www.uspto.gov
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`17/216,763
`
`03/30/2021
`
`HIROAKI IJIMA
`
`083710-3330
`
`1006
`
`McDermott Will and Emery LLP
`The McDermott Building
`500 North Capitol Street, N.W.
`Washington, DC 20001
`
`DINH, BACHT
`
`1726
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`10/16/2023
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`Thetime period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`
`mweipdocket@mwe.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`Office Action Summary
`
`Application No.
`17/216,763
`Examiner
`BACH T DINH
`
`Applicant(s)
`IIJIMAetal.
`Art Unit
`1726
`
`AIA (FITF) Status
`Yes
`
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom the mailing
`date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHSfrom the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`
`
`1) Responsive to communication(s) filed on 03/30/2021.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`2a)() This action is FINAL. 2b)¥)This action is non-final.
`3)02 An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
`4)\0) Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`Disposition of Claims*
`1-15 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`Cj} Claim(s)
`is/are allowed.
`Claim(s) 1-15 is/are rejected.
`S)
`) © Claim(s)___is/are objected to.
`Cj) Claim(s
`are subjectto restriction and/or election requirement
`)
`S)
`* If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http://Awww.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) )
`
`Application Papers
`10)( The specification is objected to by the Examiner.
`11) The drawing(s) filed on 03/30/2021 is/are: a)[¥) accepted or b)( objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`_—_c)L) None ofthe:
`b)L) Some**
`a)¥) All
`1.4) Certified copies of the priority documents have been received.
`2.2 Certified copies of the priority documents have been received in Application No.
`3.4.) Copies of the certified copies of the priority documents have been receivedin this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`* See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1)
`
`Notice of References Cited (PTO-892)
`
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date
`U.S. Patent and Trademark Office
`
`3)
`
`(LJ Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) (J Other:
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20231010
`
`

`

`Application/Control Number: 17/216,763
`Art Unit: 1726
`
`Page 2
`
`DETAILED ACTION
`
`Notice of Pre-AlA or AIA Status
`
`1.
`
`The present application, filed on or after March 16, 2013, is being examined under the first
`
`inventor to file provisions of the AIA.
`
`Summary
`
`2.
`
`3.
`
`This is the initial Office Action based on the 17/216,763 application filed on 03/30/2021.
`
`Claims 1-15 are currently pending and have been fully considered.
`
`4.
`
`Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
`
`Priority
`
`5.
`
`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis
`
`Claim Rejections - 35 USC § 102
`
`for the rejections under this section made in this Office action:
`
`A person shall be entitled to a patent unless —
`
`(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale,
`or otherwise available to the public before the effectivefiling date of the claimed invention.
`
`(a)(2) the claimed invention was described in a patent issued under section 151, or in an application
`for patent published or deemed published under section 122(b), in which the patent or application, as
`the case may be, names another inventor and was effectively filed before the effective filing date of
`the claimed invention.
`
`6.
`
`Claim(s) 1-5 is/are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Shimizu
`
`(JP2016160270 with provided machine English translation).
`
`Addressing claims 1-4, Shimizu discloses a composition containing a naphthalocyanine derivative
`
`represented by the claimed formula (formular 1), wherein, X:, Xe, X7, X12, X13, X18, X19 and X24 are
`
`

`

`Application/Control Number: 17/216,763
`Art Unit: 1726
`
`Page 3
`
`alkoxy group [0009], such as methoxy, ethoxy group [0021] that correspond to the claimed -O-R:
`
`to -O- Rs groupswith R1-Rg are alkyl group [0021]. The Z group includes molecule having
`
`chemical formula 3 in page 3 and R3-R, that correspond to the claims Re-Ri2 as aryl group that
`
`may have a substituent [0013], such as pentafluorophenyl group and 4-cyanophenylgroup that
`
`meet the claimed limitations.
`
`Addressing claim 5, the claimed formula 7 is met when Xz, Xé, X7, X12, X13, X18, X19 and Xa are
`
`propoxy group [0021] and R3-R,are “aryl group which may have a substituent” such as 4-
`
`cyanophenylgroup [0020].
`
`Claim Rejections - 35 USC § 103
`
`7.
`
`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.
`
`8.
`
`The factual inquiries for establishing a background for determining obviousness under 35 U.S.C.
`
`103 are summarized as follows:
`
`1. Determining the scope and contentsofthe prior art.
`
`2. Ascertaining the differences between the prior art and the claims at issue.
`
`3. Resolving the level of ordinary skill in the pertinent art.
`
`4. Considering objective evidence presentin the application indicating obviousness or
`
`nonobviousness.
`
`

