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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Election/Restrictions
Applicant's election with traverse of Species 2 (claims 1-6, 8-10, 12-13, 17-20) in the reply filed on 09/10/2024 is acknowledged. The traversal is on the ground(s) that all the species illustrate a processing chamber, process gas unit, substrate heat unit, and a castrated cooling unit. This is not found persuasive because each of the species illustrate different and mutually exclusive configurations of heating and cooling units, and some of the species requires a plasma generator with antenna instead of a heating unit, and some require GRIN lenses instead heating lamps, which require searching of different classes/subject matter as recited in MPEP 806.05(e).
The requirement is still deemed proper and is therefore made FINAL.
Claims 11, 14-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Species (1, 3-5), there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 11/18/2024.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description: 1258. Corrected drawing sheets in compliance with 37 CFR 1.121(d) 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 under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the cooling fluid supply, plasma heating unit must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) 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. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. 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.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
Substrate positioning features (clamps, horizontal pins or supports, semi-circular rings, or vertical pins or supports, para. [0087]) in claims 1-20.
Substrate heating unit (heat lamp, ceramic heater, quartz heater, or a Gradient Index (GRIN) lens connected to a light energy source, para. [0091]) in claims 1-20.
Substrate cooling unit (cooling fluid, piping, coolant flow features including nozzles or holes, or laser cooling, para. [0098], [0101]) in claims 1-20.
Convective heating unit (heating gas source, or heating flow features including nozzles or holes, para. [0094]) in claims 8-10, 17.
Plasma heating unit (any structure that heats using plasma, due to lack of corresponding structure in the specification, para. [0096]) in claims 8-10, 12.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
This application includes one or more claim limitations that use the word “means” or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitation(s) is/are:
Process gas unit (one or more flow features, hole, nozzle, or showerhead, para. [0085]) in claims 1-20.
Plasma generator (appears to be a RF plasma source, para. [0093]) in claim 8-10, 12-16.
Cooling fluid supply (appears to be a cooling fluid source, para. [0098]) in claims 18-19.
Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If applicant intends to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
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 limitation “Plasma heating unit” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The disclosure is devoid of any structure that performs the function in the claim. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-5, 6, 8, 9, 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 20040112885 to Shigeoka in view of US 20140330422 to Ranish.
Claims 1-5: Shigeoka discloses an apparatus for semiconductor processing, the apparatus comprising: a processing chamber (110 [process chamber], Fig. 4) that includes chamber walls (walls of 110) that at least partially bound a chamber interior (inside 110), and substrate positioning features (150 [support]) configured to support and thermally float a substrate (W [wafer]) in the chamber interior (inside 110);
a process gas unit (180 [gas introducing part]) configured to flow a first process gas into the chamber interior and onto the substrate in the chamber interior (para. [0143]); a substrate heating unit (140 [heating unit]) configured to heat the substrate in the chamber interior (inside 110, para. [0067]); a substrate cooling unit (116 [cooling pipes]) configured to actively cool the substrate in the chamber interior (inside 110, para. [0065]); and a controller (300 [control part]) with instructions that are configured to:
(a) cause the substrate heating unit (140) to heat a substrate positioned on the substrate positioning features to a first temperature (para. [0130-0140]).
However Shigeoka does not explicitly disclose (b) cause the process gas unit to flow the first process gas to the substrate in the chamber interior, wherein the first process gas is configured to modify one or more surface layers of material on the substrate by chemical adsorption without using a plasma while the substrate is maintained at the first temperature, and
(c) cause the substrate heating unit to maintain the substrate at a second temperature, wherein the one or more modified surface layers on the substrate are removed by desorption without using a plasma while the substrate is maintained at the second temperature;
(claim 2) wherein: the second temperature is higher than the first temperature, and the controller further includes instructions that are configured to: (d) cause, after (b), the substrate heating unit to heat the substrate to the second temperature; (claim 4) wherein: the second temperature is lower than the first temperature, and the controller further includes instructions that are configured to: (g) cause, after (b), the substrate cooling unit to actively cool the substrate to the second temperature; (claim 5) wherein the controller further includes instructions that are configured to: (h) repeat, after (g), (a) through (g).
