DETAILED ACTION
Reissue
The present reissue application is directed to US 11,569,123 B2 (“123 Patent”). 123 Patent issued on January 31, 2023 with claims 1-17 from application 17/194,641 filed on March 8, 2021.
Application 17/194,641 is a continuation of 16/410,877 (now US 10,985,102 B2), which is a continuation of 15/992,908 (now US 10,431,621 B2), which is a continuation of 15/228,860 (now US 10,038,024 B2), which is a continuation of 14/718,942 (now US 9,443,802 B2), which is a division of 14/467,852 (now US 9,111,763 B2), which is a division of 13/533,526 filed on June 26, 2012 (now US 8,896,125 B2).
This application claims priority to JP 2012-006356, filed on January 16, 2012; JP 2011-210142, filed on September 27, 2011; JP 2011-170666, filed on August 4, 2011; JP 2011-168021, filed on August 1, 2011; and JP 2011-148883, filed on July 5, 2011.
This application was filed on August 13, 2024. Since this date is after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions. Furthermore, the present application is being examined under the pre-AIA first to invent provisions.
This application presents broadened claims, which are permitted because Applicant filed these claims and demonstrated an intent to broaden within two years of the issue date of 123 Patent.
The most recent amendment was filed on August 13, 2024. The status of the claims is:
Claims 1-10 and 17: Amended
Claims 11-16: Original
Claims 18 and 19: New
This is a first, non-final action.
References and Documents Cited in this Action
123 Patent (US 11,569,123 B2)
Okuyama (US 2011/0042814 A1)
Trezza (US 2006/0278989 A1)
Nishihara (US 2011/0050969 A1)
Summary of Rejections and Objections in this Action
Examiner objects to the claim amendment and the reissue declaration.
Claim 19 is rejected 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement.
Claims 18 and 19 are rejected under 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite.
Claims 1-19 are rejected as being based upon a defective reissue declaration under 35 U.S.C. 251.
Claim 19 is rejected under 35 U.S.C. 251 as being based upon new matter.
Claims 1-15 and 17-19 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Okuyama in view of Trezza.
Claim 16 is are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Okuyama in view of Trezza and Nishihara.
Summary of the Claims
123 Patent is generally directed to a semiconductor device including a first substrate having a first electrode, a first interlayer insulating film, and a first structure surrounding the first electrode; and a second substrate having a second electrode, a second interlayer insulating film, and a second structure surrounding the second substrate. See Figures 40A and 40B.
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Claims 1, 16, and 17 are the independent claims. Claim 1 is representative:
1. (Amended) An imaging device, comprising:
a first substrate including a plurality of pixels and a first wiring layer, the first wiring layer including a first electrode, a first interlayer insulating film, and a first structure; and
a second substrate including a second wiring layer, the second wiring layer including a second electrode, a second interlayer insulating film, and a structure,
wherein the first substrate and the second substrate are bonded to each other such that the first wiring layer and the second wiring layer are facing each other,
wherein the first structure surrounds the first electrode in a plan view,
wherein a portion of the first interlayer insulating film is disposed between the first structure and the first electrode in the plan view,
wherein the second structure surrounds the second electrode in the plan view, and
wherein a portion of the second interlayer insulating film is disposed between the second structure and the second electrode in the plan view.
Claim Amendment
Examiner objects to the claim amendment filed on August 13, 2024 because claims 11-16 should include status indicators “(Original)” after the claim numbers; and claims 18-19 should include status indicators “(New)” after the claim numbers. See 37 CFR 1.173 and MPEP 1453.
