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
This application contains claims directed to the following patentably distinct species:
Species I, as presented in at least Fig. 2
Species II, as presented in at least Fig. 4
Species III, as presented in at least Fig. 5
Species IV, as presented in at least Fig. 8
Species V, as presented in at least Fig. 9
Species VI, as presented in at least Fig. 11
The species are independent or distinct because each comprises a mutually exclusive field plate connectivity and/or gate connectivity. In addition, these species are not obvious variants of each other based on the current record.
Applicant is required under 35 U.S.C. 121 to elect a single disclosed species, or a single grouping of patentably indistinct species, for prosecution on the merits to which the claims shall be restricted if no generic claim is finally held to be allowable. Currently, no claims are generic to all of the above listed species.
There is a serious search and/or examination burden for the patentably distinct species as set forth above because at least the following reason(s) apply:
As listed above, the species possess mutually exclusive characteristics, and these mutually exclusive characteristics require mutually exclusive fields of search (e.g. different classes/subclasses, electronic resources, text strings, NPL, etc.); and/or the prior art applicable to one species would not likely be applicable to another species; and/or the species are likely to raise different issues in prosecution, including but not limited to 35 U.S.C. 112(a), 35 U.S.C. 102, and 35 U.S.C. 103.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of a species to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected species or grouping of patentably indistinct species, including any claims subsequently added. An argument that a claim is allowable or that all claims are generic is considered nonresponsive unless accompanied by an election.
The election may be made with or without traverse. To preserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the election of species requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable on the elected species or grouping of patentably indistinct species.
Should applicant traverse on the ground that the species, or groupings of patentably indistinct species from which election is required, are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing them 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 species 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 species.
Upon the allowance of a generic claim, applicant will be entitled to consideration of claims to additional species which depend from or otherwise require all the limitations of an allowable generic claim as provided by 37 CFR 1.141.
During a telephone conversation with Stephen Soffen on 10 December 2025 a provisional election was made without traverse to prosecute the invention of Species III. Affirmation of this election must be made by applicant in replying to this Office action. Claim 9 & 11 withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Regarding Claim 9, this claim recites the limitation “a diode or gate-to-source connected FET electrically connected between the substrate and the gate”. And, this limitation does not describe the electrical connection between the substrate and the gate of the elected species presented in Fig. 5. However, this limitation does describe the electrical connection between the substate and the gate of the nonelected species presented in Fig. 4.
Regarding Claim 11, this claim recites the limitation “a diode or gate-to-source connected FET electrically connected between the substrate and the gate”. And, this limitation does not describe the electrical connection between the substrate and the gate of the elected species presented in Fig. 5. However, this limitation does describe the electrical connection between the substate and the gate of the nonelected species presented in Fig. 4.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on the dates below have been considered by the Examiner:
18 October 2023
20 March 2024
22 July 2024
22 August 2024
30 March 2025
10 December 2025
Claim Rejections - 35 USC § 112
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 1 – 12 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.
Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999).
Regarding Claim 1,
Lin. 8 – 9 recites the term “a source without a pin-out”, which is used by this claim to mean “an extra electrode, wherein the extra electrode does not source or drain the associated current of the three-terminal bidirectional GaN FET switch, and the voltage of the extra electrode is dependent upon at least one the three terminals of the three-terminal bidirectional GaN FET switch” while the accepted meaning is “a source without an electrical connection exterior to the associated device’s package”.
The term is indefinite because the specification does not clearly redefine the term. Further, this leads to a lack of clarity, as a person having ordinary skill in the art would understand the instant disclosure does not have support for a packaged device for the elected species. That is, a person having ordinary skill in the art would understand the instant disclosure does not have support for any electrode—source or otherwise—to have a pin-out, making this language appear simultaneously vacuous and limiting and, thus, indefinite.
Lin. 1 – 6 recites the limitation “a three-terminal bidirectional GaN FET switch with a single gate, comprising: a first sub-switch…wherein: the first sub-switch comprises a single gate GaN field effect transistor (FET) having first and second power electrodes and a gate”, and this claim appears to treat the following elements cited therein as different elements:
the three terminals of “the three-terminal bidirectional GaN FET switch with the single gate”;
“the first and second power electrodes and the gate” of “the first sub-switch”.
