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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 08/21/2026 has been entered.
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 16-35 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-22 of U.S. Patent No. 10,571,806 B2 and claims 1-20 of U.S. Patent No. 11,733,610 B2, both issued to Tel et al. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of application 18/233263 are directed to the same invention of the patented claims of US 10,571,806 B2 and US 11,733,610 B2, both issued to Tel et al. As such, the claims of application 18/233263 are met by the patented claims of US 10,571,806 B2 and US 11,733,610 B2. This is a provisional nonstatutory double patenting rejection.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 16-35 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by David [US 2016/0148850 A1].
Regarding claims 16 and 29, David discloses a method (paragraph 0002]) / a non-transitory computer program product comprising machine-readable instructions therein (paragraph [0026], see also Figs. 2-12), comprising:
estimating, by a hardware computer system, a characteristic that will be imparted to a substrate to be processed by one or more process apparatuses by combining one or more values of one or more contributions to the characteristic by the one or more process apparatuses with one or more values of the characteristic (paragraphs [0034], [0039], [0043]-[0045] and [0047]) at least one of the one or more contributions to the characteristic being a first contribution of a chamber of an etch tool configured to etch one or more etchable layers and being a contribution separate from a second contribution to the characteristic by one or more other process apparatuses, and the first contribution representing an effect of the chamber of the etch tool on the characteristic after processing of a substrate by the chamber of the etch tool: distinct from an effect of another chamber of the etch tool or of a chamber of another etch tool on the characteristic after processing of a substrate (paragraph [0112] teaches using a different tool); and physically configuring the physical device fabrication process based on the estimated characteristic and/or providing a physical signal representing, or based on, the estimated characteristic to a system for use in physical configuration of the physical device fabrication process. (paragraphs [0071]-[0085], [0103]-[0104] and [0119], see also Figs. 2-12).
Regarding claims 17-28 and 30-35, David discloses wherein the characteristic is a property of a pattern on an etched substrate (as shown in Figs, 3-5), wherein the property is a geometric asymmetry of the pattern (paragraph [0108]), wherein the property is a critical dimension of the pattern or a sidewall angle of the pattern (paragraphs [0079] and [0104]), wherein the characteristic is a fingerprint of the property across the etched substrate, wherein the first contribution is obtained from a model having a property of the one or more etchable layers as an input, further comprising adjusting one or more variables of the etch tool to reduce the first contribution, wherein the one or more variables are an operating temperature and/or etching rate (paragraphs [0043], [0075], [0104]-[0106] and [0119]), wherein the adjusting compensates at least partially the second contribution, wherein the second contribution is associated with a lithographic apparatus and/or a deposition tool, further comprising adjusting one or more variables of the chamber of the etch tool to match the second contribution, wherein the second contribution is a contribution from another chamber of the etch tool or a chamber of another etch tool, wherein the adjusting targets to reduce a deviation of the characteristic from a target value of the characteristic (paragraphs [0071]-[0085], see also Figs. 2-12).
Response to Arguments
Applicant's arguments filed 08/21/2026 have been fully considered but they are not persuasive.
Applicant argues that the applied reference does not teach “the first contribution representing an effect of the chamber of the etch tool on the characteristic after processing of a substrate by the chamber of the etch tool distinct from an effect of another chamber of the etch tool or of a chamber of another etch tool on the characteristic after processing of a substrate”, see pages 9-10 of the remarks.
The Examiner respectfully disagrees. As applied above, David discloses wherein different tools are used after processing of a substrate such that the first contribution representing an effect of the chamber of the etch tool on the characteristic after processing of a substrate by the chamber of the etch tool: distinct from an effect of another chamber of the etch tool or of a chamber of another etch tool on the characteristic after processing of a substrate (paragraph [0112]).
As such Applicant’s arguments are not persuasive and the rejection under 35 USC § 102 is maintained.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEORAM PERSAUD whose telephone number is (571)270-5476. The examiner can normally be reached M-F 8AM-5PM.
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/DEORAM PERSAUD/Primary Examiner, Art Unit 2882
