DETAILED ACTION
This Office action is in response to the amendment filed 11 December 2025. By this amendment, claims 11 and 17 are amended; claims 12-13 are cancelled; claims 21-22 are new. Claims 11 and 14-22 are currently pending; claims 17-20 stand withdrawn.
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
Newly submitted claims 21-22 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
Invention II (newly submitted claims 21-22) and Invention I (claims 11 and 14-16) are related as combination and subcombination. Inventions in this relationship are distinct if it can be shown that (1) the combination as claimed does not require the particulars of the subcombination as claimed for patentability, and (2) that the subcombination has utility by itself or in other combinations (MPEP § 806.05(c)). In the instant case, the combination as claimed does not require the particulars of the subcombination as claimed because the combination does not require a first electrochemically-inactive electrode comprising tungsten and a second electrochemically-inactive electrode comprising tungsten. The subcombination has separate utility such as an individual device integrated in a circuit or in arrangements that do not include a crossbar array.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 21-22 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Response to Arguments
Applicant’s arguments with respect to amended claim 11 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.
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.
Claim 11 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2011/0038196 A1 to Tour et al. (hereinafter “Tour”).
Regarding claim 11, Tour (Fig. 3) discloses a physical unclonable function (“PUF”) device comprising (Examiner notes that the preamble merely states the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, thus is not considered a limitation and does not affect claim construction; MPEP § 2111.02(II)):
a first electrochemically-inactive electrode comprising tungsten 11 (¶ 0056);
a second electrochemically-inactive electrode comprising tungsten 13 (¶ 0056); and
a layer of silicon suboxide 13 (¶ 0056; ¶ 0044 - disclosing SiOx where 1 < x < 2) positioned directly between the first electrochemically-inactive electrode 11 and the second electrochemically-inactive electrode 13.
Claim Rejections - 35 USC § 103
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 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 14-16 are rejected under 35 U.S.C. 103 as being unpatentable over Tour.
Regarding claim 14, Tour discloses the PUF device of claim 11, wherein a thickness of the layer of silicon suboxide is between 4 nanometers and 8 nanometers (¶ 0062 - “thickness between about 5nm and about 1000nm”). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP § 2144.05(I).
Regarding claim 15, Tour discloses the PUF device of claim 11, wherein an x value of the layer of silicon suboxide is between 1.2 and 1.6 (¶ 0044 - disclosing SiOx where 1 < x < 2). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP § 2144.05(I).
Regarding claim 16, Tour discloses the PUF device of claim 11, wherein an x value of the layer of silicon suboxide is about 1.3 (¶ 0044 - disclosing SiOx where 1 < x < 2). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP § 2144.05(I).
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 Candice Y. Chan whose telephone number is (571)272-9013. The examiner can normally be reached 8:30 am - 5 pm ET.
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CANDICE Y. CHAN
Examiner
Art Unit 2813
29 April 2026
/STEVEN B GAUTHIER/Supervisory Patent Examiner, Art Unit 2813
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