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. 12,125,747. Although the claims at issue are not identical, they are not patentably distinct from each other because with respect to Claim 1, U.S. Patent No. 12,125,747 discloses a device comprising a contact etch stop layer; a first inter-layer dielectric over the contact etch stop layer; a dielectric spacer in the contact etch stop layer and the first inter-layer dielectric; a contact plug in the contact etch stop layer and the first inter-layer dielectric, wherein the contact plug is separated from the first inter-layer dielectric by the dielectric spacer, and the contact plug comprising: a metal nitride layer, wherein the metal nitride layer physically contacts the dielectric spacer; a silicon-containing layer over the metal nitride layer; and a homogenous metallic material over the silicon containing layer. See Claim 1 of U.S. Patent No. 12,125,747.
However, U.S. Patent No. 12,125,747 does not explicitly disclose “wherein a topmost end of the silicon-containing layer is lower than a top surface of the inter-layer dielectric”.
It would have been obvious for one of ordinary skill in the art, before the effective date of the invention, to arrive at the claimed limitations as changes in size are prima facie obvious. See In re Rose, 105 USPQ 237 (CCPA 1955).
With respect to Claim 2, Claim 2 corresponds to Claim 4 of U.S. Patent No. 12,125,747.
With respect to Claim 3, the selection of a specific metal to optimize the device would have been prima facie obvious to one of ordinary skill in the art.
With respect to Claim 4, Claim 4 corresponds to Claim 4 of U.S. Patent No. 12,125,747.
With respect to Claim 5, Claim 5 corresponds to Claim 5 of U.S. Patent No. 12,125,747.
With respect to Claim 6, it would have been obvious for one of ordinary skill in the art, before the effective date of the invention, to arrive at the claimed limitations as changes in size are prima facie obvious. See In re Rose, 105 USPQ 237 (CCPA 1955).
With respect to Claim 7, Claim 7 corresponds to Claim 14 of U.S. Patent No. 12,125,747.
With respect to Claim 8, Claim 8 corresponds to Claim 14 of U.S. Patent No. 12,125,747.
With respect to Claim 9, Claim 9 corresponds to Claim 1 of U.S. Patent No. 12,125,747.
With respect to Claim 10, Claim 10 corresponds to Claim 2 of U.S. Patent No. 12,125,747.
With respect to Claim 11, Claim 11 corresponds to Claim 3 of U.S. Patent No. 12,125,747.
With respect to Claim 12, Claim 12 corresponds to Claim 12 of U.S. Patent No. 12,125,747.
With respect to Claim 13, Claim 13 corresponds to Claim 12 of U.S. Patent No. 12,125,747.
With respect to Claim 14, Claim 14 corresponds to Claim 13 of U.S. Patent No. 12,125,747.
With respect to Claim 15, Claim 15 corresponds to Claim 13 of U.S. Patent No. 12,125,747.
With respect to Claim 16, Claim 16 corresponds to Claim 5 of U.S. Patent No. 12,125,747.
With respect to Claim 17, changes in shape are prima facie obvious.
With respect to Claim 18, Claim 18 corresponds to Claim 16 of U.S. Patent No. 12,125,747.
With respect to Claim 19, Claim 19 corresponds to Claim 20 of U.S. Patent No. 12,125,747.
With respect to Claim 20, the selection of a specific metal to optimize the device would have been prima facie obvious to one of ordinary skill in the art.
Conclusion
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AGG
July 4, 2026
/ALEXANDER G GHYKA/Primary Examiner, Art Unit 2812
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