DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 1-20, are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 12, 416,855. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-16 of U.S. Patent No. 12,416,855 (Sun) discloses a photomask structure that has a layout pattern with corners, and is surrounded by L-shaped assist pattern features (claim 7 of Sun) wherein at least one i.e., includes at least two assist patterns wrap the edges of the layout pattern and wrap at least one corner i.e., both the assist patterns has the same claimed first and second extensions and the first and second main portions, and wrap the edges of the layout pattern in the claimed manner and Claim 2 of Sun, discloses that the assist patterns are not in surface contact with each other or the layout pattern and are positioned in a minimum spacing as specified by a design rule, and in light of the disclosure of U. S. Patent No. 12,416,855 (Sun), fully encompasses claims 1-20 of the instant application.
Response to Arguments
Applicant’s arguments, see Amendment and Remarks, filed June 4, 2026, with respect to the 35 U.S.C. 102(a)(1) rejection of claims 1-20 have been fully considered and are persuasive. The 35 U.S.C. 102(a)(1) rejection of Riege (USPGPub. No. 2012/0145668) made over claims 1-20, has been withdrawn.
Applicant's arguments filed June 4, 2026, with respect to the nonstatutory double patenting rejection of U. S. Patent No. 12,416,855 made over claims 1-20, have been fully considered but they are not persuasive. The nonstatutory double patenting rejection made over claims 1-20 in the previous office action has been maintained. With respect to applicant’s argument that U. S. Patent No. 12,416,855 does not disclose that the first L-type assist pattern is located between the second L-type assist pattern and the first edge, claims 1, and 7 of U.S. Patent No. 12,416,855 discloses that at least one L-shape assist pattern is position around at least one corner of the layout pattern i.e., the at least one L-shaped assist pattern includes at least two L-shaped assist patterns arranged parallel to each other and at the same time parallel to and surrounding the same corner of the layout pattern and such positioning includes an arrangement such that one of the at least two L-shaped assist pattern is positioned such that it is located between the edge of the layout pattern on one side and the other of the at least two L-shaped assist pattern on the other side and reads on the claimed “the first L-type assist pattern is located between the second L-type assist pattern and the first edge”.
Conclusion
THIS ACTION IS MADE FINAL. 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 Daborah Chacko-Davis whose telephone number is (571) 272-1380. The examiner can normally be reached on 9:30AM-6:00PM EST Mon-Fri. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sally A. Merkling can be reached on (571) 272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-272-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DABORAH CHACKO-DAVIS/Primary Examiner, Art Unit 1737 July 31, 2026.
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