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 1-3, 5-8, and 14-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5-8, 11-13, 18, and 19 of U.S. Patent No. 12087615. Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matter of the instant claims is taught by the claims of ‘615 using the same or similar terms in accordance with the table below.
Instant claim
Claim from ‘615
1
1
2
1
3
1
5
1
6
18, 19
7
8
8
11
14
1
15
1
16
5
17
6
18
7
19
12
20
13
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 5, 6, and 20 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 (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
With regard to claim 5, the claim recites “the superficial film is intentionally textured”. It is impossible to determine if a given configuration is “intentional” as the mindset of the practitioner or manufacturer cannot be determined from a given structure, rendering the claim indefinite. For the purposes of examination with regard to the prior art, if a given structure is present, it will be viewed as “intentional”.
With regard to claim 6, the claim recites the limitation "the intentional texture" in line 1 of the claim. There is insufficient antecedent basis for this limitation in the claim. Claim 1, from which the claim depends, does not provide antecedent basis for this limitation. For the purposes of examination with regard to the prior art, this limitation will be treated as if referring to the “predefined geometry” of claim 1.
With regard to claim 20, the claim recites the limitation "the adhesion layer" in line 1 of the claim. There is insufficient antecedent basis for this limitation in the claim. Claim 14, from which the claim depends, does not provide antecedent basis for this limitation. For the purposes of examination with regard to the prior art, this claim will be treated as if depending from claim 19, which does provide antecedent basis for the claim.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-3, 5, 6, 8, 9, 14, and 16-19 is/are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Lagahe et al. (US 2006/0019476).
With regard to claim 1, Lagahe teaches, in Fig 6, a structure, comprising: a donor substrate (1) including an embrittlement zone (4) delimiting a superficial film (portion of 1 above 4 in the figure); and a support (6-9) covering the superficial film, wherein the embrittlement zone is substantially flat (see figure), and wherein the superficial film comprises a first surface adjacent the support (upper surface in the figure) and a second surface (lower surface in the figure) opposite the support, the first surface of the superficial film including a predefined geometry that is not flat (see figure).
With regard to claim 2, Lagahe teaches, in Fig 6, that the predefined geometry of the first surface of the superficial film comprises recess patterns (see figure).
With regard to claim 3, Lagahe teaches, in Fig 6, that the predefined geometry of the first surface of the superficial film comprises relief patterns (see figure).
With regard to claim 5, Lagahe teaches, in Fig 6, that the predefined geometry of the first surface of the superficial film is intentionally textured and not flat (see figure).
With regard to claim 6, Lagahe teaches, in Fig 6, that the intentional texture of the first surface corresponds to a roughness greater or equal to 1 nm rms ([0054]).
With regard to claim 8, Lagahe teaches, in Fig 6, that a thickness of the support is between 1 µm and 50 µm ([0078]).
With regard to claim 9, Lagahe teaches, in Fig 6, that the support comprises a material having a thermal expansion coefficient that differs from a material of the superficial film by less than 5x10-6 K-1 in absolute value (both are Si, see [0037], [0054], [0073]).
With regard to claim 14, Lagahe teaches, in Fig 6, a structure, comprising: a donor substrate (1) including an embrittlement zone (4) delimiting a superficial film (portion of 1 above 4 in the figure); and a support (6-9) covering the superficial film, wherein the superficial film comprises a first surface (upper surface in the figure) adjacent the support and a second surface (lower surface in the figure) opposite the support, the first surface of the superficial film adjacent the support including a predefined geometry comprising relief patterns (see figure).
With regard to claim 16, Lagahe teaches, in Fig 6, that the superficial film is monocrystalline ([0085]).
With regard to claim 17, Lagahe teaches, in Fig 6, that the superficial film is polycrystalline ([0085]).
With regard to claim 18, Lagahe teaches, in Fig 6, that the embrittlement zone has a geometry generally corresponding to the predefined geometry of the first surface of the superficial film adjacent the support (see figure).
With regard to claim 19, Lagahe teaches, in Fig 6, that an adhesion layer between the donor substrate and the support [0059].
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 4 and 10-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lagahe et al. (US 2006/0019476) in view of Bruel (US 5494835).
With regard to claim 4, Lagahe teaches most of the limitations of the claim as set forth above with regard to claim 1.
Lagahe does not explicitly teach that the predefined geometry of the first surface of the superficial film comprises step patterns.
Bruel teaches, in Figs 6-7, that the predefined geometry of the first surface of the superficial film (33) comprises step patterns (see figures) so that, “thus obtained structures can have level variations of a few fractions of a µm to a few dozen µm. The thus obtained structures can be used in the field of binary optics and can also be used as a mould for producing a polymer optics device,” (column 5, lines 1-10).
