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 1-5, 8-16, and 19-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4, 6-12, and 18-20 of copending Application No. 18/833,914 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the reference application recite “a semiconductor structure defect monitoring method” and “injecting a laser beam into a semiconductor structure” instead of “a process monitoring method” and “injecting a laser beam in a thin film” as claimed in the instant application. The claims of the instant application are broader and therefore anticipated by the claims of the reference application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-6, 8-17, and 19-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 4-10, 12, and 17-19 of copending Application No. 18/833,918 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the reference application recite “a thin film monitoring method” and “injecting a laser beam into a thin film on a substrate” instead of “a process monitoring method” and “injecting a laser beam in a thin film” as claimed in the instant application. The claims of the instant application are broader and therefore anticipated by the claims of the reference application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 7 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 4-10, 12, and 17-19 of copending Application No. 18/833,918 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the claims of the reference application to include when a defect type indicating that the thin film is abnormal is derived by comparing the reference data to the carrier recombination time constant divided by type of defects in the thin film, controlling process conditions related to the derived defect type, as claimed in claim 7, because the objective is to monitor production of thin film.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 18 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 4-10, 12, and 17-19 of copending Application No. 18/833,918 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the claims of the reference application to include wherein, when a defect type indicating that the thin film is abnormal is derived by comparing the reference data to the carrier recombination time constant divided by type of defects in the thin film, the operation controller controls process conditions related to the derived defect type, as claimed in claim 18, because the objective is to monitor production of thin film.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Claims 1-2 and 11-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hayashi et al. (USPN 10,475,711 B2).
With respect to claim 1, Hayashi et al. disclose a process monitoring method comprising: injecting a laser beam (via excitation light irradiation means - 1) capable of forming excited carriers in a thin film (20b); irradiating an electromagnetic wave (via microwave irradiation means - 3) onto the thin film while the excited carriers in the thin film are recombining; measuring characteristic information of the electromagnetic wave reacting with the excited carriers in the thin film; and determining whether the thin film is normal, by comparing reference data to a result using the measured characteristic information of the electromagnetic wave (Fig. 7 & column 3, line 20 - column 15, line 47).
With respect to claim 12, Hayashi et al. disclose a process monitoring apparatus comprising: a beam emitter (excitation light irradiation means - 1) for generating a laser beam to be injected into a thin film (20b) to form excited carriers in the thin film; an electromagnetic wave irradiator (microwave irradiation means - 3) for irradiating an electromagnetic wave onto the thin film while the excited carriers in the thin film are recombining; a measurer (signal processor - 8) for measuring characteristic information of the electromagnetic wave reacting with the excited carriers in the thin film; and an operation controller (evaluation means - 9) for determining whether the thin film is normal, by comparing reference data to a result using the measured characteristic information of the electromagnetic wave (Fig. 7 & column 3, line 20 - column 15, line 47).
With respect to claim 2, Hayashi et al. disclose wherein the characteristic information of the electromagnetic wave comprises a transmittance or reflectance of the electromagnetic wave (column 3, lines 20+).
With respect to claim 11, Hayashi et al. disclose wherein the excited carriers in the thin film comprise excited free electrons or holes in the thin film (column 6, lines 1+).
With respect to claim 13, Hayashi et al. disclose wherein the measurer measures a transmittance or reflectance of the electromagnetic wave as the characteristic information of the electromagnetic wave (column 3, lines 20+).
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.
Claims 9-10 and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Hayashi et al. (USPN 10,475,711 B2) as applied to claims 1 and 12 above, and further in view of Fukasawa (US 2001/0029436 A1).
With respect to claims 9 and 19, Hayashi et al. do not specifically disclose wherein the laser beam comprises a femtosecond laser beam. Fukasawa discloses a laser beam comprises a femtosecond laser beam (paragraph 0087). It would have been obvious to one of ordinary skill in the art at the time the invention was made to modify Hayashi et al. to have the laser beam comprise a femtosecond laser beam, as a matter of design choice, as this is a viable option, as taught by Fukasawa.
With respect to claims 10 and 20, Hayashi et al. do not specifically disclose wherein the electromagnetic wave comprises a terahertz wave. Fukasawa discloses an electromagnetic wave comprises a terahertz wave (paragraphs 0010-0011). Fukasawa discloses use of a terahertz wave to enable obtaining electrical material quantities to be measured and tested without contaminating or otherwise causing a defect in the measurement target. It would have been obvious to one of ordinary skill in the art at the time the invention was made to modify Hayashi et al. to have the electromagnetic wave comprise a terahertz wave, as a matter of design choice, to enable electrical material quantities to be measured and tested without contaminating or causing defects in the measurement target, as taught by Fukasawa.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JURIE YUN whose telephone number is (571)272-2497. The examiner can normally be reached 10:30 am - 7:30 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David J Makiya can be reached at 571 272-2273. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JURIE YUN/Primary Examiner, Art Unit 2884
April 2, 2026
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