DETAILED ACTION
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 1-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of U.S. Patent No. 12,107,057, hereafter referred to as the patent. Although the claims at issue are not identical, they are not patentably distinct from each other because the current claims are broader.
Regarding claim 1, the patent claims a method for production of a permanent, electrically conductive connection between a first surface of a first substrate and a second surface of a second substrate (column 9, lines 8-11), the first surface of the first substrate having metallic (column 9, lines 8-11) and non-metallic regions (claim 2), the second surface of the second substrate having metallic and non-metallic regions (claim 2), the method comprising:
conditioning the first and/or second surfaces to produce the permanent, electrically conductive connection of the first and second surfaces by substitution diffusion between metal ions and/or metal atoms of the metallic regions of the first and second surfaces upon connection of the first and second surfaces to each other (column 9, lines 12-20);
aligning the first and second surfaces with each other (column 9, lines 24-26); and
bonding the first and second surfaces to each other (column 9, lines 30-32).
With respect to claim 2, the patent (claim 2) claims the bonding of the first and second surfaces to each other, the non-metallic regions of the first and second surfaces contact each other in a single step.
As to claim 3, the patent (column 9, lines 12-20) claims the conditioning of the first and/or second surfaces comprises conditioning the metallic regions of the first and/or second surfaces.
In re claim 4, the patent (claim 5) claims hydrogen is implanted during the conditioning of the metallic regions of the first and/or second surfaces.
Concerning claim 5, the patent (claim 5) claims the conditioning of the metallic regions of the first and/or second surfaces comprises producing near surface layers with surface defects in the metallic regions of the first and/or second surfaces by implanting gas ions therein and/or applying metallic nanoparticles thereto. While the patent may not specifically claim surface defects, it would be an inherent part of the process.
Pertaining to claim 6, the patent (claim 7) claims the non-metallic regions include silicon dioxide or an organic insulator.
In claim 7, the patent (claim 2) claims the non-metallic regions of the first and second surfaces are respectively aligned with the metallic regions of the first and second surfaces.
Regarding claim 8, though the patent fails to claim the non-metallic regions of the first and second surfaces are respectively recessed from the metallic regions of the first and second surfaces, it would have been obvious to one of ordinary skill in the art at the time of the invention to use recessed non-metallic regions in the invention of the patent because it is conventionally known and used arrangement. The use of conventional materials to perform their known functions is obvious (MPEP 2144.07).
With respect to claim 9, though the patent fails to claim the conditioning of the first and/or second surfaces produces a surface roughness of the first and/or second surfaces of less than 20 nm with AFM for a 2 x 2 µm surface, it would have been obvious to one ordinary skill in the art at the time of the invention to optimize the surface roughness through routine experimentation (MPEP 2144.05).
Claims 1-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of U.S. Patent No. 11,282,801, hereafter referred to as the patent. Although the claims at issue are not identical, they are not patentably distinct from each other because the current claims are broader.
As to claim 1, the patent claims a method for production of a permanent, electrically conductive connection between a first surface of a first substrate and a second surface of a second substrate, the first surface of the first substrate having metallic (column 9, lines 8-11) and non-metallic regions (column 10, lines 1-5), the second surface of the second substrate having metallic (column 9, lines 8-11) and non-metallic regions (column 10, lines 1-5), the method comprising:
conditioning the first and/or second surfaces to produce the permanent, electrically conductive connection of the first and second surfaces by substitution diffusion between metal ions and/or metal atoms of the metallic regions of the first and second surfaces upon connection of the first and second surfaces to each other (column 9, lines 12-22);
aligning the first and second surfaces with each other (column 9, lines 23-30); and
bonding the first and second surfaces to each other (column 10, lines 1-5).
In re claim 2, the patent (claim 3) claims during the bonding of the first and second surfaces to each other, the non-metallic regions of the first and second surfaces contact each other in a single step.
Concerning claim 3, the patent claims the conditioning of the first and/or second surfaces comprises conditioning the metallic regions of the first and/or second surfaces (column 9, lines 12-22).
Pertaining to claim 4, the patent (claim 2) claims hydrogen is implanted during the conditioning of the metallic regions of the first and/or second surfaces.
In claim 5, the patent (column 10, lines 1-21) claims the conditioning of the metallic regions of the first and/or second surfaces comprises producing near surface layers with surface defects in the metallic regions of the first and/or second surfaces by implanting gas ions therein and/or applying metallic nanoparticles thereto. While the patent may not specifically claim surface defects, it would be an inherent part of the process.
Regarding claim 6, though the patent fails to claim the non-metallic regions include silicon dioxide or an organic insulator, it would have been obvious to one of ordinary skill in the art at the time of the invention to use these materials in the invention of the patent because they are conventionally known and used in the art. The use of conventional materials to perform their known functions is obvious (MPEP 2144.07).
