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 .
DETAILED ACTION
Election/Restrictions
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group 1, claim(s) 1-8, 16-18, drawn to a quantum cascade laser element.
Group 2, claim(s) 9-15, drawn to another quantum cascade laser element.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons.
MPEP 1850 teaches: “Where a group of inventions is claimed, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving corresponding special technical features. The expression "special technical features" shall mean those technical features that define a contribution which each of the claimed inventions makes over the prior art.”
The special technical feature shared by both groups is “a semiconductor superlattice structure; and a pair of electrodes having the semiconductor superlattice structure sandwiched between them, wherein the semiconductor superlattice structure has an active region that emits electromagnetic waves of a certain frequency in the THz range under an external voltage applied through the pair of electrodes for operation, wherein the active region has a plurality of unit structures that are stacked repeatedly, wherein each unit structure has a quantum well structure comprising a plurality of well layers separated from each other by a barrier layer”. However, this type of quantum cascade laser is well known in the art as evidenced by references cited in IDS2 and therefore cannot be considered as a special technical feature that defines a contribution made over the prior art.
For these reasons Group 1 and Group 2 do not share a special technical feature.
During a telephone conversation with Kevin Morgan on 06/12/26 a provisional election was made with traverse to prosecute the invention of Group 1, claims 1-8, 16-18. The traversal is on the grounds that searching both groups would not present a serious burden. This is not found persuasive because the applicant did not state on the record that the groups are obvious variants of each other. Affirmation of this election must be made by applicant in replying to this Office action. Accordingly, claims 9-15 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention, there being no allowable generic or linking claim.
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
WHEN CLAIMS ARE DIRECTED TO MULTIPLE CATEGORIES OF INVENTIONS
As provided in 37 CFR 1.475(b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475(c).
Applicant is advised that the reply to this requirement to be complete must include (i) an election of a species or invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention or species 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 restriction 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 invention or species.
Should applicant traverse on the ground that the inventions have unity of invention (37 CFR 1.475(a)), applicant must provide reasons in support thereof. Applicant may submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. Where such evidence or admission is provided by applicant, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103(a) of the other invention.
Applicant is reminded that upon the cancellation of claims to a non-elected invention, the inventorship must be amended in compliance with 37 CFR 1.48(b) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. Any amendment of inventorship must be accompanied by a request under 37 CFR 1.48(b) and by the fee required under 37 CFR 1.17(i).
The examiner has required restriction between product and process claims. Where applicant elects claims directed to the product, and the product claims are subsequently found allowable, withdrawn process claims that depend from or otherwise require all the limitations of the allowable product claim will be considered for rejoinder. All claims directed to a nonelected process invention must require all the limitations of an allowable product claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product are found allowable, an otherwise proper restriction requirement between product claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product claim will not be rejoined. See MPEP § 821.04(b). Additionally, in order to retain the right to rejoinder in accordance with the above policy, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product claims. Failure to do so may result in a loss of the right to rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Drawings
Figures 2A, 2B, 3A and 4A should be designated by a legend such as --Prior Art-- because only that which is old is illustrated, as evidenced by references cited in the IDS. See MPEP § 608.02(g). Corrected drawings in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. The replacement sheet(s) should be labeled “Replacement Sheet” in the page header (as per 37 CFR 1.84(c)) so as not to obstruct any portion of the drawing figures. If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 1-8, 16-18 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, at the time the application was filed, had possession of the claimed invention.
1) Claim 1 discloses a limitation “each unit structure has a quantum well structure comprising a plurality of well layers separated from each other by a barrier layer”. The limitation “plurality” can be properly interpreted as “two, three, four … infinity”. However, the specification clearly discloses that the invention is directed to a two-quantum well configuration. There is no description in the specification of how to apply this invention to three or more quantum wells in each unit structure. Furthermore, it is not physically possible to separate three quantum wells from each other with a single barrier layer.
In order to overcome this rejection, claim 1 should be amended to recite “each unit structure has a quantum well structure comprising two quantum well layers separated from each other by a barrier layer”.