However Ranish teaches a controller (360 [controller], Fig. 3) configured to have many variations of processing parameters and steps that can have any of (b) cause the process gas unit to flow the first process gas to the substrate in the chamber interior (inside 312 [processing chamber], para. [0078], [0083]), (c) cause the substrate heating unit to maintain the substrate at a second temperature (para. [0086] where a second target temperature is targeted), (claims 2, 4) wherein: the second temperature is higher or lower than the first temperature (para. [0086] where the first and second temperatures can be the same or different), (claim 5) wherein the controller further includes instructions that are configured to: (h) repeat (para. [0081]). Ranish discloses this for the purpose of having improved temperature control, uniformity and repeatability (para. [0004]).
Regarding the controller limitations: “wherein the first process gas is configured to modify one or more surface layers of material on the substrate by chemical adsorption without using a plasma while the substrate is maintained at the first temperature,” “wherein the one or more modified surface layers on the substrate are removed by desorption without using a plasma while the substrate is maintained at the second temperature,” the limitations are drawn to likely results of the instructions which have the structure and function to lead to the results above, and thus do not have patentable weight.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to incorporate the variations and options of desired temperatures and steps, as taught by Ranish, with motivation to have improved temperature control, uniformity and repeatability.
The apparatus of Shigeoka in view of Ranish discloses (claim 3) wherein the controller (360) further includes instructions that are configured to: (e) cause, after (d), the substrate cooling unit (116, Fig. 4, Shigeoka) to actively cool the substrate (para. [0065], [0159] where the temperature can be adjusted to a desired temperature), and (f) repeat, after (e), (a) through (e) (para. [0002]).
Claim 6: The apparatus of Shigeoka in view of Ranish discloses wherein the first process gas comprises an oxidizing gas or a halogenating gas (para. [0144], Shigeoka).
Claim 7: (Withdrawn).
Claim 8: The apparatus of Shigeoka in view of Ranish discloses wherein the substrate heating unit (140, Fig. 4, Shigeoka) includes at least one of: one or more lamps (130 [lamps], para. [0070-0071]), one or more gradient-index (“GRIN”) lenses connected to a light source, a laser, a convective heating unit, and a plasma heating unit.
Claim 9: The apparatus of Shigeoka in view of Ranish discloses wherein: the processing chamber (110, Fig. 4, Shigeoka) further comprises a window (120 [quartz window]) that partially bounds the chamber interior and is configured to allow radiation to be transmitted into the chamber interior (para. [0064, [0066]), the substrate heating unit (140) is positioned outside the chamber interior (Fig. 4) such that at least a portion of the window (120) is interposed between the chamber interior (on top of inside 110) and the substrate heating unit (140), the substrate heating unit (140) includes at least one of: one or more lamps (130), one or more GRIN lenses connected to a light source, and a laser, and the substrate heating unit (140) is configured to emit radiation through the window (120) and into the chamber interior (inside 110) to heat a substrate in the chamber interior (para. [0066]).
Claim 20: The apparatus of Shigeoka in view of Ranish discloses wherein the processing chamber (110) does not include a pedestal (see Fig. 4).
Claim(s) 10, 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shigeoka in view of Ranish as applied to claims 1-5, 6, 8, 9, 20 above, and further in view of US 20030037879 to Askarinam.
Claims 10, 12: The apparatus of Shigeoka in view of Ranish does not disclose (claim 10) further comprising a plasma generator configured to generate a plasma in the chamber interior, wherein the plasma generator is one of: a capacitively coupled plasma, an inductively coupled plasma, an upper remote plasma, and a lower remote plasma; (claim 12) the plasma generator is a capacitively coupled plasma, an RF electrode of the plasma generator comprises the window, and the substrate heating unit includes at least one of: one or more lamps, one or more GRIN lenses connected to a light source, and a laser. Yet Shigeoka already discloses the substrate heating unit (140, Fig. 4, Shigeoka) includes lamps (130, para. [0070]).
