DETAILED ACTION
This office action is in response to amendment filed on 1/30/2026.
Claims 1-4, 6-7, and 9-24 are pending. Claims 5 and 8 have been canceled. Claims 9-10, 20-21, and 23-24 have been withdrawn. Claims 1, 6-7, 13, 18, and 23-24 have been amended.
Claim Objections
Claims 11 and 12 are objected to because of the following informalities:
Claims 11 and 12 depending on canceled claim 5 is improper. A dependent claim must depends from a pending claim.
Appropriate correction is required.
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 1-4, 6-7, 11-19, and 22 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 reciting “a p-type AlN tunnel junction is used to inject holes into a p-side of the LED” lacks adequate written description support. Applicant’s original disclosure describes (page 12, lines 8-20, or ¶ 51 of the published application) “the tunnel junction is a III-nitride tunnel junction used to inject holes into a p-side of the LED”, and the “tunnel junction may include a superlattice, interface, or compositionally graded region”. The specification further describes “Mg doped AlN layer be used to form a hole-gas tunnel junction layer of the tunnel junction”. Thus, while Applicant’s original disclosure suggest a p-type doped AlN layer can form a layer of the tunnel junction, there is no support for “a p-type AlN tunnel junction” itself. I.e. Applicant’s disclosure does not show possession of a tunnel junction that is solely composed of a p-type AlN as is recited in claim 1.
Other claims are rejected for depending on a rejected claim.
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.
Claims 1-4, 6-7, 11-19, and 22 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claim 1 reciting “a p-type AlN tunnel junction is used to inject holes into a p-side of the LED” renders the claim indefinite. It is unclear how does a p-type AlN constitutes a tunnel junction. A tunnel junction is typically formed by a barrier, such as a dielectric barrier or pn-junction barrier. In the case of a pn-junction barrier, the tunnel junction is composed of a p-type layer and a n-type layer. However, a p-type AlN itself does not form a tunnel junction. Therefore, it is unclear what is intended by “a p-type AlN tunnel junction”.
Claim 6 reciting “the tunnel junction includes a superlattice, interface, or compositionally graded region” renders the claim indefinite. The “tunnel junction” as recited in claim 1 is a p-type AlN. It is unclear how does can a p-type AlN be a superlattice, an interface, or a compositionally graded region.
Claim 7 reciting “polarization effects of the spatially varying electric polarization enable use of an Mg doped AlN layer to form a hole-gas tunnel junction layer of the tunnel junction” renders the claim indefinite. It is unclear how is “an Mg doped AlN layer” related to “a p-type AlN” as recited in claim 1. Is “Mg doped AlN layer” in addition to the “p-type AlN tunnel junction” or is it further specifying details of the same AlN.
Claim 11 reciting “one or more p-type layers below the surface of the LED” renders the claim indefinite for lacking antecedent basis. Furthermore, “a p-type layer of the tunnel junction” renders the claim indefinite. It is unclear how is “a p-type layer of the tunnel junction” related to “a p-type AlN tunnel junction” as recited in claim 1. Is “a p-type layer” in addition to the “p-type AlN tunnel junction”? The tunnel junction is already recited as a p-type AlN, it is unclear how is “a p-type layer of the tunnel junction” intended to further limit the “p-type AlN tunnel junction”
Claim 13 reciting “the transparent current spreading layer enables use of p-contacts” renders the claim indefinite. It is unclear if “p-contacts” are required structural features of the device claimed. Or does “enables use of p-contacts” pertains to an intended function of the transparent current spreading layer, while the physical presence of the “p-contacts” is not required for the claimed device.
Claim 18 reciting “the layers of the LED are grown on a substrate which is removed during device processing” renders the claim indefinite. It is unclear how is the claim limitation intended to further limit the device claimed. It is unclear how does recitation to “a substrate” that is removed during device processing further limit the structure of the claimed device.
Other claims are rejected for depending on a rejected claim.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-4, 6-7, 11, and 14-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zhang et al. US 2020/0287086 A1 (Zhang).
