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
`
`17/460,398
`
`08/30/2021
`
`SHINYA OKAMOTO
`
`083710-3504
`
`3817
`
`Rimon PC - Panasonic Corporation
`8300 Greensboro Dr
`Suite 500
`McLean, VA 22102
`
`MALLEYJR., DANIEL PATRICK
`
`1726
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`06/14/2024
`
`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)
`
`

`

`Application No.
`Applicant(s)
`17/460,398
`OKAMOTOetal.
`
`Office Action Summary Art Unit|AIA (FITF)StatusExaminer
`DANIEL P MALLEY JR.
`1726
`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 10 APRIL 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*
`1-6 and 8-30 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) 5-6,11-15 and 21-25 is/are withdrawn from consideration.
`[] Claim(s)__ is/are allowed.
`Claim(s) 1-4,8-10,16-20 and 26-30 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) 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).) 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)D) 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 2/13/2024.
`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 20240606
`
`

`

`Application/Control Number: 17/460,398
`Art Unit: 1726
`
`Page 2
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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
`
`inventor to file provisions of the AIA.
`
`Response to Amendment
`
`The amendmentfiled April 10°", 2024 does not place the application in condition for allowance.
`
`The previous grounds for rejection in the Office Action dated January 31°, 2024 has been
`
`withdrawn due to Applicant’s amendment.
`
`New grounds for rejection follow.
`
`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
`
`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 1-4, 8-9, and 26-30 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fujikata
`
`(US 2009/0134486 A1).
`
`

`

`Application/Control Number: 17/460,398
`Art Unit: 1726
`
`Page 3
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`In view of Claim 1, Fujikata discloses an optical device (Figure 5a-b) comprising:
`
`a nanostructure body (Figure 5a-b, #12) which induces surface plasmon when irradiated
`
`with light (Paragraph 0066-0069 & 0071-0072);
`
`an oxide layer whichis in contact with the nanostructure body and made of an insulating
`
`material (Figure 5b, #4 & Paragraph 0082 — SiO2);
`
`an alloy layer which is in contact with the oxide layer and which comprises an alloy
`
`containing a first metal and a second metal that are different in work function from each
`
`other (Figure 5b, #2 & Paragraph 0082 — an alloy comprising at least two ofsilver, gold and
`
`copper);
`
`and an n-type semiconductor which is in Schottky contact with the allow layer (Figure 5b, #1
`
`& Paragraph 0055, 0082 & 0085 — n-Si layer);
`
`wherein the alloy layer (Figure 5b, #2) is sandwiched (See Annotated Fujikata Figure 5b,
`
`below & Paragraph 0055) between the oxide layer (Figure 5b, #4) and the n-type
`
`semiconductor (Figure 5b, #1);
`
`wherein thefirst metal is selected from gold, silver, or copper and the second metal is
`
`selected from at least one of the other one ofgold, silver, and copper (Paragraph 5b, #2 &
`
`Paragraph 0082 - an alloy comprising at least two ofsilver, gold and copper).
`
`Annotated Fujikata Figure 5b
`
`

`

`Application/Control Number: 17/460,398
`Art Unit: 1726
`
`Page 4
`
` ALLALALALLE
` Leceecenencecenet ¢
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`
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`
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`In view of Claim 2, Fujikata is relied upon for the reasons given abovein addressing Claim 1.
`
`Fujikata teaches thatthe alloy layer is selected from an alloy comprises at least two ofsilver, gold, and
`
`copper (Figure 5b, #2 & Paragraph 0082). Fujikata teaches that the nanostructure body can comprise
`
`aluminum byitself (Paragraph 0067).
`
`In regards to the limitation that “the alloy layer has a lower work function than the
`
`nanostructure body”, an alloy comprising silver and gold would have a work function lower than a work
`
`function of a nanostructure body that comprises aluminum as both these silver and gold have a lower
`
`workfunction than aluminum. Additionally, Applicant discloses silver and gold as being the first and
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`second metal of the alloy layer (See Claim 1) and that a material with low work function is aluminum
`
`(Instant Specification — Paragraph 0034). Fujikata teaches the same structure as recited, and thereforeit
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`

