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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
`
`17/517,060
`
`11/02/2021
`
`HIROAKIIJIMA
`
`083710-3558
`
`2184
`
`Rimon PC - Panasonic Corporation
`8300 Greensboro Dr.
`Suite 500
`McLean, VA 22102
`
`PATEL, SAGAR S
`
`1626
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`08/15/2024
`
`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)
`
`

`

`Office Action Summary
`
`Application No.
`17/517,060
`Examiner
`Sagar Patel
`
`Applicant(s)
`JIMA et al.
`Art Unit
`1626
`
`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 1 August 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*
`1-2 and 4-10 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) _ is/are withdrawn from consideration.
`CL] Claim(s)__is/are allowed.
`Claim(s) 1-2,4-5 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)
`
`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 20240809
`
`

`

`Application/Control Number: 17/5 17,060
`Art Unit: 1626
`
`Page 2
`
`DETAILED ACTION
`
`Notice ofPre-AIA or AIA Status
`
`1.
`
`The presentapplication, filed on or after March 16, 2013, is being examined underthe
`
`first inventorto file provisions of the AIA.
`
`2.
`
`Claims 1 — 2 and 4— 10 are pending.
`
`Status ofthe Claims
`
`Responseto Applicant’s Remarks
`
`3.
`
`Applicant’s amendments/remarks filed on August 1, 2024 have been fully considered.
`
`
`
`4. Regardingthe rejection under 35 U.S.C. 103 of claims 1 —2,4-—5 and 7—10 as being
`
`unpatentable over Ofukuet al. (JP 2012-028607) in view of Nakada et al. (JP 2018-188617),
`
`Applicant’s remarks have been considered and are addressed below:
`
`On page 7, 5'" paragraph — page 8, 1‘ paragraph, Applicant note that the feature “in
`
`Formula (1), at least one hydrogen atom in at least one selected from the group consisting of Ro
`
`and Rio is substituted by an electron-withdrawing group”is not obvious overthe cited
`
`references. Applicant state that Ofukuet al. disclose many substituents as preferred substituents
`
`whenA is an aryl group, andthe preferred substituents include electron-withdrawing groups and
`
`electron-donating groups. Thus, it would not be obvious to replace the hydrogen atom ofA in the
`
`axial ligand with an electron-withdrawing group in Ofuku et al.. However,it is noted that thetest
`
`for obviousness is not whetherthe features of a secondary reference may be bodily incorporated
`
`into the structure of the primary reference; noris it that the claimed invention must be expressly
`
`suggested in any oneorall of the references. Rather, the testis what the combined teachings of
`
`the references would have suggested to those of ordinary skill in the art. See In re Keller, 642
`
`

`

`Application/Control Number: 17/5 17,060
`Art Unit: 1626
`
`Page 3
`
`F.2d 413, 208 USPQ 871 (CCPA 1981). Ofuku et al. teaches the compound of general formula
`
`(1):
`
`(Raja
`
`\a
`
`(Raja
`
`poAe
`
`N
`
`\
`
`gi
`N
`
`N
`
`“Ze O-A
`{Re},Se
`
`. See, e.g., paragraph [0019]. Ofuku et al. also teaches the
`
`preferred substituents when A is an aryl group.
`
`{oOSz]
`
`When & is an aryl graup, preferred examples of the substituent include a halogen atom Examples thereof include an alkyf group,
`
` an alky! group, an alkoxy group and an acylamine group.
`
`See, e.g., paragraph [0043]. Ofuku et al. further specifically teaches a related compoundI-46
`
`with a halo-substituted aryl group in the variables Ro and Rjo positions.
`
`{~46
`
`e ;
`
`SHOR,7itt} {APCghyOGHN
`
`( ca
`
`. See, e.g., paragraph [0061].
`
`Accordingto the definition in paragraph [0038], halogen atoms encompasses a fluoro atom, a
`
`chloro atom, a bromo atom,or an iodo atom. Therefore, the teachings of Ofukuetal. provide
`
`sufficient guidance and a person having ordinary skill in the art would have been motivated to
`
`replace the hydrogen atom in the aryl groups of the variable A with the more preferred electron-
`
`withdrawing halogen, specifically the more electronegative fluoro and chloro, substituents.
`
`

