DETAILED ACTION
EXAMINER’S AMENDMENT
An interview was conducted and proposed an Examiner’s amendment to the claims in a condition for allowance, but did not result in an authorization.
Response to Amendment
Amendment filed on 26 June 2026 has been entered. Claims 1-18 and 21-22 are now pending in the application.
Applicant’s arguments, see Page 7, filed 26 June 2026, with respect to the Double Patenting Rejection have been fully considered. Because the applicant holds the non-statutory double patenting rejection in abeyance, the examiner maintains the double patenting rejection of claims 1-3. See Non-Final Rejection office correspondence dated 30 March 2026. However, amendment to the claim 9 overcomes the non-statutory double patenting rejection of claims 9-10 and 13. Therefore, the non-statutory double patenting rejection of claims 9-10 and 13 has been withdrawn. Applicant has the opportunity to timely file a terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application.
Response to Arguments
Applicant’s arguments, see Page 8, filed 26 June 2026, with respect to claims 1-4, 8-14 and 18 have been fully considered and are persuasive. The rejection of claims 1-4, 8-14 and 18 under 35 U.S.C. 103 has been withdrawn.
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 1-3 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 11-12 and 17 of U.S. Patent No. 9,865,533 in view of Lee (US 20120168220). Although the claims at issue are not identical, they are not patentably distinct from each other because:
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Annotated Fig. 4, Lee.
the claimed “feedthrough” in the instant case comprises an identical structure claimed in the conflicting patent 9,865,533 except “the via comprising tapered surface walls”. However, Lee teaches a circuit layer comprising a non-conductive substrate (insulating layers 130, 140 and base substrate 100, see annotated Fig. 4 above), a via from an outer surface to an inner surface of the non-conductive substrate, the via comprising tapered surface walls (via hole has tapered shape, para. [0046]). Further, the claim 1 construed as an electronic device formed on a circuit layer. Furthermore, a non-conductive substate comprising a via having tapered surface wall is known in the art (see Sato US 8304657). Therefore, a person of ordinary skill in the art would modify the feedthrough assembly and to conclude that, the invention defined in the claim 1 under examination would have been an obvious variation of the invention defined in a claim 1 of the patent 9,865,533 in view of Lee. See the comparison table below.
The limitations of both sets of claims are listed with the conflicting portions have been underlined.
18/619,746
US 9,865,533
1. A feedthrough assembly comprising a non-conductive substrate and a feedthrough, the feedthrough comprising: a via from an outer surface to an inner surface of the non-conductive substrate, the via comprising tapered surface walls; a conductive material disposed in the via; an external contact disposed over the via on the outer surface of the non-conductive substrate, wherein the external contact is electrically coupled to the conductive material disposed in the via, and wherein the external contact is hermetically sealed to the outer surface of the non-conductive substrate by a laser bond surrounding the via;
an internal contact disposed over the via on the inner surface of the non-conductive substrate, wherein the internal contact is electrically coupled to the conductive material disposed in the via, and wherein the internal contact is hermetically sealed to the inner surface of the non- conductive substrate surrounding the via; and
an electronic device formed on the inner surface of the non-conductive substrate and electrically coupled to the conductive material in the via of the feedthrough.
1. A feedthrough assembly comprising a non-conductive substrate and a feedthrough, the feedthrough comprising: a via from an outer surface to an inner surface of the non-conductive substrate; a conductive material disposed in the via; and an external contact disposed over the via on the outer surface of the non-conductive substrate, wherein the external contact is electrically coupled to the conductive material disposed in the via, and wherein the external contact is hermetically sealed to the outer surface of the non-conductive substrate by a laser bond surrounding the via.
2. The assembly of claim 1, wherein the feedthrough further comprises an internal contact disposed over the via on the inner surface of the non-conductive substrate, wherein the internal contact is electrically coupled to the conductive material disposed in the via, and wherein the internal contact is attached to the inner surface of the non-conductive substrate by a laser bond that surrounds the via.
11. The assembly of claim 1, further comprising an electronic device disposed on the inner surface of the non-conductive substrate, wherein the electronic device is electrically coupled to the conductive material in the via of the feedthrough, and wherein the electronic device is attached to the non-conductive substrate by a bond.
2. The assembly of claim 1, wherein the electronic device comprises an integrated circuit.
12. The assembly of claim 11, wherein the electronic device comprises an integrated circuit.
3. The assembly of claim 1, wherein the electronic device comprises a capacitor.
17. The assembly of claim 1, wherein the feedthrough further comprises a filtering capacitor electrically coupled to the via on the inner surface of the non-conductive substrate, wherein the filtering capacitor comprises a dielectric member interposed between two conductive layers.
Allowable Subject Matter
Claims 1-8 would be allowable if overcome the nonstatutory double patenting rejection set forth in this Office action. Claims 9-18 and 21-22 are allowed.
The following is an examiner’s statement of reasons for indicating allowable subject matter:
Claim 1 would be allowable for disclosing a feedthrough comprising a via from an outer surface to an inner surface of the non-conductive substrate, the via comprising tapered surface walls.
Claim 9 would be allowable for disclosing an implantable medical device system, comprising: a housing; electronics disposed within the housing; a feedthrough assembly attached to a sidewall of the housing and electrically coupled to the electronics, the feedthrough assembly comprising a non-conductive substrate and a feedthrough, the feedthrough comprising: a via from an outer surface to an inner surface of the non-conductive substrate, the via comprising tapered surface walls.
Claim 21 would be allowable for disclosing a feedthrough assembly comprising a non-conductive substrate and a feedthrough, an electronic device formed on the inner surface of the non-conductive substrate and electrically coupled to the conductive material in the via of the feedthrough, the electronic device comprising a capacitor that comprises: a first conductor; a second conductor; and an insulator disposed between the first conductor and the second conductor, wherein the first conductor is deposited or laminated onto the inner surface of the non-conductive substrate.
Though, prior art of record Iyer (US 20130060312) teaches, a feedthrough assembly 10 in Fig. 4A, including a via from an outer surface to an inner surface and an electronic device comprising a capacitor filter array 64 having a first conductor 66, a second conductor 68, and an insulator 50 disposed between the first conductor and the second conductor, Iyer fails to teach, the via comprising tapered surface walls; or a capacitor that comprises a first conductor; a second conductor; and an insulator disposed between the first conductor and the second conductor, wherein the first conductor is deposited or laminated onto the inner surface of the non-conductive substrate.
Though, prior art Lee teaches, a via comprising tapered surface walls and a conductive material disposed in the via; an external contact disposed over the via on the outer surface of the non-conductive substrate, wherein the external contact is electrically coupled to the conductive material disposed in the via; and an internal contact disposed over the via on the inner surface of the non-conductive substrate, wherein the internal contact is electrically coupled to the conductive material disposed in the via, Lee fails to teach, the external contact is hermetically sealed to the outer surface of the non- conductive substrate by a laser bond surrounding the via, wherein the laser bond comprises a bond line; or the internal contact is hermetically sealed to the inner surface of the non- conductive substrate surrounding the via; or an electronic device formed on the inner surface of the non-conductive substrate and electrically coupled to the conductive material in the via of the feedthrough.
Therefore, claims 1, 9 and 21 would be allowable. Claims 2-8, 10-18 and 22 would be allowable by virtue of its dependency.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
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 JOSE K. ABRAHAM whose telephone number is (571)270-1087. The examiner can normally be reached Monday-Friday 8:30-4:30 EST.
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, THOMAS J. HONG can be reached at (571) 272-0993. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSE K ABRAHAM/Examiner, Art Unit 3729
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