DETAILED ACTION
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 applicant’s Restriction/Election filed on 08/05/2026.
Currently claims 1-24 are pending in the application.
Election/Restrictions
Applicant's election of Species A, claims 1-11, 16-18 and 23-24, in the reply filed on 08/05/2026 is acknowledged. Because Applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.03(a)). Claims 12–15 and 19–22 are withdrawn from further consideration under 37 CFR 1.142(b) as being directed to a non-elected species, there being no allowable generic or linking claim. Claims 1–11, 16–18, and 23–24 are examined on the merits herein.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 05/13/2024 and 09/04/2024 were filed before the mailing date of the office action. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements were considered by the examiner.
Claim Rejections - 35 USC § 112 (b)
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.
Claims 8-11 is rejected under 35 U.S.C. 112 (b), as being indefinite for failing to particularly pointing out and distinctly claim the subject matter which the inventor or a joint inventor, regard as their invention.
Regarding claim 8, the instant claim recites limitation in view of claim 1, where claim 8 recites that the second portion of the first electrode pattern connects the first portions “on one side in the first direction,” and later recites that the fourth portion of the second electrode pattern connects the third portions “on the other side in the first direction.” The phrase “the other side in the first direction” lacks clear antecedent basis, as only “one side” has been positively recited; it is therefore indefinite whether “the other side” denotes the side longitudinally opposite the recited “one side” or some other boundary of the pixel. For purposes of examination, the limitation is interpreted as best understood to mean the side in the first direction opposite the “one side” on which the second portion connects the first portions (MPEP 2173.05(e)). Appropriate correction and/or clarification is required.
Claims 9-11 are also rejected due to their dependence on an rejected base claim.
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.
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 of this title, 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:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1 and 23-24 are rejected under 35 U.S.C. 103 as being unpatentable over US 2023/0215884 A1 (Sekine) and further in view of US 2019/0296176 A1 (Dong).
Regarding claim 1, Sekine discloses, a photoelectric conversion device (100; Fig. 1; [0045]) in which a plurality of pixels (101; Fig. 1; [0048]) are arranged in a semiconductor layer (300; semiconductor layer; Figs. 7-8; [0074] – [0078]) having a first principal surface (second face) and a second principal surface (first face) (Figs. 7-8; [0074] – [0078]),
wherein each of the plurality of pixels (101) comprises:
an avalanche photodiode (APD 201; Fig. 5A; [0075]) arranged in the semiconductor layer (300); and
PNG
media_image1.png
406
774
media_image1.png
Greyscale
But Sekine fails to teach explicitly, a Schottky barrier diode constituted by the semiconductor layer and an electrode pattern in contact with the second principal surface, in an orthogonal projection to the second principal surface, the second principal surface has a region overlapping the avalanche photodiode, and the region includes a first region in contact with the electrode pattern and a second region in contact with an insulating layer.
However, in analogous art, Dong discloses, a Schottky barrier diode constituted by the semiconductor layer and an electrode pattern in contact with the second principal surface (Dong teaches a Schottky barrier diode formed by the n-type silicon semiconductor layer 2 and a metal film 14 (constituting Schottky electrode 5) in contact with a principal surface of the semiconductor layer at the light-detecting region; Fig. 4; [0046] – [0048]);
PNG
media_image2.png
438
590
media_image2.png
Greyscale
in an orthogonal projection to the second principal surface, the second principal surface has a region overlapping the avalanche photodiode, and the region includes a first region in contact with the electrode pattern (Dong teaches a first part 14A of the metal film that covers the bottom and inner-wall surfaces of the recess portions 12 and forms the Schottky junction directly with the semiconductor layer 2 (the first region); Fig. 4; [0048]);
a second region (14B) in contact with an insulating layer (15) (Dong teaches a second part 14B of the metal film 14 that covers the insulating film 15 provided on the top surfaces of the projection portions 13, so that the electrode pattern overlies an insulating layer rather than contacting the semiconductor at those locations (the second region); Figs 3-4; [0048]);
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, having the teachings of Sekine and Dong before him/her, to modify the teachings of a photoelectric conversion device including an avalanche photodiode as taught by Sekine and to include the teachings of a Schottky barrier diode constituted by the semiconductor layer and an electrode pattern as taught by Dong, because silicon avalanche photodiode is weak on the long-wavelength (near-infrared/SWIR) side, and Dong teaches that adding a metal–silicon Schottky junction on the light-detecting surface improves sensitivity to light of wavelength ≥ 1,150 nm by approximately one order of magnitude ([0007], [0063]), thereby extending the spectral response of Sekine’s silicon APD pixel. Absent this important teaching in Sekine, a person with ordinary skill in the art would be motivated to reach out to Dong while forming the back-illuminated APD pixel of Sekine.
