DETAILED ACTION
Notice of Pre-AIA or AIA Status
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
Upon entry of the amendment filed on 08 September 2025, Claim(s) 73 is/are amended; Claim(s) 78-79, 81 and 84-87 is/are withdrawn; Claim(s) 90-93 is/are added and Claim(s) 1-77 is/are cancelled. The currently pending claims are Claims 73-93.
Based on applicants’ remarks and amendments (e.g. the specific concentration gradient), the rejections are withdrawn. However, new grounds of rejections are provided necessitated by the amendments.
Claim Rejections - 35 USC § 112
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 92 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claim 92 is rejected under 35 U.S.C 112, second paragraph, for containing the phrase "substantially pure". The term " substantially pure" renders the claim vague and indefinite, since one of ordinary skill in the art would not be able to ascertain the metes and bounds of the term " substantially pure". Furthermore, the specification does not contain guidelines describing what numerical values are encompassed by the phrase " substantially pure" – it is noted that applicant’s specification recites exemplary numerical values such as 95% purity; however, a definite definition is not provided. Appropriate correction and/or clarification is/are required.
Claim Rejections - 35 USC § 102 & 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 73, 75, 80, 83, 89, 92 and 93 are rejected under 35 U.S.C. 102(a)(a) as being anticipated by Rabkin (US-20160099250-A1).
Claims 73, 75, 80, 83, 90 and 93: Rabkin discloses a monolithic 3D architected NAND material comprising a first portion with a metal (e.g. silicon), a second portion spatially apart comprising a second metal (e.g. germanium) and a concentration gradient from the first metal to the second metal across a distance (abs, ¶18-26, 47-50, 72 and Figs 1, 4, 6-8 with accompanying text). It is noted that the deterministic structure limitation is construed based on applicant’s specification of the structure being within 20% of the desired value. Rabkin teaches the deterministic structure based on the desired design, the specific schematic and the control the NAND structure (Figs 1, 4, 6-8 with accompanying text).
Claim 89: Rabkin discloses the composition varying in electrical characteristics (abs, ¶18-26, 47-50, 72 and Figs 4, 6-8 with accompanying text).
Claim(s) 88 and 93 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by or under 103 as being unpatentable over Rabkin.
It is noted that claim(s) 88 and 93 include product-by-process limitations, requiring that a specific thermal, photopolymerization and/or hydrogel features in the synthetic route instead of the process as taught by the cited reference(s). Nevertheless, even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself and there is no evidence that these differences in the processes would have resulted in a different product. Until such evidence is presented, it would therefore have been obvious to one of ordinary skill in the art that the reference product reads on the claimed product. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. See MPEP 2113.
Accordingly, the reference anticipates the material limitations of the listed claims.
With respect to the 103 portion of the rejection, in the alternative that any differences can be shown for the product of the product-by-process claims, as opposed to the product taught by Rabkin, such differences would have been obvious to one of ordinary skill in the art as a routine modification of the product and are recognized as being well within the purview of the skilled artisan to yield predictable results. As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith." In re Brown, 459 F.2d 531,535, 173 USPQ 685,688 (CCPA 1972).
Claim(s) 82 and 91 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rabkin.
The Rabkin reference discloses the claimed invention but does not explicitly disclose the claimed grain size proportion and/or range. It is noted that the claimed grain size is construed as a result-effective variable, i.e. a variable which achieves a recognized result. Here, Rabkin discloses controlling the structural dimensions of the components (abs, ¶18-26, 47-50, 72 and Figs 1, 4, 6-8 with accompanying text). Given that the Rabkin reference discloses a similar material, it would have been obvious to one of ordinary skill in the art at the time of the invention to choose the instantly claimed ranges through process optimization such as varying the grain sizes, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See MPEP 2144.05. Thus, it would have been obvious to one of ordinary skill in the art at the time of the invention to optimize known variables, i.e. the grain size, since the reference also discloses a similar end-product. Further, obviousness only requires a reasonable expectation of success and there is no evidence nor teaching that the selection or optimization of the claimed grain size variable would be repugnant to a skilled artisan.
Claim(s) 74, 76 and 77 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rabkin as applied to claim 73 above, and further in view of Zhang (US-20160049421-A1).
The Rabkin reference discloses the claimed invention but does not explicitly disclose the feature of the various metals. It is noted that the Rabkin reference discloses employing known metals in a 3D NAND material and the claim(s) call(s) for specific metals from various Markush groups. In an analogous art, the Zhang reference discloses that the feature of employing the claimed metals and ceramics in 3D NAND material is well known to achieve the desired electric, semiconducting and strength behavior (abs, ¶22, 33-46, 63-69). One of ordinary skill in the art would have recognized that applying the known technique and components of Zhang to the teachings of Rabkin would have yielded predictable results because the level of ordinary skill in the art demonstrated by the cited references shows the ability to apply such features into similar systems, methods and compositions for the benefit gain of achieving the desired electric, semiconducting and strength behavior. See MPEP 2143. Further, it is noted that obviousness only requires a reasonable expectation of success and there is no evidence nor teaching that the substitution/implementation would be repugnant to a skilled artisan.
Response to Arguments
Applicant’s arguments, see pg. 6-13, filed 08 September 2025, with respect to the Bakker, Worsley and Wang references have been fully considered and are persuasive. The 102 and 103 rejections have been withdrawn.
Applicant’s arguments with respect to claim(s) 73-77,80,82-83 and 88-93 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Bhowmik discloses a film structure with Titanium-Tantalum concentration gradient.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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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/TRI V NGUYEN/Primary Examiner, Art Unit 1764
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