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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`17/349,730
`
`06/16/2021
`
`MASAKI FUJIKANE
`
`083710-3425
`
`4976
`
`Rimon PC - Panasonic Corporation
`8300 Greensboro Dr.
`Suite 500
`McLean, VA 22102
`
`SAMPLE, DAVID R
`
`1784
`
`PAPER NUMBER
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`NOTIFICATION DATE
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`DELIVERY MODE
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`04/24/2024
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`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)
`
`

`

`Application No.
`Applicant(s)
`17/1349,730
`FUJIKANE etal.
`
`Office Action Summary Art Unit|AIA (FITF)StatusExaminer
`David Sample
`1784
`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
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`1) Responsive to communication(s) filed on 14 March 2024.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
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`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*
`1-13 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) 13 is/are withdrawn from consideration.
`() Claim(s)__is/are allowed.
`Claim(s) 1-7 and 9-12 is/are rejected.
`)
`Claim(s) 8 is/are objectedto.
`(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)C) The specification is objected to by the Examiner.
`11) The drawing(s) filed on 16 June 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)LJ None ofthe:
`b)LJ Some**
`a)¥) All
`1.{¥) Certified copies of the priority documents have been received.
`2.1) Certified copies of the priority documents have been received in Application No.
`3.2.) 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 06162021;04132022.
`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 20240418
`
`

`

`Application/Control Number: 17/349,730
`Art Unit: 1784
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`Page 2
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`DETAILED ACTION
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`Notice ofPre-AIA or AIA Status
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`The presentapplication, filed on or after March 16, 2013, is being examined underthe
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`first inventorto file provisions of the AIA.
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`Election/Restrictions
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`Applicant’s election of GroupI, claims 1-12, in the reply filed on 14 March 2024 is
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`acknowledged. Because applicant did notdistinctly and specifically point out the supposed errors
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`in the restriction requirement, the election has beentreated as an election without traverse
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`(MPEP § 818.01(a)).
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`Claim 13 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being
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`drawn to a nonelected invention, there being no allowable generic or linking claim. Election was
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`made withouttraverse in the reply filed on 14 March 2024.
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`Claim Rejections - 35 USC § 112
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`The following is a quotation of 35 U.S.C. 112(d):
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`(d) REFERENCE IN DEPENDENT FORMS.—Subjectto subsection (e), a claim in dependent form
`shall contain a reference to a claim previously set forth and then specify a further limitation of the
`subject matter claimed. A claim in dependent form shall be construed to incorporate by referenceall the
`limitations of the claim to whichitrefers.
`
`The followingis a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
`
`Subject to the following paragraph [i.e., the fifth paragraph of pre-AIJA 35 U.S.C. 112], aclaim in
`dependent form shall contain a reference to a claim previously set forth and then specify a further
`limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by
`reference all the limitations of the claim to which it refers.
`
`Claims 9-11 are rejected under 35 U.S.C. 112(d) or pre-ATA 35 U.S.C. 112, 4th
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`paragraph, as being of improper dependent form forfailing to further limit the subject matter of
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`

`

`Application/Control Number: 17/349,730
`Art Unit: 1784
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`Page 3
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`the claim upon whichit depends, or for failing to includeall the limitations of the claim upon
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`which it depends.
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`Claim | expressly recites first through-holes and second through-holes. Claim 9-11
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`recite the first and/or second through-holes are filled with pillars. If the through-holes are
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`occupiedby pillars, they are no longer through-holes. Thus, claim 9 fails to includeall of the
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`limitations of claim 1.
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`For purposes of examination, “through-hole” has been interpreted to be a through-hole or
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`a filled through-hole.
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`Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper
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`dependent form,rewrite the claim(s) in independent form,or present a sufficient showingthat
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`the dependent claim(s) complies with the statutory requirements.
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`Claim Rejections - 35 USC § 102
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`In the eventthe determination ofthe status of the application as subject to AIA 35 U.S.C.
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`102 and 103 (or as subject to pre-AJA 35 U.S.C. 102 and 103) is incorrect, any correction of the
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`statutory basis (1.e., changing from AIA to pre-AIA)for the rejection will not be considered a
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`new groundof rejection if the prior art relied upon, and the rationale supporting the rejection,
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`would be the same undereitherstatus.
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`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the
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`basis for the rejections underthis section madein this Office action:
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`A personshall beentitled to a patent unless —
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`(a)(1) the claimed invention waspatented, described in a printed publication, or in public use, on sale,
`or otherwise available to the public before the effective filing date of the claimed invention.
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`

