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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`17/232,408
`
`04/16/2021
`
`MORIKAZU TSUNO
`
`083710-3322
`
`8083
`
`McDermott Will and Emery LLP
`The McDermott Building
`500 North Capitol Street, N.W.
`Washington, DC 20001
`
`NIX, ZACHARY TAYLOR
`
`2891
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`03/30/2023
`
`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.
`17/232,408
`Examiner
`ZACHARYT NIX
`
`Applicant(s)
`TSUNO etal.
`Art Unit
`2891
`
`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 04/16/2021.
`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*
`1-7 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) 1-7 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 04/16/2021 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)1) 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)Q) All
`1.2) 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 04/16/2021.
`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 20230323
`
`

`

`Application/Control Number: 17/232,408
`Art Unit: 2891
`
`Page 2
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`DETAILED ACTION
`
`Notice of Pre-AIA or AIA Status
`
`1.
`
`The present application, filed on or after March 16, 2013,
`
`is being examined underthe
`
`first inventor to file provisions of the AIA.
`
`2.
`
`Receipt is acknowledged ofcertified copies of papers required by 37 CFR 1.55.
`
`Priority
`
`Claim Rejections - 35 USC § 103
`
`3.
`
`This application currently names jomt inventors. In considering patentability of the
`
`claims the examiner presumes that the subject matter of the various claims was commonly
`
`ownedasof the effective filing date of the claimed invention(s) absent any evidence to the
`
`contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and
`
`effective filing dates of eachclaim that was not commonly owned as ofthe effective filing date
`
`of the later invention in order for the examiner to consider the applicability of 35 U.S.C.
`
`102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
`
`4.
`
`In the event the determination of the status of the application as subject to AIA 35 U.S.C.
`
`102 and 103 (or as subject to pre-AJA 35 U.S.C. 102 and 103) is incorrect, any correction of the
`
`statutory basis for the rejection will not be considered a new ground ofrejection if the prior art
`
`relied upon, and the rationale supporting the rejection, would be the same undereither status.
`
`5.
`
`The following is a quotation of 35 U.S.C. 103 which formsthe basis for all obviousness
`
`rejections set forth in this Office action:
`
`A patent fora 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 obviousbefore the effective
`
`

`

`Application/Control Number: 17/232,408
`Art Unit: 2891
`
`Page 3
`
`filing date of the claimed invention toa 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.
`
`6.
`
`The factual inquiries for establishng a background for determinmg obviousness under 35
`
`U.S.C. 103 are summarized as follows:
`
`1. Determining the scope and contents of the prior art.
`
`2. Ascertainng the differences between the prior art and the claims atissue.
`
`3. Resolving the level of ordinary skill
`
`in the pertinent art.
`
`4. Considering objective evidence presentin the application indicating obviousness or
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`nonobviousness.
`
`7.
`
`Claims 1-4 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Nakatani
`
`(US 20160013247 AJ; hereinafter Nakatani) in view of Kim et al. (US 20090127599 A1;
`
`hereinafter Kim).
`
`Regarding claim 1, FIG. 1 of Nakatani teaches an imaging device 1 ({ [0029])
`
`comprising: a photoelectric conversion layer 15 (4 [0031]); a counter electrode 17 provided
`
`above the photoelectric conversion layer 15 ({[ [0032]); a pixel electrode 12 ({ [0031]) that faces
`
`the counter electrode 17 ({ [0032]) with the photoelectric conversion layer 15 disposed between
`
`the counter electrode 17 and the pixel electrode 12 ({ [0033]); and acontact plug 13 (4 [0034])
`
`covered with the pixel electrode 12 ({ [0033]) and connectedto the pixel electrode 12 ({ [0033],
`
`[0034]), wherein the pixel electrode 12 has a protrusion 13a that protrudes upward towardsthe
`
`readout circuit (J [0038]- [0039]). Examiner’s note: On page 5 paragraph [0030] of applicant’s
`
`specification the term “upward”is defined by arelative positional relationship and not in terms
`
`of absolute space. Therefore, in the present case, the language “protrudes upward”is interpreted
`
`as including protruding upwards toward the readout circutt.
`
`

`

`Application/Control Number: 17/232,408
`Art Unit: 2891
`
`Page 4
`
`Nakatani does not teach that the pixel electrode includesafirst layer and a secondlayer
`
`provided on the first layer in contact with the first layer.
`
`FIG. 6 of Kim teaches an image sensor including metal contacts comprising a TiN-on-Ti
`
`bilayer ({ [0018]).
`
`Therefore, it would have been obvious to a person having ordinary skill
`
`in the art before
`
`the effective filmg date of the claimed invention to combine the imaging device taught by
`
`Nakatani with the dual layer metal structure taught by Kim for the purpose of providing an
`
`adhesion layer, conventional barrier, and/or antireflective coating which is a good conductor ({
`
`[0018]).
`
`Regarding claim 2, FIG. 1 of Nakatani teaches that the protrusion 13a has a convex curve
`
`(shownin FIG. 1).
`
`Regarding claim 3, FIG. 1 of Nakatani teaches that a lower surface ofthe first layer has a
`
`recessed part 13a recessed upward toward the readout circuit (shown in FIG. 1).
`
`Regarding claim 4, FIG. 1 of Nakatani teaches that an upper surface of the contact plug
`
`13 is in contact with the recessed part 13a ({ [0039)]).
`
`Regarding claim 6, Nakatani does not teach that the first pixel electrode layer is a Ti
`
`layer; and the second pixel electrode layer is a TiN layer.
`
`FIG. 6 of Kim teaches an image sensor including metal contacts comprising a TiN-on-Ti
`
`bilayer ({ [0018]).
`
`Therefore, it would have been obvious to a person having ordinary skill
`
`in the art before
`
`the effective filmg date of the claimed invention to combine the imaging device taught by
`
`Nakatani with the dual layer metal structure taught by Kim for the purpose of providing an
`
`adhesion layer, conventional barrier, and/or antireflective coating which is a good conductor ({
`
`

