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 .
Domestic Benefit
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 120 is acknowledged. This application is a continuation of U.S. Application No. 18/501,396, filed November 3, 2023, now U.S. Patent No. 12,100,730, which is a continuation of U.S. Application No. 17/467,686, filed September 7, 2021, now U.S. Patent No. 11,848,352. Through that chain, the application is also entitled to the benefit of U.S. Provisional Application No. 63/151,889, filed February 22, 2021, under 35 U.S.C. 119(e). Copendency is satisfied. The disclosure of the prior-filed applications provides support under 35 U.S.C. 112(a) for the claimed subject matter. The effective filing date accorded the claims is February 22, 2021.
Foreign Priority
No claim for foreign priority under 35 U.S.C. 119(a)-(d) has been made.
Information Disclosure Statements
The information disclosure statement filed July 26, 2024 complies with the provisions of 37 CFR 1.97 and 1.98 and has been placed in the application file. The information referred to therein has been considered as to the merits.
The information disclosure statement filed October 13, 2025 complies with the provisions of 37 CFR 1.97 and 1.98. The statement includes a timing certification under 37 CFR 1.97(e)(1). The information referred to therein has been considered as to the merits.
A signed copy of each statement is attached.
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.
Claims 2-4, 6, and 14-20 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 6 recites that “thicknesses of the second horizontally-extending portion of the second outer electrode plate and the second horizontally-extending portion of the second intermediate electrode plate are greater than thicknesses of the second horizontally-extending portion of the second outer electrode plate and the first outer electrode plate.” The same “second horizontally-extending portion of the second outer electrode plate” appears on both sides of the comparison. It is unclear what thickness relationship is required. For purposes of examination the claim is read as requiring that the second horizontally-extending portion of the second intermediate electrode plate is thicker than the first outer electrode plate.
Claim 15 recites “wherein the intermediate electrode plate has a thickness that is greater than the bottom electrode plate.” A thickness is compared to a structure. It is unclear whether the comparison is to a thickness of the bottom electrode plate or to some other dimension of that plate. Claims 16-20 depend from claim 15 and are rejected for the same reason.
Claims 2-4 and 14 are 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 regards as the invention. Claim 1 introduces “a first conductive via” and “a second conductive via.” Claims 2, 3, 4, and 14 later refer to “the first via” and “the second via.” Because the claims are long, the later clauses appear to be using a shortened form of the earlier terms. It is not clear on the face of the claims, however, whether “the first via” is the same structure as “the first conductive via,” or whether a different via is intended. For purposes of examination, “the first via” and “the second via” are treated as referring to the first conductive via and the second conductive via of claim 1. Clarification of the antecedent basis would remove the ambiguity. Appropriate correction 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 15-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 18 of U.S. Patent No. 11,848,352 and over claims 11 and 17 of U.S. Patent No. 12,100,730. Although the claims at issue are not identical, they are not patentably distinct from each other for the reasons that follow. No secondary reference is applied. The patented claims themselves, read individually or together within the same patent, teach every limitation of instant claims 15-20.
U.S Patent No. 11,848, 352, claim 18
Claim 18 of the ’352 patent recites a method comprising forming a bottom electrode plate over a layer of insulating material, forming a first dielectric material layer over the bottom electrode plate, forming a plurality of intermediate electrode plates over the first dielectric material layer wherein each intermediate electrode plate has a thickness greater than a thickness of the bottom electrode plate, forming a second dielectric material layer over the plurality of intermediate electrode plates, forming a top electrode plate over the second dielectric material layer wherein the top electrode plate has a thickness less than the thickness of each of the intermediate electrode plates, and forming a pair of conductive vias laterally adjacent to the electrode plates.
Instant claim 15 recites forming a bottom electrode plate, forming a first dielectric material layer over the bottom electrode plate, forming an intermediate electrode plate over that layer wherein the intermediate electrode plate has a thickness greater than the bottom electrode plate, forming a second dielectric material layer over the intermediate electrode plate, and forming a top electrode plate over the second dielectric material layer wherein the top electrode plate has a thickness less than a thickness of the intermediate electrode plate.
Every step of instant claim 15 is present in ’352 claim 18. Claim 18 of the ’352 patent includes additional steps not required by instant claim 15, including forming a plurality of intermediate plates and forming a pair of conductive vias. Instant claim 15 is broader than ’352 claim 18. A later claim that omits limitations from an earlier patented claim of the same family is not patentably distinct from that patented claim. Practicing the method of ’352 claim 18 practices every step of instant claim 15. Instant claim 15 is therefore not patentably distinct from ’352 claim 18.
Instant claim 16 adds at least one additional intermediate electrode plate and an additional dielectric layer over each such plate. That is the plurality of intermediate plates already required by ’352 claim 18.
Instant claim 17 adds forming a first via contacting the bottom electrode plate and a second via contacting the intermediate electrode plate. ’352 claim 18 already requires forming a pair of conductive vias coupled to the electrode plates. Claims 5 and 6 of the ’352 patent assign those vias between the outer plates and the intermediate plates according to whether the intermediate-plate count is odd or even. Instant claims 18 and 19 recite that same odd-count and even-count assignment. Instant claim 20 recites that the bottom plate is thinner than the intermediate plate, which is already required by ’352 claim 18. No claim of 15-20 adds a limitation that is absent from the ’352 patent claims.
U.S Patent No. 12,100, 730, claims 11 and 17
Claim 11 of the ’730 patent recites a MIM capacitor comprising a top electrode plate, a bottom electrode plate, an intermediate electrode plate between them, and dielectric layers on either side of the intermediate plate, wherein the intermediate electrode plate has a thickness greater than a thickness of the top electrode plate and a thickness of the bottom electrode plate.
