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 .
DETAILED ACTION
Status of Claims
1. Applicant's amendment of claims 1, 9, and 45 in “Claims - 02/11/2026” with “Amendment/Req. Reconsideration-After Non-Final Reject - 02/11/2026”, have been acknowledged by Examiner.
This office action considers claims 1-45 pending for prosecution, wherein claims 18-45 are withdrawn from further consideration, and claims 1-17 are presented for examination.
Response to Arguments
2. Applicant's arguments filed in the “Applicant Arguments/Remarks Made in an Amendment” on 02/11/2026 have been fully considered, but they are not persuasive, because of the following: the Applicant's amendment of claim 1 necessitated the shift in new grounds of rejection detailed in sections 4-7 below. The shift in grounds of rejection renders the Applicant's arguments moot.
The Applicant’s request that “the rejection of claims 9 and 10 under 35 U.S.C. § 112(b) should be withdrawn” is addressed in Section 3 below.
Further rejections under 35 U.S.C. § 112(b) were necessitated for various claims in view of the amended claims filed in “Claims - 02/11/2026” and are detailed in section 4 below.
Please see the analysis of rejection for all claims below.
Claim Rejections - 35 USC § 112
3. Applicant’s argument, in the “Applicant Arguments/Remarks Made in an Amendment” filed on 02/11/2026, see “Claim 9 has been amended to depend from claim 8 instead of claim 2. Claim 8 recites "wherein the component or the circuit comprises a monolithic microwave integrated circuit (MMIC)," which provides the antecedent basis for "the MMIC" recited in claim 9. Claim 10 depends from amended claim 9 provides the antecedent basis for claim 10. Accordingly, Applicant respectfully submits that the rejection of claims 9 and 10 under 35 U.S.C. § 112(b) should be withdrawn” (remarks on page 9), has been considered and is persuasive.
In view of that along with the relevant amendment to claims 9-10, in the file “Claims” filed on 02/11/2026, the 35 U.S.C. § 112(b) rejection to claims 9-10 has been withdrawn.
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.
4. Claims 2-10 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.
Regarding Claim 2, the instant claim recites limitations in view of the parent device claim 1, wherein the metes and bounds of the claimed method are vague and ill-defined as a result of uncertainty in the different boundaries and new limitations “wherein the upper metal plate of the MIM capacitor configured to serve as a wire bonding surface is configured to attach with at least one wire bond to a component or a circuit on a separate surface in a package” (Claim 2; emphasis added). The claim is indefinite because of the following:
i) The claim is indefinite because “wherein the upper metal plate of the MIM capacitor configured to serve as a wire bonding surface is configured to attach with at least one wire bond to a component or a circuit on a separate surface in a package” (Claim 2) is ambiguous and unclear whether the recitation of “a component or a circuit” in line 3 of claim 2 refers to the recitation of “a component or a circuit” in lines 5-6 of amended claim 1. It is not clear if there are two different components or circuits are being claimed. Therefore, the limitation of “wherein the upper metal plate of the MIM capacitor configured to serve as a wire bonding surface is configured to attach with at least one wire bond to a component or a circuit on a separate surface in a package” (Claim 2) is indefinite and unclear.
The specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention, whereby the claims are rendered indefinite. Therefore, the resulting claim is indefinite and is failing to particularly point out and distinctly claim the subject matter. Appropriate clarification and/or correction are/is required within metes and bounds of the claimed invention.
As there is a great deal of confusion and uncertainty as to the proper interpretation of the limitations of the claim, it would not be proper for the examiner to reject such a claim on the basis of prior art. See MPEP § 706 and MPEP § 2173.II (second) wherein In re Steele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962), a rejection under 35 U.S.C. 103 should not be based on considerable speculation about the meaning of terms employed in a claim or assumptions that must be made as to the scope of the claims.
Regarding Claims 3-10, those are rejected under 112(b) because of their dependency status from claim 2.
Claim Rejections - 35 USC § 102
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.
