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 claim 1 in “Claims - 02/10/2026” with “Amendment/Req. Reconsideration-After Non-Final Reject - 02/10/2026”, have been acknowledged by Examiner.
This office action considers claims 1-11 pending for prosecution.
Response to Arguments
2. Applicant's arguments filed in the “Applicant Arguments/Remarks Made in an Amendment” on 02/10/2026 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, below. The shift in grounds of rejection renders the Applicant's arguments moot. The Examiner has determined that the limitation “wherein the ground plane is coplanar with the first isolation region, and the first main area is coplanar with the at least one first slot” is not for a particular purpose that is critical to the overall claimed invention (i.e. the invention would not work without wherein the ground plane is coplanar with the first isolation region, and the first main area is coplanar with the at least one first slot).
Please see the analysis of the rejections for the claims below.
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 of this title, 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.
Notes: when present, semicolon separated fields within the parenthesis (; ;) represent, for example, as (30A; Fig 2B; [0128]) = (element 30A; Figure No. 2B; Paragraph No. [0128]). 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.
3. Claims 1-11 are rejected under 35 U.S.C.103 as being unpatentable over Rokuhara et al. (US 20110156224 A1; hereinafter Rokuhara), in view of the following statements
Regarding claim 1, Rokuhara teaches a semiconductor device (see the entire document, specifically Fig. 1+; [0046+], and as cited below), comprising:
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a metal layer (14; Figs. 8A-8B in view of Fig. 1; see [0054, 0113-0118]);
a ground plane (13A; Figs. 8A-8B in view of Fig. 1; see [0118]), formed on the metal layer (14; Figs. 8A-8B in view of Fig. 1);
a first inductor (L1; Figs. 8A-8B; see [0068, 0126]), formed on the metal layer (14; Figs. 8A-8B in view of Fig. 1); and
a first isolation region (22; Figs. 8A-8B in view of Fig. 1; see [0063]), formed on the metal layer (14; Figs. 8A-8B in view of Fig. 1) and arranged to separate the first inductor (L1; Figs. 8A-8B; see [0068, 0126]) from the ground plane (13A; Figs. 8A-8B in view of Fig. 1; see [0118]), wherein the first isolation region comprises:
a first main area (see Figs. 8A-8B; the area of layer 22 surrounding inductor L1), surrounding the first inductor (L1; Figs. 8A-8B; see [0068, 0126]); and
at least one first slot (24; Figs. 8A-8B in view of Fig. 1; see [0117, 0056-0057]; a via formed by drilling and then plating growth process), extended from the first main area,
wherein the ground plane (13A; Figs. 8A-8B in view of Fig. 1; see [0118]) (see below for “is coplanar with”) the first isolation region (22; Figs. 8A-8B in view of Fig. 1; see [0063]), and the first main area (see Figs. 8A-8B; the area of layer 22 surrounding inductor L1) is coplanar with the at least one first slot (24; Figs. 8A-8B in view of Fig. 1; see [0117, 0056-0057]).
As noted above, Rokuhara does not expressly disclose “wherein the ground plane is coplanar with the first isolation region, and the first main area is coplanar with the at least one first slot”.
However, the Applicant has not presented persuasive evidence that the claimed “wherein the ground plane is coplanar with the first isolation region, and the first main area is coplanar with the at least one first slot” is for a particular purpose that is critical to the overall claimed invention (i.e. the invention would not work without wherein the ground plane is coplanar with the first isolation region, and the first main area is coplanar with the at least one first slot). Also, the Applicant has not shown that “wherein the ground plane is coplanar with the first isolation region, and the first main area is coplanar with the at least one first slot” produces a result that was new or unexpected enough to patentably distinguish the claimed invention over the cited prior art. Therefore, no rationale is given that the invention will not function without “wherein the ground plane is coplanar with the first isolation region, and the first main area is coplanar with the at least one first slot”. Thus, the claimed “wherein the ground plane is coplanar with the first isolation region, and the first main area is coplanar with the at least one first slot” is not critical to the invention.
Examiner would like to note that MPEP §2144.04.IV(B) guideline, where change of shape is a Legal Precedent as Source of Supporting Rationale. See In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.).
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In view of the above, as there is no persuasive evidence that the particular configuration of “wherein the ground plane is coplanar with the first isolation region, and the first main area is coplanar with the at least one first slot” is significant. Thus, the claimed limitation of “wherein the ground plane is coplanar with the first isolation region, and the first main area is coplanar with the at least one first slot” is a matter of choice which a person of ordinary skill in the art would have found obvious as per MPEP §2144.04.IV(B) guideline. Therefore, the claimed limitation of “wherein the ground plane is coplanar with the first isolation region, and the first main area is coplanar with the at least one first slot” is not patentable over Rokuhara.
