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 .
Election/Restrictions
Claims 6-15 is / are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 10/27/25.
Response to Arguments
Applicant’s arguments, see Remarks, filed 2/6/26, with respect to the rejection(s) of claim(s) 1-3 under 35 USC 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made under 35 USC 112.
Drawings
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, both “a metal catalyst layer arranged so as to continuously surround a top surface, a bottom surface, and a side surface of each of the die pad portions and the lead portion” and “a graphene layer arranged so as to continuously surround the top surface, the bottom surface, and the side surface of each of the die pad portions and the lead portion” 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 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 1-3 is / are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for a graphene layer on a metal catalyst layer, does not reasonably provide enablement for both “a metal catalyst layer arranged so as to continuously surround a top surface, a bottom surface, and a side surface of each of the die pad portions and the lead portion” and “a graphene layer arranged so as to continuously surround the top surface, the bottom surface, and the side surface of each of the die pad portions and the lead portion.” The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and / or use the invention commensurate in scope with these claims. The metal catalyst layer appears to be an intermediate layer so that the graphene layer is not directly on the die pad and the lead. The catalyst layer is on top, bottom, and sides of the die pad and lead. The graphene layer is on top, bottom and sides of the catalyst layer.
The other claims are rejected as being dependent on claim 1.
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 1-3 is / 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Amended claim 1 recites:
“arranged so as to continuously surround…” This is unclear as to what is meant by surround: fully conformal; uninterrupted coating; complete enclosure; microscopic discontinuities allowed?
“wherein a purity of the metal catalyst is greater than a purity of the base substrate”. This is unclear as to what is meant by purity: purity measured how; atomic purity; weight %; elemental purity; metallurgical purity?
Claim 1 recites the limitation "each of the die pad portions" in lines 5 and 9. There is insufficient antecedent basis for this limitation in the claim.
The other claims are rejected as being dependent on claim 1.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
U.S. Patent Application Publication No. 2019/035353 teaches a substrate including a catalyst and / or graphene.
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 TERESA M ARROYO whose telephone number is (703)756-1576. The examiner can normally be reached Monday - Friday (8:30 A.M. E.T. - 5:00 P.M. E.T.).
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/TERESA M. ARROYO/Primary Examiner, Art Unit 2893