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 .
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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 14 and 19 of U.S. Patent No. 12, 259, 273. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 and 14 are claiming selecting a first photodiode by closing a first, second, and third switches, and not selecting a first photodiode by opening its respective first, second, and third switches, and claim 19 further discloses a readout process. Claims 2-7 are also rejected based on their dependency on rejected claim 1.
Claim Rejections - 35 USC § 112
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 1-2 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.
Regarding claim 1, the last limitation, “read the first photodiode” should be clearer as to say that it is “the selected first photodiode,” because as written, the claim is making a distinction between a selected first photodiode and a non-selected first photodiode, and although it appears to be referring to the selected photodiode as being readout, it is not completely clear and therefore the claim is indefinite.
Regarding claim 2, the limitation, “reset the first photodiode” is similarly unclear as to whether it is referring to the selected or the non-selected first photodiode. Therefore, the claim is indefinite.
Claims 3-7 are also indefinite by virtue of their dependency on indefinite claim 1.
Allowable Subject Matter
Claims 2-7 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims, and overcoming the double patent rejection.
The following is a statement of reasons for the indication of allowable subject matter: The invention as claimed, specifically in combination with: a first switch and a second switch of a second part of a first amplifier corresponding to the selected first photodiode, a third switch corresponding to the selected first photodiode; and a first switch and a second switch of a second part of an amplifier corresponding to a non-selected first photodiode; and a third switch corresponding to the non-selected first photodiode, are not taught or made obvious by the prior art of record.
Claims 8-20 are allowed.
The following is an examiner’s statement of reasons for allowance:
Regarding claims 8-14, the invention as claimed, specifically in combination with: an amplifier comprising: a first switch and a second switch configured to selectively couple the second part of an amplifier to the first part of the amplifier, and selectively couple, via the first switch and the second switch, the second part corresponding to a selected photodiode to the first part of the amplifier; decouple, via the first switch and the second switch, the second parts corresponding to non-selected photodiodes from the first part of the amplifier, are not taught or made obvious by the prior art of record.
Regarding claims 15-20, the invention as claimed, specifically in combination with: a first control signal to close a first switch and a second switch of a second part of a first amplifier corresponding to the selected first photodiode, wherein the first switch is coupled between a first terminal of a transistor of the second part and a first part of the first amplifier, and the second switch is coupled between a second terminal of the transistor of the second part and the first part of the first amplifier; generating, by the control circuit, a second control signal to close a third switch coupled between a feedback circuit and an output terminal of the first amplifier, is not taught or made obvious by the prior art of record.
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.”
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
U.S. Patent Publication No. 2018/0262704 ("Xue") discloses an amplifier split into two parts (see Fig. 3A), but does not disclose a first switch and a second switch of a second part of a first amplifier corresponding to the selected first photodiode, a third switch corresponding to the selected first photodiode.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MONICA T. TABA whose telephone number is (571)272-1583. The examiner can normally be reached Monday - Friday 9 am - 6 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Georgia Epps can be reached at 571-272-2328. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MONICA T TABA/Examiner, Art Unit 2878
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