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
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 2-29 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-33 of U.S. Patent No. 11,948,847. Although the claims at issue are not identical, they are not patentably distinct from each other because both applications claim the “same invention”. Specifically, at least claim 2 of this application is a generic claim of a patented species claim 1 of U.S. Patent No. 11,948,847. A species (narrow) claim is said to anticipate a generic (broad) claim thus double patenting exists.
Regarding claim 2, claim 1 of 11,948,847 anticipates all limitations of the claim.
Regarding claim 3, claim 2 of 11,948,847 anticipates all limitations of the claim.
Regarding claim 4, claim 3 of 11,948,847 anticipates all limitations of the claim.
Regarding claim 5, claim 4 of 11,948,847 anticipates all limitations of the claim.
Regarding claim 6, claim 5 of 11,948,847 anticipates all limitations of the claim.
Regarding claim 7, claim 6 of 11,948,847 anticipates all limitations of the claim.
Regarding claim 8, claim 10 of 11,948,847 anticipates all limitations of the claim.
Regarding claim 9, claim 10 of 11,948,847 anticipates all limitations of the claim.
Regarding claim 10, claim 7 of 11,948,847 anticipates all limitations of the claim.
Regarding claim 11, claim 12 of 11,948,847 anticipates all limitations of the claim.
Regarding claim 12, claim 12 of 11,948,847 anticipates all limitations of the claim.
Regarding claim 13, claim 8 of 11,948,847 anticipates all limitations of the claim.
Regarding claim 14, claim 9 of 11,948,847 anticipates all limitations of the claim.
Regarding claim 15, claim 1 of 11,948,847 anticipates all limitations of the claim.
Regarding claim 16, claim 1 of 11,948,847 anticipates all limitations of the claim.
Regarding claim 17, claim 22 of 11,948,847 anticipates all limitations of the claim.
Regarding claim 18, claim 22 combined with claim 17 of 11,948,847 anticipates all limitations of the claim.
Regarding claim 19, claim 22 combined with claim 18 of 11,948,847 anticipates all limitations of the claim.
Regarding claim 20, claim 22 combined with claim 19 of 11,948,847 anticipates all limitations of the claim.
Regarding claim 21, claim 22 combined with claim 20 of 11,948,847 anticipates all limitations of the claim.
Regarding claim 22, claim 22 of 11,948,847 anticipates all limitations of the claim.
Regarding claim 18, claim 22 combined with claim 17 of 11,948,847 anticipates all limitations of the claim.
Regarding claim 23, claim 22 combined with claim 27 of 11,948,847 anticipates all limitations of the claim.
Regarding claim 24, claim 22 combined with claim 21 of 11,948,847 anticipates all limitations of the claim.
Regarding claim 26, claim 22 combined with claim 21 of 11,948,847 anticipates all limitations of the claim.
Regarding claim 27, claim 22 combined with claim 24 of 11,948,847 anticipates all limitations of the claim.
Regarding claim 28, claim 22 combined with claim 29 of 11,948,847 anticipates all limitations of the claim.
Regarding claim 29, claim 22 combined with claim 25 of 11,948,847 anticipates all limitations of the claim.
Claim 25 is rejected based upon its dependency.
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(s) 2-4, 10, 13 and 14 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Richardson et al. (WO2006/100444).
Regarding claim 2, Richardson teaches a method of forming a bonded structure, the method comprising:
providing a first element having a first bonding surface and an opening disposed through a portion of the first bonding surface and extending around an integrated device coupled to or formed with the first element [figs. 3a and 3b, first element 300 with a bonding surface, opening 302, fig. 4b shows device coupled to first element with opening disposed around device];
disposing a getter material in the opening [fig. 4b getter G]; and
bonding a second bonding surface of a second element to the first bonding surface of the first element such that the opening and a portion of the second element cooperate to define a space to receive the getter material [fig. 4b, second bonding surface of element 402 bonded to first element 404 to define a space for G].
Regarding claim 3, Richardson discloses the method of claim 2, wherein the opening comprises a trench and the space comprises a channel [fig. 3b the opening 302 can be considered a trench, fig. 4b shows the trench and space between 402 and 404 comprising a channel].
Regarding claim 4, Richardson teaches the method of claim 3, wherein the channel comprises a plurality of channel portions around the integrated device, the channel defining an effectively closed profile around the integrated device [fig. 3a shows the trench extends around the first element in a square, each face of the square can be considered a portion, after bonding in fig. 4b, this would be a channel with a closed profile around the device].
Regarding claim 10, Richardson discloses the method of claim 2, wherein the opening is provided by etching the first element from the first bonding surface to form a plurality opening portions around the integrated device [figs. 3a and 3b show an opening is formed from the bonding surface around the region where a device is to be bonded, pg. 10, second paragraph teaches the element is etched to form 302].
Regarding claim 13, Richardson teaches the method of claim 2, further comprising defining a cavity between the first element and the second element, wherein the integrated device is disposed in the cavity [fig. 4b, cavity is the space between 404 and 402, the device is within that space].
Regarding claim 14, Richardson discloses the method of claim 13, wherein the opening with the getter material extends around the integrated device in an effectively closed profile [fig. 4b, the getter is in opening in 404 and extends around the device in a closed profile].
Claim Rejections - 35 USC § 103
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.
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Richardson as applied to claims 2-4, 10, 13 and 14 above, and further in view of Enquist et al. (US Pat. #7,622,324).
Regarding claim 15, Richardson fails to teach the second bonding surface of the second element is directly bonded to the first bonding surface of the first element.
However, Enquist teaches bonding first and second surfaces to create a hermetic cavity by direct bonding [fig. 9c and 9d, columns 5 and 6, lines 35-67 and 1-55 respectively].
It would have been obvious to one of ordinary skill in the art at the time of the invention to incorporate the teachings of Enquist into the method of Richardson by using a direct bonding process to directly bond the first bonding surface of the first element to the second bonding surface of the second element. The ordinary artisan would have been motivated to modify Richardson in the manner set forth above for at least the purpose of utilizing a technique which promotes high strength bonding at near room temperatures without the need for anneals or foreign adhesives [Enquist, column 6, lines 16-21].
Allowable Subject Matter
2-4, 10, 13-15
Claims 17-29 are rejected under double patenting but are believed to be allowable if said double patenting rejection was overcome.
Claims 5-9, 11,12 and 16 are rejected under double patenting above but are believed to contain allowable subject matter if said rejection was overcome and if rewritten in independent form including all 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 JOHN M PARKER whose telephone number is (571)272-8794. The examiner can normally be reached M-F 7:30am - 3:30pm.
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/JOHN M PARKER/ Primary Examiner, Art Unit 2899
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