Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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 2-10 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. US 12,094,866 B2. Although the claims at issue are not identical, they are not patentably distinct from each other.
Regarding claim 2, Claim 1 of the cited patent (US 12,094,866 B2) clearly discloses every limitation of claim 2 with the exception of “a fourth metal layer is one of the third metal layers that faces the first metal layer with one or more of the insulating layers between the fourth metal layer and the first metal layer, wherein a pattern density of the fourth metal layer is 80% or greater.” This merely changes which side of the device must have a metal layer having this specified pattern density. As the claimed device is mostly symmetric, with the only difference between the first and second metal layers being that the first metal layer is electrically connected to nonvolatile semiconductor memories, it would be obvious to have a pattern density of a metal layer that faces the second metal layer be in the specified range because one would expect to gain similar advantages.
Regarding claim 3, the claimed limitation in this claim is clearly claimed in claim 2 of the cited patent, as the text is identical.
Regarding claim 4, the claimed limitation in this claim is clearly claimed in claim 3 of the cited patent, as the text is identical.
Regarding claim 5, the claimed limitation in this claim is clearly claimed in claim 4 of the cited patent, as the text is identical.
Regarding claim 6, the claimed limitation in this claim is clearly claimed in claim 5 of the cited patent, as the text is identical.
Regarding claim 7, the claimed limitation in this claim is clearly claimed in claim 6 of the cited patent, as the text is identical.
Regarding claim 8, the claimed limitation in this claim is clearly claimed in claim 7 of the cited patent, as the text is identical.
Regarding claim 9, the claimed limitation in this claim is clearly claimed in claim 8 of the cited patent, as the text is identical.
Regarding claim 10, the claimed limitation in this claim is clearly claimed in claim 9 of the cited patent, as the text is identical.
Claims 2-10 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, and 7-11 of U.S. Patent No. US 9,437,533 B2 in view of Burke et al. (US 2006/0055501).
Regarding claim 2, Claim 1 of the cited patent (US 9,437,533 B2) discloses everything recited in claim 2 of the cited patent except for the recitation of a fourth metal layer is one of the third metal layers that faces the second metal layer with one or more of the insulating layers between the fourth metal layer and the second metal layer, wherein a pattern density of the fourth metal layer is 80% or greater.
Burke et al disclose a device having a fourth metal layer (50, figure 4) is one of the third metal layers (14, figure 4) that faces the second metal layer (12, figure 4) with one or more of the insulating layers (40, 42, figure 4) between the fourth metal layer (50,figure 4) and the second metal layer (12, figure 4), wherein a pattern density of the fourth metal layer is 80% or greater.
Therefore, it would have been obvious o one of ordinary skill in the art at the time the invention was made to modify claim 1 of the cited patent by adding a fourth metal layer to a memory cell so as to store data information in a memory device. Also, it would have been obvious to one of ordinary skill in the art at the time the invention was made to select a second group of metal layer being 80% and a pattern density of a fourth metal layer is 80% of greater, since such selection would have involved a mere change in the size of the component. A change in size is generally recognized a being within the level of ordinary skill in the art. In re Rose, 105 USPQ 239 (CCPA 1955).
Regarding claim 3, the claimed limitation in this claim is clearly claimed in claim 2 of the cited patent.
Regarding claim 4, the claimed limitation in this claim is clearly claimed in claim 3 of the cited patent.
Regarding claim 5, the claimed limitation in this claim is clearly claimed in claim 4 of the cited patent.
Regarding claim 6, the claimed limitation in this claim is clearly claimed in claim 7 of the cited patent.
Regarding claim 7, the claimed limitation in this claim is clearly claimed in claim 8 of the cited patent.
Regarding claim 8, the claimed limitation in this claim is clearly claimed in claim 9 of the cited patent.
Regarding claim 9, the claimed limitation in this claim is clearly claimed in claim 10 of the cited patent.
Regarding claim 10, the claimed limitation in this claim is clearly claimed in claim 11 of the cited patent.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL K ELLIOTT whose telephone number is (571)357-4606. The examiner can normally be reached Mon-Fri 8:00 -5:00.
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, Brent Fairbanks can be reached at 408-918-7532. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DANIEL KURT ELLIOTT/Examiner, Art Unit 2899
/Brent A. Fairbanks/Supervisory Patent Examiner, Art Unit 2899
Prosecution Insights