Regarding claim 23, the combination of Sekine and Dong teaches, the device according to claim 1, wherein in the orthogonal projection to the second principal surface, the Schottky barrier diode is arranged to overlap the avalanche photodiode (Sekine teaches that the avalanche photodiode/avalanche-multiplication portion arranged in the semiconductor layer beneath the light-incident second face, and Dong teaches that the Schottky electrode/metal film 14 disposed on the light-detecting surface over the absorbing region; therefore, in the combination the Schottky barrier diode on the second principal surface therefore overlaps the underlying avalanche photodiode in the recited projection; APD 201; Fig. 5A and 6; [0075]; Sekine Ref.; Fig. 4; [0048]; Dong Ref.).
Regarding claim 24, Sekine teaches, Equipment comprising: the photoelectric conversion device according to claim 1 (see the rejection above); and a processor configured to process a signal output from the photoelectric conversion device (Sekine teaches a photoelectric conversion system (e.g., a digital still camera / imaging equipment) incorporating the photoelectric conversion device together with a processing device PU that processes the signals obtained from the device; the device of claim 1 is provided by the Sekine–Dong combination set out above; Fig. 22; [0128]–[0131]; Sekine Ref.).
PNG
media_image3.png
294
674
media_image3.png
Greyscale
Claims 2–3 and 16–18 are rejected under 35 U.S.C. 103 as unpatentable over US 2023/0215884 A1 (Sekine) in view of US 2019/0296176 A1 (Dong), and further in view of US 2010/0013040 A1 (Okamoto).
Regarding claim 2, the combination of Sekine and Dong fails to teach explicitly, the device according to claim 1, wherein in the orthogonal projection to the second principal surface, the electrode pattern has a slit, and the slit constitutes the second region.
However, in analogous art, Okamoto discloses, the device according to claim 1, wherein in the orthogonal projection to the second principal surface (on the surface of InAlAs layer 8; Fig. 6; [0076]), the electrode pattern (7, Ti/Au electrode; Figs. 6-7; [0076]) has a slit (electrodes are patterned as a slit/stripe array; Fig. 7), and the slit constitutes the second region (as annotated on Fig. 7).
PNG
media_image4.png
306
324
media_image4.png
Greyscale
PNG
media_image5.png
302
314
media_image5.png
Greyscale
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, having the teachings of Sekine, Dong, and Okamoto before him/her, to modify the teachings of a photoelectric conversion device including Schottky barrier diode and an electrode pattern as taught by Sekine as modified by Dong and to include the teachings of the electrode pattern having a slit as taught by Okamoto, because Okamoto teaches that patterning the Schottky electrode as a slit/comb (interdigitated) periodic array increases the effective light-coupling/absorption area and lets incident light reach the semiconductor between the electrode fingers, directly furthering Dong’s goal of maximizing photo-response of the Schottky junction on the light-detecting surface [0076]. Absent this teaching in the Sekine–Dong combination, a person with ordinary skill in the art would be motivated to reach out to Okamoto while forming a back-illuminated APD/Schottky pixel of Sekine.