`

`Application/Control Number: 17/5 17,060
`Art Unit: 1626
`
`Page 4
`
`On page 8, 2™ paragraph — page 9, 1‘' paragraph, Applicant refer to paragraph [0055] of
`
`the instant specification to note that the claimed feature shows unexpected results. Paragraph
`
`[0055] generally states that replacing at least one hydrogen atom with an electron-withdrawing
`
`provides improved energy gap, absorption maximum wavelength, light absorption characteristics
`
`and HOMOenergy level. However, MPEP §716.01(c)(1)recites:
`oe
`
`Objective evidence which mustbe factually supported by an appropriate affidavit or
`
`declaration to be of probative value includes evidence of unexpected results,
`
`commercial success, solution of a long-felt need, inoperability of the priorart,
`
`invention before the date of the reference, and allegations that the author(s) of the
`
`prior art derived the disclosed subject matter from the inventororat least one joint
`
`inventor.” (Emphasis added).
`
`MPEP §716.02(e) furtherrecites:
`
`“An affidavit or declaration under 37 CFR 1.132 must compare the claimed subject
`
`matter with the closest prior art to be effective to rebut a prima facie case of
`
`obviousness. In re Burckel, 592 F.2d 1175,201 USPQ 67 (CCPA 1979). "A
`
`comparison of the claimed invention with the disclosure of each cited reference to
`
`determine the numberof claim limitations in commonwith each reference, bearing in
`
`mind the relative importance of particular limitations, will usually yield the closest
`
`single prior art reference." In re Merchant, 575 F.2d 865, 868, 197 USPQ 785, 787
`
`(CCPA 1978) (emphasis in original). Where the comparisonis not identical with the
`
`reference disclosure, deviations therefrom should be explained, Jn re Finley, 174 F.2d
`
`130, 81 USPQ 383 (CCPA 1949), and if not explained should be noted and evaluated,
`
`and if significant, explanation should be required. Jn re Armstrong, 280 F.2d 132, 126
`
`USPQ 281 (CCPA 1960)”.
`
`Applicant does not present any experimental data to compare and show that Applicant’s
`
`claimed composition obtains unexpected results overthe closest prior art teachings of
`
`Ofukuetal. and Nakadaetal.. Therefore, Applicants’ arguments are not found to be
`
`

`

`Application/Control Number: 17/5 17,060
`Art Unit: 1626
`
`Page 5
`
`persuasive andthe rejection is hereby maintained. The rejection has only been amended to
`
`address the claims pendingin the instant application.
`
`Claim Rejections - 35 USC § 103
`
`5.
`
`The followingis 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
`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 backgroundfor determining obviousness under 35
`
`U.S.C.
`
`103 are summarized as follows:
`
`1. Determining the scope and contents ofthepriorart.
`2. Ascertaining the differences betweenthe prior art and the claimsatissue.
`3. Resolving the level of ordinary skillin the pertinentart.
`4. Considering objective evidence presentin the application indicating obviousness or nonobviousness.
`
`7.
`
`Claims 1 — 2,4—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 Nakadaetal. (JP 2018-188617).
`
`1-33
`IN}yoHos
`
`iN
`Si
`/
`\
`ee
`f & yee
`fy Oo
`“
`TS
`
`Ofukuet al. teach a compoundof the formula
`
`Cyahlggin)
`
`.
`, which
`
`correspondsto the claims where R,-Rg are hydrogen and Ro-Rio are aryl groups. See compound
`
`ONae
`
` |
`
`N
`
`\
`
`

`

`Application/Control Number: 17/5 17,060
`Art Unit: 1626
`
`Page 6
`
`I-33, page 16. The compoundsare for use in a composition in a photoconversion elementwith an
`
`anode and a cathodeas part of an image sensor. See paragraphs 134-138, pages 32-33 and
`
`Example 3, paragraphs 158-161, page 38.
`
`Ofukuet al. does not teach where the alpha positions on the napthalocyanine are
`
`substituted by lower alkoxy groups. Additionally, Ofuku et al. do not teach wherethe aryl groups
`
`of Ro and Rip contain an electron withdrawing group suchasfluorine.
`
`Nakadaet al. teach related compounds where each alpha position on the napthalocyanine
`
`Pm
`
`ee
`
`eo %
`hee
`i~ Ss,‘EE
`ot NS
`onsitHex
`HexaeQhetcei.“ ye
`“Hex
`
`ty cagen
`
`are substituted by lower alkoxy groups suchas
`
`and
`
`cee
`
`wand,
`
`fpr ft Ths
`
`:
`Oy PoyA_f
`eeHeaBEBUOYa 2
`Hex
`mul Oy~Neh
`Buy ae
`Hex
`oe Se wy,
`(pore Hee
`Hex8OF> aN a
`Hex
`Hex BUN a __
`Os,
`f Cl, surYY
`
`go
`
`‘ya
`
`See
`
`Sy,
`
`wet
`
`pe
`
`
`Hex.Hex= &
`Next
`
`, the
`
`contain substitution at the alpha position,
`
`