Notes: when present, semicolon separated fields within the parenthesis (; ;) represent, for example, as (100; Fig 3A; [0063]) = (element 100; Figure No. 3A; Paragraph No. [0063]). For brevity, the texts “Element”, “Figure No.” and “Paragraph No.” shall be excluded, though; additional clarification notes may be added within each field. The number of fields may be fewer or more than three indicated above. These conventions are used throughout this document.
5. Claims 1-10 and 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Miwa et al. (US 20150116040 A1; hereinafter Miwa).
Regarding claim 1, Miwa teaches a device (see the entire document, specifically Fig. 1+; [0022+], and as cited below), comprising:
a metal-insulator-metal (MIM) capacitor (110; Fig. 7; [0046, 0043]) comprising a substrate (104; Fig. 7; [0042]), an upper metal plate (110c; Fig. 7; [0043]), and a lower metal surface (110a; Fig. 7; [0043]) attached to a first surface of the substrate (104),
wherein the upper metal plate (110c; Fig. 7; [0043]) of the MIM capacitor (110]) serves as a wire bonding surface (see Fig. 7; see [0045]; where additional upper electrode 110c is connected to MIM component 20 by additional bonding wire 118) without a separate bond pad between the MIM capacitor (110; Fig. 7; [0045]) and a component (20; Fig. 7; [0045]) or circuit.
Regarding claim 2, Miwa teaches all of the features of claim 1.
Miwa further teaches wherein the upper metal plate of the MIM capacitor configured to serve as a wire bonding surface is configured to attach with at least one wire bond to a component or a circuit on a separate surface in a package (see section 4, above; 112(b) rejection).
Regarding claim 3, Miwa teaches all of the features of claim 2.
Miwa further teaches wherein the separate surface in the package comprises one of a substrate, a die, a submount, and a carrier (see section 4, above; 112(b) rejection).
Regarding claim 4, Miwa teaches all of the features of claim 2.
Miwa further teaches wherein the component or the circuit comprises a gallium nitride (GaN) based high-electron-mobility transistor (HEMT) (see section 4, above; (112(b) rejection).
Regarding claim 5, Miwa teaches all of the features of claim 2.
Miwa further teaches wherein the component or the circuit comprises an integrated passive device (IPD) comprising one or more passive electronic components (see section 4, above; 112(b) rejection).
Regarding claim 6, Miwa teaches all of the features of claim 5.
Miwa further teaches wherein the IPD comprises silicon carbide (SiC) components (see section 4, above; 112(b) rejection).
Regarding claim 7, modified Miwa teaches all of the features of claim 6.
Miwa further teaches wherein the MIM capacitor comprises a shunt capacitor (see section 4, above; 112(b) rejection).
Regarding claim 8, Miwa teaches all of the features of claim 2.
Miwa further teaches wherein the component or the circuit comprises a monolithic microwave integrated circuit (MMIC) (see section 4, above; 112(b) rejection).
Regarding claim 9, Miwa teaches all of the features of claim 8.
Miwa further teaches wherein the MMIC comprises a Group III nitride- based material on silicon carbide (SiC) (see section 4, above; 112(b) rejection).
Regarding claim 10, Miwa teaches all of the features of claim 9.
Miwa further teaches wherein the MIM capacitor comprises a series blocking capacitor or a shunt direct current (DC) bypass capacitor (see section 4, above; 112(b) rejection).
Regarding claim 13, Miwa teaches all of the features of claim 1.
Miwa further teaches wherein the device (see Fig. 7; see [0041] in view of [0027-0028]) comprises a gallium nitride (GaN) based high-electron-mobility transistor (HEMT).
6. Claim 11 is rejected under 35 U.S.C.103 as being unpatentable over Miwa et al. (US 20150116040 A1; hereinafter Miwa), in view of Dutta et al. (US 20210151428 A1; hereinafter Dutta).
Regarding claim 11, Miwa teaches all of the features of claim 1.
Miwa further teaches wherein the substrate (104; Fig. 7; [0042]) comprises (see below for “silicon carbide (SiC)”).
As noted above, Miwa does not expressly disclose “wherein the substrate comprises silicon carbide (SiC)”.
However, in the analogous art, Dutta teaches electronic circuits ([0001]), wherein (Fig. 2; [0024+]) a silicon carbon layer (208; Fig. 2; [0041]) below a MIM capacitor, where the silicon carbon layer (208; Fig. 2; [0041]) may have a thermal expansion coefficient suitably close to the first transistor, which may reduce strains on the GaN structure.