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In re claim 1, as best understood, Zhang discloses (e.g. FIGs. 7 & 25 & 26) a device, comprising:
at least one III-nitride based ultraviolet (UV) light-emitting diode (LED) (LED diode include layers 23,24,25,30,40; ¶ 161) with an emission wavelength of less than 400 nm (UVB,UVC; ¶ 2-4), wherein layers of the LED (including layers 23,24,25,40) except active region layers 30 are transparent to the emission wavelength (¶ 161,205,207; light being extracted through transparent substrate 10, thus LED layers 23,24,25 must be also be transparent to the UV emission wavelength), and “a p-type AlN tunnel junction 4982,4984 (see FIG. 25, ¶ 205-207)” is used to inject holes into a p-side 40 of the LED (¶ 208).
In re claim 2, Zhang discloses (e.g. FIG. 7) wherein a total area of contact metal 51,61 of the LED is less than 50% of an emitting area of the LED. Zhang shows in, e.g. FIG. 7, contacts 51,61 each covers less than half the emitting area of the LED. Furthermore, “a total area of contact metal” may be interpreted to refer to a total area of a select region of the contact metal. As such, a region of the contact metal 51,61 may be selected such that its total area is less than 50% of an emitting area of the LED.
In re claim 3, Zhang discloses (e.g. FIG. 7) wherein a total area of contact metal 61 on or above a p-type layer 40 of the LED comprises an area less than 50% of an emitting area of the LED. Zhang shows in, e.g. FIG. 7, contact 61 above the p-type layer 40 and covers less than half the emitting area of the LED. Furthermore, “a total area of contact metal” may be interpreted to refer to a total area of a select region of the contact metal. As such, a region of the contact metal 61 may be selected such that its total area is less than 50% of an emitting area of the LED.
In re claim 4, Zhang discloses (e.g. FIG. 7) wherein a total area of contact metal 51,61 on a n-type layer 23,24,25 of the LED comprises an area less than 50% of an emitting area of the LED. Zhang shows in, e.g. FIG. 7, contact 51 on n-type layer 23,24 and contact 61 on n-type layer 23,24,25, each contact covers less than half the emitting area of the LED. Furthermore, “a total area of contact metal” may be interpreted to refer to a total area of a select region of the contact metal. As such, a region of the contact metal 51,61 may be selected such that its total area is less than 50% of an emitting area of the LED.
In re claim 6, as best understood, Zhang discloses (e.g. FIGs. 25-26) wherein the tunnel junction 498 includes a superlattice (of alternating well layers 4983,4985 and barrier layers 4982,4984), interface (between 4982 and 4983 or between 4984 and 4985), or compositionally graded region, which produces a spatially varying electric polarization (see FIGs. 1-2).
In re claim 7, as best understood, Zhang discloses (e.g. FIGs. 25-26) wherein polarization effects of the spatially varying electric polarization enable use of an Mg doped AlN layer 4982,4984 (¶ 205-207) to form a hole-gas tunnel junction layer of the tunnel junction 498” (¶ 208).
In re claim 12, Zhang discloses (e.g. FIG. 7) wherein a transparent current spreading layer 23 comprised of n-AIGaN (¶ 161) is grown on or above the tunnel junction 498. Current spreading n-AlGaN layer 23 is above tunnel junction 498 when the device shown in FIG. 7 is mounted upside down.
In re claim 14, Zhang discloses (e.g. FIG. 7) wherein the layers of the LED are grown on a sapphire substrate 10 (¶ 161).
In re claim 15, Zhang discloses (e.g. FIG. 7) wherein the sapphire substrate 10 comprises a flat sapphire substrate (¶ 10), a micro-patterned sapphire substrate, or a nano-patterned sapphire substrate.
In re claim 16, Zhang discloses (FIG. 7) wherein a back-side of the sapphire substrate 10 is roughened (no specific “roughness” is claimed that would distinguish over any inherent unevenness present on the back-side of Zhang’s substrate 10 no matter how small the roughness may be).
In re claim 17, Zhang discloses (e.g. FIG. 7) wherein a top and/or bottom surface of the LED is roughened (no specific “roughness” is claimed that would distinguish over any inherent unevenness present on the top/bottom surfaces of Zhang’s LED no matter how small the roughness may be).
