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 .
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 3, 4, 5, 6, 7, 10, 11, 12, 16, 17, and 18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2, 3, 4, 5, 5, 5, 12, 13, 14, 17, 19, and 18, respectively of U.S. Patent No. 12,094,681 B2 in view of US 2008/0179545 A1 [Perel]. Although the claims at issue are not identical, they are not patentably distinct from each other. The patented claims fail to teach a second valve in communication with a second gas chamber, or that one of the gas sources might be a halogen gas source. However, the prior art is replete with secondary gas sources and valves attached to ionization chambers, see e.g., Perel Fig. 3b. Further, Perel teaches placing a halogen gas in at least one of said gas chambers. Paras 40, 44. It would have been obvious to one of ordinary skill in the art before the effective time of filing to add the additional gas sources/ valves of Perel to the patent, since this would allow one to control the mixture of gas in the ionization chamber. Furhter, it would have been obvious to one of ordinary skill in the art to make one of the gases of the patent a halogen, since Perel teaches that it is a known dopant gas with recognized benefits in terms of ion source performance and lifetime.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim 16 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2020/0090916 A1 [Patel].
Regarding Claim 16:
Patel teaches an indirectly heated cathode ion source, comprising:
an arc chamber, comprising a plurality of walls and adapted to contain a solid target (Fig. 1a (101));
an indirectly heated cathode disposed in the arc chamber, wherein the indirectly heated cathode is used to generate a plasma in the arc chamber (Fig. 1a (110));
an insertable target holder to hold a solid dopant material, wherein the solid dopant material is a metal (Fig. 1a (195), paras 32-33);
an actuator to move the target holder from an extended position within the arc chamber to a retracted position outside the arc chamber (Fig. 1a (200));
and
a controller configured to operate the indirectly heated cathode ion source in one of a plurality of modes (Fig. 1a (200)), wherein in a single charge mode, the controller configures the indirectly heated cathode ion source to use a first source of metal in a generation of a plasma, and in a multicharge mode, a second source of metal is used in the generation of a plasma (para 74- the indirectly heated cathode is operable to produce either single charge or a multi-charge ions. Further, paras 75-76 speak to changing metal sources of plasma. As such, Patal shows that the IHC is operatble to produce single or multi-charged ions with a number of metals.).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that 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 owned as 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, 3, 7 are rejected under 35 U.S.C. 103 as being unpatentable over US 2020/0090916 A1 [Patel] in view of US 2008/0179545 A1 [Perel].
Regarding Claim 1:
Patel teaches an indirectly heated cathode ion source, comprising:
an arc chamber, comprising a plurality of walls (Fig. 1a (101));
an indirectly heated cathode disposed in the arc chamber (Fig. 1a (110), as described in para 23);
an insertable target holder to hold a solid dopant material (Fig. 1a (195), paras 32-33);
an actuator to move the target holder from an extended position within the arc chamber to a retracted position outside the arc chamber (Figs. 1a, 2 (200));
a first gas source (Fig. 7 (710));
a second gas source (Fig. 7 (750)); and
a controller (Fig. 1a (180) in communication with the actuator (as is evident in operation of Fig. 7), the introduction of the gases so as to operate the indirectly heated cathode ion source in one of a plurality of modes, wherein the plurality of modes comprises a single charge mode to create ions of a species having a single charge and a multicharge mode to create ions of the species having two or more charges (as described in paras 73-74).
However, Patel fails to teach using valves in communication with the arc chamber with each of the gas sources. Perel teaches an ion source (abstract) with a controller (Fig. 3b (250)) using valves to flow different gases into an arc chamber (Fig. 3b (266, 268, 270)). It would have been obvious to one of ordinary skill in the art to use the multiple valve arrangement of Perel to control the flow of the gases from the gas source of Patel. One would have been motivated to do so since valves are a well understood and easily implemented technique for controlling the ingress of gases.
Regarding Claim 3:
The above modified invention teaches the indirectly heated cathode ion source of claim 1, wherein the species comprises a metal. Patel para 33.
Regarding Claim 7:
The above modified invention teaches the indirectly heated cathode ion source of claim 1, wherein the first gas source contains a halogen containing species. Patel para 61.
Response to Arguments
Applicant’s arguments 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.
Allowable Subject Matter
Claims 8, 9, 13, 14, 15, 19 are 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
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WYATT A STOFFA whose telephone number is (571)270-1782. The examiner can normally be reached M-F 0700-1600 EST.
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, ROBERT KIM can be reached at 571 272 2293. The fax phone number for the organization where this 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 manage patent submissions in Patent Center, visit: https://patentcenter.uspto.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 about filing 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.
WYATT STOFFA
Primary Examiner
Art Unit 2881
/WYATT A STOFFA/Primary Examiner, Art Unit 2881
Prosecution Insights