Claim 17 of the ’730 patent recites forming a bottom electrode plate, forming a first dielectric layer over the bottom electrode plate, forming at least one intermediate electrode plate over the first dielectric layer, forming a second dielectric layer over the at least one intermediate electrode plate, forming a top electrode plate over the second dielectric layer wherein the top electrode plate has a thickness less than a thickness of each intermediate electrode plate, and forming a pair of conductive vias.
Claim 17 of the ’730 patent standing alone does not recite that the intermediate plate is thicker than the bottom plate. Claim 11 of the same patent does. Instant claim 15 is the method of ’730 claim 17 performed with the thickness relationship of ’730 claim 11, and without the via-forming step. Both claims are in the same patent and rest on the same specification. Using the thickness relationship already claimed in claim 11 when carrying out the method of claim 17 produces a more optimum capacitor: a thicker intermediate plate lowers the series resistance of the middle electrode while the thinner outer plates keep the stack height down. That is the same reason the ’730 patent gives for putting the extra thickness on the intermediate plate. Combining claim 11 with claim 17 of the same patent therefore teaches every limitation of instant claim 15.
Instant claims 16-20 are likewise taught by ’730 claims 11 and 17 together with ’730 claims 5, 6, 15, and 18. Claim 18 of the ’730 patent adds the additional intermediate plates of instant claim 16. Claims 15 and 17 of the ’730 patent add the vias of instant claim 17. Claims 5 and 6 of the ’730 patent add the odd-count and even-count via assignments of instant claims 18 and 19. Claim 11 of the ’730 patent adds the bottom-thinner-than-intermediate relationship of instant claim 20. Those combinations stay inside the patented claim set. They do not rely on any reference outside U.S. Patent No. 12,100,730. Carrying them out together produces a more optimum device and a more optimum method of making it, which is the purpose already stated in the ’730 patent.
This is not a provisional rejection. U.S. Patent Nos. 11,848,352 and 12,100,730 have issued and are commonly owned with the instant application.
U.S. Patent Nos. 11,848,352 and 12,100,730 are cited on the attached Notice of References Cited. They do not appear on applicant’s information disclosure statements.
Prior Art Rejections
No rejection under 35 U.S.C. 102 or 103 is made. The information disclosure statements of July 26, 2024 and October 13, 2025 have been considered. Those statements already list the stacked-MIM publications reviewed by the examiner, including US 2014/0159200 A1, US 10,714,420 B1, US 2021/0036100 A1, US 2015/0295020 A1, US 2015/0294936 A1, US 2019/0305076 A1, US 2021/0376151 A1, US 2020/0035779 A1, US 2021/0036096 A1, US 2018/0277620 A1, US 2023/0030826 A1, US 2007/0141778 A1, US 2015/0270271 A1, US 2002/0197844 A1, JP 2004-165559 A, and TW 201115717 A. Those references teach stacked planar MIM capacitors and via connections to selected plates. They do not teach the stepped intermediate-plate geometry and plane-offset limitations of instant claims 1 and 10. Because every publication named in this paragraph is already of record on the information disclosure statements, none of them is being placed on the Notice of References Cited.
Allowable Subject Matter
Claims 1, 5, and 7-13 are allowed.
The following is a statement of reasons for the indication of allowable subject matter:
Claim 1 recites a MIM capacitor comprising a first conductive via, a second conductive via, a first outer electrode plate contacting the first conductive via, and a first intermediate electrode plate comprising a first horizontally-extending segment contacting the second conductive via, a second horizontally-extending segment extending over an upper surface of the first outer electrode plate, and a vertically-extending segment that extends between those two horizontally-extending segments, wherein a first plane including the upper surface of the first outer electrode plate is located vertically below a second plane including the upper surface of the first horizontally-extending segment of the first intermediate electrode plate, together with the recited dielectric layers and second outer electrode plate. The prior art of record does not teach that combination.
Claim 10 recites a MIM capacitor in which the intermediate electrode plate contacts the first conductive via and the second outer electrode plate comprises first and second horizontally-extending segments and a vertically-extending segment and contacts the second conductive via, with a first plane including an upper surface of the first horizontally-extending segment of the second outer electrode plate located vertically below a second plane including the upper surface of the second horizontally-extending segment of the intermediate electrode plate. The prior art of record does not teach that combination.
Claims 5 and 7-9 depend from claim 1 and are allowed.
Claims 11-13 depend from claim 10 and are allowed.
Claims 2-4 and 14 would be allowable if rewritten to overcome the rejection under 35 U.S.C. 112(b) set forth in this Office action.
Claim 6 would be allowable if rewritten to overcome the rejection under 35 U.S.C. 112(b) set forth in this Office action.
Claims 15-20 would be allowable if rewritten to overcome the rejection under 35 U.S.C. 112(b) set forth in this Office action, and if the nonstatutory double patenting rejection is overcome by a timely filed terminal disclaimer in compliance with 37 CFR 1.321(c).
Conclusion
Claims 1, 5, and 7-13 are allowed. Claims 2-4, 6, and 14-20 are rejected.
A shortened statutory period for reply to this action is set to expire 3 months from the mailing date of this communication. Extensions of time may be available under 37 CFR 1.136(a). In no event, however, may a reply be timely filed after SIX (6) MONTHS from the mailing date of this communication.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN P DULKA whose telephone number is (571)270-7398. The examiner can normally be reached Monday-Friday, 9am-5pm, EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, ELISEO RAMOS-FELICIANO can be reached at (571)272-7925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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16 September 2026
/John P. Dulka/Primary Examiner, Art Unit 2817
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