Regarding claim 3, the combination of Sekine and Dong fails to teach explicitly, the device according to claim 1, wherein in the orthogonal projection to the second principal surface, the electrode pattern has a first direction as a longitudinal direction, and includes a plurality of first portions arranged to align in a second direction intersecting the first direction, and a second portion arranged in the second direction to connect ends of the plurality of first portions to each other on one side in the first direction, and in the orthogonal projection to the second principal surface, regions of the second principal surface that are arranged between the respective first portions and are not covered with the electrode pattern constitute at least part of the second region.
However, in analogous art, Okamoto discloses, the device according to claim 1, wherein in the orthogonal projection to the second principal surface (on the surface of InAlAs layer 8; Fig. 6; [0076]), the electrode pattern (as annotated on Fig. 7) has a first direction (horizontal) as a longitudinal direction, and includes a plurality of first portions (fingers) arranged to align in a second direction (vertical) intersecting the first direction, and a second portion (as annotated on Fig. 7) arranged in the second direction (for plurality of electrode patterns, the second portions can be placed in second direction) to connect ends of the plurality of first portions to each other on one side in the first direction, and in the orthogonal projection to the second principal surface, regions of the second principal surface that are arranged between the respective first portions and are not covered with the electrode pattern constitute at least part of the second region (as evident in Fig. 7) (Figs. 6-7; [0076]).
PNG
media_image4.png
306
324
media_image4.png
Greyscale
PNG
media_image6.png
303
321
media_image6.png
Greyscale
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, having the teachings of Sekine, Dong, and Okamoto before him/her, to modify the teachings of a photoelectric conversion device including Schottky barrier diode and an electrode pattern as taught by Sekine as modified by Dong and to include the teachings of the electrode pattern having a slit as taught by Okamoto, because Okamoto teaches that patterning the Schottky electrode as a slit/comb (interdigitated) periodic array increases the effective light-coupling/absorption area and lets incident light reach the semiconductor between the electrode fingers, directly furthering Dong’s goal of maximizing photo-response of the Schottky junction on the light-detecting surface [0076]. Absent this teaching in the Sekine–Dong combination, a person with ordinary skill in the art would be motivated to reach out to Okamoto while forming a back-illuminated APD/Schottky pixel of Sekine.
Regarding claim 16, the combination of Sekine, Dong, and Okamoto teaches, the device according to claim 3, wherein a width of each of the plurality of first portions in the second direction is not larger than 100 nm (Fig. 7; [0067], [0068], [0076]; Okamoto Ref.). Okamoto teaches in para. [0067] and [0076] that the finger/period dimensions of the Schottky electrode are set as result-effective variables relative to the incident wavelength to control diffractive/plasmonic coupling into the semiconductor, and Dong teaches in [0041] – [0045] that the periodic nanostructure dimensions are set in nano-order to match the surface-plasmon wavelength; where the general conditions of a claim are disclosed and the dimension is a result-effective variable, discovering the optimum or workable value (here, a finger width ≤ 100 nm) is obvious absent a showing of criticality (MPEP 2144.05(II)).
Regarding claim 17, the combination of Sekine, Dong, and Okamoto teaches, the device according to claim 3, the plurality of first portions are arranged in the second direction in a predetermined period (Fig. 7; [0067], [0068], [0076]; Okamoto Ref.). Okamoto teaches the Schottky electrode fingers arranged in a predetermined (periodic) array in the intersecting direction.
Regarding claim 18, the combination of Sekine, Dong, and Okamoto teaches, the device according to claim 17, the predetermined period is not larger than 100 nm (Fig. 7; [0067], [0068], [0076]; Okamoto Ref.). Okamoto teaches in para. [0067] and [0076] that the finger/period dimensions of the Schottky electrode are set as result-effective variables relative to the incident wavelength to control diffractive/plasmonic coupling into the semiconductor, and Dong teaches in [0041] – [0045] that the periodic nanostructure dimensions are set in nano-order to match the surface-plasmon wavelength; where the general conditions of a claim are disclosed and the dimension is a result-effective variable, discovering the optimum or workable value (here, a finger width ≤ 100 nm) is obvious absent a showing of criticality (MPEP 2144.05(II)).
