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 69-95 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 9-14 of U.S. Patent No. 12,227,873. Although the claims at issue are not identical, they are not patentably distinct from each other because instant claim 69 recites an AlN single crystal comprising a first region with length LE of at least 14 mm and a diameter increasing along an axis from a minimum diameter dS to a maximum diameter dE and a second region having a length and a substantially constant diameter dE and a CAP parameter ranging from 20-44. This is patentably indistinct of claim 1 of the ‘873 patent which recites an AlN single crystal with increasing diameter along a length from a minimum diameter of 50-100 mm to a maximum diameter with a CAP of greater than 20. The instant claims and those of the ‘873 patent recite substantially identical AlN single crystals with overlapping CAP parameters and the courts have held that where claimed ranges overlap a prima facie case of obviousness exists. See MPEP 2144.05. The instant length LE, being part of the CAP expression is considered to overlap with the ‘873 patent as the CAP values overlap.
Instant claims 70-73 recite CAP values overlapping claim 1 of the ‘873 patent. Claims 74-76 recite lengths LE, being part of the CAP expression and are considered to overlap with claim 1 of the ‘873 patent as the CAP values overlap. Instant claims 77-78 recite maximum diameters falling within the scope of claim 1 of the ‘873 patent. Instant claim 79 recites a 3rd region overlapping claim 9 of the ‘873 patent. Instant claims 80-81and 95 recite dislocations overlapping claims 10-11 of the ‘873 patent. Instant claim 82 recites an x-ray rocking curve overlapping claim 12 of the ‘873 patent. Instant claim 83 recites a carbon content overlapping claim 1 of the ‘873 patent due to the recitation of “or less”. Instant claim 84 recites a thermal conductivity expected to be present and overlapping with claim 1 of the ‘873 patent as a material and its properties are inseparable, absent an objective showing. See MPEP 2144.05. Instant claims 85-86 recite Urbach energy values overlapping claim 13 of the ‘873 patent. Instant claim 87 recite a UV coefficient overlapping claim 14 of the ‘873 patent. Instant claims 88-92 recite diameters overlapping claim 1 of the ‘873 patent. Instant claims 93-94 recite masses which are a relative change in proportion and is an obvious variant over claim 1 of the ‘873 patent. See MPEP 2144.04(IV)(A).
Claims 69-78 and 80-95 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims of copending Application No. 19/020,936 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because instant claim 69 recites an AlN single crystal comprising a first region with length LE of at least 14 mm and a diameter increasing along an axis from a minimum diameter dS to a maximum diameter dE and a second region having a length and a substantially constant diameter dE and a CAP parameter ranging from 20-44. This is patentably indistinct of claims 88 and 102 of the ‘936 application which recites an AlN single crystal comprising a first region with length LE and a diameter increasing along an axis from a minimum diameter dS to a maximum diameter dE and a second region having a length and a substantially constant diameter dE and a CAP parameter greater than 20 and a mass of at least 78 grams or a volume of at least 24 cm3. The instant claims and those of the ‘936 application recite substantially identical AlN single crystals with overlapping CAP parameters and the courts have held that where claimed ranges overlap a prima facie case of obviousness exists. See MPEP 2144.05. The instant length LE, being part of the CAP expression is considered to overlap with the ‘936 application as the CAP values overlap.
Instant claims 70-73 recite CAP values overlapping claims and 88 and 102 of the ‘936 application. Claims 74-76 recite lengths LE, being part of the CAP expression and are considered to overlap with claims 88 and 102 of the ‘936 application as the CAP values overlap. Instant claims 77-78 recite maximum diameters overlapping claims 88 and 102 of the ‘936 application. Instant claims 80-81and 95 recite dislocations overlapping claims 97 and 111 of the ‘936 application. Instant claim 82 recites an x-ray rocking curve overlapping claims 98 and 112 of the ‘936 application. Instant claim 83 recites a carbon content overlapping claims 88 and 102 of the ‘936 application due to the recitation of “or less”. Instant claim 84 recites a thermal conductivity overlapping claims 100 and 114 of the ‘936 application. Instant claims 85-86 recite Urbach energy values overlapping claim 13 of the ‘936 application. Instant claim 87 recite a UV coefficient overlapping claims 99 and 113 of the ‘936 application. Instant claims 88-92 recite diameters overlapping claims 88, 95-96, 102, and 109-110 of the ‘936 application. Instant claims 93-94 recite masses which are a relative change in proportion and is an obvious variant over claims 88 and 102 of the ‘936 application. See MPEP 2144.04(IV)(A).
