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.
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Claims 1, 5-6, 13-22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4-5, 8-9, 10-15 of U.S. Patent No. 12,068,123 in view of Derharcobian et al. (US 7,511,532).
Claim 1 (a phase change switch) of the instant application is disclosed by Claim 1 of the Patent, except that a phase switch comprised in a device and the third and fourth terminals being different from the first and second terminals.
Derharcobian discloses a phase change switch (2000, Figure 20), comprising:
a phase change material (2002, Figure 20);
first and second terminals configured to provide a first connection path between the first and second terminals (comprising In1, Out1 providing a first connection path, Figure 20);
third and fourth terminals configured to provide a second connection path between the third and fourth terminals (comprising In2, Out2 providing a second connection path, Figure 20), the third and fourth terminals being different from the first and second terminals (the third and fourth terminals In2, Out2 being different from the first and second terminals In1, Out1, Figure 20). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide to provide in the instant application claim, the third and fourth terminals being different from the first and second terminals as taught by Derharcobian, such that second and third output can be separately controlled to implement logic devices requiring separately controllable outputs.
Claims 5-6 of the instant application and Claims 8-9 of the Patent recites the same limitations.
Claims 21-22 of the instant application and Claims 4-5 of the Patent recites the same limitations.
Method Claims 13-20 of the instant application are disclosed by Claims 10-13 and 14-15 of the Patent, except for minor variations in ordering and/or naming and the instant application claims are broader than Patent Claims and the third and fourth terminals different from the first and second terminals.
Derharcobian discloses a phase change switch (2000, Figure 20), comprising:
a phase change material (2002, Figure 20);
first and second terminals configured to provide a first connection path between the first and second terminals (comprising In1, Out1 providing a first connection path, Figure 20);
third and fourth terminals configured to provide a second connection path between the third and fourth terminals (comprising In2, Out2 providing a second connection path, Figure 20), the third and fourth terminals being different from the first and second terminals (the third and fourth terminals In2, Out2 being different from the first and second terminals In1, Out1, Figure 20). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide to provide in the instant application claim, the third and fourth terminals being different from the first and second terminals as taught by Derharcobian, such that second and third output can be separately controlled to implement logic devices requiring separately controllable outputs.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-2, 4, 6, 13, 18-19 are rejected under 35 U.S.C. 103 as being unpatentable over Kordus II et al. (US 2007/0096071) in view of Derharcobian et al. (US 7,511,532).
Regarding Claim 1, Kordus II discloses a phase change switch (Figures 1-19B), comprising:
a phase change material (PCM, Figures 18A-18C);
first and second terminals configured to provide a first connection path between the first and second terminals (comprising InA, OUT providing a first connection path, Figures 18A-18C);
third and fourth terminals configured to provide a second connection path between the third and fourth terminals (comprising InB, OUT providing a second connection path, Figures 18A-18C), the third terminal being different from the first terminal (the third terminal InB being different from the first terminal InA, Figures 18A-18C);
a heater (comprising Heating Element, Figures 18A-18C); and
a fifth terminal configured to provide a control path to the heater (comprising S1, S2, Figures 18A-18C), the phase change switch having a state corresponding with a resistance of the first connection path and corresponding with a resistance of the second connection path (a resistance of the connection path from InA to OUT and from InB to OUT corresponding to a state, crystalline or amorphous, of PCM, Figures 18A-18C), the first connection path, the second connection path, and the control path being different (first connection path from InA to OUT, second connection path from InB to OUT and control path from S1, S2 to Heating Element, Figures 18A, 18B).
Kordus II does not disclose the fourth terminal being different from the second terminal.
Derharcobian discloses a phase change switch (2000, Figure 20), comprising:
a phase change material (2002, Figure 20);
first and second terminals configured to provide a first connection path between the first and second terminals (comprising In1, Out1 providing a first connection path, Figure 20);
third and fourth terminals configured to provide a second connection path between the third and fourth terminals (comprising In2, Out2 providing a second connection path, Figure 20), the third and fourth terminals being different from the first and second terminals (the third and fourth terminals In2, Out2 being different from the first and second terminals In1, Out1, Figure 20).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide to provide in the phase change switch of Kordus, II, an additional/separate output terminal (fourth terminal) as taught by Derharcobian, such that second and third output can be separately controlled to implement logic devices requiring separately controllable outputs..