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`Application/Control Number: 17/349,730
`Art Unit: 1784
`
`Page 4
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`Claims 1-4 and 9-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by El
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`Kadyetal. (US 8,508,370 B1).
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`El Kadyetal. discloses a thermoelectric device including alternating n-type and p-type
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`phononic crystal layers, i.e., first and second phononic crystal layers. See col. 22, lines 8-14, and
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`Figure 17(e). El Kady etal. discloses a first n-type phononic crystal layer (38) includes through-
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`holes filled with n-type polysilicon (37) in an n-type phononic Si layer (36). El Kadyetal.
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`discloses a second p-type silicon phononic crystal in which through-holes in layer (39) are filled
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`with p-type polysilicon in an n-type crystalline silicon. See col. 22, lines 7-64, Figures 17(a)-(e).
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`These layers correspondto the claimed first and second phononic layers. Thefilled through-
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`holes in layer (38) are parallel to the filled through holes of layer (39). See Figure 17(e).
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`Asto claim 2, El Kadyet al. discloses the insulating layer (31) is not necessary. See col.
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`22, lines 19-21. In such a case, the n-type and p-type phononic crystals are in direct contact.
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`Asto claim 3, El Kady et al. discloses an embodimentin which the polysiliconfilled
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`through holes of layer (39) are not in contact with the polysilicon filled through holes of layer
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`(38) as seen in Figure 17(e).
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`Asto claim 4, El Kadyet al. discloses a first phononic crystal layer formed of an n-type
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`silicon semiconductor, anda second phononic crystal layer formed of a p-type silicon
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`semiconductor. See Figure 17(e) and col. 22, lines 50-55.
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`Asto claims 9 and 10, El Kadyet al. discloses the first and second phononic layers
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`contain pillars of polysilicon. See Figure 17(e) and col. 22, lines 8-64. Polysilicon is a different
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`material than n-type or p-typesilicon.
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`Asto claim 11, El Kady etal. discloses the pillars are formed of polysilicon whichis a
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`semiconducting material. See Figure 17(e) and col. 22, lines 8-64.
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`

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`Application/Control Number: 17/349,730
`Art Unit: 1784
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`Page 5
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`Asto claim 12, Figure 17(e) of El Kadyet al. shows first and secondsilicon phononic
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`layers separated by silicon. See Figure 17(e) and col. 22, lines 8-64.
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`Claims 1-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Takahashiet
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`al. (US 2017/0356806 A1).
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`Takahashiet al. discloses an infrared sensor which includes a beam(13). See paragraph
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`[0036] and Figure 5A. The beam includes a plurality of phononic crystal domains (21). Id.
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`Each domain hasparallel through-holes in a regular pattern. Jd. Each phononic crystal domain
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`(21) is deemed to fall within the broadest reasonable interpretation of the term “layer.”
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`As to claim 2, each domain contacts another domain.
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`/d.
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`Asto claim 3, the through holes in each domain are not in communication with each
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`other. Jd.
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`Asto claim 4, Takahashiet al. discloses the beam (13) comprising the phononic crystal
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`domains is formed of a semiconductor material. See paragraph [0041].
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`Asto claim 5, Takahashiet al. teaches each phononic crystal domain in the beam (13) has
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`a different period. See the abstract.
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`Asto claim 6, Takahashiet al. discloses each phononic crystal domain hasdifferent
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`diameter through-holes. See Figure 5A and paragraph [0038].
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`Asto claim 7, Takahashiet al. discloses each crystal domain may have a different type of
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`unit cell. See Figure 9 and paragraph [0039].
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`

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`Application/Control Number: 17/349,730
`Art Unit: 1784
`
`Page 6
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`Allowable Subject Matter
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`Claim 8 is objected to as being dependent uponarejected base claim, but would be
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`allowable if rewritten in independent form includingall of the limitations of the base claim and
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`any intervening claims.
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`Conclusion
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`Theprior art made of record and not relied upon is considered pertinent to applicant's
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`disclosure. Nagase etal.(WO 2017/141682 A1) and Bahret al. (US 2015/0237423 A1) teach
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`multilayer photonic crystal structures.
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`Any inquiry concerning this communication or earlier communications from the
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`examinershould be directed to David Sample whose telephone numberis (571)272-1376. The
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`examiner can normally be reached Mondayto Friday 7AM to 3:30 PM.
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`Examinerinterviews are available via telephone, in-person, and video conferencing using
`
`a USPTO supplied web-based collaboration tool. To schedule an interview, applicantis
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`encouragedto use the USPTO Automated Interview Request (AIR)at
`
`http://www.uspto.gov/interviewpractice.
`
`If attempts to reach the examinerby telephone are unsuccessful, the examiner’s
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`supervisor, Humera Sheikh can be reached on (571)272-0604. The fax phone numberfor the
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`organization where this application or proceedingis assignedis 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
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`https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more
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`

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`Application/Control Number: 17/349,730
`Art Unit: 1784
`
`Page 7
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`information aboutPatent Center and https://www.uspto.gov/patents/docx for information about
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`filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC)
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`Representative, call 800-786-9199 (IN USA OR CANADA)or 571-272-1000.
`
`/David Sample/
`Primary Examiner, Art Unit 1784
`
`