DETAILED ACTION
Notice of Pre-AIA or 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 .
Priority
Acknowledgment is made of applicant's claim for foreign priority under 35 U.S.C. 119(a)-(d).
Information Disclosure Statement
The information disclosure statements filed on 8/22/2024, 04/01/2025, and 01/20/2026 have been acknowledged and signed copies of the PTO-1449 are attached herein.
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.
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.
Claim 19 is 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 19 recites, in successive clauses, that “the first pixel includes a first floating diffusion,” “the second pixel includes a second floating diffusion, ” “the third pixel includes a first floating diffusion, ” and “the fourth pixel includes a second floating diffusion.”
The claim recites four distinct floating diffusion structures using only two identifiers, each with the indefinite article “a.” One cannot determine whether the “first floating diffusion” of the third pixel is the same structure sharing as the “first floating diffusion” previously recited in the first pixel, or a separate structure sharing the same label. If the same, the claim is internally contradictory, because the two are recited as being included in different pixels and as responding to light in different wavelength ranges. If different, the claim fails to distinctly identify them. Appropriate correction is required.
Claim 2 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.
Claims 2 and 19 recite a floating diffusion “configured to accumulate a charge in response to the first pixel receiving light corresponding to a first wavelength range.” It is unclear what structural limitation is asserted by this language. A floating diffusion region receives charge transferred from a photoelectric conversion region; it does not itself perform photoelectric conversion, and it is not wavelength selective. Wavelength selectivity in the disclosed device is provided by the color filters (See, for example, Par [0064] of the current application PG PUB), not by any floating diffusion. The metes and bounds of a floating diffusion that is “configured to” respond to a particular wavelength range therefore cannot be determined.
Claim Rejections - 35 USC § 112(a)
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.
Claims 2 and 19 are 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.
The claims recite a floating diffusion configured to accumulate charge in response to the associated pixel receiving light of a specified wavelength range. The specification as originally file does not describe any such structure.
The term “floating diffusion” appears in the specification in a single context (See, Par [0110] of the current application PG PUB) and discusses “an FD (floating diffusion) is shared among the plurality of pixels.” That passage describes an FD shared across multiple pixels and associates no wavelength range, color filter, or spectral response with any FD. The specification elsewhere attributes wavelength selectivity exclusively to the color filters 15 and attributes charge generation to the PDs12.
Accordingly, the originally filed disclosure does not reasonably convey to one of ordinary skill that the inventor had possession of a floating diffusion configured to accumulate charge in response to a designated wavelength range. Applicant is requested to point to a specific support or to amend the claims to recite the color filters as the wavelength selective elements.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11742366.
Although the claims at issue are not identical, they are not patentably distinct from each other for the following reasons.
Claim 1 of US Pat. No. 11742366 recites a light detecting device comprising a plurality of pixels, wherein each pixel in the plurality of pixels includes a photoelectric conversion section; and a grid-patterned inter-pixel separation section separating the photoelectric conversion section of each pixel from one or more adjacent pixels, wherein the grid-patterned inter-pixel separation section includes a protruding section in a plan view; wherein a first pixel of the plurality of pixels includes a first color filter that is configured to transmit red light, wherein a second pixel of the plurality of pixels includes a second color filter that is configured to transmit green light, wherein the first pixel is adjacent to the second pixel in the plan view, and wherein a position of the protruding section in the first pixel is different from a position of the protruding section in the second pixel in the plan view. Dependent claims of US Pat. No. 11742366 further recite that the protruding section includes a first part and a second part that face each other in the plan view (See claims 2 and 3), and that the inter-pixel separation section includes DTI (See, for example, Claim 4).
Claim 1 of the current application recites the same grid of inter-pixel separation sections bearing protruding sections projecting into the interiors of adjacent pixels in plan view, differing only in that the recited inter-pixel difference is one of length rather than position. Current claims 4, 6, and 11-13, reciting separation sections that face each other and that are parallel or perpendicular to one another in plan view, correspond to the grid-pattern and facing part limitations of US Pat. No. 11742366. Claims 2 and 19 of the current application, reciting per-pixel wavelength ranges across a four-pixel group, correspond to the red/green/blue color filter limitations of US Pat. No. 11742366 claim 1 and 9.
Varying the length of a protruding section rather than its position, where both parameters are disclosed in the common specification as interchangeable design variables (See Par [0110] of current PG PUB) applied to the same structure for the same purposes, would have been obvious to one of ordinary skill in the art. The current claims are therefore an obvious variant of the US Pat. No.11742366 claims.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12100718 and U.S. Patent No. 11495628 for substantially the reasons given above. Each of these patents issues from the same chain of continuation applications, shares the common specification, and claims grid-patterned inter-pixel separation section provided with protruding sections projecting toward the photoelectric conversion sections.
Allowable Subject Matter
Claims 1 and 20 contain allowable subject matter over the prior art of record. Claims 1 and 20 would be allowable if the above nonstatutory double patenting rejection is overcome.
Claims 3-18 would be allowable over the prior art of record by virtue of their dependency on claim 1, subject to the same double patenting rejection. Claims 2 and 19 must additionally overcome the rejections under 35 USC § 112 (a) and (b) set forth above.
The following is an examiner’s statement of reasons for allowance:
In regards to claims 1 and 10, LEE et al. (US 2016/0099267 A1, "Lee") discloses (see, for example, Fig. 8) a plurality of pixels, wherein each pixel in the plurality of pixels includes a photoelectric conversion section, and a grid-patterned inter-pixel separation section separating the photoelectric conversion section of each pixel from one or more adjacent pixels, wherein the grid-patterned inter-pixel separation section includes a protruding section in a plan view; and more.
In regards to claim 1, Lee neither anticipates nor renders obvious the claimed subject matter of the instant application as a whole either taken alone or in combination, in particular, prior art of record does not teach that, of the two protruding sections carried by a single inter-pixel separation section, the first protruding into the first pixel and the second protruding into the second pixel, a length of the first protruding section is different than a length of the second protruding section in the plan view.
In regards to claim 20, Lee neither anticipates nor renders obvious the claimed subject matter of the instant application as a whole either taken alone or in combination, in particular, prior art of record does not teach that, in which the two protruding sections project toward the centers of the first and second pixels, respectively, and differ from one another in length.
Claims 2-19 are also allowed as being dependent of the allowed independent base claim.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERMIAS T WOLDEGEORGIS whose telephone number is (571)270-5350. The examiner can normally be reached on Monday-Friday 8 am - 5 pm E.S.T..
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Britt Hanley can be reached on 571-270-3042. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ERMIAS T WOLDEGEORGIS/Primary Examiner, Art Unit 2893
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