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 Arguments
Applicant’s arguments, filed 01/21/2026, with respect to the rejection(s) of claim(s) under 35 USC 103 and 112(d) have been fully considered and are persuasive, the amendments made change the scope of what has been claimed and correct the 112(d) issue presented overcoming the rejections as written. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made under a new interpretation of the prior art previously presented in view of the new scope as presented in the amendments.
Applicant's arguments filed 01/21/2026 have been fully considered but they are not persuasive:
Applicant argues page 8-12 that US 20200411426 A1 Lajoie et al in further view of US 20150084107 A1 Li does not teach the amended limitation “the second passive element is a capacitor formed by the second terminal electrode and the drain electrode with a dielectric layer directly sandwiched therebetween”. The examiner respectfully disagrees Lajoie explicitly illustrates a dielectric layer (comprising at least 242, 203, and 221 fig. 2) wherein at least a portion (242 fig. 2) is directly sandwiched therebetween the second terminal electrode (comprising 245 contacting 243 and 243 fig. 2) and the drain electrode (comprising 241, 233 and 213 fig. 2) in combination with Li which explicitly states “The MOM capacitor is constructed by two electrodes with stacked layers of comb-like structures separated by dielectrics” [Paragraph 0005]. The applicant in part argues Lajoie does not teach “the drain electrode is a capacitor plate”, under the new interpretation of the prior art necessitated by the amendments made, the examiner respectfully disagrees as the drain electrode (comprising 213, 233, and 241 fig. 2) now includes the “bottom plate” (241 fig. 2) under broadest reasonable interpretation of the term “drain electrode”. The applicant in part argues that Li does not teach a “second terminal electrode” and “drain electrode”. The examiner respectfully disagrees under broadest reasonable interpretation, as shown in figs. 1 and 3, 1300 comprising 13004 and 13002 qualifies as a “second terminal electrode” and a left portion of 1302 comprising 13022, 13024, and 122 qualifies as “a drain electrode”.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., “the drain electrode is a capacitor plate”, “the drain electrode does not comprise coupled/integral subcomponents and/or elements and/or Vias”, “the drain electrode is a singular structure”, “the terminal electrode is not part of and/or in a BEOL”, “the second terminal electrode is not electrically connected to the gate”, “the first passive element (capacitor) does not share structure and/or is not integral with the second passive element (capacitor)”) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
In response to applicant's argument against the combination of Lajoie in view of Li, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
The examiner further notes that clear differences in the structure of the prior art and instant application that may be able to distingue the instant application from the prior art after further search and consideration such as “the drain electrode is a singular structure” and/or “the drain electrode does not include a via” are presented in the specification however these differences are not currently claimed as currently written.
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).
Election/Restrictions
Applicant elected without traverse of Species I “the passive element is a capacitor” in the reply filed on 09/24/2025.
Applicant has amended claim 3 removing the limitation “the passive element is at least one of a capacitor, an inductor, and a resistor”, to “the passive element further comprises at least one of an inductor, and a resistor” thus removing the linking limitation and claim 3 no longer reads as the elected species of “the passive element is a capacitor” and reads as the nonelected species “the passive element is an inductor” and/or “the passive element is a resistor”
Therefore, claim 3 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 09/24/2025.
Claim Rejections - 35 USC § 103
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.
Claims 1-2, 5-6, 9-17, 19-21 are rejected under 35 U.S.C. 103 as being unpatentable over US 20200411426 A1 Lajoie et al hereafter “Lajoie” in further view of US 20150084107 A1 Li here after “Li”.
