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 Arguments
Applicant's arguments filed 8/24/26 have been fully considered but they are not persuasive.
Drawings arguments
The applicant alleges, with regards to the drawings, “[b]y this Amendment, Figures 1A and 1B are amended to clearly label the transition region.” As noted in the drawing objection below, the elements 111A, 111B, and 28 shown in proposed drawing correction of figs 1A and 1B are not in the original specification and fail to comply with 37 CFR 1.84(p)(5). Therefore, the amendments to figures 1A and 1B do not overcome the drawing objection.
Moreover, the amended drawings fail to show “TAFE1>TTR” and “TAFE1<TTR”. MPEP 608.02(d) explicitly discloses “[a]ny structural detail that is of sufficient importance to be described should be shown in the drawing. (Ex parte Good, 1911 C.D. 43, 164 OG 739 (Comm’r Pat. 1911).)”
112(a) arguments
The applicant alleges “the Office acknowledged that ‘[p]aragraph [0036] explicitly describes the transition region.’ Office Action, page 7. This acknowledgment is dispositive.” The examiner disagrees. The issue is that the applicant’s original specification did not disclose “a transition region… and the transition region has a different atomic ratio of at least one of the atomic components” (underline added). MPEP 2163 IB discloses “amended claims which introduce elements or limitations that are not supported by the as-filed disclosure violate the written description requirement. See, e.g., In re Lukach, 442 F.2d 967, 169 USPQ 795 (CCPA 1971) (subgenus range was not supported by generic disclosure and specific example within the subgenus range)”. In this case, the generic disclosure of “transition region” in paragraph [0036], does not give written description to the subgenus claim limitation “the transition region has a different atomic ratio of at least one of the atomic components” (underline added). Therefore, the applicant’s arguments are unpersuasive.
The applicant alleges “originally filed claims 18 and 19 each explicitly recite ‘a first transition region between the first anti-ferroelectric layer and the ferroelectric layer has a thickness TTR’” and alleges this gives support to the transition region limitation. The examiner disagrees. The issue is that the applicant’s original specification did not disclose “a transition region… and the transition region has a different atomic ratio of at least one of the atomic components” (underline added). MPEP 2163 IB discloses “amended claims which introduce elements or limitations that are not supported by the as-filed disclosure violate the written description requirement. See, e.g., In re Lukach, 442 F.2d 967, 169 USPQ 795 (CCPA 1971) (subgenus range was not supported by generic disclosure and specific example within the subgenus range)”. In this case, the generic disclosure of “transition region” in paragraph claims 18 and 19, does not give written description to the subgenus claim limitation “the transition region has a different atomic ratio of at least one of the atomic components” (underline added). Therefore, the applicant’s arguments are unpersuasive.
The applicant alleges “paragraph [0108] of the originally filed specification independently recites ‘a first transition region between the first anti-ferroelectric layer and the ferroelectric layer has a thickness TTR’”. The examiner disagrees this gives written description support to “a transition region… and the transition region has a different atomic ratio of at least one of the atomic components” (underline added). MPEP 2163 IB discloses “amended claims which introduce elements or limitations that are not supported by the as-filed disclosure violate the written description requirement. See, e.g., In re Lukach, 442 F.2d 967, 169 USPQ 795 (CCPA 1971) (subgenus range was not supported by generic disclosure and specific example within the subgenus range)”. In this case, the generic disclosure of “a first transition region between the first anti-ferroelectric layer and the ferroelectric layer has a thickness TTR” in paragraph [0108], does not give written description to the subgenus claim limitation “the transition region has a different atomic ratio of at least one of the atomic components” (underline added). Therefore, the applicant’s arguments are unpersuasive.
The applicant alleges the office notes that the specification fails to define the transition distance is the “transition region” and “Applicant submits that this argument is not relevant to the claims.” The examiner notes this is relevant to the claims because in the response filed 4/8/26 the applicant representative noted “Applicants respectfully submit that Figures 2A and 2B provide non-limiting examples of a transition region… Figures 2A and 2B include element DTa. Therefore, one of ordinary skill would understand that the drawings include a representation of the transition region.” In the current response, filed 8/24/26, the applicant now alleges “Figures 1A and 1B are amended to clearly label the transition region.” The prosecution history shows that the applicant has not been consistent about pointing out support for the “transition region” in the figures. The examiner notes that if the applicant cannot clearly point out the figures that support the claimed “transition region”, then the applicant has not put the public or the office on notice of what the applicant had possession of at the time of filing. Therefore, the applicant’s arguments are unpersuasive.
