paragraphs 0058, 0078-0082, and figures 2 & 5: 113).
Therefore, it can be seen that the primary reference fails to explicitly disclose that the pixel array includes a planarization layer above or below the PDMS layer.
However, the Examiner also notes that the claim limitation of “a planarization layer above or below the PDMS layer, wherein the planarization layer is above or below the PDMS layer”, is simply interpreted as the pixel array having both a planarization layer and a PDMS layer, since it includes the planarization layer being formed anywhere other than being co-planar with the PDMS layer.
Additionally, the Examiner notes that in analogous art, Tay discloses an image sensor having a pixel array, and wherein the pixel array includes a plurality of planarization layers above the pixel sensor (paragraph 0007, and figure 1: 6 & 10). Tay teaches that the use of a plurality of planarization layers above the pixel sensor is preferred in order to compensate for top surface irregularities due to the wires, since a flat surface is essential for conventional color filter formation by lithography and provide a flat surface for the formation of microlens (paragraph 0007). Therefore, it would have been obvious to one of ordinary skill, at the time of the invention, to modify the primary reference to include one or more planarization layers above the pixel sensor, in order to compensate for top surface irregularities due to the wires, since a flat surface is essential for conventional color filter formation by lithography and provide a flat surface for the formation of microlens, as suggested by Tay.
Consequently, based on the interpretation of the claim limitation of “a planarization layer above or below the PDMS layer, wherein the planarization layer is above or below the PDMS layer”, indicated above, the combination of Nam and Tay is considered to include the pixel array, comprising a pixel sensor, a polydimethylsiloxane (PDMS) layer above the pixel sensor, and a planarization layer.
Allowable Subject Matter
Claims 2-7 would be allowable if rewritten to overcome the double patenting rejection(s) set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Claims 8-14 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Claims 15-20 are allowed.
The following is a statement of reasons for the indication of allowable subject matter:
As for claim 15, the prior art does not teach or fairly suggest the use of a method, comprising depositing a polydimethylsiloxane (PDMS) layer above a pixel array, and depositing a first planarization layer above the PDMS layer, in conjunction with the other limitations of the claims.
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 CHRISS S YODER III whose telephone number is (571)272-7323. The examiner can normally be reached M-F 9:00-5:00 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, Lin Ye can be reached at (571) 272-7372. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/C.Y./Examiner, Art Unit 2638
/LIN YE/Supervisory Patent Examiner, Art Unit 2638