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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,742,390 (390’ patent) and claims 1 and 3 of U.S. Patent No. 12,142,639 (‘639 patent).
Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of the ‘390 patent claims the same basic device architecture, except it is materially narrower because it specifies the composition of the two superlattices and the interlayer. Present claim 1 largely removes those compositional limitations. A generic claim to the same structure would have been obvious.
Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1 and 3 of the ‘639 patent claims the same basic device architecture, and claim 3 adds an AlGaN layer between the first and second superlattices. Present claim 1 reads broadly on that structure while omitting narrower material/cap limitations. A generic claim to the same structure would have been obvious.
Thus, the claims are not identical, but the pending claim does not recite a structural distinction that would make the claimed device patentably distinct from the narrower patented embodiments. It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to omit specific material limitations. The motivation would be broadening of the patented subject matter and omission is obvious if the function of the element is not desired. See MPEP 2144.04.
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.
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent Application Publication No. 2016/0240679 (Chen), cited by Applicant.
Chen discloses
1. A semiconductor device, comprising:
a substrate 102;
a buffer structure 124, 126, 130, 132 over the substrate 102, the buffer structure including:
a first superlattice structure 124 over the substrate 102;
an interlayer 126 over the first superlattice structure 124; and
a second superlattice structure 130 over the interlayer 126;
a hetero-epitaxy structure 134 and 138/304 over the buffer structure 124, 126, 130, 132;
a gate 312 over the hetero-epitaxy structure 134 and 138/304;
a drain 308, 310 extended into the hetero-epitaxy structure 134 and 138/304, the drain 308, 310 disposed on a first lateral side of the gate 312; and
a source 308, 310 extended into the hetero-epitaxy structure 134 and 138/304, the source 308, 310 disposed on a second lateral side of the gate 312 opposite the first lateral side.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. U.S. Patent Application Publication Nos. 2004/0119063 (Guo), 2015/0060765 (Kotani), 2015/0090957 (Tomabechi) teach combining engineered epitaxial buffer stacks with controlled carbon doping and a dual superlattice.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TERESA M ARROYO whose telephone number is (703)756-1576. The examiner can normally be reached Monday - Friday (8:30 A.M. E.T. - 5:00 P.M. E.T.).
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/TERESA M. ARROYO/Primary Examiner, Art Unit 2893
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