`

`Application/Control Number: 17/460,398
`Art Unit: 1726
`
`Page 5
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`will, inherently, display the recited properties, namely allowing for “the alloy layer has a lower work
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`function than the nanostructure body”. See MPEP 2112.01 I.
`
`In view of Claim 3, Fujikata is relied upon for the reasons given above in addressing Claim 1.
`
`Fujikata teaches that the nanostructure body can comprise the first metal alone, an intermetallic
`
`compound containing the first metal and the second metal, a solid-solution alloy containing the first
`
`metal and the second metal (Paragraph 0067 & 0082 — they can be selected to comprise the same
`
`alloys).
`
`In view of Claim 4, Fujikata is relied upon for the reasons given above in addressing Claim 1.
`
`Fujikata teaches that the nanostructure body can comprise the first metal alone, an intermetallic
`
`compound containing the first metal and the second metal, a solid-solution alloy containing the first
`
`metal and the second metal (Paragraph 0067 & 0082 — they can be selected to comprise the same
`
`alloys).
`
`In regards to the limitation that, “the second metal has a lower work function than the first
`
`metal”
`
`|”
`
`Fujikata teaches the same structure as recited, and thereforeit will, inherently, display the
`
`recited properties, namely allowing for “the second metal has a lower work function than thefirst
`
`metal”. See MPEP 2112.01 I.
`
`In view of Claim 8, Fujikata is relied upon for the reasons given above in addressing Claim 1.
`
`Fujikata teaches the n-type semiconductor is an inorganic semiconductor (Figure 5b, #1 & Paragraph
`
`0055, 0082 & 0085 — n-Si layer).
`
`

`

`Application/Control Number: 17/460,398
`Art Unit: 1726
`
`Page 6
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`In view of Claim 9, Fujikata is relied upon for the reasons given abovein addressing Claim 1.
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`Fujikata teaches that the nanostructure body has a comb-shapedstructure (Figure 5a-b, #13a).
`
`In view of Claim 19, Fujikata teaches a photoelectric converter comprising an optical device
`
`(Figure 5a-b) comprising:
`
`e
`
`ananostructure body (Figure 5a-b, #12) which induces surface plasmon when irradiated
`
`with light (Paragraph 0066-0069);
`
`e
`
`an oxide layer whichis in contact with the nanostructure body and made ofan insulating
`
`material (Figure 5b, #4 & Paragraph 0082 — SiO2);
`
`e=analloy layer which is in contact with the oxide layer and which comprises an alloy
`
`containing a first metal and a second metal that are different in work function from each
`
`other (Figure 5b, #2 & Paragraph 0082 — an alloy comprising at least two ofsilver, gold and
`
`copper);
`
`e
`
`and ann-type semiconductor which is in Schottky contact with the allow layer (Figure 5b, #1
`
`& Paragraph 0055, 0082 & 0085 — n-Si layer);
`
`e wherein the alloy layer (Figure 5b, #2) is sandwiched (See Annotated Fujikata Figure 5b,
`
`below & Paragraph 0055) between the oxide layer (Figure 5b, #4) and the n-type
`
`semiconductor (Figure 5b, #1);
`
`e wherein thefirst metal is selected from gold, silver, or copper and the second metal is
`
`selected from at least one of the other one ofgold, silver, and copper (Paragraph 5b, #2 &
`
`Paragraph 0082 - an alloy comprising at least two ofsilver, gold and copper);
`
`e
`
`anelectrode thatis in contact with a second surface of the n-type semiconductor thatis
`
`opposite to a first surface of the n-type semiconductor (Paragraph 0021 — opposite
`
`