Claim 1 Lajoie A variable electronic element comprising:
a switch (210 fig. 2) that configures a field effect transistor (sufficiently disclosed as a “MOSFET” paragraph 0025) and that includes:
a source electrode (comprising 211 and 234 fig. 2);
a drain electrode (comprising 213, 241, and 233 fig. 2);
a channel formation film (209 fig. 2) that overlaps at least a part of the source electrode and a part of the drain electrode (sufficiently illustrated fig. 2, overlaps with bottom surfaces of the source electrode and the drain electrode);
a gate insulating film (207 fig. 2) that overlaps the channel formation film (sufficiently illustrated fig. 2 overlaps a bottom surface of the channel formation film); and
a gate electrode (205 fig. 2) that overlaps the gate insulating film (sufficiently illustrated fig. 2 overlaps a bottom surface of the gate insulating film); and
an element (a top region of the device, see annotation below) that is electrically connected to the switch to configure a passive element (the top region comprises passive element 220 which is sufficiently disclosed as a passive element “capacitor 220” paragraph 0043) and that includes:
a first terminal electrode (a left segment of 245 connected to the source 211 fig. 2) electrically connected to the source electrode (sufficiently illustrated fig. 2); and
a second terminal electrode (at least a right segment of 245 and 243 ) that configures a second passive element (220 fig. 2) at least with the drain electrode.
Lajoie does not teach the second terminal electrode that configures a first passive element with the source electrode
Li teaches a similar device comprising;
a source electrode (114 fig. 1);
a drain electrode (116 fig. 1);
a channel formation (a region of 100 directly under and in contact with 112 and between 114 and 116 fig. 1);
a gate insulating film (112 fig. 1)
a gate electrode (110 fig. 1);
an element (130 fig. 1) that is electrically connected to the device to configure a passive element (sufficiently disclosed as the metallization layer of a capacitor in “MOS capacitor unit” and “metallization layer” Paragraph 0019 and sufficiently illustrated as a capacitor fig. 1) and that includes;
a first terminal electrode (a left portion of 13024 fig. 1 and further illustrated fig. 3) electrically connected to the source electrode (sufficiently illustrated fig. 3);
a second terminal electrode (1300 comprising 13002 and 13004 fig. 1 and further illustrated fig. 3) that configures a first passive element (comprising a left portion of 13004 and a left portion of 13024 fig. 1 and further illustrated fig. 3) with the source electrode and that configures a second passive element (a right portion of 13004 and a right potion of 13024 fig. 1 and further illustrated fig. 3) at least with the drain electrode [see annotation below], wherein the second passive element is a capacitor [sufficiently disclosed paragraph 0019 “the varactor unit 1 is a MOS capacitor unit”] formed by the second terminal electrode and the drain electrode [sufficiently disclosed paragraph 0019 “The varactor unit 1 also includes a plurality of vias 120 for the electrode pattern 1300 to contact the region 110, and a plurality of vias 122 for the electrode pattern 1302 to contact the regions 114 and 116” ] with a dielectric layer [not illustrated but sufficiently disclosed and/or embodied paragraph 0005 “The MOM capacitor is constructed by two electrodes with stacked layers of comb-like structures separated by dielectrics” ]directly sandwiched therebetween.
It would have been obvious to one of ordinary skill in the art to take the device of Lajoie and combine it with the device of Li Such that the device of Lajoie comprises the “second terminal electrode that configures a first passive element with the source electrode” to decouple portions of the integrated circuit from one another to reduce the impact of noise from some portions to other portions [Li Paragraph 0003].
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Lajoie Annotated figure 2; highlighting an element
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Li Annotated fig. 3: highlighting the first and second passive elements
Claim 2 Lajoie in view of Li teaches as shown above the variable electronic element according to claim 1, wherein the switch is on either an upper portion or a lower portion of the element (fig. 2 sufficiently illustrated as being on a lower portion of the element)
Claim 5 Lajoie in view of Li teaches as shown above the variable electronic element according to claim 1, wherein:
the dielectric layer (comprising 203, 221 and 242 fig. 2) overlaps the source electrode and the drain electrode [sufficiently illustrated fig. 2], and
the dielectric layer is between the source electrode and the second terminal electrode (sufficiently illustrated fig. 2) to configure an additional capacitor as the first passive element [met in view of Li to necessarily form the passive element which is disclosed as a capacitor, sufficiently disclosed as the metallization layer of a capacitor in “MOS capacitor unit” and “metallization layer” Paragraph 0019 and sufficiently illustrated as a capacitor fig. 1].
