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.
Claims 1-4, 6-21 are pending.
Response to Amendment
Applicant’s amendment of 08/13/26 has been entered. Applicant's amendment has necessitated new grounds of rejection and the remarks are not persuasive.
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 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.
If 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.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
Considering objective evidence present in the application indicating obviousness or nonobviousness.
When something is indicated as being “obvious” this should be taken as shorthand for “prima facie obvious to one having ordinary skill in the art to which the claimed invention pertains before the effective filing date of the invention”.
When a range is indicated as overlapping a claimed range, unless otherwise noted, this should be taken as short hand to indicate that the claimed range is obvious in view of the overlapping range in the prior art as set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claim(s) 17-21, 1-4, 6-7, 10, 12, and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Barr (U.S. 2018/0366658).
Regarding claims 17-21, 1-4, 6-7, 10, 12, and 15, Barr teaches an electronic device with an infrared sensor having first and second electrodes with an infrared photoelectric conversion layer therebetween and with auxiliary (i.e., “buffer) layers between the electrodes and the conversion layer and with a substrate (a semiconductor substrate in that it is a substrate for semiconductor layers), as in claims 1, 10, 12, 15, and 21 (FIG. 1, [0093], [0096]). Barr also teaches that the conversion layer may include a compound that overlaps the compounds as claimed and as in the present examples ([0145]-[0148], Formula VI and VII and the subsequent Formula VIII-XIII indicate that the four corners of the overall molecule may each have 1-5 fused phenyl rings, and one of the four corners of the overall molecule may have a longer chain of fused aromatic rings, such as an anthracene ring in one corner and benzene rings in the other three corners with Sn or SnCl2 as the metal in the center of the molecule, also see Formula XXX which also overlaps the present compounds and is disclosed as having an asymmetric structure via different number of fused rings, also see [0072], in which tetracene is provided along with anthracene as possible aromatic groups). Thus, Barr discloses a conversion layer with organic semiconductor compounds that overlap the present compounds, e.g., with Sn or SnCl2 at the center, with three corners of benzene or naphthalene fused rings, and with anthracene or tetracene on the fourth corner, which overlaps, e.g., compounds 11-13 of the present application (and claims 2-3 and 18-19). These overlapping compounds from Barr will inherently have the same properties as in the overlapped embodiments of the present application, as in claims 4, 6-7 and 20-21.
In light of the overlap between the claimed compound and that disclosed by Barr, it would have been obvious to one of ordinary skill in the art to use a compound that is both disclosed by Barr and is encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Claim(s) 8-9, 11, 13-14, and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Barr (U.S. 2018/0366658), as applied to claim 1 above, and further in view of Kwon (U.S. 2022/0064182).
Regarding claims 8-9, 11, 13-14, and 16, Barr teaches all of the above subject matter but does not disclose the counter layer as claimed, auxiliary materials as claimed, the combined sensors as claimed, or the EQE property. However, Kwon is also directed to infrared sensors with a conversion layer between two electrodes and discloses that the auxiliary/buffer layers (i.e., electron/hole transfer/blocking layers, like in Barr) may be made of the claimed materials of claim 11 ([0158], [0164]) and also discloses that the infrared sensor may include multiple infrared sensors for different wavelengths of the infrared spectrum (as in claims 13 and 16) or a combination of an infrared and visible spectrum sensor (as in claim 14), on a semiconductor substrate (as in claim 12) with the conversion layer being adjacent to a pn junction forming counter layer (as in claim 9), so that the overall device can provide multiple different functions (i.e., different sensed wavelengths) ([0049]-[0050], [0146]-[0149], [0181], [0191]-[0195], [0205]). Thus, it would have been obvious to have included the photoelectric conversion layer of Barr in an infrared sensor electronic device with multiple sensors (two different infrared sensors and/or infrared and visible sensors) on a semiconductor substrate with a pn junction and auxiliary layers, as taught by Kwon in order to provide the infrared sensor of Barr with multiple different functions.
Furthermore, although Barr does not disclose the claimed EQE property, this property appears to be inherent in an infrared sensor made from the overlapped embodiments of the compound present application (with such compounds being overlapped via the formulae of Barr, as explained above). Alternatively, Kwon discloses that a desirable EQE property of the infrared sensor is shifted towards a longer wavelength spectrum that overlaps claim 8 ([0323]) such that it would have been obvious to have made the sensor of Barr have the EQE property as claimed because Kwon discloses that such a property is a desirable quantum efficiency for an infrared sensor.
Response to Arguments
Applicant’s remarks are moot in light of the new grounds of rejection which were necessitated by Applicant's amendment. Remarks which are still deemed relevant are addressed below and are not persuasive.
Applicant argues that Barr’s disclosure overlapping the claimed scope is not sufficient to render the claimed compounds obvious. However, the case law cited by Applicant is referring to overly board disclosures and Barr’s disclosure is no so broad as to make the elected species non-obvious, especially because Barr suggests non-symmetric versions of the same type of compound as claimed with such non-symmetric structure being achieved via closely overlapping aromatic groups on the four corners. It is further maintained that the claimed Debye property is inherent in these overlapping embodiments of Barr (which overlap the specific examples in the present disclosure).
If Applicant seeks to rebut the prima facie obviousness via unexpected results, the claims would have to be narrowed to make them commensurate in scope with the examples (claim 1 is currently much broader in terms of the types of metal and the types of R groups compared with the examples, and claim 21 is almost commensurate in scope except that it allows the R11-R32 groups to be “substituted” benzene/naphthalene rings, which allows for any substitution, whereas the inventive examples only have methyl substituents in these rings when they are substituted).
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 extension fee 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 date of this final action.
References cited in any corresponding foreign applications have been considered but would be cumulative to the above. Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL B NELSON whose direct telephone number is (571)272-9886 and whose direct fax number is (571)273-9886 and whose email address is Michael.Nelson@USPTO.GOV. The examiner can normally be reached on Mon-Sat, 7am - 7pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached on 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300 (faxes sent to this number will take longer to reach the examiner than faxes sent to the direct fax number above).
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/MICHAEL B NELSON/
Primary Examiner, Art Unit 1787
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