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
`
`HIROAKIIIMA
`
`083710-3330
`
`1006
`
`Rimon PC - Pansonic Corporation
`8300 Greensboro Dr.
`Suite 500
`McLean, VA 22102
`
`DINH, BACH T
`
`1726
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`01/31/2024
`
`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
`
`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 01/11/2024.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`2a)[¥) This action is FINAL.
`2b) (J 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*
`1-17 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) _ is/are withdrawn from consideration.
`C} Claim(s)__ is/are allowed.
`Claim(s) 1-17 is/are rejected.
`(] Claim(s)__ is/are objectedto.
`C] Claim(s
`are subjectto 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://www.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)0) The drawing(s) filedon__ is/are: a)(J 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)7) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`c)Z None ofthe:
`b)() Some**
`a)C All
`1.1.) Certified copies of the priority documents have been received.
`2.2) 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 20240125
`
`

`

`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.
`
`Summary
`
`2.
`
`3.
`
`This is the response to the communication filed on 01/11/2024.
`
`Claims 1-17 remain pending in the application.
`
`Claim Rejections - 35 USC § 102
`
`4.
`
`The following is a quotation of the appropriate paragraphsof 35 U.S.C. 102 that form the basis
`
`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 ina printed publication, or in public use, on sale,
`or otherwise available to the public before the effective filing date of the claimed invention.
`
`(a}(2) the claimed invention was described ina patent issued under section 151, or in anapplication
`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.
`
`5.
`
`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, X1, X¢, X7, X12, X13, X18, X19 aNd Xz4 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 Ro-R,, as aryl group that
`
`

`

`Application/Control Number: 17/216,763
`Art Unit: 1726
`
`Page 3
`
`may have a substituent [0013], such as pentafluorophenyl group and 4-cyanophenyl group that
`
`meet the claimed limitations.
`
`Addressing claim 5, the claimed formula 7 is met when Xi, X¢, X7, X12, X13, X1g, Xig and Xo4 are
`
`propoxy group [0021] and R3-R, are “aryl group which may have a substituent” suchas 4-
`
`cyanophenyl group [0020].
`
`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.
`
`1.
`
`Claim(s) 16-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shimizu
`
`(JP2016160270 with provided machine English translation).
`
`Addressing claim 16-17, Shimizu is silent regarding a specific example where the R3 and R4 of
`
`one Z group is different from the R3 and R4 of the other Z group.
`
`It is also noted that current
`
`

`

`Application/Control Number: 17/216,763
`Art Unit: 1726
`
`Page 4
`
`application does not provide an example where R39is different from R11 and R12. Shimizu
`
`further discloses in paragraph [0013] that R3 and R4are each independently ... an aryl group
`
`that maybe have a substituent or aryloxy group that may have a substituent. Therefore, the
`
`limitation of current claims would have been obvious to one of ordinary skill in the art based on
`
`the disclosure of Shimizu, absent evidence from current application regarding the criticality of
`
`having R9 being different from R11 and R12, when selecting aryl group with the disclosed
`
`substituent for R3 and R4 of one Z group and selecting aryloxy group with the disclosed
`
`substituent6 for R3 and R4 of the other Z group in order to optimize solubility of the molecule
`
`from the view point of application and synthesis (Shimizu, [0020 and 0022)).
`
`8.
`
`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 Englishtranslation).
`
`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 (MOScircuit 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].
`
`Hayashiis silent regarding the naphthalocyanine derivative having the claimed formula.
`
`

`

`Application/Control Number: 17/216,763
`Art Unit: 1726
`
`Page5S
`
`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, Xi, Xs, X7, X12, X13, Xig, X19 aNd Xo4 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-R,2 as aryl groupthat may have a substituent [0013], suchas
`
`pentafluorophenyl group and 4-cyanophenyl group that meet the claimed limitations.
`
`At the time of the effective filing date of the invention, one with ordinary skill in the art would
`
`have foundit obvious to modify the image sensorof Hayashi by substituting the known si
`
`naphthalocyanine molecule with the known si 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 Xj, X¢, Xz, X12, X13, X1g, X19 aNd Xoq4 are
`
`propoxy group [0021] and R3-R, are “aryl group which may have a substituent” suchas 4-
`
`cyanophenyl group [0020].
`
`

