Acknowledgment
The amendment filed on May 4, 2026 responding to the Office Action mailed on February 13, 2026 has been entered. This Office Action fully considers the amendments to the pending application in which claims 1 to 20 are pending.
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 .
Response to Arguments
In order to be entitled to reconsideration or further examination, the applicant or patent owner must reply to the Office action. The reply by the applicant or patent owner must be reduced to a writing which distinctly and specifically points out the supposed errors in the examiner's action and must reply to every ground of objection and rejection in the prior Office action. See MPEP 714.02.
Applicant asserts amendment of claim 1 was suggested or endorsed by Examiner. Applicant misspends Examiner’s critique of proposed and current amendment to claim 1. Examiner notes that product by processes depend upon patentability of the product not the method. Examiner does not recall suggesting the amended subject matter of claim 1. In any event, Applicant was challenged, again, to come forward with evidence of distinct structure resulting from a delayed oxidation of the intermediate layer. Tellingly, Applicant does not respond to the challenge and Examiner is no better position to do so.
Notation
References to patents will be in the form of [C:L] where C is the column number and L is the line number. References to pre-grant patent publications will be to the paragraph number in the form of [xxxx].
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 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1 and 3-9 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over U.S. 2015/0236253 (Whig).
PNG
media_image1.png
398
300
media_image1.png
Greyscale
Regarding claim 1 and referring to annotated Figure 2, Whig discloses a magneto-resistive stack, 200 [0035], comprising:
a fixed magnetic region, 209/210/212 [0035], wherein the fixed magnetic region includes a reference layer 209 [0035, 40];
an interfacial layer, 218 [0040] e.g., 5A [0036], disposed above the reference layer, as shown, the interfacial layer including cobalt (Co) [0040];
an intermediate layer, 206 [0038], including one or more oxidized layers, MgO, disposed above the interfacial layer, as shown; and
a free magnetic region, 204 [0035], disposed above the intermediate layer, as shown.
Whig is silent as to the oxidation process of the intermediate layer. However, Examiner takes the position that even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 698 (Fed. Cir. 1985). The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product. In re Garnero, 412 F.2d 276, 279 (CCPA 1979). Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802 (Fed. Cir. 1983). See MPEP 2113.
Here Whig teaches the intermediate layer is an oxidized layer, MgO. Applicant is requested to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product.
Regarding claim 3 which depends upon claim 1, Whig teaches the reference layer, 209, includes one or more elements with an electronegativity greater than the electronegativity of iron (Fe), e.g. boron [0035, 40].
Regarding claim 4 which depends upon claim 1, Whig teaches the interfacial layer has a thickness ranging from approximately 0.5 angstrom (Å) to approximately 5 Å at [0036].
Regarding claim 5 which depends upon claim 1, Whig teaches the interfacial layer, 218, is disposed on and in contact with the reference layer, 209, as shown in Figure 2, and wherein the intermediate layer, 206, is disposed on and in contact with the interfacial layer, as shown.
Regarding claim 6 which depends upon claim 1, Whig teaches the intermediate layer includes a tunnel barrier, the tunnel barrier including magnesium oxide (MgOx) [0038], see also Figure 5.
Regarding claim 7 which depends upon claim 6, Whig teaches the intermediate layer has a thickness ranging from approximately 8 Å to approximately 20 Å at [0038], i.e. 3 times 1 to 10 angstroms of metal that is oxidized.
Regarding claim 8 which depends upon claim 1, Whig teaches the interfacial layer consists of cobalt (Co) at [0040].
Regarding claim 9 which depends upon claim 8, Whig teaches the reference layer, 209, of the fixed magnetic region includes cobalt (Co), iron (Fe), and boron (B) at [0035].
Claims 1-2, 6 and 8 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over U.S. 2021/0159393 (Law).
Regarding claim 1 and referring to annotated Figure 2A, Law discloses a magneto-resistive stack, 100 [0024], comprising:
PNG
media_image2.png
511
905
media_image2.png
Greyscale
a fixed magnetic region, 110 [0038], wherein the fixed magnetic region includes a reference layer 110 [0038];
an interfacial layer, 216 [0040], disposed above the reference layer, as shown, the interfacial layer including cobalt (Co) [0040];
an intermediate layer, 120 e.g., MgO [0032], disposed above the interfacial layer, as shown; and
a free magnetic region, 130 [0024], disposed above the intermediate layer, as shown.
Law is silent as to the oxidation process of the intermediate layer. However, Examiner takes the position that even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 698 (Fed. Cir. 1985). The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product. In re Garnero, 412 F.2d 276, 279 (CCPA 1979). Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802 (Fed. Cir. 1983). See MPEP 2113.
Here Law teaches the intermediate layer is an oxidized layer, MgO. Applicant is requested to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product.
Regarding claim 2 which depends upon claim 1, Law teaches the fixed magnetic region further includes: a first magnetic region, 112 [0038]; a coupling layer, 113 [0037] disposed on and in contact with the first magnetic region, as shown; a second magnetic region, 114 [0038], disposed on and in contact with the coupling layer, as shown; and a transition layer, 215 [0039], disposed above the second magnetic region, as shown.
Regarding claim 6 which depends upon claim 1, Law teaches the intermediate layer includes a tunnel barrier, the tunnel barrier including magnesium oxide (MgOx) [0032].
Regarding claim 8 which depends upon claim 1, Law teaches the interfacial layer consists of cobalt (Co) at [0040].
Allowable Subject Matter
Claims 10-20 are allowed.
The following is an examiner’s statement of reasons for allowance:
Regarding claim 10, the prior art fails to disclose the method of claim 10 wherein forming the intermediate layer includes (a) depositing a layer of oxidizable material on or above the interfacial layer, and (b) oxidizing the deposited layer of oxidizable material to form a layer of oxidized material, wherein a delay of time is introduced after step (a) but before step (b), i.e. the deposition and oxidation are done at least three times in sequence.
Claims 11-17 depend directly or indirectly on claim 10 and are allowable on that basis.
Regarding claim 18 the prior art fails to disclose the method of claim 18, wherein forming the intermediate layer includes introducing a time delay to oxidize at least a portion of the intermediate layer.
Claims 19-20 depend directly or indirectly on claim 18 and are allowable on that basis.
Conclusion
THIS ACTION IS MADE FINAL. 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 Joe Schoenholtz whose telephone number is (571)270-5475. The examiner can normally be reached M-Thur 7 AM to 7 PM PST.
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, Ms. Yara Green can be reached at (571) 272-3035. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/J.E. Schoenholtz/Primary Examiner, Art Unit 2893
Prosecution Insights