Prosecution Insights
Last updated: April 19, 2026
Application No. 18/589,569

INTEGRATED CIRCUIT WITH DUMMY BOUNDARY CELLS

Non-Final OA §112§DP
Filed
Feb 28, 2024
Examiner
GARCES, NELSON Y
Art Unit
2814
Tech Center
2800 — Semiconductors & Electrical Systems
Assignee
Taiwan Semiconductor Manufacturing Company Ltd.
OA Round
1 (Non-Final)
80%
Grant Probability
Favorable
1-2
OA Rounds
2y 6m
To Grant
83%
With Interview

Examiner Intelligence

Grants 80% — above average
80%
Career Allow Rate
459 granted / 572 resolved
+12.2% vs TC avg
Minimal +3% lift
Without
With
+2.7%
Interview Lift
resolved cases with interview
Typical timeline
2y 6m
Avg Prosecution
41 currently pending
Career history
613
Total Applications
across all art units

Statute-Specific Performance

§101
0.2%
-39.8% vs TC avg
§103
48.7%
+8.7% vs TC avg
§102
32.8%
-7.2% vs TC avg
§112
14.2%
-25.8% vs TC avg
Black line = Tech Center average estimate • Based on career data from 572 resolved cases

Office Action

§112 §DP
DETAILED ACTION This action is responsive to the application No. 18/589,569 filed on February 28, 2024. 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 . Acknowledgment This is responsive to the application filed on 02/28/2024. Accordingly, pending in this Office action are claims 1-20. 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. Claims 1-7 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 “the macro boundaries…”. There is insufficient antecedent basis for this limitation in the claim. 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 claims at issue 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); and 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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b). The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp. Claims 1-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-**of U.S. Patent No. HU (11,941,338). The subject matter claimed in the instant application is fully disclosed in the patent and is covered by the patent since the patent and the application are claiming common subject matter. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-8 of the instant invention are generic to species claims 1-** of patent No. 11,941,338. Under the current practice, the generic claims should be rejected on the grounds of obviousness-type double patenting (see MPEP §806.04(i)). Claims 1 and 3 of patent No. (US 11,941,338) anticipate Claims 1, 3, 7, 8, and 9 of the instant invention. Claims 1 - 3 of patent No. (US 11,941,338) anticipate Claims 2 and 10 of the instant invention. Claims 1, 3, and 4 of patent No. (US 11,941,338) anticipate Claim 4 of the instant invention. Claims 1, 3, and 5 of patent (US 11,941,338) anticipate Claim 5 of the instant invention. Claims 1, 3, 5, and 7 of patent No. (US 11,941,338) anticipate Claim 6 of the instant invention. Allowable Subject Matter Claims 11-14 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. Claims 15-20 are allowed. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nelson Garcés whose telephone number is (571)272-8249. The examiner can normally be reached on M-F 9:00 AM - 5:30 PM. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Wael Fahmy can be reached on (571)272-1705. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /Nelson Garces/ Primary Examiner, Art Unit 2814
Read full office action

Prosecution Timeline

Feb 28, 2024
Application Filed
Mar 27, 2026
Non-Final Rejection — §112, §DP (current)

Precedent Cases

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Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

1-2
Expected OA Rounds
80%
Grant Probability
83%
With Interview (+2.7%)
2y 6m
Median Time to Grant
Low
PTA Risk
Based on 572 resolved cases by this examiner. Grant probability derived from career allow rate.

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