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 1-4 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).
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 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.
Regarding claim 2: Venezia and Nigishi teach 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 and Nigishi teach 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 4: Venezia and Nigishi teach 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.
Regarding claim 6: Venezia and Nigishi 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 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) as applied above and further in view of Wang et al. (US 2013/0210188 A1).
Regarding claim 5: Venezia and Nigishi 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 improve quantum efficiency (Wang: [0005]); thinning a substrate further reduces the size and allow for more compact devices.
Conclusion
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/HERVE-LOUIS Y ASSOUMAN/Examiner, Art Unit 2812