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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-8 and 12-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 12,106,988 and claims 1-19 of U.S. Patent No. 11,257,700. Although the claims at issue are not identical, they are not patentably distinct from each other because structural limitations in the claims of the instant patent application are fully disclosed and claimed by the patents.
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 1-20 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. In claim 1, the phrase “that that” [sic] is incomplete and should be replaced with --that--. In claim 1, the phrase “an substantially” [sic] should be replaced with --a substantially--. In claim 1, 12 and 19, the phrase “substantially continuous outer surface” lacks proper antecedent basis the specification as originally filed does not provide support for such phrase and also Figure 4 shows a gap between two interlock components 434 & 452.
Claim Rejections - 35 USC § 103
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 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) 1-7, 12 and 14-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kaashoek (2014/0076774) in view of Escusa et al. (2017/0178937; hereinafter Escusa).
As to claim 1, Kaashoek discloses an apparatus (20; Figs. 9-12) in which to store a wafer (21) and maintain separation from adjacent wafers, the apparatus comprising an annular ring (20a; 20b) having an outer edge (see Fig. 12 below) that defines a periphery of the annular ring, and an inner edge defines a central opening (40; Fig. 9) extending from a top surface (30) of the annular ring to a bottom surface of the annular ring; a first recess (26) that is arranged along the inner edge and that extends downward from the top surface and inward toward the central opening; a second recess (22) is arranged along the inner edge and that extends downward from the first recess such that when the wafer is set within the first recess, a gap is maintained between a bottom side of the wafer and the bottom surface (28); a third recess (see Fig. 12 below) is arranged along the outer edge and extends downward from the top surface and outward toward the outer edge; and a protrusion (see Fig. 12 below) that is arranged along the bottom surface (28) and is formed via extension of the outer edge so as to define an inverted recess. Kaashoek further discloses the third recess is sized such that when the apparatus engages an upwardly-adjacent apparatus, the third recess accepts a complementary protrusion along a bottom surface of the upwardly-adjacent apparatus, and the protrusion is sized such that when the apparatus engages a downwardly-adjacent apparatus, the protrusion fits within a complementary recess along a top surface of the downwardly-adjacent apparatus. To the extent the Examiner can determine the scope of the claims that the third recess and the protrusion are sized that when the apparatus engages either the upwardly-adjacent apparatus or downwardly-adjacent apparatus to form a stack of apparatus, the stack of apparatus has a substantially continuous outer surface defined by outer edges of the upwardly-adjacent apparatus, the apparatus, and/or the downwardly-adjacent apparatus. Escusa discloses a wafer separator (300; Figs. 3-4) comprising an annular ring (Fig. 3A) including a first recess (312; Fig. 4) configured to receive a wafer and the first recess having a plurality of notches (302; Figs. 3A & 3C) disposed along the periphery of the annular ring as claimed. Escusa further discloses each annular ring having an interlocking protrusion (314) and an interlocking recess (310) that when the wafer separator engages either the upwardly-adjacent wafer separator or downwardly-adjacent wafer separator to form a stack of wafer separators, the stack of wafer separator has a substantially continuous outer surface defined by outer edges of the upwardly-adjacent wafer separator, the wafer separator, and/or the downwardly-adjacent separator (Fig. 4). Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention in view of Escusa to modify the apparatus of Kaashoek so the apparatus is constructed with the third recess and the protrusion are sized that when the apparatus engages either the upwardly-adjacent apparatus or downwardly-adjacent apparatus to form a stack of apparatus, the stack of apparatus has a substantially continuous outer surface defined by outer edges of the upwardly-adjacent apparatus, the apparatus, and/or the downwardly-adjacent apparatus to provide an additional strength and rigidity to the stack of apparatus and also because the substitution of one known element for another would have yielded predictable results to one of ordinary skill in the art at the time of the invention.
As to claim 2, Kaashoek further a mechanism (305, 307, 309; Fig. 16) that is arranged along the outer edge and is configured to secure the apparatus to the upwardly-adjacent apparatus or the downwardly-adjacent apparatus.
As to claims 3 and 4, see [0051]-[0052] & Fig. 12.
As to claims 5 and 6, the apparatus of Kaashoek as modified above further fails to show the first recess includes a plurality of notches that are disposed along the periphery of the annular ring and allow for easier removal of the wafer from the annular ring when the wafer is set within the first recess as claimed. Escusa discloses the wafer separator (300; Figs. 3-4) as above comprising the annular ring (Fig. 3A) including the first recess (312; Fig. 4) configured to receive a wafer and the first recess having the plurality of notches (302; Figs. 3A & 3C) disposed along the periphery of the annular ring as claimed. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention in view of Escusa to modify the apparatus of Kaashoek as modified so the apparatus is constructed with the first recess comprises a plurality of notches disposed along the periphery of the annular ring to facilitate removal the wafer from the annular ring.
As to claim 7, see [0003].
As to claim 12, Kaashoek discloses the apparatus as above comprising the annular ring (20) as above, the first recess (26) as above, a second recess as claimed (see the third recess of Fig. 12 below), and the protrusion as above.
