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
Applicant’s election without traverse of Group Ic (i.e., claims 1, 3-8, 11-13; as part of the election claims 2, 9-10, 14 are indicated as withdrawn) in the reply filed on 9/30/25 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)). Therefore, original claims 1, 3-8, 11-13 are examined on the merits infra. Regarding new claims 21-26, see further comments below.
Newly submitted claims 21-26 are directed to an invention that is distinct from the invention originally claimed for the reasons that follow [see further below].
Claims 1-14 are the remaining claims that were originally presented since claims 1-14 are the only claims properly added and entered in the application before the first restriction requirement {RR} Office action on the merits mailed on 8/26/25.
So, currently, at least two groups of claims are present in the 9/30/25 version of the claims:
Claims 1-14 claiming subject matter as originally filed.
Claims 21-26, in which independent claim 21 contains limitations not originally claimed in an independent claim, such glue in a cavity.
Independent claim 21 of group II is a combination with respect to independent claims 1, 8 of group I [MPEP § 806.05(c)].
In the instant case, the combination as claimed does not require the particulars of the subcombination as claimed because independent combination claim 21 at least does not require, as a non-limiting example, a cavity etched from an upper surface (in contrast, independent claims 1, 8 do require the cavity is etched from an upper surface; it is noted that the “depth” in claim 21 can be from the side of the chip rather than from an upper surface). The subcombination(s) of independent claim(s) 1, 8 has/have separate utility such as in structures that necessarily require(s) the cavity is from an upper surface.
The examiner has required restriction between combination and subcombination inventions. Where applicant elects a subcombination, and claims thereto are subsequently found allowable, any claim(s) depending from or otherwise requiring all the limitations of the allowable subcombination will be examined for patentability in accordance with 37 CFR 1.104. See MPEP § 821.04(a). Applicant is advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
Since applicant has received an action on the merits [on 8/26/25] for the originally presented invention of Group I, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 21-26 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 3-8, 11-13 of the instant application {IA} are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 14-15, 17, 19 of U.S. Patent No. 11609378 (herein simply referred to as: ‘378). Although the claims at issue are not identical, they are not patentably distinct from each other because IA claim 1 is essentially a broadened version of ‘378 claims 14-15 (for example, IA claim 1 does not require phase modulators). Moreover, IA claim 3 corresponds to ‘378 claim 17.
Additionally, the glue comprises epoxy (IA claim 4), hardening the glue by polymerization caused by light radiation exposure (IA claims 5, 12), and the light radiation being ultraviolet radiation (IA claim 6) involve well-known means for hardening and/or well-known type(s) of glue.
Furthermore, IA claim 7 corresponds to ‘378 claim 19.
Similar to IA claim 1 above, IA claim 8 corresponds to ‘378 claims 14-15.
IA claim 11 corresponds to ‘378 claim 17.
IA claim 13 corresponds to ‘378 claim 19.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Mr. Michael Mooney whose telephone number is 571-272-2422. The examiner can normally be reached during weekdays, M-F.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Uyen-Chau Le can be reached on 571-272-2397. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Center. Should you have questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). For checking the filing status of an application, please refer to <https://www.uspto.gov/patents/apply/checking-application-status/check-filing-status-your-patent-application>.
/MICHAEL P MOONEY/ Primary Examiner, Art Unit 2874