Regarding Claim 2, combination of Kordus II and Derharcobian discloses the phase change switch of Claim 1, wherein the first connection path includes a first portion of the phase change material (the first connection path from InA to OUT includes the left portion of PCM, Figures 18A, 18B), wherein the second connection path includes a second portion of the phase change material (the second connection path from InB to OUT includes the right portion of PCM, Figures 18A, 18B).
Regarding Claim 4, combination of Kordus II and Derharcobian discloses the phase change switch of Claim 1, wherein a portion of the second connection path overlaps a portion of the first connection path (the second connection path and the first connection path from the middle of PCM to OUT, Figures 18A, 18B).
Regarding Claim 6, combination of Kordus II and Derharcobian discloses the phase change switch of Claim 1, wherein the phase change switch is coupled with an additional phase change switch in a single pole multi throw configuration (Figure 18C shows single pole multi throw switch configuration).
Regarding Claim 13, Kordus II discloses a method, comprising: providing a phase change switch (Figures 1-19B, Abstract, Paragraph 2, Claim 22), including:
a phase change material (PCM, Figures 18A-18C),
a heater configured to heat the phase change material (comprising Heating Element, Figures 18A-18C),
first and second terminals (comprising InA, OUT, Figures 18A-18C),
a first connection path between the first and second terminals (a first connection path via PCM from InA to OUT, Figures 18A-18C), a resistance of the first connection path corresponding with a state of the phase change material (a resistance of the connection path from InA to OUT corresponding to a state, crystalline or amorphous, of PCM, Figures 18A-18C),
third and fourth terminals (comprising InB, OUT, Figures 18A-18C), the third terminal being different from the first terminal (the third terminal InB being different from the first terminal InA, Figures 18A-18C),
a second connection path (comprising connection path from InB to OUT via PCM, Figures 18A, 18B), a resistance of the second connection path corresponding with the state of the phase change material (a resistance of the connection path from InB to OUT corresponding to a state, crystalline or amorphous, of PCM, Figures 18A-18C), and
a fifth terminal (comprising S1, S2, Figures 18A-18C), the fifth terminal forming a control path for the heater (comprising S1, S2 coupled to Heating Element, Figures 18A-18C), the first connection path, the second connection path, and the control path being different (first connection path from InA to OUT, second connection path from InB to OUT and control path from S1, S2 to Heating Element, Figures 18A-18C);
selectively transmitting a signal from the first terminal to the second terminal through the phase change material according to the state of the phase change material (Figure 18C schematically shows selectively transmitting a signal from InA to OUT, Claims 1, 7); and controlling the heater of the phase change switch with the control path to change the state of the phase change material (by controlling Heating Element by S2 and controlling the phase of PCM inA to OUT path being closed/connected, Figure 18C, Claims 1, 7-8).
Kordus II does not disclose the fourth terminal being different from the second terminal.
Derharcobian discloses a method comprising a phase change switch (2000, Figure 20), including: a phase change material (2002, Figure 20);
first and second terminals configured to provide a first connection path between the first and second terminals (comprising In1, Out1 providing a first connection path, Figure 20); third and fourth terminals configured to provide a second connection path between the third and fourth terminals (comprising In2, Out2 providing a second connection path, Figure 20), the third and fourth terminals being different from the first and second terminals (the third and fourth terminals In2, Out2 being different from the first and second terminals In1, Out1, Figure 20).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide in the method of Kordus, II, an additional/separate output terminal (fourth terminal) as taught by Derharcobian, such that second and third output can be separately controlled.
Regarding Claim 18, Kordus II discloses the method of Claim 13, wherein the method is performed continuously during operation of a device including the phase change switch (Figures 18A-18C, method applied when switch operating, Claims 22-24).