Allowable Subject Matter
Claims 4-11 are objected to as being dependent upon rejected base claims, but would be allowable if rewritten in independent forms including all of the limitations of the base claims and any intervening claims.
Regarding claim 4, the closest prior art, US 2023/0215884 A1 (Sekine), in conjunction with US 2019/0296176 A1 (Dong) and US 2010/0013040 A1 (Okamoto), fails to disclose, “the device according to claim 3, wherein in the orthogonal projection to the second principal surface, the electrode pattern further includes a third portion arranged in the second direction to connect ends of the plurality of first portions to each other on another side in the first direction”, in combination with the additionally claimed features, as are claimed by the Applicant.
Specifically, the aforementioned ‘the device according to claim 3, wherein in the orthogonal projection to the second principal surface, the electrode pattern further includes a third portion arranged in the second direction to connect ends of the plurality of first portions to each other on another side in the first direction,’ is material to the inventive concept of the application at hand to combine an APD with a backside Schottky barrier diode in each pixel, so that the same pixel can detect both faint light through avalanche multiplication and longer-wavelength light through Schottky photoelectric conversion.
Regarding claim 6, the closest prior art, US 2023/0215884 A1 (Sekine), in conjunction with US 2019/0296176 A1 (Dong) and US 2010/0013040 A1 (Okamoto), fails to disclose, “the device according to claim 1, wherein the plurality of pixels include a first pixel and a second pixel, in the orthogonal projection to the second principal surface, the electrode pattern of the first pixel has a first direction as a longitudinal direction, and includes a plurality of first portions arranged to align in a second direction intersecting the first direction, and a second portion arranged in the second direction to connect ends of the plurality of first portions to each other on one side in the first direction, in the first pixel, regions of the second principal surface that are arranged between the respective first portions and are not covered with the electrode pattern constitute at least part of the second region, the electrode pattern of the second pixel has the second direction as a longitudinal direction, and includes a plurality of third portions arranged to align in the first direction, and a fourth portion arranged in the first direction to connect ends of the plurality of third portions to each other on one side in the second direction, and in the second pixel, regions of the second principal surface that are arranged between the respective third portions and are not covered with the electrode pattern constitute at least part of the second region”, in combination with the additionally claimed features, as are claimed by the Applicant.
Specifically, the aforementioned ‘the device according to claim 1, wherein the plurality of pixels include a first pixel and a second pixel, in the orthogonal projection to the second principal surface, the electrode pattern of the first pixel has a first direction as a longitudinal direction, and includes a plurality of first portions arranged to align in a second direction intersecting the first direction, and a second portion arranged in the second direction to connect ends of the plurality of first portions to each other on one side in the first direction, in the first pixel, regions of the second principal surface that are arranged between the respective first portions and are not covered with the electrode pattern constitute at least part of the second region, the electrode pattern of the second pixel has the second direction as a longitudinal direction, and includes a plurality of third portions arranged to align in the first direction, and a fourth portion arranged in the first direction to connect ends of the plurality of third portions to each other on one side in the second direction, and in the second pixel, regions of the second principal surface that are arranged between the respective third portions and are not covered with the electrode pattern constitute at least part of the second region,’ is material to the inventive concept of the application at hand to combine an APD with a backside Schottky barrier diode in each pixel, so that the same pixel can detect both faint light through avalanche multiplication and longer-wavelength light through Schottky photoelectric conversion.