It would have been obvious to one with ordinary skill in the art, before the effective filing date of the claimed invention, to modify Miwa’s substrate layer with Dutta’s silicon carbide layer, and thereby, modified Miwa’s (by Dutta) device will have wherein the substrate (Miwa 104; Fig. 7; [0042]) comprises silicon carbide (SiC) (in view of Dutta 208; Fig. 2; [0041]).
The ordinary artisan would have been motivated to modify Miwa in the manner set forth above, at least, because this inclusion provides a silicon carbon layer with a thermal expansion coefficient suitably close to the first transistor, which may reduce strains on a GaN structure (Dutta [0041]).
7. Claims 12 and 14-17 are rejected under 35 U.S.C.103 as being unpatentable over Miwa et al. (US 20150116040 A1; hereinafter Miwa), in view of the following statement.
Regarding claim 12, Miwa teaches all of the features of claim 1.
Miwa further teaches wherein the MIM capacitor (110; Fig. 7; [0046, 0043]); see [Abstract, 0044, 0048-0050]; the capacitance values of the additional MIM capacitors 108, 110, 112 are different from each other, a varying range of the capacitance values can be increased, and impedance matching can be performed in wider frequency bands) has a capacitance (see below for “in a range of about 1 to 1000 pF”).
As noted above, Miwa does not expressly disclose wherein the MIM capacitor has a capacitance in a range of about 1 to 1000 pF”
However, it has been held that “wherein the MIM capacitor has a capacitance in a range of about 1 to 1000 pF” will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such wherein the MIM capacitor has a capacitance in a range of about 1 to 1000 pF is critical, “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation”. In re Aller, 220 F. 2d 454, 105 USPQ 233, 235 (CCPA 1955). In this case, there is nothing in the present application to indicate that the claimed containing wherein the MIM capacitor has a capacitance in a range of about 1 to 1000 pF is critical and will achieve unexpected results over the range outside of the claimed range. Therefore, it would have been obvious to have wherein the MIM capacitor has a capacitance in a range of about 1 to 1000 pF as claimed in device because having the wherein the MIM capacitor has a capacitance in a range of about 1 to 1000 pF can be optimized during routine experimentation depending upon a particular application which is desired.
The applicants have not established the criticality (see next paragraph below) of said first predetermined amount.
The specification contains no disclosure of either the critical nature of the claimed distance or any unexpected results arising therefrom. Where patentability is said to be based upon particular chosen dimensions or upon another variable recited in a claim, the applicant must show that the chosen dimensions are critical. In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990).
Regarding claim 14, Miwa teaches all of the features of claim 1.
Miwa further teaches wherein the device (Fig. 7; [0046-0047]; high-frequency signals) (see below for “is configured to operate at frequencies greater than 1 GHz”).
As noted above, Miwa does not expressly disclose “wherein the device capacitance is configured to operate at frequencies greater than 1 GHz”
However, it has been held that “wherein the device capacitance is configured to operate at frequencies greater than 1 GHz” will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such wherein the device capacitance is configured to operate at frequencies greater than 1 GHz is critical, “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation”. In re Aller, 220 F. 2d 454, 105 USPQ 233, 235 (CCPA 1955). In this case, there is nothing in the present application to indicate that the claimed containing wherein the device capacitance is configured to operate at frequencies greater than 1 GHz is critical and will achieve unexpected results over the range outside of the claimed range. Therefore, it would have been obvious to have wherein the device capacitance is configured to operate at frequencies greater than 1 GHz as claimed in device because having the wherein the device capacitance is configured to operate at frequencies greater than 1 GHz can be optimized during routine experimentation depending upon a particular application which is desired.
The applicants have not established the criticality (see next paragraph below) of said first predetermined amount.
The specification contains no disclosure of either the critical nature of the claimed distance or any unexpected results arising therefrom. Where patentability is said to be based upon particular chosen dimensions or upon another variable recited in a claim, the applicant must show that the chosen dimensions are critical. In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990).
