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 .
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 1-3 and 5-8 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.
Claim 1 recites the limitation "each transistor of the plurality of transistors includes a (emphasis added) gate electrode" in line 3 of the claim. Claim 1 further recites “a (emphasis added) plurality of gate electrodes that includes the gate electrode of each transistor of the plurality of transistors, wherein gate electrodes of the plurality of gate electrodes” in lines 5-7. It is unclear whether the gate electrodes of the plurality of gate electrodes are the full extent of the plurality of gate electrodes such that the wherein clause is intended to limit solely the gate electrodes included in the plurality of transistors or a set of gate electrodes that are formed as part of the plurality of transistors and an additional set of gate electrodes. As there is a great deal of confusion and uncertainty as to the proper interpretation of the limitations of claim 1, it would not be proper for the examiner to reject such a claim on the basis of prior art. See MPEP § 706. 03.II (second) wherein In re Steele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962), a rejection under 35 U.S.C. 103 should not be based on considerable speculation about the meaning of terms employed in a claim or assumptions that must be made as to the scope of the claims. Claims 2, 3, and 5-8 depend from this claim and therefore inherit its deficiencies. The claims have not been rejected over the prior art because, in light of the 35 U.S.C. 112 rejections supra, there is sufficient uncertainty that it would not be proper to reject the claims on the basis of prior art. Amended claims 1-3 and 5-8 have not been examined on the merits. Appropriate action is required.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 VALERIE N NEWTON whose telephone number is (571)270-5015. The examiner can normally be reached M-F 8-5.
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, CHAD DICKE can be reached at (571) 270-7996. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/VALERIE N NEWTON/Examiner, Art Unit 2897 09/19/26
/CHAD M DICKE/Supervisory Patent Examiner, Art Unit 2897
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