DETAILED ACTION
This Office action for U.S. Patent Application No. 18/985,275 is responsive to communications filed 14 July 2026, in reply to the Non-Final Rejection of 22 April 2026.
Claims 1–5, 7, and 10 are pending.
In the previous Office action, claims 1–10 were rejected under 35 U.S.C. § 103 as obvious over U.S. Patent Application Publication No. 2009/0115011 A1 (“Ushiro”) in view of U.S. Patent Application Publication No. 2017/0092676 A1 (“Yun”).
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 .
Response to Arguments
Applicant's arguments filed with respect to claim 1 have been fully considered but they are not persuasive. Applicant has placed the substance of claims 6, 8, and 91 into independent claim 1, and alleges Ushiro does not disclose the claimed “filter array that is positioned closer to the pixel array than the stereoscopic elements” (14 July 2026 “REMARKS” (“Rem.”) 5–6), that Yun allegedly “does not remedy the deficiencies of Ushiro” (Rem. 7), that the Non-Final Rejection allegedly did not sufficiently map the claim limitations of three wavelength regions with the prior art (Rem. 7), that the combination of Ushiro and Yun is allegedly based on improper hindsight (Rem. 7), and that any modification of Ushiro or Yun to move an optical element would not be a matter of obvious design choice (Rem. 7–8).
With respect to the allegations that Ushiro specifically does not teach the relative positionings of the filter array, pixel array, and stereoscopic elements, or that Ushiro fails to teach one of these structures at all, during prosecution, “[a] prior art reference must be considered in its entirety, i.e., as a whole”. M.P.E.P. § 2141.02(VI) (quoting W.L. Gore & Assoc. v. Garlock, Inc., 721 F.2d 1540, 220 U.S.P.Q. 303 (Fed. Circ. 1983) (emphasis in original). Here, claim 1 as amended recites a structure having the layers stereoscopic element array, filter array, and pixel array in this order; the limitation “the filter array is closer to the pixel array than the plurality of spectroscopic elements” is interpreted as “the filter array is closer to the pixel array than the plurality of spectroscopic elements is to the pixel array”, not “the filter array is closer to the pixel array than it is to the plurality of spectroscopic elements”.
Ushiro Fig. 1 illustrates a structure with the layers microlens array 8a, color filter 3, and photodiodes 2 in this order. Claim 1 does not, under the Broadest Reasonable Interpretation standard, preclude the Ushiro absorption-type color filter (¶ 0045) from being the generic “filter array”, and the array of photodiodes that constitute color pixels (¶ 0005) forms a pixel array. Paragraph 0091 describes a microlens layer that separates light for each wavelength, which makes it a spectroscopic element. While Ushiro ¶ 0091 in context describes the microlens array in Figure 2 as being paired with a holographic filter and in an embodiment in which the relative positions of the microlens array and filter are switched, it does not appear that the function of the microlens array changes between the Fig. 1 and Fig. 2 embodiments, but the microlens array has the same function of guiding red light to red light photodiodes, green light to green light photodiodes, and blue light into blue light photodiodes. As such, the citations to Fig. 2 for the function of the microlens array as analogous to the claimed spectroscopic element plurality and to Fig. 1 for the structure of the microlens array is proper. As an AI might put it, this is not rearrangement. It is commonality.
Additionally and alternatively, Ushiro Fig. 16 shows an embodiment with two holographic films 71 and 72. To anticipate the claimed structure, the top film 71 must act as a spectroscopic element array, and the bottom film 72 must act as a filter array. However, both these films satisfy both functional elements; holographic film 71 has a defined diffraction efficiency (¶ 0112) and so is spectroscopic, and holographic film 72 has a defined intensity ratio between diffracted light and transmitted light (¶ 0113), and functions as a filter.
Applicant may distinguish from Ushiro Fig. 1 or Fig. 16 by amending claim 1 to recite details of the function or structure of at least one of the filter array and spectroscopic array that differ from the structure and operation of Ushiro, if such an amendment can be supported by the specification as originally filed.
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With respect to the allegations that Yun does not teach the disputed limitations, Yun was not relied on in the Non-Final Rejection for any limitation in claims 6, 8, and 9 as originally filed, and it is not needed for Yun also to disclose these elements separately from Ushiro. The examiner does not concede that Yun fails to teach any of the limitations in claims 6, 8, or 9 as originally filed. Applicant is reminded one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 U.S.P.Q. 871 (C.C.P.A. 1981); In re Merck & Co., 800 F.2d 1091, 231 U.S.P.Q. 375 (Fed. Cir. 1986).
