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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,033,951, hereafter ‘51. Although the claims at issue are not identical, they are not patentably distinct from each other because
Claim 1 is disclosed by claims 1 and 7-8 of ’51.
Claim 2 is disclosed by claims 7-8 of ’51.
Claim 3 is disclosed by claims 7-8 of ’51.
Claim 4 is disclosed by claim 2 of ’51.
Claim 5 is disclosed by claim 3 of ’51.
Claim 6 is disclosed by claim 4 of ’51.
Claim 7 is disclosed by claim 5 of ’51.
Claim 8 is disclosed by claim 10 of ’51.
Claim 9 is disclosed by claim 1 of ’51.
Claim 10 is disclosed by claim 1 of ’51.
Claim 11 is disclosed by claim 11 of ’51.
Claim 12 is disclosed by claims 12 and 14 of ’51.
Claim 13 is disclosed by claim 7 of ‘51
Claim 14 is disclosed by claim 9 of ’51.
Claim 15 is disclosed by claim 13 of ’51.
Claim 16 is disclosed by claim 17 of ’51.
Claim 17 is obvious over claims 1-3 of ‘51
Claims 18-20 are obvious overclaims 6-9 of ’51.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim 17 Is rejected under 35 U.S.C. 103 as being unpatentable over Huang et. all., U.S. Pat. Pub. 2020/0135538, hereafter ’38, in view of Wang et. al., U.S. Pat. 10,937,946, hereafter ’46.
Regarding claim 17, ’38 discloses (Figs 1-23) a method for increasing reflectance of an alignment mark in a photolithographic process, comprising:
defining (Figs 5-7) the alignment mark (AM, Fig. 14) in a photoresist layer [220] which is over a low-reflectance substrate [120];
etching (Fig. 8) the alignment mark into the low-reflectance substrate [120]; removing the photoresist layer [220]; and
depositing (Fig. 9, par. [0028]) a high-reflectance film [230] (copper, aluminum, TiN, TaN, the materials of par. [0028] are the same as in the instant application), on the low-reflectance substrate [120] that contains the alignment mark [AM], the high-reflectance film having a higher reflectance than the low-reflectance substrate [120];
wherein the alignment mark comprises a plurality of trenches [T] that define a trench top area between trenches and a trench bottom area within the trenches
’38 fails to explicitly disclose wherein the high-reflectance film is present in both the trench top area and the trench bottom area.
However, ’46 discloses (Fig. 14) wherein the high-reflectance film [314] is present in both the trench top area and the trench bottom area (in the alignment mark area [AM]).
It would have been obvious to one of ordinary skill in the art prior to effective filing date of the instant application to include this additional feature of the alignment mark of ’46 in the method of ’38, because higher surface area of the alignment mark of ’46 increases its visibility.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VICTOR V BARZYKIN whose telephone number is (571)272-0508. The examiner can normally be reached Monday-Friday, 9am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, BRITT HANLEY can be reached at (571)270-3042. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/VICTOR V BARZYKIN/Examiner, Art Unit 2893
/Britt Hanley/Supervisory Patent Examiner, Art Unit 2893
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