`

`Application/Control Number: 17/216,763
`Art Unit: 1726
`
`Page 6
`
`9.
`
`Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hayashietal. (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.
`
`Hayesdiscloses a near infrared absorbing composition [0023] comprisingsilicon
`
`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 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 Hayashiin 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 materialin 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.
`
`10.
`
`Applicant's argumentsfiled 01/11/2024 have been fully considered but they are not persuasive
`
`Response to Arguments
`
`for the following reasons:
`
`

`

`Application/Control Number: 17/216,763
`Art Unit: 1726
`
`Page 7
`
`a.
`
`With regard to the 35 USC 102 rejection of claims 1-5 as being anticipated by Shimizu,
`
`the Applicants’ arguments are not persuasive for the following reasons:
`
`i.
`
`the Applicants argued that Shimizu does not disclose the claimed composition
`
`because Shimizu fails to disclose the limitation “at least one hydrogen atomin at least
`
`one selected from the group consisting of R9, R10, R11 and R12 is substituted by an
`
`electron-withdrawing group”. The Applicants further argued that paragraph [0013],
`
`which states that R3 and R4 are each independently an aryl group that may have a
`
`substituent, does not disclose what the substituent should be; therefore, Shimizu fails to
`
`disclose “substituted by an electron-withdrawing group”. The argumentis not
`
`persuasive. Paragraph [0009] of Shimizu discloses “In the formula ...Z represents a
`
`group represented by the following general formula (2) or (3)”, which means the
`
`substituent Z with the general formula (3) that includes R3 and R4is part of the
`
`molecule having the general formula 1. Paragraph [0013] discloses R3 and R4 are each
`
`independently an aryl group that may have a substituent. Paragraph [0020] discloses
`
`“In the general formula (1)”, which includes the Z groups having the general formula (3)
`
`as explained above, “aryl group which may be a substituent” includes...
`
`pentafluorophenyl group ... 4-cyanophenyl group” (emphasis added) that correspond to
`
`the claimed electron-withdrawing group of current claims. Therefore, contraryto the
`
`Applicants’ assertion, paragraph [0013] of Shimizu when read in context of the entirety
`
`of Shimizu’s disclosure clearly indicates that the aryl group with a substituent includes
`
`the claimed electron withdrawing groups.
`
`ii.
`
`The Applicants further argued that the recited pentafluorophenyl group and 4-
`
`cyanophenyl group mentioned in paragraphs [0009 and 0020] of Shimizu are drawn to
`
`X1-X24 instead of R3 and R4. The assertionis not persuasive because the Z groups
`
`

`

`Application/Control Number: 17/216,763
`Art Unit: 1726
`
`Page 8
`
`having R3 and R4 of general formula 3 are part of generalformula 1, paragraph [0020]
`
`clearly states that “aryl group which may have a substituent” in general formula (1)
`
`includes pentafluorophenyl group or 4-cyanophenyl group; therefore, the disclosure in
`
`paragraph [0013], when readin light of the entirety of Shimizu’s disclosure, clearly
`
`meansthat the recited “aryl group which may have a substituent” includes the electron
`
`withdrawing groups pentafluorophenyl group and 4-cyanophenyl group as the
`
`substituent. Indeed, paragraph [0031] of Shimizu states in general formulas (2) and 3)...
`
`an aryl group that may be a substituent... has the same meaning as in general formula
`
`(1).
`
`iii.
`
`The Applicants further states that it is unreasonable to consider the examples in
`
`paragraph [0020] of Shimizu as having the claimed electron-withdrawing group.
`
`It is
`
`unclear as to how it is unreasonable to refer to that the disclosed electron withdrawing
`
`groups as electron withdrawing groups. The Applicants have not provided any evidence
`
`to indicate that the disclosed pentafluorophenyl group and 4-cyanophenyl group are not
`
`electron withdrawing groups. Even if some examples in paragraph [0020] of Shimizu are
`
`not electron withdrawing groups, the disclosed pentafluorophenyl group and 4-
`
`cyanophenyl group arestill electron withdrawing groups, which is sufficient to meet the
`
`claimed limitation.
`
`It is also noted that the claims do not recite a specific electron
`
`withdrawing groups, insteadclaim 1 recites the generic “electron-withdrawing group
`
`and claim 4 recites the generic “a fluorine-containing group, or acyano group”, which
`
`are all disclosed by Shimizu.
`
`iv.
`
`The Applicants further argued that there is no reason for the Office Action
`
`specifically selecting electron-withdrawing substituents in Shimizu. The argumentis not
`
`persuasive because the Office Action does not need to provide any reasonto select one
`
`

