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 .
This Office action is in response to the amendment filed 8/7/2026 in which claims 1, 2, 12-14, 22, and 23 were amended.
Claims 1-23 remain pending and are presented for examination.
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, 22, and 23 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 21 of copending Application No. 18/559,654 (reference application hereinafter). Although the claims at issue are not identical, they are not patentably distinct from each other because
As to claim 1: reference application discloses in claim 21 a method (line 1, the product-by-process claims method steps), comprising: fabricating a III-V or II-VI compound based device (III-nitride is a III-V compound; line 2) having an in-plane lattice constant or strain that is at least 20% biaxially relaxed (30% biaxially relaxed; lines 2-3) by: creating a III-V or II-VI compound based (III-nitride is a III-V compound; line 5) decomposition stop layer (III-nitride based decomposition stop layer; line 5) on or above a III-V or II-VI compound based (III-nitride is a III-V compound; line 6) decomposition layer (III-nitride decomposition layer), wherein the III-V or II-VI compound based decomposition stop layer has a higher sublimation temperature or melting point as compared to a lower sublimation temperature or melting point of the III-V or II-VI compound based decomposition layer (as the III-nitride based decomposition layer is decomposed but not the III-nitride based decomposition stop layer, the temperature at which decomposition layer decomposes will be lower than that of the decomposition stop layer; lines 7-9 and 17-19), and a temperature increases decomposes the III-V or II-VI compound based decomposition layer to separate the III-V or II-VI compound based decomposition layer into its constituent elements (lines 7-9 and 17-19); and growing a III-V or II-VI compound based (III-nitride is a III-V compound; line 10) device structure (III-nitride device structure; line 10) on or above the III-V or II-VI compound based (III-nitride is a III-V compound) decomposition stop layer (lines 10-11).
As to claim 22: reference application discloses in claim 21 a device (line 1, the product-by-process provides a device), comprising: a III-V or II-VI compound based device (III-nitride is a III-V compound; line 2) having an in-plane lattice constant or strain that is at least 20% biaxially relaxed (30% biaxially relaxed; lines 2-3) including: a III-V or II-VI compound based (III-nitride is a III-V compound; line 5) decomposition stop layer (III-nitride based decomposition stop layer; line 5) created on or above a III-V or II-VI compound based (III-nitride is a III-V compound; line 6) decomposition layer (III-nitride decomposition layer), wherein the III-V or II-VI compound based decomposition stop layer has a higher sublimation temperature or melting point as compared to a lower sublimation temperature or melting point of the III-V or II-VI compound based decomposition layer (as the III-nitride based decomposition layer is decomposed but not the III-nitride based decomposition stop layer, the temperature at which decomposition layer decomposes will be lower than that of the decomposition stop layer; lines 7-9 and 17-19), wherein the III-V or II-VI compound based decomposition layer (III-nitride decomposition layer) is decomposed to separate the III-V or II-VI compound based decomposition layer into its constituent elements, but not the III-V or II-VI compound based decomposition stop layer (lines 7-9 and 17-19); and a III-V or II-VI compound based (III-nitride is a III-V compound; line 10) device structure (III-nitride device structure; line 10) grown on or above the III-V or II-VI compound based (III-nitride is a III-V compound) decomposition stop layer (lines 10-11).
As to claim 23: reference application discloses in claim 21 a product-by-process (line 1), comprising: a III-V or II-VI compound based (III-nitride is a III-V compound; line 2) device having an in-plane lattice constant or strain that is at least 20% biaxially relaxed (30% biaxially relaxed; lines 2-3) including: a III-V or II-VI compound based (III-nitride is a III-V compound; line 5) decomposition stop layer (decomposition stop layer; line 5) created on or above a III-V or II-VI compound based (III-nitride is a III-V compound; line 6) decomposition layer (decomposition layer; line 6), wherein the III-V or II-VI compound based decomposition stop layer has a higher sublimation temperature or melting point as compared to a lower sublimation temperature or melting point of the III-V or II-VI compound based decomposition layer (as the III-nitride based decomposition layer is decomposed but not the III-nitride based decomposition stop layer when the temperature is increased, the temperature at which decomposition layer decomposes will be lower than that of the decomposition stop layer; lines 7-9 and 17-19), wherein the III-V or II-VI compound based decomposition layer is decomposed to separate the III-V or II-VI compound based decomposition layer into its constituent elements, but not the III-V or II-VI compound based decomposition stop layer (lines 7-9); and a III-V or II-VI compound based (III-nitride is a III-V compound; line 10) device structure grown on or above the III-V or II-VI compound based decomposition stop layer (lines 10-11); wherein the III-V or II-VI compound based device having the in-plane lattice constant or strain that is at least 20% biaxially relaxed is fabricated by (lines 12-14): creating the III-V or II-VI compound based decomposition stop layer on or above the III-V or II-VI compound based decomposition layer (lines 15-17), wherein the III-V or II-VI compound based decomposition stop layer has the higher sublimation temperature or melting point as compared to the lower sublimation temperature or melting point of the III-V or II-VI compound based decomposition layer, and a temperature increase decomposes the III-V or II- VI compound based decomposition layer to separate the III-V or II-VI compound based decomposition layer into its constituent elements (as the III-nitride based decomposition layer is decomposed but not the III-nitride based decomposition stop layer when the temperature is increased, the temperature at which decomposition layer decomposes will be lower than that of the decomposition stop layer; lines 17-19); and growing the III-V or II-VI compound based device structure on or above the III-V or II-VI compound based decomposition stop layer (lines 21-22).This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
Claims 2-21 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.
Examiner notes that claims 1, 22, and 23 are only rejected under a non-statutory double patenting rejection. If this rejection is overcome either through amendment or the filing of a terminal disclaimer, the case should be in condition for allowance.
Conclusion
THIS ACTION IS MADE FINAL. 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 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
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