Regarding claim 2, Rokuhara teaches all of the features of claim 1.
Rokuhara further comprising: a second inductor (L2; Figs. 8A-8B; see [0068, 0126]), formed on the metal layer (14; Figs. 8A-8B in view of Fig. 1); wherein the at least one first slot (24; Figs. 8A-8B in view of Fig. 1; see [0117]) (see below for “is configured to reduce a coupling coefficient of mutual inductance between) the first inductor (L1; Figs. 8A-8B; see [0068, 0126]) and the second inductor (L2; Figs. 8A-8B; see [0068, 0126]).
It is the Examiner’s position that the limitation of "wherein the at least one first slot is configured to reduce a coupling coefficient of mutual inductance between the first inductor and the second inductor” 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 Rokuhara 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, Rokuhara teaches the structure of claims 1 and 2 as detailed above. Thus, Rokuhara 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 3, Rokuhara teaches all of the features of claim 2.
Rokuhara further teaches wherein a position of the at least one first slot (24; Figs. 8A-8B in view of Fig. 1; see [0117]) (see below for “depends on a relative position between”) the first inductor (L1; Figs. 8A-8B; see [0068, 0126]) and the second inductor (L2; Figs. 8A-8B; see [0068, 0126]).
It is the Examiner’s position that the limitation of " wherein a position of the at least one first slot depends on a relative position between the first inductor and the second inductor” 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 Rokuhara 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, Rokuhara teaches the structure of claims 1, 2, and 3 as detailed above. Thus, Rokuhara 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 4, Rokuhara teaches all of the features of claim 2.
Rokuhara further teaches wherein a size of the at least one first slot (24; Figs. 8A-8B in view of Fig. 1; see [0117]) (see below for “depends on a compensation range of the coupling coefficient”.
It is the Examiner’s position that the limitation of " wherein a size of the at least one first slot depends on a compensation range of the coupling coefficient” 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 Rokuhara 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, Rokuhara teaches the structure of claims 1, 2, and 4 as detailed above. Thus, Rokuhara 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 5, Rokuhara teaches all of the features of claim 2.
Rokuhara further teaches wherein the at least one first slot (24; Figs. 8A-8B in view of Fig. 1; see [0117]) (see below for “is configured to make the coupling coefficient equal to a zero value”).
It is the Examiner’s position that the limitation of " wherein the at least one first slot is configured to make the coupling coefficient equal to a zero value” 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 Rokuhara 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, Rokuhara teaches the structure of claims 1, 2, and 5 as detailed above. Thus, Rokuhara 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 6, Rokuhara teaches all of the features of claim 2.
Rokuhara further teaches wherein a size of the at least one first slot (24; Figs. 8A-8B in view of Fig. 1; see [0117, 0056-0057]) (see below for “is configured by a metal option”).
It is the Examiner’s position that the limitation of " wherein a size of the at least one first slot is configured by a metal option” 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 Rokuhara 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, Rokuhara teaches the structure of claims 1, 2, and 6 as detailed above. Thus, Rokuhara 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.
Furthermore, the Applicant has not presented persuasive evidence that the claimed “wherein a size of the at least one first slot is configured by a metal option” (emphasis added) is for a particular purpose that is critical to the overall claimed invention (i.e. the invention would not work without wherein a size of the at least one first slot is configured by a metal option). Also, the Applicant has not shown that “wherein a size of the at least one first slot is configured by a metal option” produces a result that was new or unexpected enough to patentably distinguish the claimed invention over the cited prior art. Instead, claim 7 discloses other possible options such as “wherein a size of the at least one first slot is configured by at least one metal-oxide-semiconductor (MOS) switch”. Therefore, no rationale is given that the invention will not function without “wherein a size of the at least one first slot is configured by a metal option”. Thus, the claimed “wherein a size of the at least one first slot is configured by a metal option” is not critical to the invention.
Examiner would like to note that MPEP §2144.04.IV(B) guideline, where change of shape is a Legal Precedent as Source of Supporting Rationale. See In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.).
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In view of the above, there is no persuasive evidence that the particular configuration of “wherein a size of the at least one first slot is configured by a metal option” is significant. Thus, the claimed limitation of “wherein a size of the at least one first slot is configured by a metal option” is a matter of choice which a person of ordinary skill in the art would have found obvious as per MPEP §2144.04.IV(B) guideline. Therefore, the claimed limitation of “wherein a size of the at least one first slot is configured by a metal option” is not patentable over Rokuhara.
Regarding claim 7, Rokuhara teaches all of the features of claim 2.