`

`Application/Control Number: 17/216,763
`Art Unit: 1726
`
`Page 9
`
`substituent over another since this is an anticipation rejection. Shimizu discloses R3 and
`
`R4 arearyl groups having substituents suchas pentafluorophenyl group and 4-
`
`cyanophenyl group that are the structural equivalence to the claimed electron
`
`withdrawing group of claim 1 and the fluorine atom,the fluorine-containing group ora
`
`cyano group ofclaim 4.
`
`Vv.
`
`For the reasons above, Examiner maintains the position that claims 1-5 are
`
`anticipated by Shimizu.
`
`b.
`
`With regard to the 35 USC 103 rejection of claims 6-15 as being unpatentable over the
`
`disclosure of Hayashi in view of Shimizu, the Applicants’ arguments are not persuasive for the
`
`following reasons:
`
`vi.
`
`The Applicants argued that Shimizu cannot be combined with Hayashi because
`
`Shimizu is not analogous art because Shimizu is not in the field of photoelectric
`
`conversion element and the problem to be solved in the present application is different
`
`from that of Shimizu. The argumentis not persuasive because the application utilizes
`
`the film having the claimed naphthalocyanine derivative as near-infrared absorbing
`
`material. The film having the claimed naphthalocyanine derivative, according to the
`
`application, is also usedin imaging device (claim 15 of current application), which is
`
`analogousto the utility of the film having the claimed naphthalocyanine derivative
`
`disclosed by Shimizu as it is used in CMOS image sensor [0002]. Furthermore, Shimizu,
`
`Hayashiand current application are analogous art because Shimizu, Hayashiand current
`
`application all disclose film composition having naphthalocyanine derivative as near-
`
`infrared absorbing material.
`
`

`

`Application/Control Number: 17/216,763
`Art Unit: 1726
`
`Page 10
`
`vil.
`
`For the reasons above, Examiner maintains the position that claims 6-15 are
`
`unpatentable over the disclosure of Hayashi in view of Shimizu because Shimizu is an
`
`analogous art to Hayashi and current application.
`
`Conclusion
`
`11.
`
`THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth
`
`in 37 CFR 1.136(a).
`
`A shortenedstatutory period for reply to this final action is set to expire THREE MONTHS from
`
`the mailing date of this action. Inthe event a first reply is filed within TWO MONTHSof the mailing date
`
`of this final action and the advisory action is not mailed until after the end of the THREE-MONTH
`
`shortened statutory period, then the shortened statutory period will expire on the date the advisory
`
`action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing
`
`date of the advisory action.
`
`In no event, however, will the statutory period for reply expire later than
`
`SIX MONTHS from the mailing date of this final action.
`
`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.
`
`

`

`Application/Control Number: 17/216,763
`Art Unit: 1726
`
`Page 11
`
`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
`
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`
`/BACHT DINH/
`Primary Examiner, Art Unit 1726
`01/25/2024
`
`