Detailed Action
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 64, 66 and 70 rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor had possession of the claimed invention.
Applicants have amended Claim 64 to include limitations from Fig. 7A including a temporary substrate 702, a thin doped layer between the plurality of active layers 706 and temporary substrate 706, and a conductive layer 704/704-A on the other side of the plurality of active layers 706. The claim further includes a filler layer 116 shown in the embodiment of Fig. 1C. It is completely unclear how these embodiments can be combined, and no single disclosure in the specification shows all elements of Claim 64 in combination.
Hyatt v. Dudas, 492 F.3d 1365, 1371 (Fed. Cir. 2007) is instructive:
Here, we hold the examiner's initial rejection complied with § 2163.04(I)(B), followed Alton, and accomplished the aims of the prima facie case. For example, in rejecting application claim 163, the examiner explained that the written description did not support the particular claimed combination of elements, even listing each and every element of the allegedly unsupported combination.5 And the examiner was explicit that while each element may be individually described in the specification, the deficiency was the lack of adequate description of their combination-he stated, “While each element may individually be discussed neither the specification nor drawings clearly support the claimed embodiment as a whole.” Id. (emphasis added). He further indicated what Hyatt needed to address his concern: “[I]t is not enough that applicant show where each claimed element resides in the earliest filed application but [he] must also provide support for the linkage of the claimed elements creating the embodiment.”
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claims 64, 66 and 70 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
In reviewing a claim for compliance with 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, the examiner must consider the claim as a whole to determine whether the claim apprises one of ordinary skill in the art of its scope and, therefore, serves the notice function required by 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, by providing clear warning to others as to what constitutes infringement of the patent.
If the language of the claim is such that a person of ordinary skill in the art could not interpret the metes and bounds of the claim so as to understand how to avoid infringement, a rejection of the claim under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, is appropriate (MPEP 2173.02).
In this case, the term “temporary substrate” renders a claim directed to a structure indefinite. It is not clear precisely what structure is being claimed; i.e. if infringement occurs only the temporary substrate is present or if the claimed vertical device was formed or transported on a temporary substrate at some point in the past. The “temporary substrate” is embodied as 702 in Fig. 7A at least. Even if the embodiment of Fig. 7A was being claimed, it cannot be determined if the substrate 702 must be removable, or must be removed, or must be in place in the future for infringement to occur.
Application of John Covell Collier, 397 F.2d 1003 (C.C.P.A. 1968) is instructive:
“The main fault we observe in claim 17 is indefiniteness in the sense that things which may be done are not required to be done. For example, the ferrule or connector member is crimpable but not required, structurally, to be crimped; the ground wire "means," which we take to be a piece of wire, is for disposition under the ferrule but is not required to be disposed anywhere; it becomes displaced when the ferrule is crimped but that may never be, so far as the language of claim 17 is concerned. These cannot be regarded as structual limitations and therefore not as positive limitations in a claim directed to structure. They cannot therefore be relied on to distinguish from the prior art.”
Similarly, there is a “temporary” substrate which is not required to be removed, or be removable. As a result, the metes and bounds of Claim 64 and its dependents are indefinite.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is 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 MONTHS from the mailing date of this action. In the event a first 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 nonprovisional extension fee (37 CFR 1.17(a)) 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 SIX MONTHS from the mailing date of this final action.
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/EVREN SEVEN/ Primary Examiner, Art Unit 2812