`

`Application/Control Number: 17/216,763
`Art Unit: 1726
`
`Page 4
`
`9.
`
`Claim(s) 6-12 and 14-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hayashi
`
`et al. (US 2009/0188547) in view of Shimizu (JP2016160270 with provided machine English translation).
`
`Addressing claim 6-11 and 14-15, Hayashi discloses an imaging device (fig. 2) comprising:
`
`a substrate (1); and
`
`a pixel including a charge detection circuit (MOS circuit described in paragraph [0093)])
`
`attached to the substrate, a photoelectric converter (lower electrode 101, photoelectric
`
`conversion layer 102 and upper electrode 104, described in paragraph [0088]) placed above the
`
`substrate(fig. 2), and a charge storage node (2-4, [0089-0092]) connected to the charge
`
`detection circuit and the photoelectric converter (fig. 2 and paragraph [0093]),
`
`wherein the photoelectric converter includes a photoelectric conversion element 102
`
`comprising materials having absorption spectrum in the near-infrared region or silicon
`
`naphthalocyanine material [0146].
`
`Hayashi is silent regarding the naphthalocyanine derivative having the claimed formula.
`
`Shimizu discloses near-infrared absorbing material that is usable in CMOS image sensors [0002].
`
`The near-infrared absorbing material is a naphthalocyanine derivative having the claimed
`
`formula wherein, X1, X¢, X7, X12, X13, X1s, X19 and X24 are alkoxy group [0009], such as methoxy,
`
`ethoxy group [0021] that correspond to the claimed -O-R: to -O- Rg groups with Ri-Rg are alkyl
`
`group [0021]. The Z group includes molecule having chemical formula 3 in page 3 and R3-R, that
`
`correspond to the claims Re-Riz as aryl group that may have a substituent [0013], such as
`
`pentafluorophenyl group and 4-cyanophenyl group that meet the claimed limitations.
`
`

`

`Application/Control Number: 17/216,763
`Art Unit: 1726
`
`Page 5
`
`At the time of the effective filing date of the invention, one with ordinaryskill in the art would
`
`have found it obvious to modify the image sensor of Hayashi by substituting the knownsi
`
`naphthalocyanine molecule with the knownsi naphthalocyanine molecule disclosed by Shimizu
`
`in order to obtain the predictable result of forming a photoelectric conversion element that
`
`absorbslight in the near-infrared spectrum (Rationale B, KSR decision, MPEP 2143).
`
`Furthermore, the si naphthalocyanine material of Shimizu is highly durable, has excellent near-
`
`infrared absorbing property and excellent solubility in solvents that provide easy processing
`
`(Shimizu, [0016)).
`
`Addressing claim 12, the claimed formula 7 is met when X1, Xe, Xz, X12, X13, Xis, Xig and X24 are
`
`propoxy group [0021] and R3-R,are “aryl group which may have a substituent” such as 4-
`
`cyanophenylgroup [0020].
`
`10.
`
`Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hayashi et al. (US
`
`2009/0188547) in view of Shimizu (JP2016160270 with provided machine English translation) as applied
`
`to claims 6-12 and 14-15 above, and further in view of Hayeset al. (US 2007/0228340).
`
`Addressing claim 13, Hayashi and Shimizu are silent regarding limitation of current claim.
`
`Hayes discloses a near infrared absorbing composition [0023] comprising silicon
`
`naphthalocyanine [0037, 0042]. Hayes further discloses is between 0.01 to 80 wt.% or 35 to 45
`
`wt.% [0050, 0078] with the amount of naphthalocyanine affects the level of absorption in the
`
`composition [0078].
`
`

`

`Application/Control Number: 17/216,763
`Art Unit: 1726
`
`Page 6
`
`At the time of the effective filing date of the invention, one with ordinaryskill in the art would
`
`have found it obvious to modify the photoelectric conversion element of Hayashi in view of
`
`Shimizu by perform routine experimentation with the concentration of silicon naphthalocyanine
`
`material in the near-infrared light absorbing composition in the concentration range disclosed
`
`by Hayesin order to optimize the near-infrared light absorption efficiency of the composition.
`
`Therefore, one would have arrived at the claimed concentration of the composition in the
`
`photoelectric conversion film when perform routine experimentation with the concentration of
`
`the silicon naphthalocyanine material in the photoelectric conversion film of Hayashi in view of
`
`Shimizu in the concentration range disclosed by Hayesin order to optimize the near-infrared
`
`light absorption efficiency of the composition.
`
`Conclusion
`
`11.
`
`Any inquiry concerning this communication or earlier communications from the examiner
`
`should be directed to BACH T DINH whosetelephone numberis (571)270-5118. The examiner can
`
`normally be reached Mon-Friday 8:00 - 4:30 EST.
`
`Examiner interviewsare 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,
`
`Jeffrey Barton can be reached on (571)-272-1307. The fax phone number for the organization wherethis
`
`application or proceedingis 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
`
`

`

`Application/Control Number: 17/216,763
`Art Unit: 1726
`
`Page 7
`
`https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and
`
`https://www.uspto.gov/patents/docx for information aboutfiling 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.
`
`/BACH T DINH/
`Primary Examiner, Art Unit 1726
`10/11/2023
`
`