www.uspto.gov
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`17/216,763
`
`03/30/2021
`
`HIROAKIIJIMA
`
`083710-3330
`
`1006
`
`Rimon PC - Panasonic Corporation
`8300 Greensboro Dr.
`Suite 500
`McLean, VA 22102
`
`DINH, BACH T
`
`1726
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`09/11/2024
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time 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):
`USPTOmail @rimonlaw.com
`
`eofficeaction @appcoll.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`Office Action Summary
`
`Application No.
`17/216,763
`Examiner
`BACH T DINH
`
`Applicant(s)
`IIJIMA et al.
`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 STATUTORYPERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensionsof 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 08/08/2024.
`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) 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)(2) 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*
`1-20 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) 1-5 and 16-17 is/are withdrawn from consideration.
`() Claim(s)__is/are allowed.
`Claim(s) 6-15 and 20 is/are rejected.
`)
`Claim(s) 18-19 is/are objected to.
`(J Claim(s
`are subject to restriction and/or election requirement
`)
`* 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)L) The specification is objected to by the Examiner.
`11)0) The drawing(s) filedon__is/are: a)C] 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)C) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`c)LJ None ofthe:
`b)L) Some**
`a)L} All
`1.1 Certified copies of the priority documents have been received.
`2.1.) Certified copies of the priority documents have been received in Application No.
`3.1) 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)
`
`2) (J Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date
`U.S. Patent and Trademark Office
`
`3)
`
`4)
`
`(LJ Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20240910
`
`

`

`Application/Control Number: 17/216,763
`Art Unit: 1726
`
`Page 2
`
`DETAILED ACTION
`
`Notice of Pre-AlA orAIA Status
`
`1.
`
`The presentapplication,filed on or after March 16, 2013, is being examined under the first
`
`inventorto file provisions of the AIA.
`
`This is the response to the communication filed on 08/08/2024.
`
`Summary
`
`Claims 1-20 remain pending in the application with claims 1-5 and 16-17 are withdrawn from
`
`2.
`
`3.
`
`consideration in light of the Applicants’ election of claims 6-15 and 18-20 for examination.
`
`Continued Examination Under 37 CFR 1.114
`
`4.
`
`A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR
`
`1.17(e), was filed in this application after final rejection. Since this applicationis eligible for continued
`
`examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the
`
`finality of the previous Office action has been withdrawn pursuant to 37 CFR1.114. Applicant's
`
`submission filed on 08/08/2024 has been entered.
`
`Election/Restrictions
`
`5.
`
`Applicant’s election of Group III, claims 6-15 and 18-20 in the reply filed on 08/08/2024is
`
`acknowledged. Because applicant did not distinctly and specifically point out the supposederrors in the
`
`restriction requirement, the election has been treated as an election without traverse (MPEP §
`
`818.01(a)).
`
`

`

`Application/Control Number: 17/216,763
`Art Unit: 1726
`
`Page 3
`
`Claim Rejections - 35 USC § 103
`
`6.
`
`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 forthin 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.
`
`7.
`
`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 contents of the 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 present in the application indicating obviousness or
`
`nonobviousness.
`
`8.
`
`Claim(s) 6-12, 14-15 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over
`
`Miyake (US 2017/0214875) in view of Shimizu (JP2016160270). Further evidence is provided by
`
`Tokuhara etal. (US 2018/0294316).
`
`Addressing claims 6-11, 14 and 20, Miyake discloses a photoelectric conversion element(figs. 2
`
`and 4) comprising:
`
`a first electrode 11;
`
`a second electrode 12; and
`
`a photoelectric conversion film 15m which is placed between the first electrode and the
`
`second electrode and which contains a composition containing a naphthalocyanine derivative
`
`(tin naphthalocyanine for absorbinglight in the near-infrared region [0107] and acts as the p-
`
`type organic semiconductor material in the mixed layer 15m [0111, 0113]) and at least one of an
`
`