With respect to the allegation that the Non-Final Rejection failed to “identify where Ushiro . . . discloses or suggests . . . specific wavelength-dependent peak characteristics in combination with the claimed filter arrangement and optical stack” to Applicant’s satisfaction in the claim 6 rejection, it is unclear what Applicant demands. If the charge is that the mentions of blue, green, and red light in Ushiro is not sufficient to disclose specifically wavelengths of 500 nm or less, 500 to 600 nm, and 600 nm or more, respectively, Applicant’s attention is directed to Ushiro Fig. 17, which shows blue light as described by Ushiro as having a peak at about 440 nm, green light as described by Ushiro as having a peak at about 545 nm, and red light as described by Ushiro as having a peak at about 620–640 nm, within the claimed bounds. Applicant is further reminded that during prosecution, all claim terms are ordinarily to be given their plain meaning within the art. M.P.E.P. § 2111.01. As such, it is not necessary to assume any correspondence between “red”, “green”, or “blue” in considering how these words are used in both claim 6 as originally filed or Ushiro was deficient based on hidden technical definitions to satisfy the prima facie case of nonpatentability.
With respect to the allegation that the combination of Ushiro and Yun “would require selective reconstruction of Ushiro using Applicant’s disclosure as a road map, rather than being supported by any teaching or suggestion found in the cited references themselves and thus constitutes impermissible hindsight”, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 U.S.P.Q. 209 (C.C.P.A. 1971).
With respect to the allegation that the relative placement of the filter array and stereoscopic elements is not a matter of design choice, the examiner has no comments to the merits of this statement. A “design choice” rationale for obviousness was only applied to the relative placements of columnar structures having different widths in claim 7, and not used to reject any of claims 6, 8, or 9. Under 37 C.F.R. § 1.111(b), a reply to Office action only must “point out the supposed errors in the examiner’s action”, not errors in rejections not actually made. See Ex parte Kreiling, Appeal No. 2014-005850 at 9 (P.T.A.B., 2 June 2017) (denial of request for rehearing and reconsideration) (non-precedential), “Apellants cannot meet their burden of identifying error in the rejection the examiner actually made by pointing to their discussion of hypothetical rejection an examiner might have made”.
Claim Rejections - 35 U.S.C. § 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 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 1–5, 7, and 10 are rejected under 35 U.S.C. § 103 as being unpatentable over U.S. Patent Application Publication No. 2009/0115011 A1 (“Ushiro”) in view of U.S. Patent Application Publication No. 2017/0092676 A1 (“Yun”)2.
Ushiro, directed to a solid-state image device, teaches with respect to claim 1, an image capturing element, comprising:
a pixel array formed by a plurality of pixels arranged in an array (¶ 0018, plurality of photodiode regions arranged in an array) on a substrate (Fig. 2, silicon substrate 1),
each of the plurality of pixels including a photoelectric conversion element (id., set of photodiodes 2);
a transparent layer formed on the pixel array (¶ 0090, diamond-like carbon (DLC) film containing holographic color filter 3a; alternatively, Figs. 13–14, glass substrate 20 onto which DLC film 21 is deposited); and
a spectroscopic element array formed by a plurality of spectroscopic elements arranged in an array (id., color filter 3a and microlens 8b split light spectroscopically into red, green, and blue light)
each of the plurality of spectroscopic elements being at a position corresponding to one of the plurality of pixels inside or on the transparent layer (Fig. 2, e.g., microlens 8b corresponds to pixel 2), and
a filter array between the pixel array and the spectroscopic element array, the filter array being formed by at least one type of filters arranged in an array (Ushiro Fig. 16, ¶ 0112; two-layer holographic filter in which each layer has a defined diffraction efficiency and transmission ratio; alternatively, Figure 1 embodiment including microlens array 8a and color filter 3 in which microlens array 8a guides each separate light wavelength to its respective photodiode).
each of the plurality of spectroscopic elements includes a plurality of microstructures formed from a material having a refractive index higher than a refractive index of the transparent layer (Figs. 13–14, ¶¶ 0100–103; regions n2 and n3 of DLC having higher refractive indices than n1),
the plurality of microstructures have a microstructure pattern (id., patterns of DLC regions that form the holographic diffraction grating),
and each of the plurality of spectroscopic elements separates incident light into deflected light beams having different propagation directions according to a wavelength (¶ 0091, spectroscopically splitting light into red, green, and blue channels),
and emits the deflected light beams (id., lens 8b separates and converges the split lights for transmission),
wherein the deflected light beams emitted separately are incident on a first pixel, a second pixel, and a third pixel adjacent to each other of the plurality of spectroscopic elements (Fig. 2, red, green, and blue photodiodes 2), and
when the incident light is white light,
the light incident on the first pixel has a light intensity peak in a blue wavelength region being a wavelength region of 500 nm or less (id., light incident on blue photodiode)
the light incident on the second pixel has a light intensity peak in a green wavelength region being a wavelength region of 500 nm to 600 nm (id., light incident on green photodiode), and
the light incident on the third pixel has a light intensity peak in a red wavelength region being a wavelength region of 600 nm or more (id., light incident on red photodiode), and
wherein the filter array is closer to the pixel array than the plurality of spectroscopic elements (Fig. 16, lower holographic filter 72; alternatively, Fig. 1 filter 3 closer to photodiodes 2 than microlens array 8a).