However Askarinam discloses (claim 10) further comprising a plasma generator (244/234/230/238, Fig. 2) configured to generate a plasma in the chamber interior (para. [0021]), wherein the plasma generator is one of: a capacitively coupled plasma (para. [0024]), an inductively coupled plasma, an upper remote plasma, and a lower remote plasma; (claim 12) the plasma generator (244/234/230/238) is a capacitively coupled plasma (para. [0021-0024]), an RF electrode (230/228 [primary bias electrode]/[ceiling]) of the plasma generator (244/234/230/238) comprises the window (230/228), and the substrate heating unit includes at least one of: one or more lamps (246 [halogen lamps], already disclosed by Shigeoka), one or more GRIN lenses connected to a light source, and a laser; for the purpose of allowing the window to function both as an induction field and as an electrode and/or providing a consistent and stable plasma (para. [0023]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to incorporate the plasma generator, window combination as taught by Askarinam with motivation to allow the window to function both as an induction field and as an electrode and/or providing a consistent and stable plasma.
Claim 11: (Withdrawn).
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shigeoka in view of Ranish, Askarinam as applied to claims 10, 12 above, and further in view of US 20110109530 to Nonomura.
Claim 13: The apparatus of Shigeoka in view of Ranish, Askarinam does not disclose wherein the window is a transparent indium tin oxide (“ITO”) window that is grounded or powered.
However Nonomura wherein the window (22, Fig. 3) is a transparent indium tin oxide (“ITO”) window (22a/22b/22c) that is grounded (para. [0031] where 22 is connected to grounded 2 [lid portion]) or powered, for the purpose of reducing noise with respect to the change in electric potential induced at the electrode (para. [0031]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to substitute the window material of Askarinam with that of Nonomura with motivation to reduce noise with respect to the change in electric potential induced at the electrode.
Claims 14-16: (Withdrawn).
Claim(s) 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shigeoka in view of Ranish as applied to claims 1-5, 6, 8, 9, 20 above, and further in view of US 20160035619 to Yu.
Claim 17: The apparatus of Shigeoka in view of Ranish does not disclose wherein the substrate heating unit includes a plurality of lamps that are positioned inside the chamber interior.
Yu discloses wherein the substrate heating unit (504 [heater], Fig. 5) includes a plurality of lamps (not shown, para. [0034]) that are positioned inside the chamber interior (inside 302 near the substrates, para. [0034]), for the purpose of generating radiation suitable to heat the one or more substrates (para. [0034]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to incorporate the optional positioning of the lamps as taught by Yu with motivation to generate radiation suitable to heat the one or more substrates.
Claim(s) 18, 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shigeoka in view of Ranish as applied to claims 1-5, 6, 8, 9, 20 above, and further in view of US 20120211486 to Kasai.
Claims 18, 19: The apparatus of Shigeoka in view of Ranish does not disclose (claim 18) wherein the substrate cooling unit includes at least one of: a cooling fluid supply configured to cool a cooling fluid to 0° C or less and flow the cooling fluid into the chamber interior and onto the substrate, and a laser; (claim 19) further comprising one or more nozzles fluidically connected to the cooling fluid supply, wherein the one or more nozzles are configured to flow the cooling fluid into the chamber interior.
However Kasai discloses (claim 18) wherein the substrate cooling unit (136 [gas cooling unit], Fig. 7) includes at least one of: a cooling fluid supply configured to cool a cooling fluid to 0° C or less (para. [0093] where inert gases are intrinsically at those temperatures) and flow the cooling fluid into the chamber interior and onto the substrate (para. [0093]), and a laser; (claim 19) further comprising one or more nozzles (162 [holes]) fluidically connected to the cooling fluid supply (Ar and N2 “gases” para. [0093]), wherein the one or more nozzles (162) are configured to flow the cooling fluid into the chamber interior (para. [0093]) for the purpose of cooling the wafer (para. [0093]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to incorporate the substrate cooling unit components as taught by Kasai with motivation to cool the wafer.
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 1-6, 8-10, 12-13, 17-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. US 11380556. Although the claims at issue are not identical, they are not patentably distinct from each other because the language of the claims of the instant application is fully encompassed by the patent, rendering the instant application obvious over the patent mentioned above. It is further noted that the instant application is a continuation of US Patent No. 11,380,556.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Charlee J. C. Bennett whose telephone number is (571)270-7972. The examiner can normally be reached M-Th 10am-6pm.
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/Charlee J. C. Bennett/Primary Examiner, Art Unit 1718