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 .
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 1-10 and 14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 5-7, 10, 12, 15, and 17 of U.S. Patent No. 12,476,108 (hereinafter 108). Although the claims at issue are not identical, they are not patentably distinct from each other because both teach GaN crystals with inclination from a (0001) plane, areas 5 cm2 or more (based on 100 mm diameter in 108 claim 6), overlapping Mn dopant (compensating impurity) concentrations and overlapping donor impurity concentrations (instant claims 1-3, 7, 8 and 10 and 108 claims 1, 2, 5-7, 10, and 12, 108 dopant concentration is 1.0 x 1017 atoms/cm3 or higher and oxygen (donor impurity) concentration is 3.0 x 1016 atoms/cm3 or lower). Instant claims 1, 6 and 10 recite the inclination as 10° or less from a (0001) crystal plane. 108 claim 15 recites that the main surface is a flat surface. A flat surface would have an inclination of 10° or less from a (0001) crystal plane. The 108 claims are silent regarding a FWHM as set forth in instant claims 4 and 6. The claims are also silent regarding threading dislocation density as set forth in instant claims 5 and 6. However, the GaN crystals overlap and have similar properties. Therefore, per MPEP 2112.01(I) in the Office Action mailed 7/1/25, one of ordinary skill in the art would expect the 108 GaN crystals to have overlapping FWHM values and overlapping dislocation densities, absent evidence to the contrary. Both recite a GaN substrate (instant claim 9 and 108 claim 1). Both also teach an overlapping epitaxial wafer (instant claim 14 and 108 claim 17). See MPEP 2112.01(I), cited above.
Response to Arguments
Applicant's arguments filed 10/1/25 regarding Dwilinski have been fully considered and are persuasive. The reference does not teach or suggest the instantly claimed donor impurity concentration.
Therefore, the 103 rejection of claims 1-12, 14, and 17 as obvious over Dwilinski has been withdrawn.
Applicant's arguments filed 10/1/25 regarding 903 have been fully considered and are persuasive. The claims recite a compensating dopant but do not teach or suggest Mn, in particular.
Therefore, the obviousness double patenting rejection of claims 1-10, and 14 as unpatentable over the claims of 903 has been withdrawn.
The obviousness double patenting rejection of claims 12 and 17 as unpatentable over the claims of 903 in view of Watanabe has also been withdrawn.
Applicant's arguments filed 10/1/25, regarding 396, have been fully considered but they are not persuasive. It is noted that the 396 application issued as US 12,476,108 B2 (hereinafter 108) on 11/28/25. Arguments are addressed based on the patented claims.
Applicant argues that the 108 (formerly 396) claims do not teach the particularly claimed amount of Mn as set forth in instant claims 1 and 10. However, 108 claim 1 recites an overlapping GaN substrate wafer with a total compensating impurity level of 1x1017 atoms/cm3. 108 claim 10 recites the impurity as Fe, Mn or C. Fe, Mn, and C are conventionally compensating impurities. The 108 disclosure defines compensating impurities as C and transition metals typified by Fe and Mn (col 8, ln 63-67). Mn is a compensating impurity and is explicitly recited in 108 claim 10, with a concentration of 1x1017 atoms/cm3 recited in 108 claim 1. Therefore, the 108 claims do teach the instantly claimed Mn concentration.
Applicant also argues that the 108 claims do not recite the instantly claimed XRD rocking curve FWHM as set forth in instant claim 6. However, as discussed above, the GaNs overlap and contain overlapping amounts of compensating and donor impurities. Therefore, per MPEP 2112.01(I), cited in the Office Action mailed 7/1/25, the 108 claims are expected to have overlapping XRD FWHM properties, absent evidence to the contrary. Applicant has not supplied such evidence.
Therefore, the obviousness double patenting rejection of claims 1-10 and 14 as unpatentable over the 396 claims stands and has been written to reflect the patented (108) claims.
Allowable Subject Matter
Claim 17 is allowed.
The following is an examiner’s statement of reasons for allowance: The closest prior art is applicants prior invention, 108. However, the 108 claims do not teach the GaN substrate laminated to a support substrate as set forth in the newly amended claim.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Claims 11 and 12 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: The closest prior art, 108 as discussed above, does not teach or suggest a single crystal GaN substrate or a GaN substrate laminated to a support substrate.
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 LYNNE EDMONDSON whose telephone number is (571)272-2678. The examiner can normally be reached M-F 10-6:30.
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/L.E./Examiner, Art Unit 1734
/Matthew E. Hoban/Primary Examiner, Art Unit 1734