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
`
`17/517,060
`
`11/02/2021
`
`HIROAKIIJIMA
`
`083710-3558
`
`2184
`
`Rimon PC - Panasonic Corporation
`8300 Greensboro Dr.
`Suite 500
`McLean, VA 22102
`
`KOSACK, JOSEPH R
`
`1626
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`05/17/2024
`
`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)
`
`

`

`
`
`Disposition of Claims*
`1-10 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`5a) Of the above claim(s) _ is/are withdrawn from consideration.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) 1-5 and 7-10 is/are rejected.
`Claim(s) 6 is/are objectedto.
`C) 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) 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)¥) 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
`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 20240513
`
`Application No.
`Applicant(s)
`17/517,060
`JIMA et al.
`
`Office Action Summary Art Unit|AIA (FITF)StatusExaminer
`Joseph Kosack
`1626
`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 August 2023.
`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) 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.
`
`

`

`Application/Control Number: 17/517,060
`Art Unit: 1626
`
`Page 2
`
`DETAILED ACTION
`
`Claims 1-10 are pending in the present application.
`
`Notice of Pre-AlA orAIA Status
`
`The presentapplication,filed on or after March 16, 2013, is being examined under the first
`
`inventorto file provisions of the AIA.
`
`Priority
`
`The claim to priority as a CON of PCT/JP2020/032205filed on August 26, 2020, which claims
`
`benefit of JP 2019-165539 filed on September 11, 2019 is acknowledgedin the present application file.
`
`Information Disclosure Statement
`
`The Information Disclosure Statementsfiled on November 2, 2021 and August 10, 2023 have
`
`been considered by the Examiner.
`
`Claim Rejections - 35 USC § 103
`
`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.
`
`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.
`
`

`

`Application/Control Number: 17/517,060
`Art Unit: 1626
`
`Page 3
`
`This application currently names joint inventors. In considering patentability of the claims the
`
`examiner presumesthat the subject matter of the various claims was commonly owned as of 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 each claim that
`
`was not commonly ownedas of the 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.
`
`Claims 1-5 and 7-10 are rejected under 35 U.S.C. 103 as being unpatentable over Ofuku et al. JP
`
`2012-028607 in view of Nakada etal. (JP 2018-188617).
`
`Ofuku et al. teacha compound of the formula
`
`, which
`
`corresponds to the claims where R1-R8 are hydrogen and R9-R10 are aryl groups. See compound 1-33,
`
`page 16. The compounds arefor use in a composition in a photoconversion element with an anode and
`
`a cathode as part of an imagesensor. See paragraphs 134-138, pages 32-33 and Example 3, paragraphs
`
`158-161, page 38.
`
`

`

`Application/Control Number: 17/517,060
`Art Unit: 1626
`
`Page 4
`
`Ofuku et al. does not teach where the alpha positions on the napthalocyanine are substituted by
`
`lower alkoxy groups. Additionally, Ofuku et al. do not teach where the aryl groups of R9 and R10
`
`contain an electron withdrawing group such as fluorine.
`
`Nakada et al. teach related compounds where eachalpha position on the napthalocyanine are
`
`Sa
`
`a
`
`q
`
`2
`
`aeAR Mage
`
`syLevon8yet}
`Nex
`So at 2 GioHex
`HexgpGemeBe rf
`Hex
`Ney‘“,Bago,Ago Cet
`= i
`Oe
`& roe eo
`=
`set
`
`Hex”
`
`Bea
`
`eee
`
`and
`
`substituted by lower alkoxy groups such as
`
`re
`“A
`§ PevfBudsSt
`aut’ A ‘ABu es
`#
`h
`Ne
`i
`Lag
`Sea x rt
`.
`‘ enti ”sigties
`Hex
`feesace«
`‘
`rhes
`;
`le
`-
`aM
`Hex” w4 as
`NeoBL aYOB
`vo
`F
`fo\aed
`or PSOBy aut *
`ov
`
`REX
`
`AN
`
`é
`
`Jiex
`in :
`4
`Hex.
`pen SeeS17HK
`sreNO Ha
`HexSpme Ge
`Hex”
`i t aes
`7 Soe ‘A
`
`contain substitution at the alpha position,
`
`, the
`
`compounds with alkoxy substation on the alpha positions allowed the compound to absorb longer
`
`wavelengthsof NIR radiation. See Examples 1 and 2 and Comparative Examples 1-3, paragraphs 114-
`
`169 and 176-178, pages 17-25. Additionally, a photoconversion element made with the octoethoxyl
`
`napthalocyanine exhibited its highest quantum yield of 82% at 920 nm. See Example 3, paragraph 179
`
`and 183, pages 25-26 and Figure 6. While the compounds exemplified by Nakada etal. aretin
`
`

`

`Application/Control Number: 17/517,060
`Art Unit: 1626
`
`Page5S
`
`compounds, Nakada et al. teachesthat silicon can replace tin:
`
` 3= RO
`oe Noyreor fing
`Pos
`ORs
`Resi Oe"a ome a SR
`eet si 3
`<
`a
`RB? os
`pow we
`f f+ ee
`Shon, omF
`
`-
`
`~
`
`. See paragraphs7-8, page 4.
`
`Ofuku et al. teaches a related compound witha halo-substituted aryl group in the R9 and R10
`
`i~46
`
`coco
`oy
`f
`fox
`AY
`Cy “Av?
`\ JN
`f
`‘N
`an“ eI
`a. oy msA °
`. £y®
`mk
`FY
`f S-
`gt
`& S-e
`Pg el
`‘Noun
`(
`2
`in}pHOCHN
`Sno
`
`a ue
`
`r oe
`eeEen eT
`
`positions:
`
`. See compound I-46,
`
`page 20. Ofuku et al. specifies that the aryl group may be substituted by a halogen atom, which would
`
`include fluorine. See paragraph 43, page 8.
`
`The person of ordinary skill in the art would be motivated to combine the teachings of Ofuku et
`
`al. and Nakada etal. to arrive at the presently claimed invention as Nakada et al. show that adding lower
`
`alkoxy groups in the alpha positions of the napthylocyanine ring allows the compound to absorb
`
`radiation at longer wavelengths in the NIR range. Ofuku et al. provides additional guidance as to
`
`potential axial substituents on the central silicon atom that include halogens, which include fluorine as
`
`claimed by present claim 5. The person of ordinaryskill in the art would have a reasonable expectation
`
`of success as allof the compounds are NIR absorbers that are usable in photoelectric conversion
`
`elements and image sensorsand the utility would be expected to be conserved.
`
`Therefore, the claims are prima facie obvious.
`
`Allowable Subject Matter
`
`

`

`Application/Control Number: 17/517,060
`Art Unit: 1626
`
`Page 6
`
`Claim 6 is objected to as being dependent upon a rejected base claim, but would be allowable if
`
`rewritten in independent form including all of the limitations of the base claim and any intervening
`
`claims.
`
`Conclusion
`
`Claims 1-5 and 7-10 are rejected. Claim6is objected to.
`
`Anyinquiry concerning this communication or earlier communications from the examiner
`
`should be directed to Joseph Kosack whose telephone number is (571)272-5575. The examiner can
`
`normally be reached M-F 8:00-4:30.
`
`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,
`
`Joseph McKane can be reached on 571-272-0699. 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 managepatent submissionsin Patent Center,visit: https://patentcenter.us pto.gov.Visit
`
`https ://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and
`
`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.
`
`

`

`Application/Control Number: 17/517,060
`Art Unit: 1626
`
`/JOSEPH R KOSACK/
`Primary Examiner, Art Unit 1626
`
`Page 7
`
`