`

`Application/Control Number: 17/460,398
`Art Unit: 1726
`
`Page 7
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`electrode provided in contact with a surface of the semiconductor layer that is opposite to
`
`the surface of the semiconductor layer);
`
`e
`
`aconductor that electrically connect the electrode and nanostructure body (Figure 7, there
`
`is a circuit that electrically connects the device);
`
`e
`
`the n-type conductor has a first surface that is in contact with the alloy layer (Figure 5b, top
`
`surface).
`
`Annotated Fujikata Figure 5b
`
` Incident Ligint
`
`PDDEDDSDDSDDSADIE
`
`
`
`
`
`ALALLAALALLELEALLE:
`
`
`
`ESSN:
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`ecnnccnncnnnanee!
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`In view of Claim 26, Fujikata is relied upon for the reasons given above in addressing Claim 1.
`
`Fujikata teaches that the alloy consists of metallic elements (Figure 5b, #2 & Paragraph 0082 — an alloy
`
`comprising at least two ofsilver, gold and copper).
`
`

`

`Application/Control Number: 17/460,398
`Art Unit: 1726
`
`Page 8
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`In view of Claim 27, Fujikata is relied upon for the reasons given above in addressing Claim 1.
`
`Fujikata teaches that the alloy is a conductor (Figure 5b, #2 & Paragraph 0082 — an alloy comprising at
`
`least two ofsilver, gold and copper).
`
`In view of Claim 28, Fujikata is relied upon for the reasons given above in addressing Claim 1.
`
`Fujikata teaches that the alloy layer (Figure 5b, #2) is in direct contact with the oxide layer (Figure 5b,
`
`#4).
`
`In view of Claim 29, Fujikata is relied upon for the reasons given above in addressing Claim 1.
`
`Fujikata teaches that the nanostructure body and the alloy layer can contain the same alloy (Paragraph
`
`0067 & 0082 — they can be selected to comprise the same alloys).
`
`In view of Claim 30, Fujikata is relied upon for the reasons given above in addressing Claim 1.
`
`Fujikata teaches that the oxide layer (Figure 5b, #4) is in direct contact with the n-type semiconductor
`
`(Figure 5b, #1).
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`Annotated Fujikata Figure 5b
`
`

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`Application/Control Number: 17/460,398
`Art Unit: 1726
`
`Page 9
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`
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`ALLALALALLE
`
` Leceecenencecenet¢
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`
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`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
`
`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.
`
`

`

`Application/Control Number: 17/460,398
`Art Unit: 1726
`
`Page 10
`
`The text of those sections of Title 35, U.S. Code not includedin this action can be found in a
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`prior Office action.
`
`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 contentsofthe prior art.
`
`2. Ascertaining the differences between the prior art and the claims at issue.
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`3. Resolving the level of ordinary skill in the pertinent art.
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`4. Considering objective evidence present in the application indicating obviousness or
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`nonobviousness.
`
`Claims 10, and 16-18 are rejected under 35 U.S.C. 103 as being unpatentable over Fujikata (US
`
`2009/0134486 A1) in view of Juluri et al. (US 2014/0318596 A1)
`
`In view of Claim 10, Fujikata is relied upon for the reasons given above in addressing Claim 1.
`
`Fujikata does not disclose the nanostructure body includesat least one nanoparticle, and a particle
`
`diameterof the at least one nanoparticle is greater than or equal to 1 nm and less than or equal to 200
`
`nm.
`
`Juluri et al. teaches a nanostructure bodyincludes at least one nanoparticle and the particle
`
`diameterof the at least one nanoparticle can be between 1-200 nm, wherein this configuration can
`
`allow for absorption of a broad spectral range (Paragraph 0067). Accordingly, it would have been
`
`obvious to one of ordinaryskill in the art at the time the invention was file to use the nanostructure
`
`body as disclosed by Juluri et al. as Fujikata’s nanostructure body such that the nanostructure body
`
`includes at least one nanoparticles and the particle diameter of the at least one nanoparticles can be
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`