It is the Examiner’s position that the limitation of " wherein the device capacitance is configured to operate at frequencies greater than 1 GHz” is a functional limitation of the apparatus claimed. While features of an apparatus may be recited either structurally or functionally, claims directed to apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431- 32 (Fed. Cir. 1997); see also In re Swinehart, 439 F.2d 210, 212-13, 169 USPQ 226, 228-29 (CCPA 1971); In re Danly, 263 F.2d 844, 847, 120 USPQ 528, 531 (CCPA 1959); MPEP 2114. Furthermore, because the device of Miwa has all of the structural limitations of the claimed invention the device is capable of operating in the manner claimed by the applicant. A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987).
Moreover, as per MPEP 2112.01.I guideline, where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). In this case, Miwa teaches the structure of claim 1 as detailed above. Thus, Miwa teaches all of the structural elements of the claimed product, and when the structure recited in a reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent.
Regarding claim 15, Miwa teaches all of the features of claim 1.
Miwa further teaches wherein the device (Fig. 7; [0046-0047]; high-frequency signals) (see below for “is configured to operate at frequencies greater than 2.5 GHz”).
As noted above, Miwa does not expressly disclose “wherein the device capacitance is configured to operate at frequencies greater than 2.5 GHz”
However, it has been held that “wherein the device capacitance is configured to operate at frequencies greater than 2.5 GHz” will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such wherein the device capacitance is configured to operate at frequencies greater than 2.5 GHz is critical, “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation”. In re Aller, 220 F. 2d 454, 105 USPQ 233, 235 (CCPA 1955). In this case, there is nothing in the present application to indicate that the claimed containing wherein the device capacitance is configured to operate at frequencies greater than 2.5 GHz is critical and will achieve unexpected results over the range outside of the claimed range. Therefore, it would have been obvious to have wherein the device capacitance is configured to operate at frequencies greater than 2.5 GHz as claimed in device because having the wherein the device capacitance is configured to operate at frequencies greater than 2.5 GHz can be optimized during routine experimentation depending upon a particular application which is desired.
The applicants have not established the criticality (see next paragraph below) of said first predetermined amount.
The specification contains no disclosure of either the critical nature of the claimed distance or any unexpected results arising therefrom. Where patentability is said to be based upon particular chosen dimensions or upon another variable recited in a claim, the applicant must show that the chosen dimensions are critical. In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990).
It is the Examiner’s position that the limitation of " wherein the device capacitance is configured to operate at frequencies greater than 2.5 GHz” is a functional limitation of the apparatus claimed. While features of an apparatus may be recited either structurally or functionally, claims directed to apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431- 32 (Fed. Cir. 1997); see also In re Swinehart, 439 F.2d 210, 212-13, 169 USPQ 226, 228-29 (CCPA 1971); In re Danly, 263 F.2d 844, 847, 120 USPQ 528, 531 (CCPA 1959); MPEP 2114. Furthermore, because the device of Miwa has all of the structural limitations of the claimed invention the device is capable of operating in the manner claimed by the applicant. A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987).
Moreover, as per MPEP 2112.01.I guideline, where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). In this case, Miwa teaches the structure of claim 1 as detailed above. Thus, Miwa teaches all of the structural elements of the claimed product, and when the structure recited in a reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent.
Regarding claim 16, Miwa teaches all of the features of claim 1.
Miwa further teaches wherein the device (Fig. 7; [0046-0047]; high-frequency signals) (see below for “is configured to operate at frequencies greater than 3.1 GHz”).
As noted above, Miwa does not expressly disclose “wherein the device capacitance is configured to operate at frequencies greater than 3.1 GHz”
However, it has been held that “wherein the device capacitance is configured to operate at frequencies greater than 3.1 GHz” will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such wherein the device capacitance is configured to operate at frequencies greater than 3.1 GHz is critical, “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation”. In re Aller, 220 F. 2d 454, 105 USPQ 233, 235 (CCPA 1955). In this case, there is nothing in the present application to indicate that the claimed containing wherein the device capacitance is configured to operate at frequencies greater than 3.1 GHz is critical and will achieve unexpected results over the range outside of the claimed range. Therefore, it would have been obvious to have wherein the device capacitance is configured to operate at frequencies greater than 3.1 GHz as claimed in device because having the wherein the device capacitance is configured to operate at frequencies greater than 3.1 GHz can be optimized during routine experimentation depending upon a particular application which is desired.