Oath/Declaration
The reissue oath/declaration filed with this application is defective (see 37 CFR 1.175 and MPEP § 1414) because of the following:
The declaration by the four inventors of 123 Patent filed on October 17, 2024 is improper because the bottom of page 2 states there is only “1” supplemental sheet of additional joint inventors, when there are actually three supplemental sheets for three additional joint inventors:
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Furthermore, each of these three supplemental sheets states that it is “Page 1 of 1” instead of being labeled “Page 1 of 3,” Page 2 of 3,” and “Page 3 of 3”:
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Correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 19 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 19, which depends on claims 1 and 18, recites “The imaging device of claim 18, wherein the second structure extends through the first interlayer insulating film.” However, parent claim 1 recites that the second structure is of the second substrate, wherein the second substrate includes a second interlayer insulating film. The first interlayer insulating film is of the first substrate. 123 Patent does not support an embodiment were the second structure, of the second substrate, somehow extends through the first interlayer insulating film of the first substrate. Figure 40A, for example, shows the second structure 964 extending through interlayer insulating film 971 of the second substrate, not the first interlayer insulating film 951 of the first substrate (in the cross-sectional view). Examiner suggests that claim 19 may recite that the second structure extends through the second interlayer insulating film instead (although note the additional rejection of the claim under 35 U.S.C. 112, second paragraph below).
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 18 and 19 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 18 recites “wherein the first structure extends through the first interlayer insulating film.” Similarly, claim 19 (as well as it may be understood in view of 35 U.S.C. 112, first paragraph as discussed above) recites “wherein the second structure extends through the first interlayer insulating film.” The claims are indefinite because it is unclear in which direction the extending through occurs. Based on Figure 40A and language found in other claims, Examiner suggests that claims 18 and 19 further recite “in a cross-sectional view” in the claims.
Claim Rejections - 35 USC § 251
Claims 1-19 are rejected as being based upon a defective reissue declaration under 35 U.S.C. 251 as set forth above. See 37 CFR 1.175.
The nature of the defect(s) in the declaration is set forth in the discussion above in this Office action.
Claim 19 is also rejected under 35 U.S.C. 251 as being based upon new matter added to the patent for which reissue is sought. The added material which is not supported by the prior patent is as follows:
The second structure of the second substrate extending through the first interlayer insulating film of the first substrate.
See the related discussion under 35 U.S.C. 112(a).
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 (i.e., changing from AIA to pre-AIA ) 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 pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-15 and 17-19 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Okuyama in view of Trezza.
Regarding independent claim 1, Okuyama discloses an imaging device (Figures 1A-B and 2A; paragraph [0082] explicitly discloses an “imaging device”), comprising:
a first substrate 3A including a plurality of pixels (it would be well understood in the art that each of chips 5 in an “imaging device” would comprise at least one pixel) and a first wiring layer 9, the first wiring layer including a first electrode (i.e., first pad 17A) and a first interlayer insulating film (i.e., first dielectric film 15A) and
a second substrate 3B including a second wiring layer 9, the second wiring layer including a second electrode (i.e., second pad 17B) and a second interlayer insulating film (i.e., second dielectric film 15B),
wherein the first substrate and the second substrate are bonded to each other such that the first wiring layer and the second wiring layer are facing each other (see Figures 1B and 2A).
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Okuyama does not specifically disclose a first structure surrounding the first electrode in a plan view and a second structure surrounding the second electrode in a plan view.
However, Trezza teaches an imaging device that is related to the one disclosed by Okuyama, including a substrate 112 (e.g., Figures 1-4; Trezza specifically teaches that the electronic device may be an imaging device comprising photodetectors; paragraph [0136]). Trezza further teaches an electrode (i.e., conductor 2802; Figure 28B), an insulating material 500 (unlabeled crosshatched section in Figure 28B; see Figure 27; paragraph [0185]), and a structure (i.e., metal 2804),
wherein the structure 2804 surrounds the electrode 2802 in a plan view (the plan view corresponding to Figure 28B is not explicitly shown, but Figures 3 and 4 show exemplary cross section and plan views, respectively, and one in the art would understand that Figure 28B is similarly a cross section view of an annular/circular object in a plan view); and
wherein the insulating material 500 is disposed between the structure 2804 and the electrode 2802 (Figure 28B; paragraphs [0180]-[0191])
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Regarding claim 1, it would have been obvious to surround the first and second electrodes in the device disclosed by Okuyama with corresponding first and second structures as taught by Trezza in order to advantageously protect the electrodes against electro-magnetic interference (Trezza, paragraph [0180]).