Regarding Claim 19, Kordus II discloses the method of Claim 13, wherein the method is performed at startup of a device including the phase change switch (upon powering and providing control signal at the startup of a device to turn on/close the phase change switch).
Claims 7-8, 10-12 are rejected under 35 U.S.C. 103 as being unpatentable over Kordus II et al. (US 2007/0096071) in view of Moon (US 2014/0191181).
Regarding Claim 7, Kordus II discloses a phase change switch (Figures 1-19B), comprising:
a phase change material (PCM, Figures 18A-18C),
a heater configured to heat the phase change material (comprising Heating Element, Figures 18A-18C),
a first connection path (comprising connection path from InA to OUT via PCM, Figures 18A-18C), a resistance of the first connection path corresponding with a state of the phase change material (a resistance of the connection path from InA to OUT corresponding to a state, crystalline or amorphous, of PCM, Figures 18A-18C),
a second connection path (comprising connection path from InB to OUT via PCM, Figures 18A-18C), a resistance of the second connection path corresponding with the state of the phase, crystalline or amorphous, change material (a resistance of the connection path from InB to OUT corresponding to a state of PCM, Figures 18A-18C), and
a fifth terminal (comprising S1, S2, Figures 18A-18C), the fifth terminal forming a control path for the heater (comprising S1, S2 coupled to Heating Element, Figures 18A-18C), the first connection path, the second connection path, and the control path being different (first connection path from InA to OUT, second connection path from InB to OUT and control path from S1, S2 to Heating Element, Figures 18A-18C).
Kordus II does not disclose the second connection path comprising a low pass filter.
Moon discloses a device (Figures 1-4B) comprising a phase change switch (switch shown in Figures 1A, 1B, 2A, 80, Figure 3A, 88, Figure 3B), comprising:
Phase change material;
a first connection path, a resistance of the first connection path corresponding with a state of the phase change material (comprising RF transmission terminals coupled to 30, 30, Figure 1A), resistance selectable for RF transmission determined by the selected capacitors 30, 32, Figure 1A),
a second connection comprising a low pass filter, a resistance of the second connection path corresponding with a state of the phase change material (comprising terminals coupled to 17, 19, Figure 1Aresistance selectable for blocking RF transmission determined by selected inductors 17, 19, Figure 1A), and the first and second connection paths being different (first connection path coupled to capacitors 30, 32 and second connection path coupled to inductors 17, 19, Figure 1A).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide in the device of Kordus II, a low pass filter as taught by Moon, to block radio frequency signals passing through the second connection (see Moon, Paragraph 26).
Regarding Claim 8, combination of Kordus II and Moon discloses the phase change switch of Claim 7, wherein the first connection path includes a first portion of the phase change material (the first connection path from InA to OUT includes the left portion of PCM, Figures 18A-18C), wherein the second connection path includes a second portion of the phase change material (the second connection path from InB to OUT includes the right portion of PCM, Figures 18A-18C).
Regarding Claim 10, combination of Kordus II and Moon discloses the phase change switch of Claim 7, wherein a portion of the second connection path overlaps a portion of the first connection path (the second connection path and the first connection path from the middle of PCM to OUT, Figures 18A-18C).
Regarding Claim 11, combination of Kordus II and Moon discloses the phase change switch of Claim 7, wherein the phase change switch is configured to switch radio frequency signals (Moon, 17, 19, RF blocking inductors).
Regarding Claim 12, combination of Kordus II and Moon discloses the phase change switch of Claim 7, wherein the phase change switch is coupled with an additional phase change switch in a single pole multi throw configuration (Figure 18C shows single pole multi throw switch configuration).
Claims 5, 20 are rejected under 35 U.S.C. 103 as being unpatentable over Kordus II et al. (US 2007/0096071) in view of Derharcobian et al. (US 7,511,532) and Borodulin et al. (US 2016/0079019).
Regarding Claim 5, combination of Kordus II does not specifically disclose the phase change switch of Claim 1, wherein the phase change switch is configured to switch radio frequency signals.