The applicants have not established the criticality (see next paragraph below) of said first predetermined amount.
The specification contains no disclosure of either the critical nature of the claimed distance or any unexpected results arising therefrom. Where patentability is said to be based upon particular chosen dimensions or upon another variable recited in a claim, the applicant must show that the chosen dimensions are critical. In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990).
It is the Examiner’s position that the limitation of " wherein the device capacitance is configured to operate at frequencies greater than 3.1 GHz” is a functional limitation of the apparatus claimed. While features of an apparatus may be recited either structurally or functionally, claims directed to apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431- 32 (Fed. Cir. 1997); see also In re Swinehart, 439 F.2d 210, 212-13, 169 USPQ 226, 228-29 (CCPA 1971); In re Danly, 263 F.2d 844, 847, 120 USPQ 528, 531 (CCPA 1959); MPEP 2114. Furthermore, because the device of Miwa has all of the structural limitations of the claimed invention the device is capable of operating in the manner claimed by the applicant. A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987).
Moreover, as per MPEP 2112.01.I guideline, where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). In this case, Miwa teaches the structure of claim 1 as detailed above. Thus, Miwa teaches all of the structural elements of the claimed product, and when the structure recited in a reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent.
Regarding claim 17, Miwa teaches all of the features of claim 1.
Miwa further teaches wherein the device (Fig. 7; [0046-0047]; high-frequency signals) (see below for “is configured to operate at frequencies greater than 5 GHz”).
As noted above, Miwa does not expressly disclose “wherein the device capacitance is configured to operate at frequencies greater than 5 GHz”
However, it has been held that “wherein the device capacitance is configured to operate at frequencies greater than 5 GHz” will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such wherein the device capacitance is configured to operate at frequencies greater than 5 GHz is critical, “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation”. In re Aller, 220 F. 2d 454, 105 USPQ 233, 235 (CCPA 1955). In this case, there is nothing in the present application to indicate that the claimed containing wherein the device capacitance is configured to operate at frequencies greater than 5 GHz is critical and will achieve unexpected results over the range outside of the claimed range. Therefore, it would have been obvious to have wherein the device capacitance is configured to operate at frequencies greater than 5 GHz as claimed in device because having the wherein the device capacitance is configured to operate at frequencies greater than 5 GHz can be optimized during routine experimentation depending upon a particular application which is desired.
The applicants have not established the criticality (see next paragraph below) of said first predetermined amount.
The specification contains no disclosure of either the critical nature of the claimed distance or any unexpected results arising therefrom. Where patentability is said to be based upon particular chosen dimensions or upon another variable recited in a claim, the applicant must show that the chosen dimensions are critical. In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990).
It is the Examiner’s position that the limitation of " wherein the device capacitance is configured to operate at frequencies greater than 5 GHz” is a functional limitation of the apparatus claimed. While features of an apparatus may be recited either structurally or functionally, claims directed to apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431- 32 (Fed. Cir. 1997); see also In re Swinehart, 439 F.2d 210, 212-13, 169 USPQ 226, 228-29 (CCPA 1971); In re Danly, 263 F.2d 844, 847, 120 USPQ 528, 531 (CCPA 1959); MPEP 2114. Furthermore, because the device of Miwa has all of the structural limitations of the claimed invention the device is capable of operating in the manner claimed by the applicant. A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987).
Moreover, as per MPEP 2112.01.I guideline, where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). In this case, Miwa teaches the structure of claim 1 as detailed above. Thus, Miwa teaches all of the structural elements of the claimed product, and when the structure recited in a reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent.
Conclusion
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Omar Mojaddedi whose telephone number is 313-446-6582. The examiner can normally be reached on Monday – Friday, 8:00 a.m. to 4:00 p.m..
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Julio J. Maldonado, can be reached on 571-272-1864. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/OMAR F MOJADDEDI/Examiner, Art Unit 2898
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