`

`Application/Control Number: 17/216,763
`Art Unit: 1726
`
`Page 4
`
`organic p-type semiconductor or an organic n-type semiconductor mixed with the composition
`
`in bulk heterojunction configuration [0110-0113].
`
`Miyakeis silent regarding the naphthalocyanine derivative represented by the claimed formula.
`
`Shimizu discloses near-infrared absorbing material that is usable in CMOSimage sensors [0002].
`
`The near-infrared absorbing materialis a naphthalocyanine derivative having the claimed
`
`formula wherein, X1, X¢, X7, X12, X13, X1g, X19 aNd Xzq are alkoxy group [0009], such as methoxy,
`
`ethoxy group [0021] that correspond to the claimed -O-R, to -O- Rg groups with R,-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 Rg-R2 as aryl group that may have a substituent [0013], suchas
`
`pentafluorophenyl group and 4-cyanophenyl| group that meet the claimedlimitations. Tokuhara
`
`provides evidence in paragraph [0136] that silicon naphthalocyanine derivative acts as donor
`
`material (which qualifies as p-type material according to Miyake in paragraph [0111]) in bulk
`
`heterojunction with fullerene as the acceptor or n-type material (Miyake, [0112]).
`
`At the time of the effective filing date of the invention, one with ordinary skill in the art would
`
`have found it obvious to modify the photoelectric conversion element of Miyake by substituting
`
`the known tin naphthalocyanine derivative with the known silicon naphthalocyanine derivative
`
`disclosed by Shimizu in order to obtain the predictable result of forming a photoelectric
`
`conversion layer for generating electrical current from near-infrared light absorption (Rationale
`
`B, KSR decision, MPEP 2143). The silicon naphthalocyanine derivative of Shimizu is structurally
`
`configured to function as the p-type semiconductor material in the bulk heterojunction
`
`

`

`Application/Control Number: 17/216,763
`Art Unit: 1726
`
`Page5S
`
`photoelectric conversion film as well as to absorb light in the near-infrared spectrum as required
`
`by Miyake as discussed above.
`
`Addressing claim 12, the claimed formula 7 is met when Xi, X¢, X7, X12, X13, Xig, X19 aNd Xoq4 are
`
`propoxy group [0021] and R3-R, are “aryl group which may have a substituent” suchas 4-
`
`cyanophenyl group [0020].
`
`Addressing claim 15, Miyake discloses an imaging device 100 (fig. 1) comprising:
`
`a substrate 20; and
`
`a pixel 10 including a charge detection circuit (36+38) attached to the substrate (via the
`
`correspondingelectrical lines), a photoelectric converter (11-13, fig. 2) placed above the
`
`substrate, anda charge storage node 41 electrically connected to the charge detection circuit
`
`and the photoelectric converter [0074 and 0076],
`
`wherein the photoelectric converter includes the photoelectric conversion element
`
`according to claim 6 (please see the rejection of claim 6 above).
`
`9.
`
`Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Miyake (US
`
`2017/0214875) in view of Shimizu (JP2016160270) as applied to claims 6-12, 14-15 and 20 above, and
`
`further in view of Hayes etal. (US 2007/0228340).
`
`Addressing claim 13, Miyake and Shimizu are silent regarding limitation of current claim.
`
`Hayesdiscloses a near infrared absorbing composition [0023] comprisingsilicon
`
`naphthalocyanine [0037, 0042]. Hayes further discloses is between 0.01 to 80 wt.%or35 to45
`
`

`

`Application/Control Number: 17/216,763
`Art Unit: 1726
`
`Page 6
`
`wt.% [0050, 0078] with the amount of naphthalocyanine affects the level of absorptionin the
`
`composition [0078].
`
`At the time of the effective filing date of the invention, one with ordinary skill 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 Hayashiin view of
`
`Shimizu in the concentration range disclosed by Hayesin order to optimize the near-infrared
`
`light absorption efficiency of the composition.
`
`Allowable Subject Matter
`
`10.
`
`Claims 18-19 are objected to as being dependent upon a rejected base claim, but would be
`
`allowable if rewrittenin independent form including all of the limitations of the base claim and any
`
`intervening claims.
`
`Response to Arguments
`
`11.
`
`Applicant’s arguments with respect to claim(s) 6-15 and 20 have been considered but are moot
`
`because the new ground of rejection does not rely on any reference applied in the prior rejection of
`
`record for any teaching or matter specifically challengedin the argument.
`
`

`

`Application/Control Number: 17/216,763
`Art Unit: 1726
`
`Page 7
`
`Conclusion
`
`12.
`
`Anyinquiry concerning this communication or earlier communications from the examiner
`
`should be directed to BACH T DINH whose telephone number is (571)270-5118. The examiner can
`
`normally be reached Mon-Friday 8:00 - 4:30 EST.
`
`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 reachthe 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 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 managepatent submissions in Patent Center,visit: https://patentcenter.us pto. gov.Visit
`
`https ://www.uspto.gov/patents/a pply/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.
`
`/BACHT DINH/
`Primary Examiner, Art Unit 1726
`09/10/2024
`
`