Borodulin discloses a phase change switch (Figures 1-8, 10, Figure 1), comprising: a phase change material (20, Figure 1, 150, Figure 4);
first terminal and second terminal configured to provide a first connection path between the first and second terminals and a control terminal (comprising IN, OUT terminals, Figures 1, 4), and a control terminal (CNTRL terminal, Figure 4), wherein the phase change switch is configured to switch radio frequency signals (Paragraph 19, “…the input signal IN can be provided as a radio frequency (RF) signal”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to configure the phase change switch of Kordus II to switch radio frequency signals as taught by Borodulin, to use in radio frequency communication applications.
Claim 20 recites the method corresponding to the phase change switch of Claim of Claim 5. Therefore, Claim 20 is rejected at least for the same reasons as for Claim 5.
Claims 14-17 are rejected under 35 U.S.C. 103 as being unpatentable over Kordus II et al. (US 2007/0096071) in view of Derharcobian et al. (US 7,511,532) and Kau (US 2012/0320670).
Regarding Claim 14, combination of Kordus II and Derharcobian does not specifically disclose the method of Claim 13, further comprising determining a conductivity state of the second connection path of the phase change switch.
Kau discloses a method (Figures 1-7B), comprising:
providing a phase change switch (comprising PCMS cell 200 including PCM
state material 206 and heater/bottom electrode 208, Figure 2, 620 including phase
change switches PCMS cells, Figure 6) including:
a phase change material (comprising PCM state material 206),
a heater configured to heat the phase change material (comprising heater/bottom
electrode 208, Figure 2),
first and second terminals (terminals connected to 210, 220, Figure 2),
a first connection path between the first and second terminals, the first
connection path having a first selectable conductivity (connection path between 210,
220 having selectable conductivity based on task, read, write or programming, Figure 2,
Paragraph 23),
controlling the heater of the phase change switch to change the state of the
phase change switch (734, 735, Figure 7B, Figures 3-5, Paragraph 2, “…Phase
change memories are often programmed using heat generated by an electrical current
to control the state of the phase change material”, Paragraph 31,” …..in response to the
applied voltage potentials, and may result in heating of phase change state material
120. This heating and subsequent cooling may alter the memory state or phase of
phase change state material 120…”); and
determining a conductivity state of the phase change switch (Vverify, Figure 1, Figures 3-5, 703, Figure 7A, 731, Figure 7B). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include in the combination, determining the conductivity state of the phase change switch as taught by Kau and to select the second connection path for the determination for fault determination and trouble shooting.
Regarding Claim 15, combination of Kordus II, Derharcobian and Kau discloses the method of Claim 14, wherein the determining the conductivity state of the second connection path comprises applying one of a voltage and a current to the phase change material with the third and fourth terminals, and measuring the other of the voltage and the current in response to the applying (Kau, Figures 3-5, Paragraph 34).
Regarding Claim 16, combination of Kordus II, Derharcobian and Kau discloses the method of Claim 14, further comprising: comparing the determined conductivity state of the second connection path with a target state of the phase change switch (Kau, 704, Figure 7A, 733, Figure 7B, Paragraphs 71-72); and
controlling the heater of the phase change switch with the control path to change the state of the phase change switch to the target state if the state of the second connection path of the phase change switch does not correspond to the target state of the phase change switch (Kau, 734, 735, Figure 7B, Figures 3-5, Paragraph 2, “…Phase change memories are often programmed using heat generated by an electrical current to control the state of the phase change material”, Paragraph 31,” …..in response to the applied voltage potentials, and may result in heating of phase change state material 120. This heating and subsequent cooling may alter the memory state or phase of phase change state material 120…”).
Regarding Claim 17, combination of Kordus II, Derharcobian and Kau discloses the method of Claim 16, wherein determining the state of the second connection path of the phase change switch (Kau, Vverify, Figure 1, Figures 3-5, 703, Figure 7A, 731, Figure 7B), comparing the determined conductivity state of the second connection path with a target state of the phase change switch (Kau, 704, Figure 7A, 733, Figure 7B, Paragraphs 71-72), and controlling the heater of the phase change switch are performed by a controller (734, 735, Figure 7B, Figures 3-5, Paragraph 2, “…Phase change memories are often programmed using heat generated by an electrical current to control the state of the phase change material”, Paragraph 31,” …..in response to the applied voltage potentials, and may result in heating of phase change state material 120. This heating and subsequent cooling may alter the memory state or phase of phase change state material 120…”).