The applicant alleges “[a] person of ordinary skill in the art would understand that a transition distance over which composition changes from one layer to another necessarily defines a physical region of material spanning that distance.” The applicant has not provided any evidence to support the allegation “[a] person of ordinary skill in the art would understand…”. MPEP 716.01(c) II discloses “Arguments presented by the applicant cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965) and In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984).” Moreover, The Federal Circuit has held:
As we explained in Ariad, the written description inquiry looks to "the four corners of the specification" to discern the extent to which the inventor(s) had possession of the invention as broadly claimed. Ariad, 598 F.3d at 1351 ; see also Lockwood v. Am. Airlines, Inc., 107 F.3d 1565 , 1571 (Fed. Cir. 1997) ("It is the disclosures of the applications that count."). The knowledge of ordinary artisans may be used to inform what is actually in the specification, see Lockwood, 107 F.3d at 1571 , but not to teach limitations that are not in the specification, even if those limitations would be rendered obvious by the disclosure in the specification. Id. at 1571-72 .
Rivera v. Int'l Trade Comm'n, 857 F.3d 1315, 1322 (Fed. Cir. 2017)
In this case, it might be obvious that the transition distance would give support to the claimed transition region, but the specification as originally filed fails to teach the transition distance is the same as the transition region and fails to disclose “a transition region… and the transition region has a different atomic ratio of at least one of the atomic components”. Therefore, the applicant’s arguments are unpersuasive.
The applicant alleges “paragraph [0018] of the originally filed specification describes the anti-ferroelectric layers as providing ‘a transition layer between the ferroelectric layer and adjacent layers, thereby providing a less abrupt composition change between the layers.’" Paragraph [0018] only discloses a transition layer. Paragraph [0018] does not define the transition layer as the transition region. Paragraph [0018] does not give written description support to “the transition region has a different atomic ratio of at least one of the atomic components” (underline added). Therefore, the applicant’s arguments are unpersuasive.
The applicant alleges “paragraph [0023] of the originally filed specification describes… ‘there is a gradual change in the composition of the ferroelectric/anti-ferroelectric layers as they are being formed’… This disclosure directly supports the formation of a transition region”. The examiner disagrees. The applicant has not defined the “gradual change” as the transition region. (The examiner notes that in the response filed 4/8/26 the applicant pointed to figures 2A and 2B as support for the transition region and these figures show a step function as opposed to a gradual change.) Moreover, paragraph [0023] does not give written description to “the transition region has a different atomic ratio of at least one of the atomic components” (underline added). Therefore, the applicant’s arguments are unpersuasive.
The applicant alleges the amendment is a “[m]ere rephrasing” and does not constitute new matter according to MPEP 2163.07(a). The examiner disagrees the amendment is rephrasing. The applicant has not shown support for the claim limitation “the transition region has a different atomic ratio of at least one of the atomic components” (underline added).
The applicant notes “there is no in haec verba requirement for written description. MPEP § 2163, subsection I.B ("While there is no in haec verba requirement, newly added claims or claim limitations must be supported in the specification” (underline added). The issue is that the applicant’s original specification did not disclose “a transition region… and the transition region has a different atomic ratio of at least one of the atomic components” (underline added). MPEP 2163 IB discloses “amended claims which introduce elements or limitations that are not supported by the as-filed disclosure violate the written description requirement. See, e.g., In re Lukach, 442 F.2d 967, 169 USPQ 795 (CCPA 1971) (subgenus range was not supported by generic disclosure and specific example within the subgenus range)”. In this case, the generic disclosure of “transition region” in paragraph [0036], does not give written description to the subgenus claim limitation “the transition region has a different atomic ratio of at least one of the atomic components”. Therefore, the applicant’s arguments are unpersuasive.
The applicant alleges “the originally filed specification explicitly discloses a "transition region" in paragraph [0036] and in originally filed claims 18 and 19, and further describes the compositional characteristics of that region in paragraphs [0018], [0030], and [0031].” The examiner disagrees that this combination of paragraphs from the specification gives written description to the claimed invention. Paragraphs [0018], [0030], [0031]and [0036] disclose “in some embodiments”. The specification is not explicit that paragraph [0018], [0030], [0031] and [0036] are referring to the same embodiment. The Federal Circuit has held “[t]he written description requirement is not met when… the specification provides at best disparate disclosures that an artisan might have been able to combine in order to make the claimed invention. Ariad Pharms., 598 F.3d at 1352“. Flash Control, LLC v. Intel Corp., No. 2020-2141, 2021 BL 262867, at *5, 2021 U.S.P.Q.2d 754 (Fed. Cir. July 14, 2021). In this case, the the specification as filed only provides disparate disclosures (i.e. “in some embodiments” in paragraphs [0018], [0030], [0031], [0036] and claims 18-19) that the applicant might have been able to combine in order to make the claimed invention. Therefore, the applicant’s arguments are unpersuasive.
Specification
The amendment filed 8/24/26 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: the applicant amended figure 1A to include element 111A, and the applicant amended figure 1B to include element 111A, 111B and 28.
Applicant is required to cancel the new matter in the reply to this Office Action.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: elements 111A and 111B shown in proposed drawing correction of figs 1A and 1B are not in the original specification. Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: element 28 in proposed drawing correction of fig 1B are not in the original specification. Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Regarding claims 1, 8 and 14, the drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “transition region” must be shown in figures 2A and 2B (current figures 2A and 2B only show DTa or DTa1 or DTa2, which the specification describes as the transition distance) or the feature(s) canceled from the claim(s). No new matter should be entered.