Therefore, it would have been obvious to the ordinary artisan at the effective time of filing to combine the structure of Lagahe with the step patterns of Bruel to have level variations useful for the field of binary optics.
With regard to claim 10, Lagahe teaches, in Fig 6, a structure, comprising: a donor substrate (1); a plurality of pads (regions where the interface between 1 and 6 are at different heights) positioned on the donor substrate, each of the pads comprising an embrittlement zone (4); and a support (6-9) positioned on the plurality of pads opposite the donor substrate, wherein at least two adjacent pads of the plurality of pads have different thickness (each having various thicknesses since they have variable height), and wherein the plurality of pads comprises a first surface (upper surface in the figure) adjacent the support and a second surface (lower surface in the figure) opposite the support, the first surface of the plurality of pads comprising patterns.
Lagahe does not explicitly teach that the patterns are step patterns.
Bruel teaches, in Figs 6-7, that the patterns are step patterns (see figures) so that, “thus obtained structures can have level variations of a few fractions of a µm to a few dozen µm. The thus obtained structures can be used in the field of binary optics and can also be used as a mould for producing a polymer optics device,” (column 5, lines 1-10).
Therefore, it would have been obvious to the ordinary artisan at the effective time of filing to combine the structure of Lagahe with the step patterns of Bruel to have level variations useful for the field of binary optics.
With regard to claim 11, Lagahe teaches, in Fig 6, that each of the pads comprises a semiconductor material, a piezoelectric material, a magnetic material, a functional oxide, or a combination thereof ([0060]).
With regard to claim 12, Lagahe teaches, in Fig 6, that the support comprises a metal, a glass, a ceramic, or a combination thereof ([0059]).
With regard to claim 13, Lagahe teaches, in Fig 6, that a surface of the support on a side opposite the plurality of pads is substantially flat (see figure).
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lagahe et al. (US 2006/0019476).
With regard to claim 7, Lagahe teaches most of the limitations of the claim as set forth above with regard to claim 1. However, Lagahe does not explicitly teach that a thickness of the superficial film is between 100 nm and 10 µm. Nonetheless, the skilled artisan would know too that film thickness would impact the characteristics of the micro-fissures ([0045]).
The specific claimed thickness, absent any criticality, is only considered to be the “optimum” thickness disclosed by Lagahe that a person having ordinary skill in the art would have been able to determine using routine experimentation (see In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)) based, among other things, on the desired micro-fissure characteristics, manufacturing costs, etc. (see In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980)), and since neither non-obvious nor unexpected results, i.e. results which are different in kind and not in degree from the results of the prior art, will be obtained as long as the thickness of the superficial film between 100 nm and 10 µm is used, as already suggested by Lagahe.
Since the applicant has not established the criticality (see next paragraph) of the thickness stated and since these thicknesses are in common use in similar devices in the art, it would have been obvious to one of ordinary skill in the art at the time of the invention to use these values in the device of Lagahe.
Please note that the specification contains no disclosure of either the critical nature of the claimed thickness or any unexpected results arising therefrom. Where patentability is said to be based upon particular chosen dimensions or upon another variable recited in a claim, the applicant must show that the chosen dimensions are critical. In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lagahe et al. (US 2006/0019476) in view of Moriceau et al. (US 2007/0028895).
With regard to claim 15, Lagahe teaches most of the limitations of the claim as set forth above with regard to claim 14.
Lagahe does not explicitly teach that the embrittlement zone is free of bubbles.
Moriceau teaches that the embrittlement zone is free of bubbles ([0014]) to provide, “a layer that is very thin in comparison with the orders of magnitudes of layers conventionally transferred,” ([0014]).
Therefore, it would have been obvious to the ordinary artisan at the effective time of filing to combine the structure of Lagahe with the embrittlement zone of Moriceau to provide a layer that is very thin in comparison to a conventionally transferred layer.
Claim(s) 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lagahe et al. (US 2006/0019476) in view of Werkhoven et al. (US 2013/0221496).
With regard to claim 20, Lagahe teaches most of the limitations of the claim as set forth above with regard to claim 14.
Lagahe does not explicitly teach that the adhesion layer comprises at least one material selected from among the group consisting of: Ti, Cr, Pt, Ta, TiW, Si3N4, TiN, and CrCu.
Werkhoven teaches that the adhesion layer comprises at least one material selected from among the group consisting of: Ti, Cr, Pt, Ta, TiW, Si3N4, TiN, and CrCu ([0053]) to, “improve adhesion with the transfer layer 230 and improve electrical conduction properties with the transfer layer 230,” ([0053]).
Therefore, it would have been obvious to the ordinary artisan at the effective time of filing to combine the structure of Lagahe with the adhesion layer material of Werkhoven to improve adhesion and electrical conduction.
Conclusion
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/RAJ R GUPTA/Primary Examiner, Art Unit 2893
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