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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
`
`17/026,864
`
`09/21/2020
`
`Yuki Sugiura
`
`P200880US00
`
`5756
`
`WHDA,LLP
`8500 LEESBURG PIKE
`SUITE 7500
`TYSONS, VA 22182
`
`CLINTON, EVAN GARRETT
`
`2816
`
`01/09/2024
`
`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):
`
`patentmail @ whda.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`Application No.
`Applicant(s)
`17/026, 864
`Sugiuraet al.
`
`Office Action Summary Art Unit|AIA (FITF)StatusExaminer
`Evan G Clinton
`2816
`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 12/18/2023.
`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*
`1-14 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) _ is/are withdrawn from consideration.
`Claim(s) 2-4,9 and 13-14 is/are allowed.
`Claim(s) 1,5-8 and 10-12 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:/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
`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)(¥) 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)
`
`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 20240103
`
`

`

`Application/Control Number: 17/026,864
`Art Unit: 2816
`
`Page 2
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`DETAILED ACTION
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`Notice of Pre-AlA or AIA Status
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`The present application, filed on or after March 16, 2013, is being examined under the first
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`inventor to file provisions of the AIA.
`
`Claim Rejections - 35 USC § 102
`
`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-AlA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory
`
`basis (i.e., changing from AIA to pre-AlA) for the rejection will not be considered a new ground of
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`rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same
`
`under either status.
`
`The following is a quotation of the appropriate paragraphs of 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 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.
`
`Claims 1, 5-6, 8 and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kobayashi
`
`(U.S. Patent No. 5,596,186).
`
`Regarding claim 1, Kobayashi teaches a photodetector, comprising:
`
`a semiconductor substrate (Fig. 1, substrate 10/11) ofa first conductivity type (n type);
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`a first semiconductor layer (layer 13) of a second conductivity type (p type) that is located above
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`the semiconductor substrate (Fig. 1) and forms a junction with the semiconductor substratein a first
`
`

`

`Application/Control Number: 17/026,864
`Art Unit: 2816
`
`Page 3
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`area (area at interface of 13 and 12), the second conductivity type being different from the first
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`conductivity type (p type vs n type); and
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`a second semiconductor layer (guard ring 15) of the second conductivity type (p type) that is
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`located above the semiconductor substrate in a second area outward ofthe first area (see Fig. 2), the
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`second semiconductor layer having an impurity concentration lower than an impurity concentration of
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`the first semiconductor layer (see Col. 7, lines 15-17, first layer 13 is p+, guard ring 15 is p), wherein a
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`first junction portion (first junction portion is portion at the top of n-well 12) included in the
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`semiconductor substrate and a second junction portion (second junction portion is portion at bottom of
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`layer 13) included in the first semiconductor layer form a photoelectric converter including a charge
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`multiplication region in which charges are multiplied by avalanche multiplication (see Col. 4, lines 30-
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`36),
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`the second semiconductor layer extends to a level below an interface between the first junction
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`portion and the second junction portion in a thickness direction of the semiconductor substrate (see Fig.
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`1, guard ring 15 extends below interface of 12 and 13, whichis also the interface of the first and second
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`junction portions, in the thickness direction), and
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`the second semiconductor layer is in contact with both the first junction portion and the second
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`junction portion (see Fig. 1, guard ring 15 contacts bottom portion of 13 and top portion of 12).
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`Regardingclaim 5, Kobayashi teaches the photodetector according to claim 1, wherein the
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`semiconductor substrate includes: a third portion (Fig. 1, third portion 11); and a fourth portion (fourth
`
`portion 12) that is located on the third portion (Fig. 1) and in contact with the first semiconductor layer
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`(Fig. 1), and an impurity concentration of the fourth portion is higher than an impurity concentration of
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`the third portion (see Fig. 1, fourth portion is n, third portion is n-).
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`

`

`Application/Control Number: 17/026,864
`Art Unit: 2816
`
`Page 4
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`Regardingclaim 6, Kobayashi teaches the photodetector according to claim 1, wherein the
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`semiconductor substrate includes: a third portion (third portion 10); and a fourth portion (fourth portion
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`11) that is located outward of the second semiconductor layer on the third portion in a plan view (see
`
`Fig. 1, fourth portion 11 is located both inward and outward of the second semiconductor layer 15
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`above third portion 10; additionally “portion” is undefined in the claim, and therefore can be considered
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`only the outward portion of 11).
`
`Regardingclaim 8, Kobayashi teaches the photodetector according to claim 1, wherein
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`the first semiconductor layer (Fig. 1, layer 13) is separated into an outer portion located in the
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`second area (portion that overlaps with 15) and an inner portion locatedin the first area (portion that
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`overlaps with 12), and
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`an isolation region ofthe first conductivity type for electrically isolating the outer portion and
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`the inner portion is not provided between the outer portion and the inner portion (see Fig. 1, no
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`isolation region).
`
`Regarding claim 12, Kobayashi teaches the photodetector according to claim 1, wherein the
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`photoelectric converter comprises a plurality of photoelectric converters arranged in an array (see
`
`Abstract).
`
`Claim Rejections - 35 USC § 103
`
`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-AlA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory
`
`basis (i.e., changing from AIA to pre-AlA) for the rejection will not be considered a new ground of
`
`