In re claim 18, as best understood, Zhang discloses (e.g. FIG. 7) wherein the layers of the LED are grown on a substrate which is removed during device processing. The final LED structure is not structurally limited by the product by process limitation. The growth substrate which is removed is not a part of the device structure claimed, and is thus not required by the claimed device. In regard to the product by process language, since a "product by process" claim is directed to the product per se, no matter how actually made, In re Hirao and Sato et al., 190 USPQ 15 at 17 (CCPA 1976) (footnote 3). “[T]he lack of physical description in a product-by-process claim makes determination of the patentability of the claim more difficult, since in spite of the fact that the claim may recite only process limitations, it is the patentability of the product claimed and not of the recited process steps which must be established. We are therefore of the opinion that when the prior art discloses a product which reasonably appears to be either identical with or only slightly different than a product claimed in a product-by-process claim, a rejection based alternatively on either section 102 or section 103 of the statute is eminently fair and acceptable. As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith.” In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972). See also In re Luck and Gainer, 177 USPQ 523 (CCPA 1973); In re Fessmann, 180 USPQ 324 (CCPA 1974); and In re Marosi et al., 218 USPQ 289 (CAFC 1983). It is the final product per se which must be determined for patentability in a "product by, all of" claim, and not the patentability of the process, and that an old or obvious product, whether claimed in "product by process" claims or not, is not patentable. Note that Applicant has the burden of proof in such cases, as the above case law makes clear. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based upon the product itself. The patentability of a product does not depend on its method of production. If the product in product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product is made by a different process. In re Thorpe, 227 USPQ 964, 966 (Fed. Cir. 1985).
Claim Rejections - 35 USC § 103
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.
Claims 1-4, 6-7, 11-13, and 17-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Rajan et al. US 2018/0076354 A1 (Rajan) in view of Zhang et al. US 2020/0287086 A1 (Zhang).
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In re claim 1, Rajan discloses (e.g. FIGs. 1-10) a device, comprising:
at least one III-nitride based ultraviolet (UV) light-emitting diode (LED) 100 (¶ 38) with an emission wavelength of less than 400 nm (¶ 3), wherein layers of the LED except active region layers are transparent to the emission wavelength (¶ 39).
Rajan discloses (e.g. FIGs. 1-10) a tunnel junction 110 including an Mg doped AIGaN region 110A as a hole-gas tunnel junction layer (¶ 40). Rajan further discloses p-doped region 110A may include AlxGa1-x--N where x>0 (¶ 41).
Zhang discloses (FIGs. 7 & 25) a tunnel junction 498 in an III-nitride based LED device, wherein Mg doped AlN is used to form layers of the tunnel junction 498 (¶ 205-208).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use AlN (i.e. AlxGa1-x--N where x=1) to form a p-doped layer of tunnel junction as recognized by Rajan and further taught by Zhang as suitable material for forming the tunnel junction in an III-nitride based LED device for its suitable lattice matching and bandgap property for forming a tunnel junction.
It has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960).
In re claim 2, Rajan discloses (e.g. FIG. 1) wherein a total area of contact metal 116A,116B of the LED is less than 50% of an emitting area of the LED. Rajan shows in, e.g. FIG. 1, contacts 116 each covers less than half the area of the top or bottom LED emitting area. Furthermore, “a total area of contact metal” may be interpreted to refer to a total area of a select region of the contact metal”. As such, a region of the contact metal may be selected such that its total area is less than 50% of an emitting area of the LED.
In re claim 3, Rajan discloses (e.g. FIG. 1) wherein a total area of contact metal 106A on or above a p-type layer 108 of the LED comprises an area less than 50% of an emitting area of the LED. Rajan shows in, e.g. FIG. 1, contact 116A above the p-type layer 108 and covers less than half the area of the top or bottom LED emitting area. Furthermore, “a total area of contact metal” may be interpreted to refer to a total area of a select region of the contact metal”. As such, a region of the contact metal may be selected such that its total area is less than 50% of an emitting area of the LED.
In re claim 4, Rajan discloses (e.g. FIG. 1) wherein a total area of contact metal 116A,116B on a n-type layer 106,114 of the LED comprises an area less than 50% of an emitting area of the LED. Rajan shows in, e.g. FIG. 1, contacts 116A on n-type layer 106 and contact 116B on n-type layer 114, each contact covers less than half the area of the top or bottom LED emitting area. Furthermore, “a total area of contact metal” may be interpreted to refer to a total area of a select region of the contact metal”. As such, a region of the contact metal may be selected such that its total area is less than 50% of an emitting area of the LED.
