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 .
ADS
A proper domestic benefit claim must be provided in the Application Data Sheet in order to constitute a claim for domestic benefit. See 37 CFR 1.76 and 1.78.
This application makes reference to or appears to claim subject matter disclosed in Application No. 18/064,185, filed 12/9/22, Application No. 17/850,792, filed 6/27/22 and U.S. provisional Application No. 63/202,901, filed 6/29/21. If applicant desires to claim the benefit of a prior-filed application under 35 U.S.C. 119(e), 120, 121, 365(c) or 386(c), the instant application must contain, or be amended to contain, a specific reference to the prior-filed application in compliance with 37 CFR 1.78. If the application was filed before September 16, 2012, the specific reference must be included in the first sentence(s) of the specification following the title or in an application data sheet (ADS) in compliance with pre-AIA 37 CFR 1.76; if the application was filed on or after September 16, 2012, the specific reference must be included in an ADS in compliance with 37 CFR 1.76. For benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c), the reference must include the relationship (i.e., continuation, divisional, or continuation-in-part) of the applications.
If the instant application is a utility or plant application filed under 35 U.S.C. 111(a), the specific reference must be submitted during the pendency of the application and within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior application. If the application is a national stage application under 35 U.S.C. 371, the specific reference must be submitted during the pendency of the application and within the later of four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f), four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage, or sixteen months from the filing date of the prior application. See 37 CFR 1.78(a)(4) for benefit claims under 35 U.S.C. 119(e) and 37 CFR 1.78(d)(3) for benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c). This time period is not extendable and a failure to submit the reference required by 35 U.S.C. 119(e) and/or 120, where applicable, within this time period is considered a waiver of any benefit of such prior application(s) under 35 U.S.C. 119(e), 120, 121, 365(c), and 386(c). A benefit claim filed after the required time period may be accepted if it is accompanied by a grantable petition to accept an unintentionally delayed benefit claim under 35 U.S.C. 119(e) (see 37 CFR 1.78(c)) or under 35 U.S.C. 120, 121, 365(c), or 386(c) (see 37 CFR 1.78(e)). The petition must be accompanied by (1) the reference required by 35 U.S.C. 120 or 119(e) and by 37 CFR 1.78 to the prior application (unless previously submitted), (2) the applicable petition fee under 37 CFR 1.17(m)(1) or (2), and (3) a statement that the entire delay between the date the benefit claim was due under 37 CFR 1.78 and the date the claim was filed was unintentional. The presentation of a benefit claim may result in an additional fee under 37 CFR 1.17(w)(1) or (2) being required, if the earliest filing date for which benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c) and 1.78(d) in the application is more than six years before the actual filing date of the application. The Director may require additional information where there is a question whether the delay was unintentional. The petition should be addressed to: Mail Stop Petition, Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450.
If the reference to the prior application was previously submitted within the time period set forth in 37 CFR 1.78 but was not included in the location in the application required by the rule (e.g., if the reference was submitted in an oath or declaration or the application transmittal letter), and the information concerning the benefit claim was recognized by the Office as shown by its inclusion on the first filing receipt, the petition under 37 CFR 1.78 and the petition fee under 37 CFR 1.17(m)(1) or (2) are not required. Applicant is still required to submit the reference in compliance with 37 CFR 1.78 by filing an ADS in compliance with 37 CFR 1.76 with the reference (or, if the application was filed before September 16, 2012, by filing either an amendment to the first sentence(s) of the specification or an ADS in compliance with pre-AIA 37 CFR 1.76). See MPEP § 211.02.
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, 6-7, 9-10, 14-15 and 17-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5-6, 8, 10, 14-15 and 17-20 of U.S. Patent No. 11,870,429 (‘429 hereinafter). Although the claims at issue are not identical, they are not patentably distinct from each other because the above claims of the instant application are essentially the same as that of the above claims of ‘429 with minor differences such as claims 1, 8 and 17 of ‘429 requires that the “third gate” of the “third transistor” is “connected to a voltage source” and that the “fourth gate” of the “fourth transistors” is “connected to the voltage source”, whereas claim 1 of the instant application does not require the third and fourth gates being connected to the voltage source. Nevertheless it would have been obvious to remove the voltage source from the circuitry as recited in claims 1, 8 and 17 of ‘429, since it has been held that omission of an element and its function in a combination where the remaining elements perform the same functions as before involves only routine skill in the art. In re Karlson, 136 USPQ 184. One would have been motivated to do so to simplify circuit constructions.
Additionally, ‘429 differs from the instant application since ‘429 does not explicitly state that there are “direct” connections, such as “the first source terminal connected directly to the silicon-based bottom layer”, “the second source connected directly to the silicon-based bottom layer”, “the third drain terminal directly coupled to the second source node”, “the third drain directly coupled to the first gate terminal”, “the fourth drain terminal directly coupled to the first source node”, and “the fourth source terminal directly coupled to the second gate terminal” as required in claim 1 (and similar recitation in claims 8 and 17) of the instant application. Rather, ‘429 includes the above connections, but they are merely recited as being “connected” or “coupled” without the explicit requirement of a “direct” connection or coupling. Nevertheless the terms “connected” and “coupled” are broad and include both an indirect and the direct coupling and connections. For instance, devices that are directly connected and/or coupled are inherently connected and/or coupled together. It would have been obvious to include direct connections and/or couplings within the broader recitations of connected/coupled of ‘429 since the broad recitations anticipates the more specific direct connections. It would have been obvious to make direct connections/couplings for the purpose of having the least amount of materials and/or devices to construct the circuit and fabricate the connections between devices of ‘429. One would have been motivated to do so for the purpose of simplifying circuit construction.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the first and second bias generator circuits each comprising low drop-out (LDO) circuits and the first and second bias circuitry as recited in claims 8 and 16 and further connected and operative as recited in claims 1 and 9 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
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 of 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.
