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 .
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 1-2 and 5 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 1 recites the broad recitation “one end surface of the first base material in contact with the first electrode or the second electrode is larger than an other end surface of the first base material, the second base material has one end surface in contact with the second electrode or the first electrode which is of same size with an other end surface of the second base material, the other end surface of the first base material is in contact with the other end surface of the second base material, and the other end surface of the first base material is smaller than the other end surface of the second base material”, and the claim also recites “an upper end surface of the first base material in contact with the first electrode is larger than a lower end surface of the first electrode, and a lower end surface of the first base material has a same size as the lower end surface of the first electrode, and a lower end surface of the second base material in contact with the second electrode is larger than an upper end surface of the second electrode” which is the narrower statement of the range/limitation.
Essentially, the first limitation allows the configuration of base materials to be the first base material on top of the second base material, or the second base material on top of the first base material. However, the second limitation explicitly requires the orientation of Figure 8, which is the first base material having a larger upper end in contact with an electrode and a small lower end that is the same width as the electrode, thus the first base material on top of the second base material.
The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
As was suggested in the interview of 3/20/2026, the broadness appears unnecessary when the specific orientation is also claimed. Now that the limitations are in the same claim, not only is it unnecessary, but it is indefinite. The Examiner suggests the following correction, which is reflective of the claims submitted on 12/18/2025, prior to the updated language that added the confusion on 12/22/2025:
The language of “one end surface of the first base material in contact with the first electrode or the second electrode is larger than an other end surface of the first base material, the second base material has one end surface in contact with the second electrode or the first electrode which is of same size with an other end surface of the second base material, the other end surface of the first base material is in contact with the other end surface of the second base material, and the other end surface of the first base material is smaller than the other end surface of the second base material” is suggested to be replaced with --an upper end surface of the first base material in contact with the first electrode is larger than the lower end surface of the first base material, the second base material has an upper end surface that is the same size as its lower end surface that is in contact with the second electrode, the lower end surface of the first base material is in contact with the upper end surface of the second base material, and the lower end surface of the first base material is smaller than the upper end surface of the second base material--.
Allowable Subject Matter
Claims 1, 2 and 5 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
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 Jonathan M Dunlap whose telephone number is (571)270-1335. The examiner can normally be reached Mon-Fri 10AM - 7PM.
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/JONATHAN M DUNLAP/Primary Examiner, Art Unit 2855 April 6, 2026