DETAILED ACTION
Reissue
The present reissue application is directed to US 11,563,057 B2 (“057 Patent”). 057 Patent issued on January 24, 2023 with claims 1-20 from application 17/083,376 filed on October 29, 2020, which is a continuation of PCT/JP2019/041830 filed on October 25, 2019, and claims priority to JP 2018-216499 filed on November 19, 2018.
This application was filed on January 10, 2025. 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 first inventor to file provisions of the AIA .
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 057 Patent.
The most recent amendment was filed on January 10, 2025. The status of the claims is:
Claims 1-4 and 20: Original
Claims 5-19: Canceled
Claims 21-36: New
This is a first, non-final action.
References and Documents Cited in this Action
057 Patent (US 11,563,057 B2)
US 11,723,225 B2
Nozawa (US 2018/0047788 A1)
Minami (US 2015/0028405 A1)
Aoki (US 2013/0235237 A1)
Summary of Rejections and Objections in this Action
Claims 1-4, 20, and 36 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1, 3, 4, and 20 of U.S. Patent No. 11,723,225 B2.
Claims 1-4 and 20-36 are rejected as being based upon a defective reissue declaration under 35 U.S.C. 251.
Summary of the Claims
057 Patent is directed to an imaging device including a photoelectric conversion layer. Claim 36 is representative:
36. An imaging device comprising:
a semiconductor substrate; and
a photoelectric converter, wherein:
the semiconductor substrate is a silicon substrate or a silicon compound substrate,
the photoelectric converter receives light transmitted through the semiconductor substrate,
the photoelectric converter includes
a first electrode,
a second electrode, and
a photoelectric conversion layer that is located between the first electrode and the second electrode and that contains a material which absorbs light having a first wavelength longer than or equal to 1.1 μm, and
a spectral sensitivity of the material in a wavelength region of longer than or equal to 1.0 μm and shorter than 1.1 μm is within a range of more than or equal to 0% and less than or equal to 5% of a maximum value of a spectral sensitivity of the material in a wavelength region of longer than or equal to 1.1 μm.
Claims 1, 21, and 36 are the independent claims. Claim 1 further recites, among other things, a first transistor located on a second surface of the semiconductor substrate. Claim 21 further recites, among other things, an optical filter between the semiconductor substrate and the photoelectric converter.
Oath/Declaration
The reissue oath/declaration filed with this application is defective (see 37 CFR 1.175 and MPEP § 1414). The statement of at least one error upon which this reissue is based is insufficient:
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Although Applicant has properly identified a specific claim being broadened (i.e., claim 1), Applicant has not identified a specific error in the claim. In specifically identifying the error as required by 37 CFR 1.175(a), it is sufficient that the reissue oath/declaration identify the claim being broadened and a single word, phrase, or expression in the specification or in an original claim, and how it renders the original patent wholly or partly inoperative or invalid. For example, instead of generally referring to “some of the limitations of original claim 1,” Applicant should quote a specific word or phrase from patent claim 1 that is not in new claim 21 or new claim 36.
Claim Rejections - 35 USC § 251
Claims 1-4 and 20-36 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.
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 1-4, 20, and 36 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1, 3, 4, and 20 of U.S. Patent No. 11,723,225 B2. Although the claims at issue are not identical, they are not patentably distinct from each other.
Regarding independent reissue claims 1 and 36, although the recited elements are not identical to the elements of independent claim 1, they are not patentably distinct from each other because they are of the same scope of invention with claim 1 of US 11,723,225 B2 anticipating the instant claims. Reissue claims 1 and 36 and claim 1 of US 11,723,225 B2 are directed to an imaging device including a semiconductor substrate including a first surface that receives light from outside, and a second surface opposite to the first surface; a first transistor located on the second surface; and a photoelectric converter that faces the second surface and that receives light transmitted through the semiconductor substrate, wherein the semiconductor substrate is a silicon substrate or a silicon compound substrate, the photoelectric converter includes a first electrode electrically connected to the first transistor, a second electrode, and a photoelectric conversion layer that is located between the first electrode and the second electrode and that contains a material which absorbs light having a first wavelength longer than or equal to 1.1 μm. Given claim 1 of US 11,723,225 B2, it would have been obvious to create reissue claims 1 and 36 by slightly changing the wording of limitations and/or removing limitations.
Reissue claim 2 further recites the material has a quantum nanostructure, which is also recited in claim 1 of US 11,723,225 B2. Reissue claim 2 is therefore also rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of US 11,723,225 B2.
Reissue claims 3, 4, and 20 further recite the same elements and are also rejected on the ground of nonstatutory double patenting as being unpatentable over dependent claims 3, 4, and 20 of US 11,723,225 B2 respectively.
Allowable Subject Matter
Claims 1-4 and 20-36 may contain allowable subject matter if Applicant overcomes the 35 U.S.C. 251 and double patenting rejections in this Office action.
Nozawa teaches, among other things, an imaging device including a photoelectric conversion layer 39 containing nanotubes (Figures 2 and 3A-B; paragraphs [0066], [0079], [0087]).
Minami teaches, among other things, an imaging device including photoelectric conversion units 40 (Figure 3; paragraphs [0036]-[0048]).
Aoki teaches, among other things, an imaging device including photoelectric conversion units 215 and 225 (Figure 2; paragraph [0035]).
The prior art does not specifically disclose or fairly teach an imaging device the combination of including all of the elements, steps, and limitations recited in claims 1-4 and 20-36, particularly including:
a photoelectric conversion layer that is located between the first electrode and the second electrode and that contains a material which absorbs light having a first wavelength longer than or equal to 1.1 μm; and a spectral sensitivity of the material in a wavelength region of longer than or equal to 1.0 μm and shorter than 1.1 μm is within a range of more than or equal to 0% and less than or equal to 5% of a maximum value of a spectral sensitivity of the material in a wavelength region of longer than or equal to 1.1 μm (e.g., claims 1 and 36); or
an optical filter between the semiconductor substrate and the photoelectric converter, a photoelectric conversion layer that is located between the first electrode and the second electrode and that contains a material which absorbs light having a first wavelength longer than or equal to 1.1 μm, and the optical filter transmits light having the first wavelength and cuts light having a second wavelength shorter than 1.1 μm (e.g., claim 21).
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