Regarding claim 2, in the system taught by Okuyama in view of Trezza, including two electrodes surrounded by two structures, the first structure contacts the second structure (i.e., Trezza teaches that the structures can act as a “conductor to operate as a electro-magnetic interference (EMI) shield to protect against signal noise,” and one in the art would understand that two structures facing each other such as in the system taught by Okuyama in view of Trezza would necessarily contact each other to act as a single conductor).
Regarding claim 3, the system taught by Okuyama in view of Trezza includes first and second electrodes bonded together (as disclosed by Okuyama) with first and second structures (as taught by Trezza) surrounding the first and second electrodes, respectively, as discussed above with regard to claim 1. Trezza does not teach first and second structures having different widths. However, Okuyama suggests that the two electrodes 17A and 17B being bonded together have different widths in order to ensure that they make proper contact even with slight misalignment of the substrates at the time of bonding (Okuyama, Figure 2A; paragraphs [0038]-[0041]). It would have been obvious to a person of ordinary skill in the art to also have the first and second structures in the system taught by Okuyama in view of Trezza, be different widths as suggested by Okuyama, in order to ensure that both the electrodes and the structures make proper contact even with slight misalignment of the substrates.
Regarding claim 4, in the system taught by Okuyama in view of Trezza, Trezza teaches that the first structure and the second structure include one of Ti, Ta, Ru or any nitrides of Ti, Ta, or Ru (paragraph [0374]).
Regarding claims 5 and 6, in the system taught by Okuyama in view of Trezza, the first structure includes a first region and a second region in a cross-sectional view, and wherein the first electrode is disposed between the first region and the second region in the cross-sectional view; and the second structure includes a third region and a fourth region in a cross-sectional view, and wherein the second electrode is disposed between the third region and the fourth region. More specifically, the structure taught by Trezza includes two regions 2804 in a cross-sectional view, and the electrode 2802 is disposed between these regions in the cross-sectional view (Figure 28B).
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Regarding claim 7, in the system taught by Okuyama in view of Trezza, Okuyama discloses that the plan view is a bonded surface of the first wiring layer and the second wiring layer (i.e., see annotated Figure 1B of Okuyama above; the plan view is the surface between substrates 3A and 3B where the electrodes are bonded).
Regarding claims 8 and 9, in the system taught by Okuyama in view of Trezza, Trezza teaches that the first structure is in a shape of a circle in the plan view and the second structure is in a shape of a circle in the plan view. Although the plan view corresponding to Trezza, Figure 28B is not explicitly shown, Trezza, Figures 3 and 4 show exemplary cross section and plan views, respectively (see also paragraph [0143]). Figure 28B is similarly a cross section view of an annular/circular object in a plan view; Trezza also specifically describes the shapes in Figure 28B using the words “annulus” and “annular” (paragraphs [0185]-[0189]).
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Regarding claim 10, Okuyama in view of Trezza teach a system as discussed above with respect to claim 1, including a first and second structures surrounding the first and second electrodes. These structures taught by Trezza are configured to protect the electrodes from water at least in the sense that the structures surround the electrodes such that the electrodes are inside the structures and would be protected from any elements, including water, that the outer structure would be more exposed to. Trezza also teaches that fluids 21606, including water, can be placed inside the substrates 21602 without interfering with the electrical connections of the electrodes at least in part due to the additional structures and layers taught by Trezza (Trezza, Figure 216; paragraphs [0472]-[0476]). The claim does not recite further details with respect to how the structure is configured to protect against water.