Regarding claim 8, the closest prior art, US 2023/0215884 A1 (Sekine), in conjunction with US 2019/0296176 A1 (Dong) and US 2010/0013040 A1 (Okamoto), fails to disclose, “the device according to claim 1, wherein the electrode pattern includes a first electrode pattern and a second electrode pattern, in the orthogonal projection to the second principal surface, the first electrode pattern has a first direction as a longitudinal direction, and includes a plurality of first portions arranged to align in a second direction intersecting the first direction, and a second portion arranged in the second direction to connect ends of the plurality of first portions to each other on one side in the first direction, the second electrode pattern has the first direction as a longitudinal direction, and includes a plurality of third portions arranged to align in the second direction, and a fourth portion arranged in the second direction to connect ends of the plurality of third portions to each other on the other side in the first direction, and regions of the second principal surface that are arranged between the respective first portions and the respective third portions and are not covered with the first electrode pattern and the second electrode pattern constitute at least part of the second region”, in combination with the additionally claimed features, as are claimed by the Applicant.
Specifically, the aforementioned ‘the device according to claim 1, wherein the electrode pattern includes a first electrode pattern and a second electrode pattern, in the orthogonal projection to the second principal surface, the first electrode pattern has a first direction as a longitudinal direction, and includes a plurality of first portions arranged to align in a second direction intersecting the first direction, and a second portion arranged in the second direction to connect ends of the plurality of first portions to each other on one side in the first direction, the second electrode pattern has the first direction as a longitudinal direction, and includes a plurality of third portions arranged to align in the second direction, and a fourth portion arranged in the second direction to connect ends of the plurality of third portions to each other on the other side in the first direction, and regions of the second principal surface that are arranged between the respective first portions and the respective third portions and are not covered with the first electrode pattern and the second electrode pattern constitute at least part of the second region,’ is material to the inventive concept of the application at hand to combine an APD with a backside Schottky barrier diode in each pixel, so that the same pixel can detect both faint light through avalanche multiplication and longer-wavelength light through Schottky photoelectric conversion.
Claims 5, 7 and 9-11 are also objected to due to their dependence on an objected base claim.
Examiner’s Note (Additional Prior Arts)
The examiner included a few prior arts which were not used in the rejection but are relevant to the disclosure.
Barelli (US 3,622,844 A) — discloses an avalanche photodiode utilizing Schottky-barrier configurations—an integrated APD-plus-Schottky structure with metal grid contacts on the semiconductor (front-illuminated, short-wavelength)—evidencing that combining avalanche multiplication with a Schottky junction in one device was known.
Shepherd (US 4,531,055 A) — discloses a self-guarding two-dimensional focal-plane array of Schottky-barrier photodiodes on a silicon substrate for infrared imaging.
Rogers (US 4,807,006 A) — discloses a heterojunction interdigitated (metal–semiconductor–metal) Schottky-barrier photodetector for low-noise infrared/visible detection.
Abdelghafar (US 2022/0238743 A1) — discloses a back-illuminated SPAD pixel with quenching element, waveform shaper (210), counter (211), and selecting circuit (212)—cumulative to Sekine for the readout architecture.
Dhulla (US 2016/0218236 A1) — discloses a silicon Geiger-mode avalanche photodiode with an integrated Schottky clamping diode and shaped diode contacts, together with antireflective/roughened/diffractive light-trapping surfaces.
Kono (US 2015/0069414 A1) — discloses a SiC junction-barrier Schottky diode with an integrated avalanche region having a periodic concave-convex junction interface (relevant to non-elected claims 19–22).
Oohashi (US 2007/0194357 A1) — discloses a Schottky photodiode with a periodic (concentric-groove) surface-plasmon-resonance structure and sub-wavelength aperture for infrared near-field detection (relevant to non-elected claims 19–22).
Yajima (US 2019/0355769 A1) — discloses a stacked InGaAs/InP-on-silicon near-infrared imaging sensor with post-bond element isolation (relevant to stacked sensor/circuit integration).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to S M SOHEL IMTIAZ whose telephone number is (408) 918-7566. The examiner can normally be reached on 8AM-5PM, M-F, PST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christine S. Kim can be reached at 571-272-8458. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/S M SOHEL IMTIAZ/Primary Patent Examiner
Art Unit 2812
09/11/2026
Prosecution Insights