The claimed invention differs from Yun in that the claimed invention specifies that adjacent spectroscopic elements have do not translation symmetry in at least one direction. Ushiro at Figure 5 shows rows of identical structures. However, Yun, directed to an image sensor, teaches with respect to claim 1:
adjacent spectroscopic elements in at least one of array directions in the spectroscopic element array have no translation symmetry (e.g., Fig. 2, array of pixels such that rows and columns of pixels alternatingly are first pixel regions 1 not having first color separation element 150 and second pixel regions 2 having color separation element 150; Fig. 7, nearest pixel regions PX2 in each row having a color separation element alternate in perpendicular directions; Fig. 14, alternating pixels in rows and columns respectively have first color separation element 150 and second color separation element 160; Fig. 15, alternating pixels in rows and columns have color separation elements that both are different shapes and different orientations).
It would have been obvious to one of ordinary skill in the art at the time of effective filing to modify Ushiro so that different pixel types placed adjacently on an array row or column are provided with different color separation structures or orientations, as taught by Yun, to increase the efficiency of color separation and thereby produce greater efficiency in sensing light and color purity of each pixel type. Yun ¶¶ 0170–173.
Regarding claim 2, Ushiro in view of Yun teaches the image capturing element according to claim 2, wherein the different propagation directions according to wavelength between the adjacent spectroscopic elements in the array of the array directions the spectroscopic element array differ from each other (Yun Figs. 7, 14; alternating orientations of nearest color separation elements in each pixel row and column).
Regarding claim 3, Ushiro in view of Yun teaches the image capturing element according to claim 1, wherein sets of the spectroscopic elements are repeatedly arranged along a first direction of the spectroscopic element array (Ushiro Figs. 13–14, periodic patterns of regions n1–n2 or n1, n2, and n3),
each of the sets of the spectroscopic elements including N (N ≥ 2) spectroscopic elements adjacent to each other along the first direction (id.),
and, in each of the sets of the spectroscopic elements, the N spectroscopic elements adjacent to each other have different microstructure patterns (¶¶ 0100–103, different refractive indices of n1, n2, and n3).
Claim 7 is directed to patterns of three microstructure patterns formed by columnar structures of three different widths3. Ushiro Figure 14 illustrates the columnar structures, with region n1 being the widest, region n3 being the second widest, and region n2 being the third widest. The first microstructure pattern requires the widest and second widest columnar structures to be adjacent, but Ushiro Figure 14 does not show widest and second widest regions being adjacent. However, it would have been considered obvious to one of ordinary skill in the art at the time of effective filing to rearrange components of the Ushiro holographic film, and their underlying color-specific photodiodes, to conform to the claimed three patterns, since it has been held that rearranging prior art components without affecting their operation is considered an obvious matter of design choice. M.P.E.P. § 2144.04(VI)(C).
Regarding claim 4, Ushiro in view of Yun teaches the image capturing element according to claim 1, wherein the plurality of microstructures in each of the plurality of spectroscopic elements have a constant thickness in a transmission direction of light (Ushiro Figs. 13–14, regions n1–n2 or n1–n3 within DLC film 21).
Regarding claim 5, Ushiro in view of Yun teaches the image capturing element according to claim 1, wherein the plurality of microstructures in each of the plurality of spectroscopic elements have varying thickness in a transmission direction of light, according to a position (Ushiro Fig. 2, structure of microlens 8b).
Regarding claim 10, Ushiro in view of Yun teaches an image capturing apparatus, comprising:
the image capturing element according to claim 1 (claim 1 rejection supra);
an image capturing optical system for forming an optical image on an image capturing surface of the image capturing element (passim, “imaging device”); and
a signal processing unit configured to process an electrical signal output by the image capturing element (Ushiro ¶ 0006, charge on photodiode 2 transferred to register 4 and amplified as electrical signal).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The following prior art was found using an Artificial Intelligence assisted search using an internal AI tool that uses the classification of the application under the Cooperative Patent Classification (CPC) system, as well as from the specification, including the claims and abstract, of the application as contextual information. The documents are ranked from most to least relevant. Where possible, English-language equivalents are given, and redundant results within the same patent families are eliminated. See “New Artificial Intelligence Functionality in PE2E Search”, 1504 OG 359 (15 November 2022), “Automated Search Pilot Program”, 90 F.R. 48,161 (8 October 2025).
US 2014/0055571 A1
US 2014/0022445 A1
US 2015/0215593 A1
US 2014/0022423 A1
US 2012/0140100 A1
US 2015/0029313 A1
JP 2015-076796 A
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 C.F.R. § 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 C.F.R. § 1.17(a)) pursuant to 37 C.F.R. § 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 David N Werner whose telephone number is (571)272-9662. The examiner can normally be reached M--F 7:30--4:00 Central.
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 http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Dave Czekaj can be reached at 571.272.7327. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/David N Werner/Primary Examiner, Art Unit 2487
1 None of the disputed limitations were argued during prosecution of the parent application 17/762,298, which was allowed on separate grounds for limitations not present in the present application.
2 Both these references were listed in the 18 December 2024 Information Disclosure Statement.
3 During prosecution of the ‘298 application, Applicant overcame reliance on Ushiro alone by specifying the columnar structures are separated from each other.
Prosecution Insights