`

`Application/Control Number: 17/026,864
`Art Unit: 2816
`
`Page 5
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`rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same
`
`under either status.
`
`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 ordinaryskill in the art to which the
`claimed invention pertains. Patentability shall not be negated by the manner in which the invention
`was made.
`
`Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Kobayashi in view of
`
`Mazzillo (U.S. Publication No. 2014/0339398).
`
`Regarding claim 7, Kobayashi teaches the photodetector according to claim 6, but does not
`
`teach wherein the semiconductor substrate further includesa fifth portion that is located outward of
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`the fourth portion on the third portion in a plan view, and an impurity concentration of the fifth portion
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`is higher than an impurity concentration of the fourth portion.
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`However, Mazzillo teaches a similar SPAD wherein the semiconductor substrate further includes
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`a fifth portion (Mazzillo Fig. 1, layer 28) that is located outward of the fourth portion (Mazzillo Fig. 1;
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`analogous layer 8; portion is undefined in the claim and therefore can be interpreted as the “portion of
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`layer 8 between the guard ring 16 and the barrier 28”) on the third portion in a plan view (see Mazzillo
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`Fig. 1, layer 28 is formed outward of the portion of layer 8 as defined above), and
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`an impurity concentration of the fifth portion (paragraph [0058], layer 28 concentration of 5e20)
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`is higher than an impurity concentration of the fourth portion (paragraph [0045], layer 8 concentration
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`of 5e15; i.e. the fifth portion concentration is higher than the fourth).
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`It would have been obvious to a person ofskill in the art at the time of the effectivefiling date
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`that fifth portion barrier could have been formed, as taught by Mazzillo, because Mazzillo teaches that
`
`this prevents propagation of photons past the barrier region (see Mazzillo Abstract).
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`

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`Application/Control Number: 17/026,864
`Art Unit: 2816
`
`Page 6
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`Claims 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over Kobayashi in view of
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`Yuang(U.S. Publication No. 2006/0125035).
`
`Regarding claim 10, Kobayashi teaches the photodetector according to claim 1, but does not
`
`teach further comprising: a shallow trenchisolation (STI) that covers a portion outward of the first
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`semiconductor layer in a top surface of the semiconductor substrate.
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`However, Yuang teaches that an STI can be included that covers a portion outward ofthe first
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`semiconductor layer (Yuang Fig. 1, ST| 104 covers top of substrate 102 outward offirst semiconductor
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`layer 114) in a top surface of the semiconductor substrate (see Yuang Fig. 1).
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`It would have been
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`obvious to a person ofskill in the art at the time of the effectivefiling date that a STI could have been
`
`included because they are commonlyused to electrically isolate individual active components to prevent
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`leakage or other unwanted electrical effects.
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`Regardingclaim 11, Kobayashi in view of Yuang teaches the photodetector according to claim
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`10, wherein in a plan view, the STI is a rectangular ring (see Yuang paragraph [0014]).
`
`Response to Arguments
`
`Applicant’s arguments with respect to claims 1, 5-8 and 10-12 have been considered but are
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`moot because the new ground ofrejection does not rely on any reference applied in the prior rejection
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`of record for any teaching or matter specifically challenged in the argument.
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`

`

`Application/Control Number: 17/026,864
`Art Unit: 2816
`
`Page 7
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`Allowable Subject Matter
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`Claims 2-4, 9 and 13-14 are allowed.
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`The following is an examiner’s statement of reasons for allowance:
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`Regarding claims 2-4, Applicant has rewritten previously indicated allowable claim 2 in
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`independent form includingall base claims.
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`Regarding claim 9, Applicant has rewritten previously indicated allowable claim 2 in
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`independent form includingall base claims.
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`Regardingclaims 13-14, the prior art, alone or in combination,fails to teach or suggest a
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`photoelectric converter that is located in a third area inward of the first area; and an isolation region of
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`the first conductivity type that is located between the first area and the third area.
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`Any comments considered necessary by applicant must be submitted no later than the payment
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`of the issue fee and, to avoid processing delays, should preferably accompanythe issue fee. Such
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`submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
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`Conclusion
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`Applicant's amendment necessitated the new ground(s) of rejection presented in this Office
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`action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the
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`extension of time policy as set forth in 37 CFR 1.136(a).
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`A shortened statutory period for reply to this final action is set to expire THREE MONTHS from
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`the mailing date of this action.
`
`In the eventa first reply is filed within TWO MONTHS ofthe mailing date
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`of this final action and the advisory action is not mailed until after the end of the THREE-MONTH
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`shortened statutory period, then the shortened statutory period will expire on the date the advisory
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`action is mailed, and any extension fee pursuantto 37 CFR 1.136(a) will be calculated from the mailing
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`

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`Application/Control Number: 17/026,864
`Art Unit: 2816
`
`Page 8
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`date of the advisory action.
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`In no event, however, will the statutory period for reply expire later than
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`SIX MONTHS from the dateof this final action.
`
`Any inquiry concerning this communication or earlier communications from the examiner
`
`should be directed to Evan G Clinton whose telephone number is (571)270-0525. The examiner can
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`normally be reached Monday-Friday at 8:30am to 5:30pm.
`
`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,
`
`Zandra Smith can be reached on (571) 272-2429. The fax phone number for the organization where this
`
`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
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`https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and
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`https://www.uspto.gov/patents/docx for information aboutfiling in DOCX format. For additional
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`questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like
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`assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA)or
`
`571-272-1000.
`
`/EVAN G CLINTON/
`Examiner, Art Unit 2816
`
`