CTNF 19/169,127 CTNF 79522 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-fti AIA The present application is being examined under the pre-AIA first to invent provisions. Information Disclosure Statement The information disclosure statement (IDS) submitted on 04/18/2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner. Priority 02-27 AIA Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. 13/033,187 , filed on 02/23/2011 . Double Patenting 08-33 AIA 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, 2, 5 and 11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4, 9 and 11 of U.S. Patent No. 11,979,672. Although the claims at issue are not identical, they are not patentably distinct from each other for the reasons discussed below: Regarding claim 1, the limitations of this instant claim are encompassed by the Patent claim 1. It should be noted that the instant limitations of “a second photoelectric conversion unit” and “a third photoelectric conversion unit” are met by “a third photoelectric conversion unit” and “a second photoelectric conversion unit”, respectively, in the Patent claim 1. These interchangeable terms are due to the Applicant’s amendment filed on 12/12/2023 in the parent application number 18/104,819 in which the allowable limitations of claim 11 were incorporated into the independent claim 1. Therefore, the scope of the instant claim 1 is encompassed by the scope of the Patent claim 1. Regarding claim 2, the limitations of this claim is met by Patent claim 4 (note some limitations are already included in Patent claim 1). Regarding claim 5, this claim is encompassed by Patent claim 9. Regarding claim 11, the limitations of this claim are also met by the combination of Patent claims 1 and 11. 08-36 AIA Claim s 3 and 4 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,979,672 in view of Kwon et al. (US 2010/0176474 A1, hereinafter “Kwon”) . Regarding claim 3, although Patent claim 1 is silent about the first member (a light shielding member) being disposed between the first filter and the second filter, such lack of teaching is well taught by Kwon. As shown in Fig. 1 of Kwon, a light shielding member (29a/29b) for reflecting incoming light and preventing light crosstalk is provided between a first color filter and a second color filter (both are represented by item 31) (note Fig. 1 and par. [0019]-[0020]). Therefore, it would have been obvious to one of ordinary skill in the art to configure the image sensor such that the first member would be disposed between the first color filter and the second color filter for the benefit of shielding light and preventing light crosstalk between the pixels as discussed above. Regarding claim 4, the combined teaching of Patent claim 1 and Kwon further teaches that the first member is disposed between the first on-chip lens and the second on-chip lens (see Kwon, Fig. 1 and par. [0019] and note the on-chip lenses 33) . Allowable Subject Matter 12-151-08 AIA 07-43 12-51-08 Claim s 6-10 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. 13-03-01 AIA The following is a statement of reasons for the indication of allowable subject matter: Regarding claim 6, the prior arts of record fail to teach or suggest the limitations of “an aperture of the second aperture is smaller than that of the first aperture.” Regarding claims 7-10, these claims are either directly or indirectly dependent from claim 6 . Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to NHAN T TRAN whose telephone number is (571)272-7371. The examiner can normally be reached Monday - Friday, 9:00am - 5:00pm. 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, Lin Ye can be reached on 571-272-7372. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /NHAN T TRAN/Primary Examiner, Art Unit 2638 Application/Control Number: 19/169,127 Page 2 Art Unit: 2638 Application/Control Number: 19/169,127 Page 3 Art Unit: 2638 Application/Control Number: 19/169,127 Page 4 Art Unit: 2638 Application/Control Number: 19/169,127 Page 5 Art Unit: 2638 Application/Control Number: 19/169,127 Page 6 Art Unit: 2638 Application/Control Number: 19/169,127 Page 7 Art Unit: 2638
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