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 .
Claims 1-20 are presented for examination.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 20 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 20 recites that the "gate structure is separated from the insulating dielectric layer by the channel sheath." However, claim 17, lines 10-11 establish this structural arrangement. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claims 1, 2, 4-6, 8, 9, 11, 17, and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 16-20 of U.S. Patent No. 11,869,949 (hereinafter USPatent1). Although the claims at issue are not identical, they are not patentably distinct from each other because
As to claim 1: Claim 16 of USPatent1 discloses all limitations of claim 1.
As to claim 2: Claim 17 of USPatent1 discloses all limitations of claim 2.
As to claim 4: Claim 19 of USPatent1 discloses all limitations of claim 4.
As to claim 5: Claim 20 of USPatent1 discloses all limitations of claim 5.
As to claim 6: Claim 18 of USPatent1 discloses all limitations of claim 6.
As to claim 8: Claim 16 of USPatent1 discloses all limitations of claim 8.
As to claim 9: Claim 19 of USPatent1 discloses all limitations of claim 9.
As to claim 11: Claim 20 of USPatent1 discloses all limitations of claim 11.
As to claim 17: Claim 1 of USPatent1 discloses all limitations of claim 17.
As to claim 20: Claim 1 of USPatent1 discloses all limitations of claim 20.
Claims 1, 2, 4-6, 8, 9, 11, 17, and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 7 and 16-20 of U.S. Patent No. 11,411,089 (hereinafter USPatent2).
As to claim 1: Claim 16 of USPatent2 discloses all limitations of claim 1 except that the insulating dielectric layer is formed on a semiconductor substrate. However, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to place the semiconductor device on a semiconductor substrate in order to provide a surface on which processing of layers can be performed.
As to claim 2: Claim 17 of USPatent2 discloses all limitations of claim 2.
As to claim 4: Claim 19 of USPatent2 discloses all limitations of claim 4.
As to claim 5: Claim 20 of USPatent2 discloses all limitations of claim 5.
As to claim 6: Claim 18 of USPatent2 discloses all limitations of claim 6.
As to claim 8: Claim 16 of USPatent2 discloses all limitations of claim 8 except that the insulating dielectric layer is formed on a semiconductor substrate. However, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to place the semiconductor device on a semiconductor substrate in order to provide a surface on which processing of layers can be performed.
As to claim 9: Claim 19 of USPatent2 discloses all limitations of claim 9.
As to claim 11: Claim 20 of USPatent2 discloses all limitations of claim 11.
As to claim 17: Claim 1 of USPatent2 discloses all limitations of claim 17 except that the insulating dielectric layer is formed on a semiconductor substrate. However, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to place the semiconductor device on a semiconductor substrate in order to provide a surface on which processing of layers can be performed.
As to claim 20: Claim 1 of USPatent2 discloses all limitations of claim 20.
Allowable Subject Matter
Claims 3, 7, 10, 12-16, 18, and 19 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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH C NICELY whose telephone number is (571)270-3834. The examiner can normally be reached Monday-Friday 7:30 am - 4 pm, EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Steven Gauthier can be reached at (571) 270-0373. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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JOSEPH C. NICELY
Primary Examiner
Art Unit 2813
/JOSEPH C. NICELY/ Primary Examiner, Art Unit 2813
1/7/2026