Notice of 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 .
DETAILED ACTION
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.
Claims 1-3 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Venezia et al. (US 2011/0089517 A1) in view of Negishi et al. (US 6,130,503 A) and Yu et al. (US 2014/0070348 A1).
Regarding independent claim 1: Venezia teaches (e.g., Figs. 2-4) a solid state active pixel image sensor for direct back-illuminated exposure to an electron beam, comprising:
an epitaxial layer ([0020] and [0023]: 115) having a first face (upper surface) and a second face (bottom side surface);
a back end of line layer ([0020]: metal stack 130/140) formed on the first face of the epitaxial layer ([0020] and [0023]: upper side of the epitaxial layer in the device layer 115); and
a thermal conduction layer ([0020] and [0023]: 201) adhered to or formed on the back end of line layer.
Venezia does not expressly teach that the thermal conduction layer adhered to or formed across a first surface of the back end of line layer, and
the thermal conduction layer is 40 microns or less.
Negishi teaches a device comprising a thermal conduction layer of 10 nm (Col. 29, Lines 14-16: this meets the claimed invention requirement; 10 nm is less than 40 microns).
It would have been obvious to a person of ordinary skill in the art at the time of the effective filing date to include in the device of Venezia, the thermal conduction layer being 40 microns or less, as taught by Negishi, for the benefits of reducing the thermal stress in the imager and at the same time remain compact in size.
Yu teaches (e.g., Fig. 1b) a solid state active pixel image sensor for direct back-illuminated exposure to an electron beam, comprising:
a thermal conduction layer (137/139) adhered to or formed across a first surface of a back end of line layer ([0028]: 123/RDL).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to include in the device of Venezia as modified by Nigishi, the thermal conduction layer adhered to or formed across a first surface of the back end of line layer, as taught by Yu, for the benefits of increasing the thermal cooling due to the metallization layer that can also double part of the thermal transfer across the device, and thus reduce dark current in the imaging device, since increased heat during imaging devices operation cause dark current, which reduce device reliability.
Regarding claim 2: Venezia teaches the claim limitation of the solid state active pixel image sensor of claim 1, on which this claim depends,
wherein said epitaxial layer (115) is formed on a substrate ([0024]: 110) comprising silicon ([0023]), and
wherein said substrate comprising silicon is thinned or removed after formation of said epitaxial layer ([0024]: substrate 110 is formed; the method forming the device does not differentiate the claimed invention form the prior art).
Applicant is reminded that a "product by process" claim is directed to the product per se, no matter how actually made, In re Hirao, 190 USPQ 15 at 17 (footnote 3). See also In re Brown, 173 USPQ 685; In re Luck, 177 USPQ 523; In re Wertheim, 191 USPQ 90 (209 USPQ 554 does not deal with this issue); In re Fitzgerald, 205 USPQ 594, 596 (CCPA); In re Marosi et al., 218 USPQ 289 (CAFC); and most recently, In re Thorpe et al., 227 USPQ 964 (CAFC, 1985) all of which make it clear that it is the final product per se which must be determined in a "product by process" claim, and not the patentability of the process, and that, as here, an old or obvious product produced by a new method is not patentable as a product, whether claimed in "product by process" claims or not. Note that Applicant has burden of proof in such cases as the above case law makes clear; MPEP § 2113.
Regarding claim 3: Venezia teaches the claim limitation of the solid state active pixel image sensor of claim 2, on which this claim depends,
wherein said thinning or removal is performed by polishing, chem-mechanical polishing, ion milling or laser ablation; ([0024]: substrate 110 is formed; the method forming the device does not differentiate the claimed invention form the prior art).
Applicant is reminded that a "product by process" claim is directed to the product per se, no matter how actually made, In re Hirao, 190 USPQ 15 at 17 (footnote 3). See also In re Brown, 173 USPQ 685; In re Luck, 177 USPQ 523; In re Wertheim, 191 USPQ 90 (209 USPQ 554 does not deal with this issue); In re Fitzgerald, 205 USPQ 594, 596 (CCPA); In re Marosi et al., 218 USPQ 289 (CAFC); and most recently, In re Thorpe et al., 227 USPQ 964 (CAFC, 1985) all of which make it clear that it is the final product per se which must be determined in a "product by process" claim, and not the patentability of the process, and that, as here, an old or obvious product produced by a new method is not patentable as a product, whether claimed in "product by process" claims or not. Note that Applicant has burden of proof in such cases as the above case law makes clear; MPEP § 2113.
Regarding claim 6: Venezia, Nigishi and Yu teach the claim limitation of the solid state active pixel image sensor of claim 1, on which this claim depends,
wherein said thermal conduction layer comprises a metal, a metal compound, silicon, boron nitride, diamond or graphite (Negishi: Col. 29, Lines 14-16: Aluminum (Al) is metal).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Venezia et al. (US 2011/0089517 A1) in view of Negishi et al. (US 6,130,503 A) and Yu et al. (US 2014/0070348 A1) and Rhodes et al. (US 2010/0159632 A1).
Regarding claim 4: Venezia teaches the claim limitation of the solid state active pixel image sensor of claim 2, on which this claim depends,
wherein said substrate has a thickness of between 0 and 5 microns after said thinning or removal ([0023]: a few meets the claim limitation requirements).
Note that only several microns overlap a range of 1 to 5.
Applicant is reminded that a prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art or when the ranges of a claimed composition do not overlap but are close enough such that one skilled in the art would have expected them to have the same properties. In re Peterson, 65 USPQ2d 1379 (CA FC 2003).
In the alternative, Rhodes teaches this limitation. See below:
Rhodes teaches (e.g., Figs. 1 and 6A-6D) a solid state active pixel image sensor comprising a substrate having a thickness of between 0 and 5 microns after thinning or removal process ([0030]-[0031]: less than 4 microns after thinning substrate meets the claim limitation requirements).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to include in the device of the substrate having a thickness of between 0 and 5 microns after thinning or removal process, as taught by Rhodes, for the benefits of making a more compact device and more portable devices.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Venezia et al. (US 2011/0089517 A1) in view of Negishi et al. (US 6,130,503 A) and Yu et al. (US 2014/0070348 A1) as applied above and further in view of Wang et al. (US 2013/0210188 A1).
Regarding claim 5: Venezia, Nigishi and Yu teach the claim limitation of the solid state active pixel image sensor of claim 3, on which this claim depends,
Venezia as modified by Negishi does not expressly teach that said substrate has a thickness of between 0 and 5 microns after said thinning or removal.
Wang teaches a (e.g., Figs. 1-4) solid state active pixel image sensor for direct back-illuminated exposure to an electron beam, comprising: a substrate having a thickness of between 0 and 5 microns after thinning or removal ([0005]: 2 to 2.5 microns after thinning, meet the claim limitation requirement).
It would have been obvious to a person of ordinary skill in the art at the time of the effective filing date to include in the device of Venezia as modified by Negishi, the substrate having a thickness of between 0 and 5 microns after thinning or removal, as taught by Wang, for the benefits of further improving quantum efficiency (Wang: [0005]); thinning a substrate further reduces the size and allow for more compact devices.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-6 have been considered but are moot because the new ground of rejection does not rely on any reference or combination of references applied in the prior rejection of record for any teaching or matter specifically challenged in the argument or new references introduced due to limitations.
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 HERVE-LOUIS Y ASSOUMAN whose telephone number is (571)272-2606. The examiner can normally be reached M-F: 08:30 AM-5:30 PM.
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/HERVE-LOUIS Y ASSOUMAN/Examiner, Art Unit 2812