However, Fig. 5 & 6 of the elected species appear to disclose that these elements are one and the same. Therefore, it is not clear if the claim is referring to these elements as being different or one and the same, making this claim indefinite.
Lin. 1 – 10 recites the limitation “a three-terminal bidirectional GaN FET switch with a single gate, comprising: a first sub-switch, a second sub-switch…wherein: the first sub-switch comprises a single gate GaN field effect transistor (FET) having…a gate…; the second sub-switch comprises…a common gate”, and this claim appears to treat the following elements cited therein as different elements:
the singe gate of “the three-terminal bidirectional GaN FET switch with the single gate”;
the single gate of “the single gate GaN FET” of “the first sub-switch”;
the gate of “the first sub-switch”;
the common gate of “the second sub-switch”.
However, Fig. 5 & 6 of the elected species appear to disclose that these elements are one and the same. Therefore, it is not clear if the claim is referring to these elements as being different or one and the same, making this claim indefinite.
Lin. 7 recites the term “a first GaN FET”, which is used by this claim to mean “a first source/drain electrode—which may or may not source/drain the associated current of the first GaN FET—a first drain/source electrode—which may or may not drain/source the associated current of the first GaN FET—and a first gate electrode” while the accepted meaning is less general: “a first source/drain electrode—which sources/drains the associated current of the first GaN FET—a first drain/source electrode—which drains/sources the associated current of the first GaN FET—and a first gate electrode”.
The term is indefinite because the specification does not clearly redefine the term. Further, this leads to a lack of clarity, as Fig. 5 & 6 of the elected species appear to disclose either the “first source/drain electrode” or the “first drain/source electrode” referred to herein does not source or drain the associated current of the first GaN FET.
Lin. 7 recites the term “a second GaN FET”, which is used by this claim to mean “a second source/drain electrode—which may or may not source/drain the associated current of the second GaN FET—a second drain/source electrode—which may or may not drain/source the associated current of the second GaN FET—and a second gate electrode” while the accepted meaning is less general: “a second source/drain electrode—which sources/drains the associated current of the second GaN FET—a second drain/source electrode—which drains/sources the associated current of the second GaN FET—and a second gate electrode”.
The term is indefinite because the specification does not clearly redefine the term. Further, this leads to a lack of clarity, as Fig. 5 & 6 of the elected species appear to disclose either the “second source/drain electrode” or the “second drain/source electrode” referred to herein does not source or drain the associated current of the second GaN FET.
Regarding Claims 2 – 6,
These claims are rejected from their dependence on Claim 1.
Regarding Claim 3,
Lin. 1 – 4 recites the limitation “the three-terminal bidirectional GaN FET switch of claim 1, further comprising respective diodes or gate-to-source connected FETs”, and this claim appears to treat the following elements cited therein as different elements:
“respective diodes or gate-to-source connected FETs” of “the three-terminal bidirectional GaN FET switch”;
“the first GaN FET” and/or “the second GaN FET” of the “the second sub-switch”.
However, Fig. 5 & 6 of the elected species appear to disclose that these elements are one and the same. Therefore, it is not clear if the claim is referring to these elements as being different or one and the same, making this claim indefinite.
Regarding Claim 4,
This claim is rejected based upon its dependence on Claim 3.
Lin. 1 – 3 recites the limitation “the three-terminal bidirectional GaN FET switch of claim 3, further comprising a diode or gate-to-source connected FET”, and this claim appears to treat the following elements cited therein as different elements:
“a diode or gate-to-source connected FET” of “the three-terminal bidirectional GaN FET switch”;
“the first GaN FET” and/or “the second GaN FET” of the “the second sub-switch”.
However, Fig. 5 & 6 of the elected species appear to disclose that these elements are one and the same. Therefore, it is not clear if the claim is referring to these elements as being different or one and the same, making this claim indefinite.
Regarding Claim 7,
Lin. 1 – 3 recites the limitation “a three-terminal bidirectional GaN FET switch with a single gate, comprising: first and second power electrodes; a gate”, and this claim appears to treat the following elements cited therein as different elements:
the three terminals of “the three-terminal bidirectional GaN FET switch with the single gate”;
“the first and second power electrodes” and “the gate” of “the three-terminal bidirectional GaN FET switch with the single gate”.
