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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on May 8, 2026 has been entered.
Response to Arguments
Applicant's arguments filed May 8, 2026 have been fully considered but they are not persuasive. Applicant argues on page 5 that a terminal disclaimer over U.S. Patent Application No.: 18/316,338 and 18,196,184 has been filed under 35, U.S.C. 253(a). Examiner respectfully disagrees. The Examiner sees no record of a timely filed and approved terminal disclaimer, therefore the provisional double patenting rejection is maintained.
Examiner also notes that dependent claim 8 does not belong with the Applicant’s elected embodiment. If anything, dependent claim 6 should have been examined instead. Applicant chose Species 2, Embodiment II, Figs. 4-6, which is the embodiment where the direct bonding interface is placed in a basic environment comprised/consisting of an aqueous solution (item 8, Fig. 5).
Applicant’s arguments with respect to claim(s) 1-5 and 8-10 have been considered but are moot new interpretation of claims and prior art.
Examiner is open to conducting an interview in order to move prosecution forward.
Claim Rejections - 35 USC § 112
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 1-5 and 8-10 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. Claim 1 recites “disposing at least the direct bonding interface in a basic environment”. Which basic environment? Is it an aqueous solution, formed by dissolution of NaOH and having a molar concentration of between 10.sup.−7 mol/l and 0.01 mol/l and in particular a molar concentration of approximately 10.sup.−3 mol/l, an aqueous solution formed, by dissolving in deionized water, a basic compound chosen from NaOH, KOH, Na.sub.2CO.sub.3, NH.sub.4OH, an amino alcohol and an mixture of these basic compounds; the amino alcohol being selected from 2-ethanol DMAE, N,N-diethyl-2-amino-ethanol, monoethanolamine, N-methyldiethanolamine, aminomethanol, N-methylhydroxylamine, diethanolamine, dimethanolamine, triethanolamine, trimethanolamine and a mixture of these amino alcohols, or an atmosphere saturated with basic molecules in the vapor phase by evaporation in a hermetic enclosure of a basic stock solution comprising deionized water and a basic compound chosen from N,N-diethylethanolamine, N,N-dimethylethanolamine, 2-aminoethanol, N-methyldiethanolamine, aminomethanol, N-methylhydroxylamine, diethanolamine, dimethanolamine, triethanolamine, trimethanolamine, ethalonamine, diethyl-N—N-ethanol, ammonia and a mixture of these compounds? Even though the Applicant has defined in the specification what “a basic environment” is/can be, the claim is written as if the Applicant has ownership of all “basic environments”, which is not the case. Appropriate correction is required. Claims 2-5 and 8-10 inherit these deficiencies. For the purpose of examination, the Examiner is taking “a basic environment” to be anywhere that has a basic temperature/climate and basic pressure.
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.
Claim 1-5 and 8-10 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 6, 7, 9, and 10 of copending Application No. 18/316,338. Although the claims at issue are not identical, they are not patentably distinct from each other.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 1-5 and 8-10 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of copending Application No. 18/196,184. Although the claims at issue are not identical, they are not patentably distinct from each other.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim(s) 1 and 3-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Namikawa et al. (Namikawa) (US 2024/0190105 A1) in view of Fournel et al. (Fournel’259) (US 2019/0214259 A1).
In regards to claim 1, Namikawa (Figs. 1, 2 and associated text) discloses a method for manufacturing a multilayer structure by direct bonding between a first substrate (items 10 or 20) and a second substrate (items 10 or 20), the method comprising the steps of: a) providing a first substrate (items 10 or 20) and a second substrate (items 10 or 20) respectively comprising a first bonding surface (items 13 or 23) and a second bonding surface (items 13 or 23), b) bringing the first bonding surface (items 13 or 23) and the second bonding surface (items 13 or 23) into contact so as to create a direct bonding interface between the first substrate (items 10 or 20) and the second substrate (items 10 or 20), c) disposing at least the direct bonding interface in a basic environment (anywhere containing a basic temperature/climate and basic pressure), wherein the use of the basic environment is only carried out after bringing the first bonding surface and the second bonding surface into contact; and d) applying a thermal treatment at a temperature of between 20° C. and 1000° C. (paragraphs 53, 255) so as to obtain the multilayer structure, but does not specifically disclose wherein direct bonding is a spontaneous bonding between two surfaces without adding material to the interface between the bonded surfaces.
Fournel’259 (paragraph 22, Figs. 1, 2, 4 and associated text) discloses wherein direct bonding is a spontaneous bonding between two surfaces (items 10, 20) without adding material to the interface (item IC) between the bonded surfaces (items 10, 20).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to incorporate the teachings of Fournel’259 for the purpose of reliable bond.
In regards to claim 3, Namikawa (Figs. 1, 2 and associated text) discloses wherein the first bonding surface (items 13 or 23) and/or the second bonding surface (items 13 or 23) are/is formed at least in part by a hydrophilic film made of a material chosen from a native oxide, a thermal or deposited silicon oxide, a silicon nitride, a copper oxide and a combination of these materials (Abstract, paragraph 21).
