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 .
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 18 – 33 arerejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 – 17 of U.S. Patent No. 12,014,928. Although the claims at issue are not identical, they are not patentably distinct from each other because of the following reasons:
The Claim 18 of the instant invention is taught by Claims 1 and 9 of US 12,014,928. Claim 19 of the instant invention is taught by Claim 3 of US 12,014,928. Claims 20 – 22 of the instant invention is taught by Claims 1 and 9 of US 12,014,928. of the instant invention is taught by Claims 4 – 6 and 9 of US 12,014,928. Claim 24 of the instant invention is taught by Claim 8 of US 12,014,928, Claims 26 and 27 of the instant invention are not taught by US 12,014,928. However, it would have been obvious to one with ordinary skill in the art before the effective filing date of the claimed invention to modify claims of US 12,014,928 to utilize these precursors, as they are well known. Claim 28of the instant invention is taught by Claim 11 of US 12,014,928. Claim 31 of the instant invention is taught by Claim 17 of US 12,014,928. Claims 32 and 33 of the instant invention are taught by Claims 1 and 9 of US 12,014,928. However, it would have been obvious to one with ordinary skill in the art before the effective filing date of the claimed invention to modify claims of US 12,014,928 to utilize these steps, as they are well known steps are undertaken to fill the high aspect ratio 3 – D structures.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ASOK K SARKAR whose telephone number is (571)272-1970. The examiner can normally be reached Mon - Fri; 9:30 AM - 6:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Matthew Landau can be reached at 571 - 272 - 1731. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ASOK K SARKAR/Primary Examiner, Art Unit 2891 April 26, 2026.
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