DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1-20 are pending in the application.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
Acknowledgment is made of applicant’s Information Disclosure Statement(s) (IDS), Form PTO-1449, filed 24 June 2024. The information therein was considered.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 15 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 15 recites “The method of manufacturing a nitride semiconductor light emitting element according to claim 12, wherein: an n-type impurity concentration of the second layer is lower than the n-type impurity concentration of the second layer and higher than the n-type impurity concentration of the first layer” (emphasis added).
It is unclear how the impurity concentration of the second layer can be lower than itself. It appears that the second occurrence of “the second layer” should be replaced with --the second barrier layer--. Clarification is 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 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-23 of copending Application No. 18/750349 (reference application, publication No. US 2025/0006859). Although the claims at issue are not identical, they are not patentably distinct from each other because the limitations of the instant application are recited in the claims of the reference application with only nominal differences that would have been obvious to one of ordinary skill in the art.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
Claims 1-14 and 16-20 would be allowable if the double patenting rejection set forth in this Office action is overcome.
Claim 15 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims and if the double patenting rejection set forth in this Office action is overcome.
The following is a statement of reasons for the indication of allowable subject matter: The prior art of record fails to teach the claimed limitations in combination namely, as recited in independent claim 1, a nitride semiconductor light emitting element comprising: an n-side semiconductor layer; a p-side semiconductor layer; and an active layer positioned between the n-side semiconductor layer and the p-side semiconductor layer; wherein: the active layer comprises, successively from a n-side semiconductor layer side: a first barrier layer containing Al and an n-type impurity, a first well layer containing Al and emitting ultraviolet light, a second barrier layer containing Al, and a second well layer containing Al and emitting ultraviolet light; a highest n-type impurity concentration peak in the first barrier layer is located in a portion of the first barrier layer that is closer to the p-side semiconductor layer than to the n-side semiconductor layer; and an Al composition ratio of the first barrier layer is higher than an Al composition ratio of the second barrier layer; and as recited in independent claim 11, a method of manufacturing a nitride semiconductor light emitting element, the method comprising: forming an n-side semiconductor layer; forming an active layer above the n-side semiconductor layer by performing steps comprising: forming, above the n-side semiconductor layer, a first barrier layer by growing a first layer containing Al and an n-type impurity followed by growing, above the first layer, a second layer containing Al and an n-type impurity, wherein an n-type impurity concentration of the second layer is higher than an n-type impurity concentration of the first layer, forming, above the first barrier layer, a first well layer that contains Al and emits ultraviolet light, forming, above the first well layer, a second barrier layer that contains Al and an n-type impurity, wherein an Al composition ratio of the second barrier layer is lower than both an Al composition ratio of the first layer and an Al composition ratio of the second layer, and forming, above the second barrier layer, a second well layer that contains Al and emits ultraviolet light; and forming a p-side semiconductor layer above the active layer.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Kushibe et al. US 8,569,738 teach a light emitting device that can emit near ultraviolet light including a first barrier layer having a three layer structure.
Matsuura US 2015/0372189 teaches a light emitting device including a first barrier layer having a higher aluminum content than a second barrier layer.
Han et al. US 9,312,447 and Park et al. US 9,905,728 teach a light emitting device including a first barrier layer having a higher aluminum content than other barrier layers.
The examiner has cited particular columns and line numbers in the references as applied to the claims above for the convenience of the applicant. Although the specified citations are representative of the teachings of the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested from the applicant in preparing responses, to fully consider the references in entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the Examiner. When responding to this office action, applicants are advised to provide the examiner with the line numbers and page numbers in the application and/or references cited to assist the examiner in locating appropriate paragraphs.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALLISON BERNSTEIN whose telephone number is (571)272-9011. The examiner can normally be reached M-F 8AM-5PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Richard Elms can be reached on 571-272-1869. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALLISON BERNSTEIN/Primary Examiner, Art Unit 2824 9/11/2026
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