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 .
Election/Restrictions
Claims 1-18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/29/2025.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 38 and 39 is/are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 2 and 3 of prior U.S. Patent No. 9,461,304. This is a statutory double patenting rejection.
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.
Claim 38 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 24 of U.S. Patent No. 9,461,309. Although the claims at issue are not identical, they are not patentably distinct from each other because the product by process claim incorporates the claimed process from this application.
Claim 38 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 13 of U.S. Patent No. 10,211,454. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the patented claim falls within the scope of the pending claim. The patented claim 3 includes a first step of providing a hydrogen passivated group IVA particle. The scope of the providing step includes the currently claimed step of passivating with a protic acid. The patented claim 3 then has a treating step for functionalizing with a non-dielectric layer. The pending claims refer to a treatment step for passivating a particle stable to oxidation in air a room temperature. However, the passivation/functionalization is referring to the same organic groups (passivating compound). Accordingly, the treatment steps are at least overlapping in scope.
Claim 39 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 13 of U.S. Patent No. 10,211,454. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the patented claim falls within the scope of the pending claim. The patented claim 13 indicates that benzene and a Group IVA are comminuted to yield “a passivated Group IVA particle”. The passivation is done with a mixture of benzene and non-competing solvent indicating the passivation is at least partly benzene-passivated. The treatment step forms a particle functionalized with a non-dielectric layer. However, the specification indicates that the non-dielectric layer can be passivating column 4 lines 2-4. Therefore the scope of the patented claim falls within the scope of the pending claim.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
RAPPICH et al. “Stable electrochemically passivated Si surfaces by ultra thin benzene-type layers” (2005) teaches passivating silicon surfaces with “benzene-type” molecules. However, the reaction only proceeds when the benzene is functionalized. The reference uses a 4-bromo and 4-nitrobezene diazonium tetrafluoroborate. The result is the benzene forming a passivation layer on the silicon. However, the claims unambiguously require “benzene” (without suggesting any functional groups) and the specification states that “benzene is one of few organic hydrocarbons that will bond reversibly to silicon surfaces” [00104].
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/AUSTIN MURATA/Primary Examiner, Art Unit 1712