2) Claim 8 discloses a limitation “material of semiconductors forming the semiconductor superlattice structure is GaAs—InGaAs system, and the energy difference is 116 meV or more.” However, the specification clearly discloses that the energy difference of 116 meV or more is achieved in a GaN—AlGaN system, see paragraph 0064 of the PGPub.
The remainder of the claims are rejected for their dependence on claim 1.
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.
Claims 1, 2, 4-6, 16-18 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, regards as the invention.
Claim 1 discloses a limitation “an isolated three-level structure”. It is not clear what is meant by this limitation, it is not clear what the three-level structure is and what it is isolated from. Furthermore, the claim already discloses several other structures (superlattice structure, unit structure, quantum well structure, subband structure) making it unclear if and how the three-level structure is related to the other structures.
In order to overcome this rejection, claim 3 should be incorporated into claim 1.
The remainder of the claims are rejected for their dependence on claim 1. For the purpose of examination, the limitations as presented have been searched and considered.
Claim Rejections - 35 USC § 102
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.
Claims 1, 3 and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Albo et al. (Two-well THz quantum cascade lasers with suppressed carrier leakage) found in IDS, hereinafter Ref 1.
Figs 1, 4 and 5 of Ref 1 disclose a quantum cascade laser element comprising:
1. “a semiconductor superlattice structure; and a pair of electrodes having the semiconductor superlattice structure sandwiched between them (see Tables I, II device HB2, Fig 4 showing the band diagram of HB2, Fig 5 showing current voltage measurement of HB2 implying the existence of a pair of electrodes, Tables I, II disclosing top and bottom metallization and top contact n+ layers),
wherein the semiconductor superlattice structure has an active region that emits electromagnetic waves of a certain frequency in the THz range under an external voltage applied through the pair of electrodes for operation (see page 4, col. 1, end of 1st paragraph “Device HB2 demonstrates lasing with the lowest oscillator strength so far reported for THz-QCLs (f~0.18)”, Fig 5 discloses 2.6 THz),
wherein the active region has a plurality of unit structures that are stacked repeatedly, wherein each unit structure has a quantum well structure comprising a plurality of well layers separated from each other by a barrier layer (see Fig 4 showing 2 units, each unit comprising 2 QWs separated by a barrier), and
wherein the quantum well structure has a subband structure of electrons in an isolated three-level structure under the external voltage.” (see page 4, col. 2, end of 1st paragraph “Altogether, the experimental results indicate that the three levels are effectively isolated from higher-lying states, the whole structure forming a clean cascaded three level system.”)
3. “wherein the isolated three-level structure in each unit structure includes an upper lasing level, a lower lasing level, and an injection level under the external voltage, and wherein the upper lasing level has an energy value that is lower from upper leak levels under the external voltage by an energy difference greater than a sum of the product of the absolute temperature during operation and Boltzmann's constant and a photon energy at a lasing frequency, the upper leakage levels being not any of the upper lasing level, lower lasing level, and injection level.” (Fig 4 discloses high energy leak levels in grey at Ea=130meV above the upper lasing level in green. Fig 1 discloses Ea=117meV and explains on page 3 col. 1 “Accordingly, based on the above experimental results, our interpretation is that the main limiting mechanism for device HB1 is the thermally activated leakage through higher laying excited bound states located ~117meV above the upper laser level ULL…”)
7. “wherein material of semiconductors forming the semiconductor superlattice structure is AlGaAs—GaAs system, and wherein the energy difference is 62 meV or more.” (see Table I for the semiconductor material used)
Pertinent Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Applicant’s attention is drawn to the references cited on form PTO-892 which lists other references with similar features as the invention. However, none of them anticipate all the features of the pending claims.
Contact Info
Any inquiry concerning this communication or earlier communications from the examiner should be directed to M. A. GOLUB-MILLER whose telephone number is (571) 272-8602. The examiner can normally be reached on M-F 9-6.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, MinSun Harvey can be reached on (571) 272-1835. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/M. A. Golub-Miller/Primary Examiner, Art Unit 2828
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