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 of Species 11 (fig. 17) with claims 16-21, 23-24, 27-28 indicated by Applicant to read thereon, in the reply filed on 5/27/2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 1-15, 22 and 25-26 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention/species, there being no allowable generic or linking claim.
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 16-21, 23-24 and 27-28 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.
Re claim 16, the phrase “a first side surface connecting the first main surface and the second main surface and extending in a first direction along the first main surface” was not described in the original specification. The elected species 11 (fig. 17) appears to show the first side surface 25A connecting the first main surface 23 and the second main surface 24 and extending in a direction which crosses the first main surface.
Re claim 16, the phrase “an inclining portion which is formed at a connecting portion between the first main surface and the first side surface, and/or, at a connecting portion between the second main surface and the second side surface” was not described in the original specification. The elected species appears to show having a connecting portion between the first main surface and the second side surface.
Re claim 24, the phrase “wherein the modified layer is exposed from the first main surface or the second main surface so as to be flush with the first main surface or the second main surface” was not described in the original specification.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JACK CHEN whose telephone number is (571)272-1689. The examiner can normally be reached Monday to Friday, 8am to 4pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Yara J. Green can be reached at (571)270-3035. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JACK S CHEN/Primary Examiner, Art Unit 2893
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