`

`Application/Control Number: 17/460,398
`Art Unit: 1726
`
`Page 11
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`between 1-200 nm for the advantage of having a configuration that allows for absorption of a broad
`
`spectral range.
`
`In view of Claim 16, Fujikata and Juluri et al. are relied upon for the reasons given abovein
`
`addressing Claim 10. Fujikata teaches a light source that emits light (Paragraph 0080 — includesvisible
`
`light) having an energy that is lower than or equal to a band gap energy of the n-type semiconductor
`
`(Paragraph 0089 & 0101). Juluri et al. teaches that the surface plasmon resonance wavelength of the at
`
`least one nanoparticle corresponds to visible wavelengths of light (Paragraph 0051).
`
`In view of Claim 17, Fujikata and Juluri et al. are relied upon for the reasons given abovein
`
`addressing Claim 10. Fujikata teaches that the n-type semiconductorsinclude silicon semiconductors
`
`(Paragraph 0055, 0082 & 0085 — n-Si layer).
`
`In view of Claim 18, Fujikata and Juluri et al. are relied upon for the reasons given abovein
`
`addressing Claim 10. Fujikata teaches that n-type semiconductorssuchas gallium nitride can be used as
`
`the semiconductor layer (Paragraph 0101). Juluri et al. teaches that a surface plasmon resonance
`
`wavelengthof the at least one nanoparticle is greater than or equal to 400 nm (Paragraph 0051 — visible
`
`light is at least greater than 400 nm).
`
`Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Fujikata (US 2009/0134486
`
`A1) in view of Zhongshan (CN 208655701 U). Zhongshan is mappedto the English machine translation
`
`provided by the EPO.
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`

`

`Application/Control Number: 17/460,398
`Art Unit: 1726
`
`Page 12
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`In view of Claim 20, Fujikata is relied upon for the reasons given abovein addressing Claim 19.
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`Fujikata does not disclose a transparent conductive film that covers the nanostructure body, wherein
`
`the transparent conductivefilm is not contact with the n-type semiconductor and the conductor
`
`electrically connects the electrode and the transparent conductivefilm.
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`Zhongshan discloses a transparent conductive film (Figure 1, #5) that covers a nanostructure
`
`body(Figure 1, #4) and is not in contact with an underlying semiconductor (Figure 1, #3). Zhongshan
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`teaches that the transparent conductive film ensures that incident light passes through smoothly and
`
`reaches a nanostructure layer (Page 3, Lines 30-32). Accordingly, it would have been obvious to include
`
`the transparent conductivefilm of Zhongshan in Fujikata’s optical device such that the transparent
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`conductive film covers the nanostructure body and is not in contact with the n-type semiconductor for
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`the advantage of ensuring that incident light passes through smoothly and reaches the nanostructure
`
`layer.
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`In regards to the limitation that “the conductor electrically connects the electrode and the
`
`transparent conductive film”, the conductor element (Figure 11, see associated electrical circuit) would
`
`be capable of electrically connecting the electrode and transparent conductive film and conduct
`
`electricity out of the device.
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`Response to Arguments
`
`Applicant’s arguments with respect to the claims have been considered but are moot because
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`the arguments do not apply to the new grounds for rejection being used in the current rejection.
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`

`

`Application/Control Number: 17/460,398
`Art Unit: 1726
`
`Page 13
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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).
`
`A shortened statutory period for reply to this final action is set to expire THREE MONTHS from
`
`
`
`the mailing date of this action. In the eventafirst reply is filed within TWO MONTHS of 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
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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 DANIEL P MALLEY JR. whose telephone numberis (571)270-1638. The examiner
`
`can normally be reached Monday-Friday 8am-430pm EST.
`
`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,
`
`Jeffrey T Barton can be reached on 571-272-1307. The fax phone number for the organization where
`
`this application or proceedingis 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 information about Patent Center and
`
`

`

`Application/Control Number: 17/460,398
`Art Unit: 1726
`
`Page 14
`
`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.
`
`/DANIEL P MALLEYJR./
`Primary Examiner, Art Unit 1726
`
`