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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 February 5, 2026, has been entered.
Election/Restrictions
Claims 1-3 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on March 6, 2025.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 4-11 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 4 recites that the through-hole that extends through the single crystal silicon substrate (claim 4, line 5) is formed by a step that includes “bringing the single crystal silicon substrate with the catalyst film formed into contact with an etching solution to etch the etching target region” (claim 4, lines 6-8). The forming step includes forming “a striped portion” that extends along the direction of the through-hole (claim 4, lines 9-11).
The specification has basis for these limitations. The striped portions are depicted in Figure 3 at “L” [0048], and the through-hole is formed by metal-assisted chemical etching (“MACE”) [0048], [0050]-[0051]. This MACE etching step is claimed in dependent claim 5.
Claim 4, at the last two lines, describes that the etching solution used to form the through-hole is hydrogen fluoride (“HF”) or a mixed solution of hydrogen fluoride and hydrogen peroxide (“HF/H2O2”). The specification has basis for this limitation also. The specification describes that HF or HF/H2O2 is used for the MACE step [0051].
Newly amended claim 4 introduces a new limitation that the through-hole has an inclined side wall with an angle of 45.0° to 54.7° (claim 4, lines 12-14).
Basis for this limitation is present in the specification with reference to Fig. 8. The specification describes that a first through-hole 21 is formed with an inclined side wall, and a second through-hole 22 with a vertical side wall is formed by MACE [0059]. The first through-hole 21 with an inclined sidewall [0061] is formed by “crystal anisotropic etching” by wet etching using potassium hydroxide (KOH). [0062].
The newly added limitation of an inclined sidewall is not described in the specification as being formed by MACE with HF or HF/H2O2, as required by claim 4. Rather, the specification describes that an inclined sidewall is formed by wet etching with KOH. Thus, claim 4 as amended is not described in the specification.
Claims 5-11 fail to cure the deficiencies of claim 4, and are therefore also rejected.
For the reasons described above, the inventor did not have possession of the claimed invention at the time of filing.
This rejection could be overcome by clearly reciting a first through-hole and a second through-hole are formed with the different sidewall configurations by either MACE or crystal anisotropic etching with KOH.
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 4-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 4-7 of copending Application No. 18/316,252 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are fully encompassed by those of the reference application. Claim 4 of the reference application describes forming a first through-hole with an inclined sidewall. Claim 5 of the reference application describes a second through-hole formed by MACE. These encompass the limitations of the claims 4-9.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Amendment
Applicant’s arguments, see pages 6-7, filed February 5, 2026, with respect to prior art rejections based on Asano, Asano in view of Sherrer, and Asano in view of Sherrer and Ohkuma have been fully considered and are persuasive. The rejections of the claims have been withdrawn.
Applicant’s point is well taken that Asano fails to disclose MACE to form an inclined sidewall. However, the instant invention also fails to describe this, and therefore the claims are rejected under 35 USC 112 (a) as lacking written description for the claimed invention.
Claims 4-9 remain provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 4-7 of copending Application No. 18/316,252 (reference application).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Yun (US 6,594,898 B1) is cited to show anisotropic etching with KOH or TMAH (col.4, lines 49-51).
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 ANITA K ALANKO whose telephone number is (571)270-0297. The examiner can normally be reached Monday-Friday, 9 am-5pm.
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/ANITA K ALANKO/Patent Examiner, Art Unit 1713