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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 5 November 2025 has been considered by the examiner.
Terminal Disclaimer
The terminal disclaimer filed on 31 March 2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of U.S. Patent No. 12,361,808 has been reviewed and is NOT accepted.
The terminal disclaimer does not comply with 37 CFR 1.321 because:
The person who signed the terminal disclaimer is not the applicant, patentee or an attorney or agent of record. 37 CFR 1.321(a) and (b). (See FP 14.26.08). Please file a POA that gives power to the attorney who is signing the TD, along with another copy of the TD, or file a TD that is signed by the applicant. (No new fee required)
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, 11 and 18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,361,808. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application are a slight variation of the claims presented in the ‘808 Patent. These differences appear to be mostly cosmetic and as such, the claims of the ‘808 Patent anticipate the claims of the instant application.
As to claim 1, the ‘808 Patent discloses an integrated circuit (IC) device, comprising (Claim 1: “An integrated circuit die stack comprising”):
a first die having functional circuitry within an inner region of the first die (Claim 10: “The integrated circuit die stack according to claim 1, wherein the first integrated circuit die further comprises a first reading circuitry disposed in a first peripheral area of the first integrated circuit die”), and a first security ring surrounding the functional circuitry (Claim 1: “a first integrated circuit die comprising a sensor network that extends substantially across an entire top surface of the first integrated circuit die”); and
a second die comprising protection circuitry within an inner region of the second die (Claim 11: “The integrated circuit die stack according to claim 10, wherein the second integrated circuit die further comprises a second reading circuitry disposed in a second peripheral area of the second integrated circuit die”), and a second security ring surrounding the protection circuitry (Claim 1: and a second integrated circuit die stacked below the first integrated circuit die and configured to receive sensing signals generated by the sensor network via a plurality of through-silicon-vias that are coupled with the first integrated circuit die and the second integrated circuit die);
wherein the first security ring is configured to,
send probing signals to the protection circuitry via the second security ring (Claim 1: transmitting a probing signal from a second integrated circuit die to a sensor network disposed in a first integrated circuit die, the first integrated circuit die comprising an input/output interface disposed around a peripheral area of the first integrated circuit die,
receive probing responses from the protection circuitry via the second security ring(Claim 15: “routing the probing signal through a plurality of addressable memory banks of the sensor network; reading, by the input/output interface, a sensing signal output by the plurality of addressable memory banks generated based on the probing signal; and providing the sensing signal to the second integrated circuit die via a plurality of through-silicon-vias”),
determine a physical status of the protection circuitry based on the probing responses (Claim 15: “configured to determine the tampering event based on the sensing signal”), and
initiate a remedial action if the physical status of the protection circuitry indicates physical tampering of the protection circuitry (Claim 19: “The method according to claim 15, further comprising: determining a location of the tampering event based on the sensing signal”).
Claim 11 recites a system commensurate in scope to the IC device of claim 1 and is rejected under a substantially similar rationale.
Claim 18 recites a non-transitory computer readable medium encoded with a computer program product that is commensurate in scope to the IC device of claim 1 and is rejected under a substantially similar rationale.
Allowable Subject Matter
Claims 2-10, 12-17 and 19-20 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.
Conclusion
THIS ACTION IS MADE FINAL. 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 MICHAEL S MCNALLY whose telephone number is (571)270-1599. The examiner can normally be reached Monday-Friday, 8:30 AM - 5:00 PM.
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, Jeffrey L Nickerson can be reached at (469)295-9235. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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MICHAEL S. MCNALLY
Primary Examiner
Art Unit 2432
/Michael S McNally/Primary Examiner, Art Unit 2432
Prosecution Insights