In re claim 6, as best understood, Rajan discloses (e.g. FIGs. 1-10) wherein the tunnel junction 110 includes a superlattice, interface (between 110A and 110B, or between 110B and 110C, ¶ 44), or compositionally graded region (¶ 41), which produces a spatially varying electric polarization (¶ 44). Zhang discloses (e.g. FIGs. 25-26) wherein the tunnel junction 498 includes a superlattice (of alternating well layers 4983,4985 and barrier layers 4982,4984), interface (between 4982 and 4983 or between 4984 and 4985), or compositionally graded region, which produces a spatially varying electric polarization (see FIGs. 1-2).
In re claim 7, as best understood, Zhang discloses (e.g. FIGs. 25-26) wherein polarization effects of the spatially varying electric polarization enable use of an Mg doped AlN layer 4982,4984 (¶ 205-207) to form a hole-gas tunnel junction layer of the tunnel junction 498” (¶ 208).
In re claim 11, as best understood, Rajan discloses (e.g. FIGs. 1 & 7-8) wherein one or more holes or openings in a surface of the LED (etched holes for nanocolumns 710,810, ¶ 55-56) expose one or more “p-type layers” 108,112,110A below the surface of the LED, including a p-type layer 110A of the tunnel junction 110 (¶ 40).
In re claim 12, Rajan discloses (e.g. FIGs. 1-10) wherein a transparent current spreading layer 102 comprised of n-AIGaN (¶ 62) is grown on or above the tunnel junction 110.
In re claim 13, as best understood, Rajan discloses (e.g. FIGs. 1-10) wherein the transparent current spreading layer 102 enables use of p-contacts 116A so that light emission may occur through a top of the LED, in addition to emission through a bottom of the LED and a transparent substrate 114 (¶ 39).
In re claim 17, Rajan discloses (e.g. FIGs. 5-10) wherein a top and/or bottom surface of the LED is roughened.
In re claim 18, as best understood, Rajan discloses (e.g. FIGs. 1-10) wherein the layers of the LED are grown on a substrate (substrate on which layers are grown, ¶ 59-60) which is removed during device processing (substrate not present in device structure shown in drawings). Furthermore, the limitation directed to the growth substrate that is removed from the device structure pertains a product by process limitation. In regard to the product by process language, since a "product by process" claim is directed to the product per se, no matter how actually made, In re Hirao and Sato et al., 190 USPQ 15 at 17 (CCPA 1976) (footnote 3). “[T]he lack of physical description in a product-by-process claim makes determination of the patentability of the claim more difficult, since in spite of the fact that the claim may recite only process limitations, it is the patentability of the product claimed and not of the recited process steps which must be established. We are therefore of the opinion that when the prior art discloses a product which reasonably appears to be either identical with or only slightly different than a product claimed in a product-by-process claim, a rejection based alternatively on either section 102 or section 103 of the statute is eminently fair and acceptable. As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith.” In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972). See also In re Luck and Gainer, 177 USPQ 523 (CCPA 1973); In re Fessmann, 180 USPQ 324 (CCPA 1974); and In re Marosi et al., 218 USPQ 289 (CAFC 1983). It is the final product per se which must be determined for patentability in a "product by, all of" claim, and not the patentability of the process, and that an old or obvious product, whether claimed in "product by process" claims or not, is not patentable. Note that Applicant has the burden of proof in such cases, as the above case law makes clear. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based upon the product itself. The patentability of a product does not depend on its method of production. If the product in product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product is made by a different process. In re Thorpe, 227 USPQ 964, 966 (Fed. Cir. 1985).
In re claim 19, as best understood, Rajan discloses (e.g. FIGs. 1 & 7-8) wherein “layers of the LED” include one or more porous AIN or AIGaN layers 106,109,110,111 (AlGaN layers, ¶ 38,40,41, which are porous due to etching to form nano-columns 710,810 as shown in FIGs. 7-8).