Regarding claims 11 and 12, in the system taught by Okuyama in view of Trezza, Okuyama further discloses a barrier metal 21 disposed between the first electrode 17A and the first interlayer insulating film 15A, wherein the barrier metal includes one of Ti, Ta, Ru, or any nitrides of Ti, Ta, or Ru (Okuyama, Figure 2A; paragraph [0026] discloses “barrier metal 21 may be formed from materials, such as TiN or TaN”).
Regarding claims 13 and 14, in the system taught by Okuyama in view of Trezza, Okuyama further discloses the first wiring layer includes a third electrode, wherein the third electrode contacts the first electrode, and the second wiring layer includes a fourth electrode, wherein the fourth electrode contacts the second electrode. More specifically, Okuyama discloses that the first wiring layer of first substrate 3A includes at least one additional electrode like the first electrode and similarly, the second wiring layer of second substrate 3B includes at least one additional electrode like the second electrode (see Figure 1B).
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Regarding claim 15, in the system taught by Okuyama in view of Trezza, Okuyama further discloses that the first electrode and the second electrode are different sizes (e.g., Figure 2A shows first electrode 17A and second electrode 17B are different sizes; see also Okuyama, paragraphs [0038]-[0041]).
Regarding claims 18 and 19, as well as the claims may be understood with respect to 35 U.S.C. 112, first and second paragraphs as discussed above, in the system taught by Okuyama in view of Trezza, the first structure extends through the first interlayer insulating film and the second structure extends through the second interlayer insulating film (i.e., Trezza teaches a structure 2804 that extends through insulating material in a cross-sectional view as shown in Figure 28B).
Regarding independent claim 17, the claim recites a method of providing a semiconductor device corresponding to providing the elements that are recited in independent claim 1. Okuyama in view of Trezza teach the method of claim 17 for the same reasons as the device of claim 1 as discussed in detail above, herein incorporated by reference.
Claim 16 is are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Okuyama in view of Trezza and Nishihara.
Regarding independent claim 16, the claim recites an electronic device including all of the elements and limitations recited in independent claim 1. Okuyama in view of Trezza teach the device of claim 16 for the same reasons as the device of claim 1 as discussed in detail above, herein incorporated by reference, except that Okuyama in view of Trezza do not specifically teach “a signal processing circuit configured to process an output signal of said imaging device” further recited in claim 16.
. However, Nishihara teaches a device that is related to the one taught by Okuyama in view of Trezza, including an imaging device including a plurality of pixels (e.g., imaging device 410 in Figure 21; see also Figures 1-3). Nishihara further teaches a signal processing circuit (e.g., signal processing circuit PRC 440 in Figure 21; paragraph [0457]-[0460] configured to process an output signal of the imaging device. Regarding claim 16, first, it would have been it would have been obvious to surround the first and second electrodes in the device disclosed by Okuyama with corresponding first and second structures as taught by Trezza in order to advantageously protect the electrodes against electro-magnetic interference (Trezza, paragraph [0180]). Again, see related discussion under claim 1. Then, it would have been further obvious to include a signal processing circuit as taught by Nishihara to properly convert the imaging device output into useable images for a camera user.
Conclusion
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which this reissue application is or was involved. These proceedings would include interferences, reissues, reexaminations, and litigation. Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application. These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Applicant is notified that any subsequent amendment to the specification and/or claims must comply with 37 CFR 1.173(b).
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 https://www.uspto.gov/patents/laws/interview-practice.
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Any inquiry concerning this communication or earlier communications from the examiner, or as to the status of this proceeding, should be directed to Examiner Christina Leung at telephone number (571) 272-3023; the Examiner’s supervisor, SPE Patricia Engle at (571) 272-6660; or the Central Reexamination Unit at (571) 272-7705.
/CHRISTINA Y. LEUNG/Primary Examiner, Art Unit 3991
Conferees:
/DEANDRA M HUGHES/Reexamination Specialist, Art Unit 3992
/Patricia L Engle/SPRS, Art Unit 3991