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
Applicant’s election without traverse of group I (claims 1-7 and 21-33) in the reply filed on May 13, 2026 is acknowledged.
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 1-7 and 21-33 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No.12,111,582 B2. Although the conflicting claims are not identical, they are not patentably distinct from each other because all of the features/limitations collectively recited in claims 1-7 and 21-23 of the instant application are also included, inter alia, in the collective recitation of claims 1-20 of the ‘582 patent.
With respect to claim 1 of the present application, claims 1, 5, 8-10 and 15 of the’582 patent disclose:
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Thus, it is noted that the differences amount to no more than combining expressly claimed features of the same semiconductor substrate stage, rearranging the relative positions of the recited layers, and selecting known contacts, overlap, dimensional and storage-device relationships. Such modifications would have been obvious variations yielding no unexpected result and would not render the presently claimed subject matter patentably distinct from the patented claims.
Also claims 21-26 of the present application over patent claims 1, 8, 12, 17 and 20.
Claims 27-30 over patent claims 14-18.
Claims 31-33 over patent claims 8-10.
In fact, claims 1-7 and 21-33 are merely re-written versions/or broader versions of claims 1-20 of the '582 patent.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HUNG HENRY NGUYEN whose telephone number is (571)272-2124. The examiner can normally be reached Monday-Friday 7:00AM-4:30PM.
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, Toan Minh Ton can be reached at 571-272-2303. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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HUNG HENRY NGUYEN
Primary Examiner
Art Unit 2882
Hvn
7/15/26
/HUNG V NGUYEN/ Primary Examiner, Art Unit 2882
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