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 .
Election/Restrictions
Applicant’s election without traverse of Group II, claim 9, in the reply filed on 09/26/2025 is acknowledged.
Claims 1-8 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
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 9 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shelton et al. (US 2004/0061123).
Regarding claim 9, Shelton discloses a optical device (abstract) comprising: an n-type layer comprising an n-type Group III nitride semiconductor (14 in Fig. 1F; [0029]) provided over a substrate (12 in Fig. 1F); a first active layer provided over the n-type layer ([0027] discloses 16 may include one or more layers; one of the disclosed layers of 16 satisfies the limitation “a first active layer having a band gap energy provided over the n-type layer”); an intermediate layer comprising a Group III nitride semiconductor layer containing In provided over the first active layer ([0028] discloses the layers of 16 are Group III nitride semiconductor layers; the top layer of 16 in Figure 1F satisfies the limitation “an intermediate layer comprising a Group III nitride semiconductor layer containing In provided over the first active layer”); a second active layer having a band gap energy different from the band gap energy of the first active layer provided over the intermediate layer (18 in Fig. 1F; [0031]); a first p-type layer comprising a p-type Group III nitride semiconductor provided over the second active layer (20 in Fig. 1F; [0027],[0028]); a groove having a depth reaching the intermediate layer from a side of the first p-type layer (shown in annotated Fig. 1F below); an electron blocking layer comprising a Group III nitride semiconductor provided over the intermediate layer ([0027],[0028] - any of the bottom layers of 20 above the bottom of the groove annotated in Fig. 1F below satisfy the limitation “an electron blocking layer comprising a Group III nitride semiconductor provided over the intermediate layer; it s noted that with regard to the limitation “electron blocking layer,” when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977)); and a second p-type layer comprising a p-type Group III nitride semiconductor provided over the electron blocking layer ([0027],[0028] – any of the top layers of 20 above the bottom of the groove annotated in Fig. 1F below).
With regard to the limitation “a total concentration of O and Si at an interface between the intermediate layer and the electron blocking layer is 1 x 1016 cm-3 or less,” the range does not specify a lower limit, therefore, the value of zero is encompassed by the range and the claim does not require a total concentration of O and Si at an interface between the intermediate layer and the electron blocking layer.
It is noted that the limitation “exposed at a bottom surface of the groove” is directed to the manner in which the apparatus is made, and said limitations are not given patentable weight in the product claims. Even though a product-by-process is defined by the process steps by which the product is made, determination of patentability is based on the product itself and does not depend on its method of production. In re Thorpe, 777 F.2d 695, 227 USPQ 964 (Fed. Cir. 1985).
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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 9 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/601,708 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the reference application recites a light emitting element, which satisfies the limitation of claim 9 of the instant application requiring an optical device, an n layer provided over the substrate and comprises an n-type group III nitride semiconductor, a first active layer that is provided over the n layer and has a predetermined emission wavelength (an active layer which am emission wavelength necessarily has a band gap energy), a middle layer provided over the first active layer and comprises a group III nitride semiconductor containing In (the recited middle layer satisfies the limitation in the instant claim requiring an intermediate layer comprising a group III nitride semiconductor containing In provided over the first active layer), a second active layer provided over the middle layer and has an emission wavelength different from the emission wavelength of the first active layer (a second active layer with an emission wavelength different from the emission wavelength of the first active layer necessarily has a band gap energy different from the band gap energy of the first active layer), a first p layer provided over the second active layer and comprises a p-type group III nitride semiconductor, a groove having a depth reaching the middle layer from a side of the second active layer (a groove from a side of the second active layer is necessarily from a side of the first p-type layer, as recited in the instant claim), a second p layer provided over the middle layer exposed on a bottom surface of the groove and comprises a p-type group III nitride semiconductor, wherein a non-n layer comprising a group III nitride semiconductor is provided between the middle layer and the second p layer (the non-n layer satisfies the limitation requiring an electron blocking layer in the instant claim as the material of the electron blocking layer and the non-n layer are substantially the same and expected to have similar properties). It is noted that with regard to the limitation “a total concentration of O and Si at an interface between the intermediate layer and the electron blocking layer is 1 x 1016 cm-3 or less, the range claimed does not require a concentration of O and Si because the limitation “or less” allows for a value of zero.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/TAMIR AYAD/Primary Examiner, Art Unit 1726