DETAILED ACTION
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
2. This application is a CON of App. No. PCT/JP2023/005467, filed on 02/16/2023, which is entitled to and claims the benefit of priority of JP Patent App. No. 2022-022316, filed 02/16/2022. The preliminary amendment filed on 08/16/2024 is entered and acknowledged by the Examiner.
3. Claims 1-10 are pending. Claims 1-10 are under examination on the merits
Information Disclosure Statement
4. The information disclosure statement submitted on 08/16/2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the examiner has considered the information disclosure statement.
Drawings
5. The drawings are received on 08/16/2024. These drawings are acceptable.
Priority
6. Receipt is acknowledged of papers submitted on 12/01/2025 under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
Claim Rejections - 35 USC § 112
7. 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.
8. Claims 1-10 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 pre-AIA the applicant regards as the invention. Claim 1 recites “the infrared light pass filter structure has an average transmittance of 30% or less in a first wavelength range of 400 nm or more and 800 nm or less, an average transmittance of 75% or more in a second wavelength range of 900 nm or more and 1100 nm or less, and an average transmittance of 55% or less in a third wavelength range of 1300 nm or more and 2500 nm or less”, wherein applicant fails to articulate by sufficiently distinct functional language, the thickness of the infrared light pass filter in which the average transmittance is measured, thus claim 1 constitutes indefinite subject matter as per the metes and bounds of said phrase engenders indeterminacy in scope. Claims 2, 7-10 being depended on claim 1 are rejected as well.
Claim Rejections - 35 USC § 102/103
9. The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
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.
10. Claims 1, 7, 9 are rejected under 35 U.S.C. 102 (a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Arayama et al. (JP 2018-045011, machine translation, hereinafter “’011”).
Regarding claim 1: ‘011 discloses an infrared light pass filter (Page 6/88, [0001]), comprising: 55 parts by mass of coloring material composition, 4.5-7.0 parts by mass of polymerizable compound, 0.8 parts by mass of photopolymerization initiator, 0.001 parts by mass of polymerization inhibitor, 0.03 parts by mass of surfactant, 1.3 parts by mass of UV absorber, and 31 parts by mass of solvent (Page78/88, [0226], Examples; Page 79/88, Table 4). ‘011 discloses the composition may further include a near infrared absorbing compound such as indium tin oxide (ITO) particles (Page 24/88, [0051]). ‘011 is silent regarding the infrared light pass filter structure has an average transmittance of 30% or less in a first wavelength range of 400 nm or more and 800 nm or less, an average transmittance of 75% or more in a second wavelength range of 900 nm or more and 1100 nm or less, and an average transmittance of 55% or less in a third wavelength range of 1300 nm or more and 2500 nm or less.
However, since ‘011 discloses the identical or substantially identical infrared light pass filter (Page 6/88, [0001]), comprising: 55 parts by mass of coloring material composition, 4.5-7.0 parts by mass of polymerizable compound, 0.8 parts by mass of photopolymerization initiator, 0.001 parts by mass of polymerization inhibitor, 0.03 parts by mass of surfactant, 1.3 parts by mass of UV absorber, and 31 parts by mass of solvent (Page78/88, [0226], Examples; Page 79/88, Table 4). ‘011 discloses the composition may further include a near infrared absorbing compound such as an indium tin oxide (ITO) particles (Page 24/88, [0051]) as the recited claimed, one of ordinary skill in the art before the effective filing date of the claimed invention, would have expected that the claimed effects and physical properties, i.e. light transmittance, would inherently/implicitly be achieved by ‘011 (i.e., the infrared light pass filter structure has an average transmittance of 30% or less in a first wavelength range of 400 nm or more and 800 nm or less, an average transmittance of 75% or more in a second wavelength range of 900 nm or more and 1100 nm or less, and an average transmittance of 55% or less in a third wavelength range of 1300 nm or more and 2500 nm or less). If there is any difference between the product of ‘011 and the product of the instant claims the difference would have been minor and obvious. “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I). Absent an objective showing to the contrary, the addition of the claimed physical properties to the claim language fails to provide patentable distinction over the prior art.
Where ... the claimed and prior art products are identical or substantially identical ... the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product." In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations and footnote omitted). The mere recitation of a property or characteristic not disclosed by the prior art does not necessarily confer patentability to a composition or a method of using that composition. See In re Skoner, 51 7 F .2d 94 7, 950 ( CCP A 197 5).
It is submitted that a reference disclosure can anticipate a claim when the reference describes the limitations but "'d[oes] not expressly spell out' the limitations as arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination." Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381, 114 USPQ2d 1250, 1254 (Fed. Cir. 2015) (quoting In re Petering, 301 F.2d 676, 681(CCPA 1962)).
Regarding claim 7: ‘011 discloses a filter for solid-state image sensors, comprising: a color filter, and the infrared light pass filter (Page 65/88, [0201], Fig. 1).
Regarding claim 9: ‘011 discloses a solid-state image sensor, comprising: the filter for solid-state image sensors, a first photoelectric conversion device covered by the color filter, and a second photoelectric conversion device covered by the infrared light pass filter (Page 65/88, [0201], Fig. 1).
Claim Rejections - 35 USC § 103
11. 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.
12. Claims 2-6, 8-10 are rejected under 35 U.S.C. 103(a)(1) as being unpatentable over Arayama et al. (JP 2018-045011, machine translation, hereinafter “’011”) as applied to claim 1 above.