Claim 6 Lajoie in view of Li teaches as shown above the variable electronic element according to claim 5, wherein:
the gate electrode is on a semiconductor substrate (251 fig. 2) [sufficiently illustrated in fig. 2, the gate electrode is on a top side of the semiconductor substrate],
the gate insulating film is on the gate electrode and the semiconductor substrate [sufficiently illustrated fig. 2],
the channel formation film is on the gate insulating film [sufficiently illustrated fig. 2],
the source electrode and the drain electrode are on the channel formation film [sufficiently illustrated fig. 2],
the dielectric is on the source electrode and the drain electrode [sufficiently illustrated fig. 2], and
the second terminal electrode is on the dielectric [sufficiently illustrated fig. 2].
Claim 9 Lajoie in view of Li teaches as shown above the variable electronic element according to claim 1, wherein a portion where the gate electrode overlaps the channel formation film in a planar view is configured as the drain electrode [met under broadest reasonable interpretation, 213 the drain electrode is part of a portion and/or region that overlaps the gate electrode and the channel formation in a planar view and/or in a direction from top to bottom of fig. 2 ].
Claim 10 Lajoie in view of Li teaches as shown above the variable electronic element according to claim 9, wherein the second passive element is configured between the second terminal electrode and the portion where the gate electrode overlaps the channel formation film [sufficiently illustrated fig. 2, the second passive element 220 comprising 243, 242, and 241 is between the second terminal electrode (a right portion of 245) and the portion comprising 213].
Claim 11 Lajoie in view of Li teaches as shown above the variable electronic element according to claim 1, wherein the second terminal electrode includes a first region (in view of Li the region of the first passive element, see annotation above for the first passive element) that overlaps the source electrode in a planar view and a second region (sufficiently illustrated fig. 2 of Lajoie the region of the second passive element of Lajoie and in further view of the region of the second passive element of Li, see annotation above) that overlaps the drain electrode in the planar view [met in view of Li, sufficiently illustrated fig. 1 of Li and further illustrated in fig. 3 of Li].
Claim 12 Lajoie in view of Li teaches as shown above the variable electronic element according to claim 11, wherein the first region and the second region are electrically connected while bypassing at least a part of a channel region between the source electrode and the drain electrode [met in view of Li the first region and the second region directly/electrically connected together, see annotation above and sufficiently illustrated in fig. 1 and 3 of Li ].
Claim 13 Lajoie in view of Li teaches as shown above the variable electronic element according to claim 5, wherein the second terminal electrode includes a first region (in view of Li the region of the first passive element, see annotation above) that overlaps the source electrode in a planar view [met in view of Li, Li sufficiently illustrates fig. 1 and 3, see annotation above] and a second region (sufficiently illustrated fig. 2 of Lajoie the region of the second passive element of Lajoie and in further view of the region of the second passive element of Li, see annotation above) that overlaps the drain electrode in the planar view [sufficiently illustrated in fig. 2 of Lajoie and fig. 1 and 3 of Li].
