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 .
Response to Amendment
An amendment responsive to the non-final Office Action dated March 9, 2026 was submitted on July 7, 2026. Claim 1 was amended. Claims 1-15 are currently pending. Claim 9-14 have been withdrawn from consideration.
The prior art rejections of claims 1-4, 7 and 8 (¶¶ 9-21 of the Office Action) have been withdrawn in view of the applicant’s amendments and remarks.
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 1-4, 7 and 8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 10,279,575 B2 (the reference patent).
Although the claims at issue are not identical, they are not patentably distinct from each other as detailed below.
Claims 1, 5 and 6 of the reference patent have limitations corresponding to those of claim 1. Claim 1 additionally recites the bonding comprising adjusting the first mounting surface and/or the second mounting surface in such a way that physical asymmetry of the first mounting surface and/or the second mounting surface is corrected by a gravitational field acting normally on the first mounting surface and/or the second mounting surface to enable a front of the bonding wave to move within a same horizontal plane and enable at least partial compensation of deformation of the first substrate and/or the second substrate. Claim 1 of the reference patent, however, recites deforming at least one of the first and second substrates and dropping the second substrate onto the first substrate fixed in a concave or convex shape to bond the substrates together via a bonding wave traveling in a horizontal plane. This process would necessarily result in the physical asymmetry of the mounting surfaces being corrected by a gravitational field acting normally on the mounting surfaces. Moreover, dropping the second substrate onto the deformed first substrate would result in a gravitational force acting normally to the mounting surfaces and the resulting bonding wave would propagate horizontally thereby compensating for the deformation.
Claims 2-4 and 7 of the reference patent have limitations corresponding to those of claims 2-4 and 7.
Allowable Subject Matter
Claim 15 is allowed.
Regarding claim 15, the closest prior art is to Hoshi. Hoshi discloses a method for bonding a first substrate to a second substrate on respective contact surfaces of the substrates (Abstract of Hoshi, method of bonding semiconductor wafers to each other), the method comprising: accommodating the first substrate on a first mounting surface of a first mounting apparatus and the second substrate on a second mounting surface of a second mounting apparatus (FIG. 3C of Hoshi, substrates #50A and #50B mounted to opposing mounting surfaces of wafer holders #6A #6B); bringing the contact surface of the first substrate into contact with the contact surface of the second substrate at a bond initiation site (4:24-28 of Hoshi, wafers warped into convex chape are brought into contact with one another at their central portions); and bonding the first substrate to the second substrate along a bonding wave which is traveling from the bond initiation site to side edges of the substrates (4:29-35 of Hoshi, wafers are released from convex shape and are flattened against one another to form bonded wafer #50; since both substrates are held in a horizontal plane, at least some gravitational field would act on the mounting surfaces to enable the bonding wave). Neither Hoshi, however, nor any of the other prior art references of record teach or reasonably suggest a method as recited in claim 15 wherein, during bonding a physical asymmetry of the first mounting surface and/or the second mounting surface is corrected by a gravitational field acting normally on the first mounting surface and/or the second mounting surface to enable a front of the bonding wave to move within a same horizontal plane and enable at least partial compensation of deformation of the first substrate and/or the second substrate. The prior art as a whole therefore fails to teach or reasonably suggest the totality of the invention as defined by claim 15. In the absence of further prior art guidance, it would not have been obvious to arrive at the invention of claim 15 without impermissible hindsight. For the foregoing reasons, the invention of claim 15 is deemed non-obvious.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER W. RAIMUND whose telephone number is (571) 270-7560. The examiner can normally be reached M-Th 7:00-4:30.
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CHRISTOPHER W. RAIMUND
Primary Examiner
Art Unit 1746
/CHRISTOPHER W RAIMUND/Primary Examiner, Art Unit 1746
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