Regarding claim 2: The disclosure of ‘011 is adequately set forth in paragraph 10 above and is incorporated herein by reference. ‘011 teaches the content of the other near infrared absorbing compound is preferably 0.01% to 50% by mass with respect to the total solid content of the composition. The lower limit is preferably 0.1% by mass or more, and more preferably 0.5% by mass or more. The upper limit is preferably 30% by mass or less, and more preferably 15% by mass or less (Page 25/88, [0053]).
Thus, the subject as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness, see In re Malagari, 182 U.S.P.Q 549.
Regarding claim 3: The disclosure of ‘011 is adequately set forth in paragraph 10 above and is incorporated herein by reference. ‘011 teaches an infrared light pass filter (Page 6/88, [0001]), comprising: 55 parts by mass of coloring material composition, 4.5-7.0 parts by mass of polymerizable compound, 0.8 parts by mass of photopolymerization initiator, 0.001 parts by mass of polymerization inhibitor, 0.03 parts by mass of surfactant, 1.3 parts by mass of UV absorber, and 31 parts by mass of solvent (Page78/88, [0226], Examples; Page 79/88, Table 4). ‘011 teaches the composition may further include a near infrared absorbing compound such as indium tin oxide (ITO) particles (Page 24/88, [0051]), wherein the content of the other near infrared absorbing compound is preferably 0.01% to 50% by mass with respect to the total solid content of the composition. The lower limit is preferably 0.1% by mass or more, and more preferably 0.5% by mass or more. The upper limit is preferably 30% by mass or less, and more preferably 15% by mass or less (Page 25/88, [0053]).
Thus, the subject as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness, see In re Malagari, 182 U.S.P.Q 549.
Regarding claim 4: The disclosure of ‘011 is adequately set forth in paragraph 10 above and is incorporated herein by reference. ’011 teaches the polymerizable compound includes a trifunctional acryl monomer such as Aronix M - 305, manufactured by Toagosei Co., Ltd. M - 2:KAYARAD DPHA , manufactured by NipponKayaku Co., Ltd (Page 79/88, [0229]).
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Regarding claims 5-6: The disclosure of ‘011 is adequately set forth in paragraph 10 above and is incorporated herein by reference.’ 011 teaches the coloring composition, further comprising: a photopolymerization initiator comprising an oxime ester-based photopolymerization initiator such as IRGACURE OXE02, BASF, which chemically known as a carbazole-based O-acetyloxime derivative (1-(O-acetyloxime)-1-[9-ethyl-6-(2-methylbenzoyl)-9H-carbazol-3-yl]ethanone) (Page 79/88, [0229]).
Regarding claim 8: The disclosure of ‘011 is adequately set forth in paragraph 10 above and is incorporated herein by reference. ‘011 teaches a filter for solid-state image sensors, comprising: a color filter, and the infrared light pass filter (Page 65/88, [0201], Fig. 1).
Regarding claims 9-10: The disclosure of ‘011 is adequately set forth in paragraph 10 above and is incorporated herein by reference. ‘011 teaches a solid-state image sensor, comprising: the filter for solid-state image sensors, a first photoelectric conversion device covered by the color filter, and a second photoelectric conversion device covered by the infrared light pass filter (Page 65/88, [0201], Fig. 1).
13. Claims 9-10 are rejected under 35 U.S.C. 103(a)(1) as being unpatentable over Arayama et al. (JP 2018-045011, machine translation, hereinafter “’011”) as applied to claim 1 above, and further in view of Iwata et al. (US Pub. No. 2021/0358983 A1, hereinafter “’983”).
Regarding claims 9-10: The disclosure of ‘011 is adequately set forth in paragraph 10 above and is incorporated herein by reference. This rejection is applied in the interest of advancing prosecution in the event it can be shown that ‘011 does not expressly teach a solid-state image sensor, comprising: the filter for solid-state image sensors, a first photoelectric conversion device covered by the color filter, and a second photoelectric conversion device covered by the infrared light pass filter
However, ‘983 teaches the infrared cut-off filter 13 cuts off infrared light that may otherwise be detected by the photoelectric conversion elements 11, to prevent it from reaching the photoelectric conversion elements 11, to thereby improve the accuracy of detection of visible light by the photoelectric conversion elements 11. That is, the infrared cut-off filter 13 prevents infrared light that may otherwise be detected by the photoelectric conversion elements 11, to prevent it from passing through to the photoelectric conversion elements 11. The infrared light that may be detected by the photoelectric conversion elements 11 is near-infrared light having a wavelength of, for example, 800 nm or more and 1000 nm or less. The infrared cut-off filter 13 is a common layer to the red filter 12R, the green filter 12G, and the blue filter 12B. That is, a single infrared cut-off filter 13 covers the red filter 12R, the green filter 12G, and the blue filter 12B (Page 3, [0047], Fig. 1).
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In an analogous art of the infrared light pass filter, and in the light of such benefit before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to modify by a solid-state image sensor by ‘011, so as to include a solid-state image sensor, comprising: the filter for solid-state image sensors, a first photoelectric conversion device covered by the color filter, and a second photoelectric conversion device covered by the infrared light pass filter as taught by ‘983, and would have been motivated to do so with reasonable expectation that this would result in providing to thereby improve the accuracy of detection of visible light by the photoelectric conversion elements as suggested by ‘983 (Page 3, [0047]).
Examiner Information
14. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Bijan Ahvazi, Ph.D. whose telephone number is (571) 270-3449. The examiner can normally be reached on Mon-Fri 9.00 A.M. -7 P.M..
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached on 571-272-1130. 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.
/Bijan Ahvazi/
Primary Examiner, Art Unit 1763
08/13/2026
bijan.ahvazi@uspto.gov
Prosecution Insights