Claim 14 Lajoie in view of Li teaches as shown above the variable electronic element according to claim 13, wherein:
the first region and the second region are electrically connected while bypassing at least a part of a channel region between the source electrode and the drain electrode [met in view of Li the first region and the second region directly/electrically connected together, see annotation above and sufficiently illustrated in fig. 1 and 3 of Li], and
the dielectric layer avoids at least a part of the channel region between the source electrode and the drain electrode in accordance with a pattern of the second terminal electrode [this limitation is met under broadest reasonable interpretation of “avoid” wherein avoid includes the meaning “to keep away from” [Merriam-Webster Dictionary] and “accordance” includes the meanings “agreement” and/or “conformity” [Merriam-webster dictionary] in this case as illustrated in fig. 2 the dielectric “avoids” and/or “is kept away from” a part of the channel region contacting capping region 214 is between the source electrode 211, and 234 and the drain electrode 213, 233, and 241 by capping layer 214 and in accordance and/or conformity with a the patterns of the second terminal electrode as the dielectric layer is sufficiently illustrated the surfaces of the dielectric layer contacting the second terminal electrode appear to be conformal to and/or with the surfaces of the second terminal electrode. The examiner also notes that the language used within this claim limitation is appears to be very broad as the property of “avoids” as interpretated by the examiner broadly indicates the materials are physically separated, while the examiner also believes the applicant intends to claim but does not explicitly claim something similar to --a gap between the first region and the second, that extends through the dielectric layer overlapping the channel formation and between the source electrode and the drain electrode-- as illustrated by fig. 21 of the instant application].
Claim 15 Lajoie in view of Li teaches as shown above the variable electronic element according to claim 6, wherein the semiconductor substrate has an uneven portion [met under broadest reasonable interpretation as it has an uneven top surface, illustrated in fig. 2 see annotation below].
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Li Annotated fig. 2: highlighting the uneven portion of the substrate
Claim 16 Lajoie teaches a variable electronic element comprising:
a switch (210 fig. 2) including:
a source electrode (comprising 211, and 234 fig. 2),
a drain electrode (comprising 213, 233, and 241 fig. 2),
a channel formation film (209 fig. 2) on at least a portion of the source electrode and a portion of the drain electrode [sufficiently illustrated fig. 2 as on bottom surfaces of the source electrode and the drain electrode, note: “on” is “a function word to indicate position in close proximity with” and/or “a function word to indicate position in or in contact with an outer surface” Merriam-Webster dictionary], wherein the second passive element is a capacitor [sufficiently disclosed paragraph 0019 “the varactor unit 1 is a MOS capacitor unit”] formed by the second terminal electrode and the drain electrode [sufficiently disclosed paragraph 0019 “The varactor unit 1 also includes a plurality of vias 120 for the electrode pattern 1300 to contact the region 110, and a plurality of vias 122 for the electrode pattern 1302 to contact the regions 114 and 116” ] with a dielectric layer [not illustrated but sufficiently disclosed and/or embodied paragraph 0005 “The MOM capacitor is constructed by two electrodes with stacked layers of comb-like structures separated by dielectrics” ] directly sandwiched therebetween.
a gate insulating film (207 fig. 2) on the channel formation film [sufficiently illustrated fig. 2 on the bottom surface of the channel formation film], and
a gate electrode (205 fig. 2) that overlaps the gate insulating film [sufficiently illustrated in fig. 2 the vertical projection of the gate electrodes overlaps completely with the gate insulating film], and
a passive element (a top region of the device, see annotation below) that is electrically connected to the switch [sufficiently illustrated fig. 2] and includes:
a first terminal electrode (a left portion of 245 fig. 2) electrically connected to the source electrode [sufficiently illustrated fig. 2], and
a second terminal electrode (right portion of 245 fig. 2) that configures a second passive element (220 fig. 2) at least with the drain electrode [sufficiently illustrated fig. 2].
Lajoie does not teach the second terminal electrode that configures a first passive element with the source electrode.