`

`Application/Control Number: 17/5 17,060
`Art Unit: 1626
`
`Page 7
`
`compounds with alkoxy substation on the alpha positions allowed the compoundto absorb
`
`longer wavelengths of NIR radiation. See Examples | 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 exhibitedits highest quantum yield of 82% at920 nm. See
`
`Example 3, paragraph 179 and 183, pages 25-26 and Figure 6. While the compounds exemplified
`
`by Nakadaetal. are tin compounds, Nakadaetal. teaches thatsilicon can replace tin:
`
`4
`iN
`
`|
`> So
`CRs
`hehe ed »
`. i
`Ve MO
`&Yon, R07
`aa
`
`s,gmat
`
`. See paragraphs 7-8, page 4.
`
` tA
`{njCgh, zOGHN Rio positions:
`
`Ofukuet al. teaches a related compound with a halo-substituted aryl group in the Ro and
`
`i~a6
`
`é
`
`. see
`
`compoundI-46, page 20. Ofukuetal. specifies that the aryl group may be substituted by a
`
`halogen atom, which wouldinclude fluorine. See paragraph 43, page 8.
`
`The person of ordinary skill in the art would be motivated to combinethe teachings of
`
`Ofuku etal. and Nakadaet al. to arrive at the presently claimed invention as Nakadaet al. show
`
`that adding lower alkoxy groups in the alpha positions of the napthylocyaninering allows the
`
`compoundto absorb radiation at longer wavelengths in the NIR range. Ofuku et al. provides
`
`

`

`Application/Control Number: 17/5 17,060
`Art Unit: 1626
`
`Page 8
`
`additional guidanceas to potential axial substituents on the central silicon atom that include
`
`halogens, which includefluorine as claimed by present claim 5. The person of ordinary skill in
`
`the art would have a reasonable expectation of success as all of the compounds are NIR
`
`absorbersthat are usable in photoelectric conversion elements and imagesensorsandtheutility
`
`would be expected to be conserved.
`
`Therefore, the claims are primafacie obvious.
`
`Allowable Subject Matter
`
`
`
`8. Claim 6 is objected to as being dependent uponarejected base claim, but would be
`
`allowable if rewritten in independent form includingall of the limitations of the base claim and
`
`any intervening claims.
`
`Conclusion
`
`
`
`
`
`9, Claims 1 — 2,4—5 and 7-—-10 are rejected.
`
`10.
`
`11.
`
`Claim 6 is objected.
`
`THIS ACTION IS MADEFINAL.Applicantis reminded of the 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
`
`MONTHSfrom the mailing date of this action. In the eventa first reply is filed within TWO
`
`MONTHSofthe mailing date of this final action andthe advisory action is not mailed until after
`
`the end of the THREE-MONTHshortenedstatutory 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,
`
`

`

`Application/Control Number: 17/5 17,060
`Art Unit: 1626
`
`Page 9
`
`however,will the statutory period for reply expire later than SLX MONTHSfrom the mailing
`
`date of this final action.
`
`12.—Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to Sagar Patel whose telephone numberis (571)272-1317. The
`
`examiner can normally be reached Monday- Friday: 9am to Spm EST.
`
`Examinerinterviews are available via telephone, in-person, and video conferencing using
`
`a USPTO supplied web-based collaboration tool. To schedule an interview, applicantis
`
`encouragedto use the USPTO Automated Interview Request (AIR) at
`
`http://www.uspto.gov/interviewpractice.
`
`If attempts to reach the examinerby telephone are unsuccessful, the examiner’s
`
`supervisor, Joseph McKane can be reached on (571) 272-0699. The fax phone numberfor the
`
`organization where this application or proceedingis assignedis 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
`
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`Representative, call 800-786-9199 (IN USA OR CANADA)or 571-272-1000.
`
`/Sagar Patel/
`Examiner, Art Unit 1626
`
`

`

`Application/Control Number: 17/5 17,060
`Art Unit: 1626
`
`/SAMANTHA L SHTERENGARTS/
`Primary Examiner, Art Unit 1626
`
`Page 10
`
`