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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-7, 9-13 in the reply filed on 8/10/26 is acknowledged. Thus, claim 8 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention II and species IA-B, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 8/10/26.
An OA on the merits of claims 1-7, 9-13 as below:
Drawings
The drawings Figs. 7-9 are objected to under 37 CFR 1.83(a) because they fail to show representing the inventive method diagram related to the subject matters as indicated in claim 1 (entirely) also the reference numbers (e.g., should be related to what the numbers are represented) in method formats. (see sample method Figure below is suggested for method invention flow chart/diagram).
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Any structural detail that is essential for a proper understanding of the disclosed invention should be shown in the drawing. MPEP § 608.02(d). Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claim 1 is objected to because of the following informalities:
The term: “comprising:” (claim 1, line 2) should be updated to: -- “comprising steps of:” --.
The phrases:” any of” (claims 7 and 13, line 2) should be deleted for clarity of the method claim formats.
It is unclear as to exactly what being refereeing as” a tilted deposition incident angle” (claim 6, line 2). Please be more specific.
Appropriate correction is required.
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 1-7, 9-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-14 of copending Application No. 18384545 hereinafter the’545 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because every limitations set forth in this instant application are recited in the co- pending claims 14 of the ‘545.
The ’545 claims the method for manufacturing a perpendicular magnetic recording (PMR) write head without any seamlines in the PMR write head, the method comprising:
depositing a metallic layer over a side shield, wherein the side shield forms a trench through a portion of the side shield (compare claim 1, lines 3-4 of the ‘545);
depositing an oxide insulator layer over a top portion of the side shield and a first side of the trench formed in the side shield (compare claim 1, line 5);
patterning the write head using a photo resist layer over a portion of the oxide insulator layer (compare claim 1, lines 9-11);
electroplating a main pole over a portion of the oxide insulator layer and the trench, wherein the main pole is in contact with the metallic layer at a base portion and a second side of the trench (compare claim 1, line 12);
removing the photo resist layer and a portion of the metallic layer and main pole at the top surface of the side shield (compare claim 8).
As applied to claims 2-3 compare claims 4-5 of the ‘545
As applied to claims 4-5 compare claims 2-3 of the ‘545
As per claim 7 compare claims 1, lines 6-8 of the ‘545
As per claims 9-10, compare claims 12, and 10 of the ‘545
As per claim 13 refers to claim 1, lines 6-8, respectively.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MINH N TRINH whose telephone number is (571)272-4569. The examiner can normally be reached M-TH ~5:00-3:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Thomas J Hong can be reached at 571-272-0993. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MINH N TRINH/Primary Examiner, Art Unit 3729
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