In regards to claim 4, Namikawa (Figs. 1, 2 and associated text) discloses wherein the first bonding surface (items 13 or 23) and the second bonding surface (items 13 or 23) are completely flat.
In regards to claim 5, Namikawa (Figs. 1, 2 and associated text) discloses wherein the basic environment is an aqueous basic solution.
Claim(s) 2 and 8-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Namikawa et al. (Namikawa) (US 2024/0190105 A1) in view of Fournel et al. (Fournel’259) (US 2019/0214259 A1) as applied to claims 1 and 3-5 above and further in view of Fournel et al. (Fournel) (FR 3102771 A1).
In regards to claim 2, Namikawa as modified by Fournel’259 does not specifically disclose wherein step c) of disposing the direct bonding interface in the basic environment is carried out for a duration of approximately 1 hour to 80 days.
In regards to claim 2, Fournel (Abstract, Figs. 1-6 and associated text) discloses wherein step c) of disposing the direct bonding interface in the basic environment is carried out for a duration of approximately 1 hour to 80 days.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to incorporate the teachings of Fournel for the purpose of reliable bond.
In regards to claim 8, Fournel (Abstract, Figs. 1-6 and associated text) discloses wherein the basic environment is an atmosphere saturated with basic molecules in the vapor phase, phase, by evaporation in a hermetic enclosure of a basic stock solution comprising deionized water and a basic compound chosen from N,N-diethylethanolamine, dimethylaminoethanol, aminoethanol, N-methyldiethanolamine, aminomethanol, N-methylhydroxylamine, diethanolamine, dimethanolamine, triethanolamine, trimethanolamine, ethalonamine, diethyl-N—N-ethanol, ammonia and their combination (N-Diethyl-2-amino-ethanol (CAS: 100-37-8), dimethylaminoethanol or DMAE (CAS: 108-01-0) , diethylethanolamine or DEAE (CAS 100-37-8), monoethanolamine (CAS: 141-43-5), N-methyldiethanolamine, or MDEA (CAS: 105-59-9), aminomethanol (CAS: 3088 -27-5), N-methylhydroxylamine (CAS: 593-77-1), diethanolamine or DEA (CAS: 111-42-2), dimethanolamine (CAS: 7487-32-3), triethanolamine (CAS : 102-71-6) and trimethanolamine (CAS: 14002-32-5)).
It would have been obvious to modify the invention to include a basic environment with an atmosphere saturated with basic molecules in the vapor phase, phase, by evaporation in a hermetic enclosure of a basic stock solution comprising deionized water and a basic compound chosen from N,N-diethylethanolamine, dimethylaminoethanol, aminoethanol, N-methyldiethanolamine, aminomethanol, N-methylhydroxylamine, diethanolamine, dimethanolamine, triethanolamine, trimethanolamine, ethalonamine, diethyl-N—N-ethanol, ammonia and their combination, since 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 (In re Leshin, 125 USPQ 416).
In regards to claim 9, Fournel (Abstract, Figs. 1-6 and associated text) discloses wherein the first substrate (items 10 or 20) and the second substrate (items 10 or 20) are each formed by a material chosen from semiconductors, LNO, LTO and their combination (Si, Ge, InP, AsGa, Al .sub.2 O .sub.3 , SiO .sub.2 , Si .sub.3 N .sub.4 , SiC, GaN, LNO, LTO, Cu , Ti, Ni).
It would have been obvious to modify the invention to include a first substrate and a second substrate that are each formed by a material chosen from semiconductors, LNO, LTO and their combination, since 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 (In re Leshin, 125 USPQ 416).
In regards to claim 10, Fournel (Abstract, Figs. 1-6 and associated text) discloses wherein: the first substrate (items 10 or 20) and the second substrate (items 10 or 20) provided in step a) each comprise a silicon substrate having a diameter of between 25 mm and 300 mm (200 mm), and in which the first bonding surface (items 11 or 21) and the second bonding surface (items 11 or 21) are each completely formed by a continuous hydrophilic film made of silicon oxide, step c) comprises disposing the direct bonding interface, obtained in step b), in the basic environment over a duration of between 21 and 40 days, the basic environment being an aqueous basic solution formed by dissolution of NaOH (KOH, NaOH, Na .sub.2 CO .sub.3 , or NH .sub.4 OH ) and having a molar concentration of between 10.sup.−7 mol/l mol/l, and step d) comprises applying a thermal treatment at approximately 300° C. (300° C, 500° C, 800° C, Figs. 1, 3-5), so as to obtain a direct bonding between the first substrate (items 10 or 20) and the second substrate (items 10 or 20) having a bonding energy greater than 5 J/m.sup.2.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TELLY D GREEN whose telephone number is (571)270-3204. The examiner can normally be reached M-F 8am-5pm.
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, Jessica Manno can be reached at 571-272-2339. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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TELLY D. GREEN
Examiner
Art Unit 2898
/TELLY D GREEN/Primary Examiner, Art Unit 2898 August 28, 2026
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