`

`Application/Control Number: 17/232,408
`Art Unit: 2891
`
`Page 5
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`[0018]) and since it has been held that the selection of a known material based onits suitability
`
`for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co.
`
`v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), In re Leshin, 277 F.2d 197, 125
`
`USPQ 416 (CCPA 1960), and MPEP 2144.07 Art Recognized Suitability for an Intended
`
`Purpose.
`
`8.
`
`Claims 5 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over the
`
`combination of Nakatani and Kim in view of Kailasam etal. (US 7781327 B1; hereinafter
`
`Kailasam).
`
`Regarding claim 5, FIG. 1 of Nakatani teaches the imaging device 1 ({[ [0029]) further
`
`comprising an insulating layer 11 that covers a side surface of the contact plug 13 ({ [0034]).
`
`The combination of Nakatani and Kim does not teach that an upper surface of the contact
`
`plug protrudes upward beyond the insulating layer.
`
`FIG. 5E of Kailasam teaches an integrated circuit including a via 509 (col 8/lines 34-40)
`
`surrounded by an insulating layer 501 (col 8/lnes 7-10), wherein an upper surface of the via 509
`
`protrudes upward towards the conductive line 503 and beyond the insulating layer 501 (shown in
`
`FIG. 5E).
`
`Therefore, it would have been obvious to a person having ordinary skill
`
`in the art before
`
`the effective filmg date of the claimed invention to combine the imaging device taught by the
`
`combination of Nakatani and Kim with the via protruding into a copperline taught by Kailasam
`
`for the purpose of providing a mechanically strong and highly conductive pathway toa
`
`conductive line (col 8/lines 34-40).
`
`

`

`Application/Control Number: 17/232,408
`Art Unit: 2891
`
`Page 6
`
`Regarding claim 7, the combination of Nakatani and Kim does not teach that the contact
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`plug includes a Cu layer and a barrier layer that surrounds a side surface of the Cu layer; and the
`
`barrier layer contains Ta.
`
`FIG. 5E of Kailasam teaches an integrated circuit including a via comprising a Cu layer
`
`509 (col 6/lines 35-42) and a barrier layer 505 that surrounds a side surface of the Cu layer 509
`
`(col 8/lines 16-19); and the barrier layer 505 contains Ta (col 5/line 65 — col 6/line 3).
`
`Therefore, it would have been obvious to a person having ordinary skill
`
`in the art before
`
`the effective filmg date of the claimed invention to combine the imaging device taught by the
`
`combination of Nakatani and Kim with the via protruding into a copperline taught by Kailasam
`
`for the purpose of providing amechanically strong and highly conductive pathway toa
`
`conductive line (col 8/lines 34-40) and since it has been held thatthe selection of a known
`
`material based onits suitability for its intended use supported a prima facie obviousness
`
`determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297
`
`(1945), In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960), and MPEP 2144.07 Art
`
`Recognized Suitability for an Intended Purpose.
`
`Conclusion
`
`9.
`
`The prior art made of record and not relied upon is considered pertinent to applicant's
`
`disclosure:
`
`I.
`
`US 6376376 B1 — Discloses acopper interconnect with a diffusion barrier and
`
`insulator surrounding it. The upper portion of the copper interconnect protrudes
`
`above the insulating material.
`
`

`

`Application/Control Number: 17/232,408
`Art Unit: 2891
`
`Page 7
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`Il.
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`US 20200119098 A1— Discloses an imaging device comprising a photoelectric
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`conversion layer sandwiched between twoelectrodes with an interconnect
`
`structure and readout circuit underneath.
`
`Il.
`
`US 20190131340 Al — Discloses an image sensor comprising a photoelectric
`
`conversion layer connected to an interconnect structure underneath.
`
`10.
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to ZACHARY T NIX whosetelephone numberis (571)270-1972.
`
`The examiner cannormally be reached Monday - Friday 8:00 am - 5:00 pm ET.
`
`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, Matthew Landau can be reached on (571) 272-1731. 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 manage patent submissions in Patent Center,visit:
`
`https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more
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`
`

`

`Application/Control Number: 17/232,408
`Art Unit: 2891
`
`Page 8
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`at 866-217-9197 (toll-free). If you would like assistance from a USPTO CustomerService
`
`Representative, call 800-786-9199 (INUSA OR CANADA)or 571-272-1000.
`
`/ZACHARY TAYLORNIX/
`Examiner, Art Unit 2891
`
`/Eric A. Ward/
`Primary Examiner, Art Unit 2891
`
`