Specification
The amendment filed 12/17/2025 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows:
The first and second bias generator being connected and operative as recited in claims 1 and 9 (i.e., third and fourth transistors having the direct connections of the respective source and drain terminals) in combination with the first and second bias generators having LDO circuits as recited in claim 8 and 16. Note Fig. 15 discloses that the first and second bias generators may be LDO circuits. However, Fig. 15 does not disclose the first and second bias generators including the third and fourth transistors connected as recited in claims 1 and 9.
Applicant is required to cancel the new matter in the reply to this Office Action.
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 8 and 16 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.
With respect to claim 8, the original disclosure fails to provide support for “the first and second bias generator circuits each comprise low drop-out (LDO) circuits” and further including the first and second bias generator including the third and fourth transistors connected and operative as recited in claim 1 (i.e., having the direct connections of the drain and source to the second/first source and to the first/second gate).
With respect to claim 16, the original disclosure fails to provide support for “the first and second bias generator circuits each comprise low drop-out (LDO) circuits” and further including the first and second bias generator including the third and fourth transistors connected and operative as recited in claim 9 (i.e., having the direct connections of the drain and source to the second/first source and to the first/second gate).
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 8 and 16 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
With respect to claim 8, the recitation of “the first and second bias generator circuits each comprise low drop-out (LDO) circuits” cannot be understood. This is because the original disclosure fails to provide support for the first and second bias generators including LDO circuits and further including the first and second bias generator including the third and fourth transistors connected and operative as recited in claim 1 (i.e., having the direct connections of the drain and source to the second/first source and to the first/second gate).
With respect to claim 16, the recitation of “the first and second bias generator circuits each comprise low drop-out (LDO) circuits” cannot be understood. This is because the original disclosure fails to provide support for the first and second bias circuits including such LDO circuits and further including the first and second bias generator including the third and fourth transistors connected and operative as recited in claim 9 (i.e., having the direct connections of the drain and source to the second/first source and to the first/second gate).
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(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.
Claim(s) 9-11, 14 and 17-19 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Sharma (USPAPN 2024/0072161) (note proper domestic benefit has not been properly provided in an ADS).
With respect to claim 9, Sharma discloses, in Fig. 1, an electronic device (Fig. 1), comprising:
a semiconductor substrate (SUB/18 and/or the GAN wafer, see paragraph 0033);
a bidirectional switch (12) formed on the semiconductor substrate (SUB/GAN wafer of paragraph 0033) and including a first source node (S1), a second source node (S2) and a common drain node (node between G1 and G2);
a first transistor (TE1) formed on the semiconductor substrate (the devices of 12 and 14 are constructed on the same GAN wafer of paragraph 0033 and attached to SUB) the first transistor having a first source terminal (source connected to SUB), a first drain terminal (drain connected to V1) and a first gate terminal (connected to TD2), the first source terminal connected directly to the semiconductor substrate (the source is directly connected to SUB), the first drain terminal connected to the first source node (at V1 node) and the first gate terminal coupled to a first bias generator circuit (TD2);
a second transistor (TE2) formed on the semiconductor substrate (on SUB/same GAN wafer), the second transistor having a second source terminal (connected to SUB), a second drain terminal (connected to V2/S2) and a second gate terminal (connected to TD1), the second source terminal connected directly to the semiconductor substrate (directly connected to SUB), the second drain terminal connected to the second source node (at V2) and the second gate terminal coupled to a second bias generator circuit (TD1); and
wherein the first bias generator circuit comprises a third transistor (TD2) having a third source terminal (to the gate of TE1), a third drain terminal (connected to V2/S2) and a third gate terminal (gate at 20), the third drain terminal directly coupled to the second source node (at V2/S2) and the third source terminal directly coupled to the first gate terminal (source directly connected to gate of TE1) and
wherein the second bias generator circuit comprises a fourth transistor having (TD1) a fourth source terminal (at the gate of TE2), a fourth drain terminal (at V1/S1) and a fourth gate terminal (at 20), the fourth drain terminal directly coupled to the first source node (at S1/V2) and the fourth source terminal directly coupled to the second gate terminal (source directly connected to the gate of TE2).
With respect to claim 10, the electronic device of claim 9, wherein the second source node, the first bias generator circuit and the first transistor are arranged to couple the first source node to the semiconductor substrate in response to a voltage at the second source node being at a voltage that is higher than a voltage of the semiconductor substrate (the circuit operates as claimed see Fig. 2)
With respect to claim 11, the electronic device of claim 9, wherein when a voltage of the second source node is at a higher voltage than the first source node, the second bias generator circuit and the second transistor are arranged to couple the second source node to the semiconductor substrate in response to a voltage at the first source node being at a voltage that is higher than a voltage of the semiconductor substrate (the circuit operates as claimed see Fig. 3).
With respect to claim 14, the electronic device of claim 9, wherein the first and second bias generator circuits comprise depletion-mode field effect transistors (FETs) (TD2 and TD1 are depletion mode).
Claim 17 is rejected for essentially the same reasons as claim 9.
With respect to claim 18, the method of claim 17, wherein the semiconductor substrate comprises GaN (the substrate is a GaN wafer).
Claim 19 is rejected for the same reasons as claim 14.
Allowable Subject Matter
Claims 2 and 3 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1, 6-11 and 14-20 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 Thomas J. Hiltunen whose telephone number is (571)272-5525. The examiner can normally be reached 9:00AM-5:30PM EST M-F.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Menatoallah Youssef can be reached at 571-270-3684. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/THOMAS J. HILTUNEN/Primary Examiner, Art Unit 2849