Claims 14-16 are rejected under 35 U.S.C. 103 as being unpatentable over Rajan and Zhang as applied to claim 1 above, and further in view of Zhang et al. US 9,401,455 (Zhang’455).
In re claim 14, Rajan discloses (e.g. FIGs. 1-10) wherein the layers of the LED are grown on a substrate (¶ 59-60). Rajan does not explicitly disclose the substrate is a sapphire substrate.
Zhang’455 discloses (e.g. FIG. 10) an III-nitride based LED formed on a sapphire substrate 10 (Column 13, lines 39-40) as suitable growth substrate for its desirable lattice and optical properties.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use sapphire substrate to form Rajan’s LED layers to obtain an LED for its known and desired lattice and optical properties.
It has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960).
In re claim 15, Zhang’455 discloses (e.g. FIG. 10) wherein the sapphire substrate 10 comprises a flat sapphire substrate (see FIG. 10), a micro-patterned sapphire substrate, or a nano-patterned sapphire substrate (patterned sapphire substrate, Column 14, lines 14-16).
In re claim 16, Zhang’455 discloses wherein a back-side of the sapphire substrate is roughened (patterned sapphire substrate, Column 14, lines 14-16).
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Zhang or the combination of Rajan and Zhang as applied to claim 1 above, and further in view of Zheng CN 103647014 A.
In re claim 22, Zhang and Rajan discloses the device including the LED structure claimed. Zhang and Rajan do not explicitly disclose the LED is mounted inside a transparent material and there is an inert gas inside the transparent material.
Zheng discloses (e.g. FIG. 1) a device comprising LED chips 12 mounted inside a transparent material 2 (transparent container, ¶ 17) and there is an inert gas inside the transparent material (transparent container 2 filled with inert gas, ¶ 18).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to mount Zhang or Rajan’s LED element inside a transparent container and further filled the container with inert gas to as for preventing corrosion and oxidation and protect the LED element as is known in the art.
Response to Arguments
Applicant's arguments filed 1/30/2026 have been fully considered but they are not persuasive.
Regarding claim 11 rejected over § 112(b), Applicant argues antecedent for “p-type layers” in the claim (Remark, page 7). This is not persuasive. The antecedent basis of “p-type layers” remains unclear because the claim does not define how the “one or more p-type layers” are structurally related to other claimed device elements. Furthermore, it is unclear how the “one or more p-type layers” relates to “a p-type AlN tunnel junction” as recited in claim 1.
Claim 13 rejected over § 112(b) remain indefinite for reciting “the transparent current spreading layer enables use of p-contacts”. It is unclear if “p-contacts” are required structural features of the device claimed. Or does “enables use of p-contacts” pertains to an intended function of the transparent current spreading layer, while the physical presence of the “p-contacts” is not required for the claimed device.
Claim 18 rejected over § 112(b) remain indefinite for reciting “the layers of the LED are grown on a substrate which is removed during device processing”. It is unclear how is the claim limitation intended to further limit the device claimed. It is unclear how does recitation to “a substrate” that is removed during device processing further limit the structure of the claimed device.
Applicant argues Rajan does not teach all non-active layers of the LED are transparent (Remark, pages 16-17). This is not persuasive. Rajan teaches UV light emission is extracted from both top and bottom side of the UV LED (¶ 39, see FIG. 1). Extraction of light must necessarily implies the layers of the LED in which the light travels through are transparent. The UV light are extracted out of both side of the UV LED, thus the layers on either side of the active layer are transparent to the extracted light. As long as some amount of light is extracted through the layers, the layers are considered transparent to the extracted light . No specific degree of transparency is claimed that would distinguish over Rajan teaching the UV LED emitting light on both top and bottom side.
Furthermore, to the degree Applicant’s argument against the combination of references (Remark, pages 16 and 17), in response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Furthermore, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
Applicant’s other 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.
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 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 YU CHEN whose telephone number is (571)270-7881. The examiner can normally be reached Monday-Friday: 9AM-5PM ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, WILLIAM KRAIG can be reached on 5712728660. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/YU CHEN/Primary Examiner, Art Unit 2896
YU CHEN
Examiner
Art Unit 2896
Prosecution Insights