With respect to claim 7, the patent (column 9, lines 23-30) claims the non-metallic regions of the first and second surfaces are respectively aligned with the metallic regions of the first and second surfaces.
As to claim 8, though the patent fails to claim the non-metallic regions of the first and second surfaces are respectively recessed from the metallic regions of the first and second surfaces, it would have been obvious to one of ordinary skill in the art at the time of the invention to use recessed non-metallic regions in the invention of the patent because it is conventionally known and used arrangement. The use of conventional materials to perform their known functions is obvious (MPEP 2144.07).
In re claim 9, though the patent fails to claim the conditioning of the first and/or second surfaces produces a surface roughness of the first and/or second surfaces of less than 20 nm with AFM for a 2 x 2 µm surface, it would have been obvious to one ordinary skill in the art at the time of the invention to optimize the surface roughness through routine experimentation (MPEP 2144.05).
Claims 1-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of U.S. Patent No. 9,478,518, hereafter referred to as the patent. Although the claims at issue are not identical, they are not patentably distinct from each other because the current claims are broader.
Concerning claim 1, the patent claims a method for production of a permanent, electrically conductive connection between a first surface of a first substrate and a second surface of a second substrate, the first surface of the first substrate having metallic (column 8, lines 63-67) and non-metallic regions, the second surface of the second substrate having metallic (column 8, lines 63-67) and non-metallic regions, the method comprising:
conditioning the first and/or second surfaces to produce the permanent, electrically conductive connection of the first and second surfaces by substitution diffusion between metal ions and/or metal atoms of the metallic regions of the first and second surfaces upon connection of the first and second surfaces to each other (column 9, lines 5-10);
aligning the first and second surfaces with each other (column 9, lines 11-15); and
bonding the first and second surfaces to each other (column 9, lines 16-20).
Though the patent fails to claim non-metallic regions, it would have been obvious to one of ordinary skill in the art at the time of the invention to use non-metallic regions in the invention of the patent because they are conventionally known and used to surround the metallic regions. The use of conventional materials to perform their known functions is obvious (MPEP 2144.07).
Pertaining to claim 2, though the patent fails to claim during the bonding of the first and second surfaces to each other, the non-metallic regions of the first and second surfaces contact each other in a single step, it would have been obvious to one of ordinary skill in the art at the time of the invention to use a single step in the invention of the patent because it is conventionally known and used in the art. The use of conventional materials to perform their known functions is obvious (MPEP 2144.07).
In claim 3, the patent (column 9, lines 5-10) claims the conditioning of the first and/or second surfaces comprises conditioning the metallic regions of the first and/or second surfaces.
Regarding claim 4, though the patent fails to claim hydrogen is implanted during the conditioning of the metallic regions of the first and/or second surfaces, it would have been obvious to one of ordinary skill in the art at the time of the invention to use a hydrogen in the invention of the patent because it is conventionally known and used in the art. The use of conventional materials to perform their known functions is obvious (MPEP 2144.07).
With respect to claim 5, the patent (column 9, lines 5-10 claims voids) claims the conditioning of the metallic regions of the first and/or second surfaces comprises producing near surface layers with surface defects in the metallic regions of the first and/or second surfaces by implanting gas ions therein and/or applying metallic nanoparticles thereto.
As to claim 6, though the patent fails to claim the non-metallic regions include silicon dioxide or an organic insulator, it would have been obvious to one of ordinary skill in the art at the time of the invention to use a these materials in the invention of the patent because it is conventionally known and used in the art. The use of conventional materials to perform their known functions is obvious (MPEP 2144.07).
In re claim 7, though the patent fails to claim the non-metallic regions of the first and second surfaces are respectively aligned with the metallic regions of the first and second surfaces, it would have been obvious to one of ordinary skill in the art at the time of the invention to use this configuration in the invention of the patent because it is conventionally known and used in the art. The use of conventional materials to perform their known functions is obvious (MPEP 2144.07).
Concerning claim 8, though the patent fails to claim the non-metallic regions of the first and second surfaces are respectively recessed from the metallic regions of the first and second surfaces, it would have been obvious to one of ordinary skill in the art at the time of the invention to use this configuration in the invention of the patent because it is conventionally known and used in the art. The use of conventional materials to perform their known functions is obvious (MPEP 2144.07).
Pertaining to claim 9, though the patent, which claims optimization of the surface roughness (claims 4 and 5), fails to specifically claim the conditioning of the first and/or second surfaces produces a surface roughness of the first and/or second surfaces of less than 20 nm with AFM for a 2 x 2 µm surface, it would have been obvious to one ordinary skill in the art at the time of the invention to optimize the surface roughness through routine experimentation (MPEP 2144.05).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID A ZARNEKE whose telephone number is (571)272-1937. The examiner can normally be reached M-F.
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/DAVID A ZARNEKE/Primary Examiner, Art Unit 2891 8/25/26
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