However, Fig. 5 & 6 of the elected species appear to disclose that these elements are one and the same. Therefore, it is not clear if the claim is referring to these elements as being different or one and the same, making this claim indefinite.
Lin. 1 – 3 recites the limitation “a three-terminal bidirectional GaN FET switch with a single gate, comprising: first and second power electrodes; a gate”, and this claim appears to treat the following elements cited therein as different elements:
the singe gate of “the three-terminal bidirectional GaN FET switch with the single gate”;
the gate of “the three-terminal bidirectional GaN FET switch with the single gate”
However, Fig. 5 & 6 of the elected species appear to disclose that these elements are one and the same. Therefore, it is not clear if the claim is referring to these elements as being different or one and the same, making this claim indefinite.
Regarding Claim 8,
This claim is rejected from its dependence on Claim 7.
Regarding Claim 10,
Lin. 1 – 3 recites the limitation “a three-terminal bidirectional GaN FET switch with a single gate, comprising: first and second power electrodes; a gate”, and this claim appears to treat the following elements cited therein as different elements:
the three terminals of “the three-terminal bidirectional GaN FET switch with the single gate”;
“the first and second power electrodes” and “the gate” of “the three-terminal bidirectional GaN FET switch with the single gate”.
However, Fig. 5 & 6 of the elected species appear to disclose that these elements are one and the same. Therefore, it is not clear if the claim is referring to these elements as being different or one and the same, making this claim indefinite.
Lin. 1 – 3 recites the limitation “a three-terminal bidirectional GaN FET switch with a single gate, comprising: first and second power electrodes; a gate”, and this claim appears to treat the following elements cited therein as different elements:
the singe gate of “the three-terminal bidirectional GaN FET switch with the single gate”;
the gate of “the three-terminal bidirectional GaN FET switch with the single gate”
However, Fig. 5 & 6 of the elected species appear to disclose that these elements are one and the same. Therefore, it is not clear if the claim is referring to these elements as being different or one and the same, making this claim indefinite.
Regarding Claim 12,
Lin. 1 – 3 recites the limitation “a three-terminal bidirectional GaN FET switch with a single gate, comprising: first and second power electrodes; a gate”, and this claim appears to treat the following elements cited therein as different elements:
the three terminals of “the three-terminal bidirectional GaN FET switch with the single gate”;
“the first and second power electrodes” and “the gate” of “the three-terminal bidirectional GaN FET switch with the single gate”.
However, Fig. 5 & 6 of the elected species appear to disclose that these elements are one and the same. Therefore, it is not clear if the claim is referring to these elements as being different or one and the same, making this claim indefinite.
Lin. 1 – 3 recites the limitation “a three-terminal bidirectional GaN FET switch with a single gate, comprising: first and second power electrodes; a gate”, and this claim appears to treat the following elements cited therein as different elements:
the singe gate of “the three-terminal bidirectional GaN FET switch with the single gate”;
the gate of “the three-terminal bidirectional GaN FET switch with the single gate”
However, Fig. 5 & 6 of the elected species appear to disclose that these elements are one and the same. Therefore, it is not clear if the claim is referring to these elements as being different or one and the same, making this claim indefinite.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 20150014701 A1 & US 20170103978 A1
These references are included in the IDS filed 20 March 2024 and disclose devices that appear to be nearly equivalent to Applicant’s disclosed device, as all are structurally a three-terminal GaN FET with a field plate, wherein the three-terminals consist of a source electrode, a drain electrode, and a gate electrode, and wherein the field plate is shorted to an extra electrode. As Applicant does not specify which electrodes are held at what potentials, the analogous structural connectivity of the referenced devices may precipitate in the prior art rejection of the instant claims.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kenneth S. Stephenson whose telephone number is (571)272-6686. The examiner can normally be reached Monday through Friday, 9 A.M. to 5 P.M. (EST)..
Examiner interviews are available via telephone and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview—preferably at 4 P.M. (EST)—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, Julio Maldonado can be reached at (571) 272-1864. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/K.S.S./Examiner, Art Unit 2898
/JULIO J MALDONADO/ Supervisory Patent Examiner, Art Unit 2898