As to claim 14, Kaashoek further discloses a structural feature (23, 24) that extends outward from the outer edge of the annular ring to allow for easier transport of the apparatus.
As to claim 15, Kaashoek appears to disclose a periphery of the structural feature (23, 24) is in the form of a rectangle (Fig. 9-11 & 14). To the extent that Kaashoek further fails to disclose the periphery of the structural feature is in the form of a square or a rectangle, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the apparatus of Kaashoek as modified so the apparatus is constructed with the periphery of the structural feature is in the form of a square or a rectangle because a change in form or shape is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results.
As to claim 16, Kaashoek discloses the structural feature includes a handle (24).
As to claim 17, Kaashoek discloses the central opening has a cylindrical form (Fig. 9) that is defined from the top surface of the annular ring to the bottom surface of the annular ring.
As to claim 18, Kaashoek discloses a diameter of the central opening is maximized by minimizing a depth and a width of the first recess while ensuring that the wafer is able to stably sit within the first recess.
As to claim 19, Kaashoek discloses a system (Fig. 12) comprising at least two separators (20a, 20b) in which to store wafers (21), each separator of the at least two separators including the annular ring (20; see claim 1 above) as above, the first recess (26) as above, the second recess (22) as above, the protrusion as above, a bottom cover (200; Fig. 1) in which a bottommost separator of the at least two separators is placed, and a top cover (100) that when secured to the bottom cover, causes the at least two separators to be fully enclosed by the top and bottom covers.
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Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over the references as applied to claim 1 above, and further in view of Davison (7,784,178). The apparatus of Kaashoek as modified further fails to show the annular ring comprises ethylene chlorotrifluoroethylene. Davison teaches a semiconductor wafer container (100) formed from ethylene chlorotrifluoroethylene (column 2, lines 38-49). Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention in view of Davison to modify the apparatus of Kaashoek as modified so the apparatus is constructed with the annular ring comprises ethylene chlorotrifluoroethylene since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice.
Claim(s) 9-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over the references as applied to claim 1 above, and further in view of The Official Notice and/or Cheng et al. (6,247,599; hereinafter Cheng).
As to claim 9, the apparatus of Kaashoek as modified above having most of the limitations of the claims except for the annular ring comprises a first material that provides structural rigidity and a second material that is either not conductive or inhibits buildup of static electricity as claimed. The Official Notice is taken of an old and conventional practice of providing a device comprises a first material that provides structural rigidity and a second material that is either not conductive or inhibits buildup of static electricity. Cheng, is cited by way of example only, teaches a container (50; Fig. 3 or 6) comprising a base (52) formed from a metal shielding layer/first material (54) such as stainless steel or any other metallic (column 6, lines 34-67) which is considered equivalent to provide structural rigidity as claimed and a second material formed from a process such as plastic injection molding (column 6, lines 38-41) which is considered equivalent to not conductive as claimed (abstract). Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention in view of The Official Notice and/or Cheng to modify the apparatus of Kaashoek so the annular ring is constructed with a first material that provides structural rigidity and a second material that is either not conductive or inhibits buildup of static electricity as claimed for better protecting the wafers.
As to claims 10 and 11, Cheng further teaches a method of coating/incorporating a second material onto a first material (column 7, lines 35-40).
Claim(s) 13 and 20-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over the references as applied to claim 12 or 19 above, and further in view of Amador et al. (2004/0149623; hereinafter Amador).
As to claim 13, the apparatus of Kaashoek as modified above having most of the limitations of the claims. Kaashoek further discloses the first recess is sized such that when the apparatus engages the upwardly-adjacent apparatus with the wafer set within the first recess, a top side of the wafer (21) is above the top surface of the annular ring in lieu of substantially coplanar with the top surface of the annular ring. Amador discloses an apparatus for receiving a wafer comprising an annular ring (30; Fig. 4) having a first recess (42, 44) extending downward from a top surface (40) for supporting a wafer (32) such that a top side of the wafer is substantially coplanar ([0023]; Amador discloses a first depth 44 may be equal/coplanar to the thickness of the wafer) with the top surface of the annular ring. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention in view of Amador to modify the apparatus of Kaashoek as modified so the annular ring is constructed with the first recess is sized such that when the apparatus engages the upwardly-adjacent apparatus with the wafer set within the first recess, a top side of the wafer is substantially coplanar with the top surface of the annular ring instead of above the top surface of the annular ring for better protecting the wafer such as to prevent damage to the wafer while stacking.
As to claims 20 and 21, Amador further teaches a first protective substrate (61; Fig. 1) and a second protective substrate (61) as claimed.
Response to Arguments
Applicant's arguments with respect to all pending claims have been considered but are deemed to be moot in view of the new grounds of rejection.
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 extension fee 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 date of this final action.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LUAN K BUI whose telephone number is (571)272-4552. The examiner can normally be reached Generally M-F, 7-4.
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/LUAN K BUI/
Primary Examiner, Art Unit 3736
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