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 January 21, 2026. Claims 2-10 are currently pending.
Terminal Disclaimer
The terminal disclaimer filed on January 21, 2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of U.S. Patent 12,035,063 has been reviewed and is NOT accepted.
The terminal disclaimer does not comply with 37 CFR 1.321 because:
The person who has signed the disclaimer has not stated the extent of the applicant’s or assignee’s interest in the application/patent. See 37 CFR 1.321(b)(3).
Both applicant names are not listed on the TD form. No additional fee is required with the resubmission.
The terminal disclaimer identifies a party who is not the applicant (only for applications filed on or after September 16, 2012; See FP 14.26.10):
For cases filed on/after 9/16/12, 37 CFR 1.321 specifies that the applicant can disclaim, and the terminal disclaimer must specify the extent of the applicant's ownership.
A request under 37 CFR 1.46(c) to change the applicant needs to be filed, which is (1) a request, signed by a 1.33(b) party, (2) a corrected ADS (37 CFR 1.76(c)) that identifies the "new" applicant in the applicant information, and is underlined since it is new, and (3) a 3.73(c) statement showing chain of title to the new applicant. Along with the § 1.46(c) request we need a POA that gives power to the attorney who is signing the TD, along with another copy of the TD, unless they file a TD that is signed by the applicant.
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 2, 5, 7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of U.S. Patent No. 12,035,063. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant clams are simply a broader version of the ‘063 patent.
Regarding claim 2, the ‘063 patent claims (claims 1 and 2) a light detecting device comprising: a first chip and a second chip (“a first chip”, “a second chip”) stacked (“stacked chips”) on each other, wherein the first chip comprises: a first pixel (“first pixel”) that detects light of a first wavelength band (”first wavelength band”) in incident light and generates a first pixel signal (“pixel signal”), and a second pixel (“second pixel”) that detects light of a second wavelength band (“second wavelength band”) that has transmitted through (“transmitted through the first pixel”) the first pixel among the incident light and generates second pixel signal (“pixel signal”); and wherein the second chip comprises: a first driving circuit (“first driving unit”) configured to supply a control signal (“control signal”) to the first pixel, a second driving circuit (“second driving unit”) configured to supply a control signal to the second pixel, the second driving circuit being disposed adjacent (claim 2; “adjacent regions”) to the first driving circuit, a first readout circuit (“first readout section”) configured to read out the first pixel signal, and a second readout circuit (“second readout section”) configured to read out the second pixel signal, the second readout circuit being disposed adjacent (claim 2; “adjacent regions”) to the first readout circuit.
Regarding claim 5, the ‘063 patent claims (claim 3) the first readout circuit and the second readout circuit are disposed proximate to a center (“close to a center”) of the second chip.
Regarding claim 7, the ‘063 patent claims (claim 4) a third driving circuit (“third driving unit”) configured to supply a common control signal (“a common control signal”) to the first pixel and the second pixel.
Allowable Subject Matter
Claims 2-10 would be allowed once the double patenting rejection is overcome.
Response to Arguments
Applicant's arguments filed January 21, 2026 have been fully considered but they are not persuasive. As set forth above, Applicant’s terminal disclaimer is improper.
Conclusion
THIS ACTION IS MADE FINAL. 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 THANH LUU whose telephone number is (571)272-2441. The examiner can normally be reached 9AM-5:30PM.
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, Georgia Epps can be reached at 571-272-2328. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/THANH LUU/Primary Examiner, Art Unit 2878