Claims 21-22 are rejected under 35 U.S.C. 103 as being unpatentable over Kordus II et al. (US 2007/0096071) in view of Derharcobian et al. (US 7,511,532) and Moon (US 2014/0191181).
Regarding Claim 21, combination of Kordus II and Derharcobian does not specifically disclose the phase change switch of Claim 1, wherein the second connection path comprises a decoupling element configured to block signals from the first connection path.
Moon discloses a device (Figures 1-4B) comprising a phase change switch (switch shown in Figures 1A, 1B, 2A, 80, Figure 3A, 88, Figure 3B), comprising:
Phase change material;
a first connection path, a resistance of the first connection path corresponding with a state of the phase change material (comprising RF transmission terminals coupled to 30, 30, Figure 1A), resistance selectable for RF transmission determined by the selected capacitors 30, 32, Figure 1A),
a second connection path, a resistance of the second connection path corresponding with a state of the phase change material (comprising terminals coupled to 17, 19, Figure 1Aresistance selectable for blocking RF transmission determined by selected inductors 17, 19, Figure 1A), and the first and second connection paths being different (first connection path coupled to capacitors 30, 32 and second connection path coupled to inductors 17, 19, Figure 1A),
wherein the second connection path comprises a decoupling element configured to block signals from the first connection path (RF blocking inductors 17, 19, Figures 1A, 1B).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide in the combination, decoupling elements as taught by Moon, to block radio frequency signals passing through the second connection (see Moon, Paragraph 26).
Regarding Claim 22, combination of Kordus II, Derharcobian and Moon discloses the phase change switch of claim 21, wherein the decoupling element comprises an inductor (Moon, RF blocking inductors 17, 19).
Response to Arguments
Applicant's arguments filed on 6/18/2026 have been fully considered but they are not persuasive and/or rendered moot in view of new grounds of rejection necessitated by amendments.
Applicant’s arguments, on Page 6 of the Remarks toward Double Patenting Rejection of Claims 1,5-6,13-20 are rendered moot in view of new grounds of rejection (Non-statutory Double Patenting Rejection with no secondary reference is changed to Obviousness Type with secondary reference).
Applicant’s arguments, on Pages 7-8 of the Remarks toward anticipation rejection of Claims 1-4, 6-10, 12-13 using Kordus II are rendered moot in view of new grounds of rejection as the rejection is changed to obviousness type over Kordus II by applying secondary reference to address new limitations (Derharcobian for the teaching of the limitation of the third and fourth terminals being different from the first and second terminals in Claim 1 and Claim 13 and Moon for the teaching of low pass filter in the second connection path).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Ovshinsky et al. (US 2004/0179394) discloses a phase change switch in Figure 3, comprising: a phase change material (120); first and second terminals configured to provide a first connection path between the first and second terminals (first and second terminals 112, 114 coupled to 120 providing connection path via 120 between the terminals); third and fourth terminals configured to provide a second connection path between the third and fourth terminals (first and second terminals 112, 114 coupled to 110 providing connection path via 110 between the terminals); a heater (comprising 110); and a fifth terminal configured to provide a control path to the heater (116 configured to control 110), the phase change switch having a state corresponding with a resistance of the first connection path and corresponding with a resistance of the second connection path (120, 110 in parallel connection between 112, 114), the first connection path, the second connection path, and the control path being different (first connection path via 120, second connection path via 110 and control path from 130 to 110).
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LUCY M THOMAS whose telephone number is (571)272-6002. The examiner can normally be reached Mon-Fri 9:30 am - 5:30 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Crystal L Hammond can be reached at (571)270-1682. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LUCY M THOMAS/Examiner, Art Unit 2838, 6/30/2026
/CRYSTAL L HAMMOND/Supervisory Primary Examiner, Art Unit 2838
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