Li teaches a similar device comprising;
a source electrode (114 fig. 1);
a drain electrode (116 fig. 1);
a channel formation (a region of 100 directly under and in contact with 112 and between 114 and 116 fig. 1);
a gate insulating film (112 fig. 1)
a gate electrode (110 fig. 1);
an element (130 fig. 1) that is electrically connected to the device to configure a passive element (sufficiently disclosed as the metallization layer of a capacitor in “MOS capacitor unit” and “metallization layer” Paragraph 0019 and sufficiently illustrated as a capacitor fig. 1) and that includes;
a first terminal electrode (a left portion of 13024 fig. 1 and further illustrated fig. 3) electrically connected to the source electrode (sufficiently illustrated fig. 3);
a second terminal electrode (1300 comprising 13002 and 13004 fig. 1 and further illustrated fig. 3) that configures a first passive element (comprising a left portion of 13004 and a left portion of 13024 fig. 1 and further illustrated fig. 3) with the source electrode and that configures a second passive element (a right portion of 13004 and a right potion of 13024 fig. 1 and further illustrated fig. 3) at least with the drain electrode [see annotation below].
It would have been obvious to one of ordinary skill in the art to take the device of Lajoie and combine it with the device of Li Such that the device of Lajoie comprises the “second terminal electrode that configures a first passive element with the source electrode” to “decouple portions of the integrated circuit from one another to reduce the impact of noise from some portions to other portions” [Li Paragraph 0003].
Claim 17 Lajoie in view of Li teaches the variable electronic element according to claim 16, wherein:
The dielectric layer [comprising 203, 221 and 242 fig. 2] is disposed on the source electrode and the drain electrode [sufficiently illustrated fig. 2], and
the dielectric layer is between the source electrode and the second terminal electrode [sufficiently illustrated fig. 2] to configure an additional capacitor as the first passive element [met in view of Li to necessarily form the passive element which is disclosed as a capacitor, sufficiently disclosed as the metallization layer of a capacitor in “MOS capacitor unit” and “metallization layer” Paragraph 0019 and sufficiently illustrated as a capacitor fig. 1].
Claim 19 Lajoie in view of Li teaches as shown above a circuit device comprising:
a circuit wiring [B1 and/or b2 and/or W1 and/or W2 and/or S1 and/or S2 fig. 4]; and
the variable electronic element according to claim 1, wherein the variable electronic element is electrically connected to the circuit wiring [an embodiment is sufficiently illustrated fig. 4 wherein the device of fig. 2 is and embodiment of 402 and/or 404 and/or 406 and/or 408] and wherein the circuit wiring and the variable electronic element from part of the circuit device [sufficiently disclosed paragraph 0015 “a computing device, which may include a circuit board and a memory device coupled to the circuit board and including a memory array” and “a top plate of the capacitor is coupled to a source line of the memory array” wherein the circuit wiring comprises “source line” and a circuit device comprises the computing device and/or the memory array]
Claim 20 Lajoie in view of Li teaches a circuit device comprising:
a circuit wiring [B1 and/or b2 and/or W1 and/or W2 and/or S1 and/or S2 fig. 4]; and
the variable electronic element according to claim 16, wherein the variable electronic element is electrically connected to the circuit wiring[an embodiment is sufficiently illustrated fig. 4 wherein the device of fig. 2 is and embodiment of 402 and/or 404 and/or 406 and/or 408], and wherein the circuit wiring and the variable electronic element from part of the circuit device [sufficiently disclosed paragraph 0015 “a computing device, which may include a circuit board and a memory device coupled to the circuit board and including a memory array” and “a top plate of the capacitor is coupled to a source line of the memory array” wherein the circuit wiring comprises “source line” and a circuit device comprises the computing device and/or the memory array]
Claim 21 Lajoie in view of Li teaches as shown above the variable electronic element according to claim 1, wherein the dielectric layer (comprising at least 242, 203 and 221 fig. 2) is directly coupled to a surface of the second terminal electrode [top, bottom, left and right side surfaces fig. 2] and a surface of the drain electrode [left and right side surfaces fig. 2].
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 William C Trice whose telephone number is (703)756-1875. The examiner can normally be reached M-F 8:30am-5:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Britt Hanley can be reached at (571) 270-3042. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WCT/Examiner, Art Unit 2893
/Britt Hanley/Supervisory Patent Examiner, Art Unit 2893