Regarding claim 18, the drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “TAFE1>TTR” must be shown in or the feature(s) canceled from the claim(s). No new matter should be entered.
Regarding claim 19, the drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “TAFE1<TTR” must be shown in or the feature(s) canceled from the claim(s). No new matter should be entered.
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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claims 1, 2, 4-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, 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, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The applicant’s original claim 1, filed 4/15/22, did not disclose “a transition region… and the transition region has a different atomic ratio of at least one of the atomic components”.
The applicant’s original claim 8, filed 4/15/22, did not disclose “a transition region… and the transition region has a different atomic ratio of at least one of the atomic components”.
The applicant’s original claim 14, filed 4/15/22, did not disclose “a transition region… and the transition region has a different atomic ratio of at least one of the atomic components”.
The applicant amended “a transition region” into claims 1, 8 and 14 on 9/26/25.
The applicant amended “and the transition region has a different atomic ratio of at least one of the atomic components” into claims 1, 8 and 14 on 4/8/25.
The drawings as originally filed fail to disclose a “transition region”.
The amended drawings filed 8/24/26 introduce new matter that was not a part of the original specification as filed. MPEP 2163.06 I discloses “[i]f new subject matter is added to the disclosure, whether it be in the abstract, the specification, or the drawings, the examiner should object to the introduction of new matter under 35 U.S.C. 132 or 251 as appropriate, and require applicant to cancel the new matter. If new matter is added to the claims, the examiner should reject the claims under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph - written description requirement. In re Rasmussen, 650 F.2d 1212, 211 USPQ 323 (CCPA 1981).”
The applicant alleges support for the amend can be found in paragraph [0030] and [0031] in the original specification, in the remarks filed 4/8/26. The applicant specifically alleges:
Support for this amendment is found at least in paragraph [0030] of the originally filed specification, which explicitly states that "the first anti-ferroelectric layer 110A, the ferroelectric layer 108, and, if present, the second anti-ferroelectric layer 110B, include the same atomic components. The atomic/molar ratios of those atomic components, however, differ between the first and second anti-ferroelectric layers 110A, 110B and the ferroelectric layer 108." Specification, paragraph [0030]. Additional support is found at least in paragraph [0031], which describes the transition distance (DTa) where "the concentration changing from that of the first anti- ferroelectric layer 110A to that of the ferroelectric layer 108." Specification, paragraph [0031].
Neither paragraph [0030] nor [0031] describe a transition region.
Paragraph [0031] does disclose a transition distance, but does not describe or define the transition distance as a “transition region”.
Paragraph [0036] explicitly describes the transition region, but fails to disclose “a transition region… and the transition region has a different atomic ratio of at least one of the atomic components”.
The Federal Circuit has held:
As we explained in Ariad, the written description inquiry looks to "the four corners of the specification" to discern the extent to which the inventor(s) had possession of the invention as broadly claimed. Ariad, 598 F.3d at 1351 ; see also Lockwood v. Am. Airlines, Inc., 107 F.3d 1565 , 1571 (Fed. Cir. 1997) ("It is the disclosures of the applications that count."). The knowledge of ordinary artisans may be used to inform what is actually in the specification, see Lockwood, 107 F.3d at 1571 , but not to teach limitations that are not in the specification, even if those limitations would be rendered obvious by the disclosure in the specification. Id. at 1571-72 .
Rivera v. Int'l Trade Comm'n, 857 F.3d 1315, 1322 (Fed. Cir. 2017)
In this case, it might be obvious that the transition distance would give support to the claimed transition region, but the specification as filed fails to explicitly disclose the transition distance is the same as the transition region and fails to disclose “a transition region… and the transition region has a different atomic ratio of at least one of the atomic components”.
Paragraph [0031] disclose a transition distance, but fails to define the transition distance is the “transition region”. Paragraph [0036] explicitly describes the transition region, but fails to define the transition distance is the “transition region”. Both paragraphs [0031] and [0036] disclose “in some embodiments”. The specification is not explicit that paragraph [0031] and [0036] are referring to the same embodiment. The Federal Circuit has held “[t]he written description requirement is not met when… the specification provides at best disparate disclosures that an artisan might have been able to combine in order to make the claimed invention. Ariad Pharms., 598 F.3d at 1352“. Flash Control, LLC v. Intel Corp., No. 2020-2141, 2021 BL 262867, at *5, 2021 U.S.P.Q.2d 754 (Fed. Cir. July 14, 2021).
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRADLEY K SMITH whose telephone number is (571)272-1884. The examiner can normally be reached Monday-Friday, 10am-6pm.
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 reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Marlon Fletcher can be reached at 571-272-2063. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRADLEY SMITH/Primary Examiner, Art Unit 2817
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