Rokuhara further teaches wherein a size of the at least one first slot (24; Figs. 8A-8B in view of Fig. 1; see [0117, 0056-0057]) (see below for “is configured by at least one metal-oxide-semiconductor (MOS) switch”).
It is the Examiner’s position that the limitation of " wherein a size of the at least one first slot is configured by at least one metal-oxide-semiconductor (MOS) switch” 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 Rokuhara 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, Rokuhara teaches the structure of claims 1, 2, and 7 as detailed above. Thus, Rokuhara 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.
Furthermore, the Applicant has not presented persuasive evidence that the claimed “wherein a size of the at least one first slot is configured by at least one metal-oxide-semiconductor (MOS) switch” (emphasis added) is for a particular purpose that is critical to the overall claimed invention (i.e. the invention would not work wherein a size of the at least one first slot is configured by at least one metal-oxide-semiconductor (MOS) switch). Also, the Applicant has not shown that “wherein a size of the at least one first slot is configured by at least one metal-oxide-semiconductor (MOS) switch” produces a result that was new or unexpected enough to patentably distinguish the claimed invention over the cited prior art. Instead, claim 6 discloses other possible options such as “wherein a size of the at least one first slot is configured by a metal option”. Therefore, no rationale is given that the invention will not function without “wherein a size of the at least one first slot is configured by at least one metal-oxide-semiconductor (MOS) switch”. Thus, the claimed “wherein a size of the at least one first slot is configured by at least one metal-oxide-semiconductor (MOS) switch” is not critical to the invention.
Examiner would like to note that MPEP §2144.04.IV(B) guideline, where change of shape is a Legal Precedent as Source of Supporting Rationale. See In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.).
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In view of the above, there is no persuasive evidence that the particular configuration of “wherein a size of the at least one first slot is configured by at least one metal-oxide-semiconductor (MOS) switch” is significant. Thus, the claimed limitation of “wherein a size of the at least one first slot is configured by at least one metal-oxide-semiconductor (MOS) switch” is a matter of choice which a person of ordinary skill in the art would have found obvious as per MPEP §2144.04.IV(B) guideline. Therefore, the claimed limitation of “wherein a size of the at least one first slot is configured by at least one metal-oxide-semiconductor (MOS) switch” is not patentable over Rokuhara.
Regarding claim 8, Rokuhara teaches all of the features of claim 2.
Rokuhara further teaches wherein the first inductor is a part of an oscillator, an amplifier, a balun, a transformer, a mixer or a divider (see [0041, 0074, 0081, 0086]).
Regarding claim 9, Rokuhara teaches all of the features of claim 2.
Rokuhara further teaches wherein the first inductor (L1; Figs. 8A-8B; see [0068, 0126]) is a part of a radio-frequency (RF) chip, and the second inductor (L2; Figs. 8A-8B; see [0068, 0126]) is a part of the RF chip (see [0041-0042, 0078, Claim 20]).
Regarding claim 10, Rokuhara teaches all of the features of claim 2.
Rokuhara further comprising: a second isolation region (a portion of 22 surrounding L2; Figs. 8A-8B in view of Fig. 1; see [0063]), formed on the metal layer (14; Figs. 8A-8B in view of Fig. 1; see [0054, 0113-0118]) and arranged to separate the second inductor (L2; Figs. 8A-8B; see [0068, 0126]) from the ground plane (13A; Figs. 8A-8B in view of Fig. 1; see [0118]), wherein the second isolation region (a portion of 22 surrounding L2; Figs. 8A-8B in view of Fig. 1; see [0063]) comprises: a second main area (a portion of 22 surrounding L2; Figs. 8A-8B in view of Fig. 1; see [0063]), surrounding the second inductor (L2; Figs. 8A-8B; see [0068, 0126]); and at least one second slot (a second occurrence of 24; Figs. 8A-8B in view of Fig. 1; see [0117, 0056-0057]; a via formed by drilling and then plating growth process), extended from the second main area.
Regarding claim 11, Rokuhara teaches all of the features of claim 10.
Rokuhara further teaches wherein the at least one second slot (a second occurrence of 24; Figs. 8A-8B in view of Fig. 1; see [0117, 0056-0057]; a via formed by drilling and then plating growth process) (see below for “is configured to reduce the coupling coefficient of mutual inductance between”) the first inductor (L1; Figs. 8A-8B; see [0068, 0126]) and the second inductor (L2; Figs. 8A-8B; see [0068, 0126]).
It is the Examiner’s position that the limitation of " wherein the at least one second slot is configured to reduce the coupling coefficient of mutual inductance between the first inductor and the second inductor” 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 Rokuhara 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, Rokuhara teaches the structure of claims 1, 2, 10, and 11 as detailed above. Thus, Rokuhara 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.. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, 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