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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Election/Restrictions
Claims 11-12 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 10/23/2025.
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.
Claim 1, 6-9 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1, 3, 5, 7, 9 of U.S. Patent No. 12,023,931. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the claims are substantially similar.
Allowable Subject Matter
Claims 2-5 and 10 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.
The following is a statement of reasons for the indication of allowable subject matter: The primary reason for the allowance of claim(s) 2 is the inclusion of the method for manufacturing a liquid ejection head that includes the method step of cutting a wafer along a plurality of cutting lines, wherein the plurality of cutting lines correspond to an outline of each of a plurality of element substrates. It is this step found in the claims, as it is claimed in the combination, that has not been found, taught, or suggested by the prior art of record, which makes these claims allowable over the prior art.
The primary reason for the allowance of claims 3-5 is the inclusion of the method for manufacturing a liquid ejection head that includes the method step of forming a recessed portion, wherein the recessed portion corresponds only to a first cutting line in at an intersection portion. It is this step found in the claims, as it is claimed in the combination, that has not been found, taught, or suggested by the prior art of record, which makes these claims allowable over the prior art.
The primary reason for the allowance of claim(s) 10 is the inclusion of the method for manufacturing a liquid ejection head that includes the method step of cutting a wafer along a plurality of cutting lines, wherein the plurality of cutting lines by cutting the wafer along a first cutting line by a dicing blade and cutting the wafer along a second cutting line by stealth dicing. It is this step found in the claims, as it is claimed in the combination, that has not been found, taught, or suggested by the prior art of record, which makes these claims allowable over the prior art.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. United States Patent Application Publication No. (8,108,998) to Inada et al. (hereinafter Inada et al.).
Regarding Claim 1, Inada et al. teaches a method for manufacturing a liquid ejection head (see Fig. 1C) including an element substrate (1, Fig. 1C) having an ejection port forming member (3, Fig. 1C) including an ejection port (not shown in Figures) for ejecting liquid and an energy generating element (not shown in Figures) for supplying energy for ejecting the liquid to the ejection port (not shown in Figures) [Column 4 lines 34-56], the method comprising: preparing a wafer (10, Figs. 1A-1B) having the energy generating element (not shown in Figures) and the ejection port forming member (3) on a first surface [Column 4 lines 34-43]; forming a recessed portion (11a, see Figs. 1a and 2); and cutting the wafer along a plurality of cutting lines (C1, C2, Fig. 1A) provided on the first surface to form a plurality of element substrates (1), wherein the plurality of cutting lines (C1, C2) includes a first cutting line (C1) extending in a first direction and a second cutting line (C2) extending in a second direction intersecting the first cutting line (C1), wherein, when viewed from a direction perpendicular to the first surface of the wafer, the recessed portion (11a) is formed at a position overlapping the plurality of cutting lines (C1, C2) [Column 3 line 46 -Column 4 line 33].
Inada et al. fails to teach forming a recessed portion in a second surface which is a surface opposite to the first surface of the wafer, the recessed portion is formed at a position overlapping the plurality of cutting lines except in an intersection portion of the first cutting line and the second cutting line, and wherein, in the intersection portion, the recessed portion is formed corresponding to only one of the first cutting line and the second cutting line
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LISA SOLOMON whose telephone number is (571)272-1701. The examiner can normally be reached Monday - Friday, 9:30am -6pm, EST.
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/LISA SOLOMON/Primary Examiner, Art Unit 2853