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 69-70, 73, 77, 80, 82, 84-88, and 92-95 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Dalmau (Materials Science Forum – NPL – copy parent application).
Considering claim 69, Dalmau teaches AlN single crystal boules (abstract). Figure 1a (reproduce below and annotated by the examiner) teaches an AlN single crystal having a diameter which increases along a portion of the length from a minimum of 32 mm to a maximum of 47 mm (p.924 ‘Results and Discussion’). Using these diameter values based on the photo of Figure 1a, the length of the expansion (LE) was calculated at 36.55 mm. With these values with the recited equation, CAP=[π/(4×36.55)](472 – 322) = 25.44. This value falls within and anticipates that which is claimed. See MPEP 2131.03.
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Considering claim 70, Dalmau teaches a CAP value of 25.44 as outlined above. See MPEP 2131.03.
Considering claim 73, Dalmau teaches a calculated length of the expansion (LE) of 36.55 mm. See MPEP 2131.03.
Considering claim 77, Dalmau teaches a maximum of 47 mm (p.924 ‘Results and Discussion’). See MPEP 2131.03.
Considering claims 80 and 95, Dalmau teaches threading edge dislocations of 992 cm-2 (abstract). See MPEP 2131.03.
Considering claim 82, Dalmau teaches a FWHM of 10-13 arcsec of the AlN single crystal (p.925, 1st full paragraph). See MPEP 2131.03.
Considering claims 84-87, Dalmau does not specifically teach the claimed thermal conductivity, Urbach energy, or UV absorption coefficient. However, as outlined above, Dalmau teaches a substantially identical AlN single crystal as that which is claimed and therefore these features are expected to be present as a material and its properties are inseparable, absent and objective showing. See MPEP 2112.01.
Considering claim 88, Dalmau teaches a minimum diameter of 32 mm (Results and Discussion). See MPEP 2131.03.
Considering claim 92, Dalmau teaches a maximum of 47 mm (p.924 ‘Results and Discussion’). See MPEP 2131.03.
Considering claims 93-94, Dalmau does not specify the claimed mass. However, this is expected to be present as Dalmau teaches a substantially identical AlN single crystal as that which is claimed and a material and its properties are inseparable, absent an objective showing. See MPEP 2112.01.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 69-95 are rejected under 35 U.S.C. 103 as being unpatentable over Schowalter et al. (US 2018/0363164 – cited by applicant).
Considering claim 69, Schowalter teaches aluminum nitride single crystals (abstract) having a diameter which increases along the length (Paragraph 7) including an example (Figure 1D – reproduced below and annotated by examiner). The diameter has an initial size which increases through a transition diameter to a maximum diameter (Paragraphs 11-12). A first diameter (i.e. minimum diameter) is taught to not exceed the transition diameter (Paragraph 37) and a second diameter (i.e. a maximum diameter) may be at least equal to a transition diameter of approximately 10-40 mm (Paragraph 38). The transition diameter expands the diameter approximately 10-20 mm or more per 20 mm of axial growth (Paragraph 11) and larger second diameters of 100 mm or 150 mm or larger are also taught (Paragraph 12). Annotated Figure 1D is a photograph of an AlN crystal (Paragraph 47). When the maximum diameter, minimum diameter, and expansion length are measured in inches and converted to millimeters (per the units disclosed within Schowalter), a CAP value of about 40.9 mm is obtained is calculated according to the instantly claimed parameters. Further, Paragraph 11 of Schowalter teaches a diameter growth of at least 10 mm or 20 mm per 20 mm of axial growth. As the largest the minimum diameter may be is no larger than the transition diameter and the 2nd diameter is at least as large as the transition diameter, using the 10-40 mm transition diameter disclosed in Paragraph 28 with 10 being the minimum and 40 being the maximum and axial growth rate of diameter increase per 20 mm axial growth, a 20 mm axial growth rate corresponds to a CAP of about 77.9 (CAP = [(202 π) – (52 π)]/15).
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While not expressly teaching a singular example of an AlN single crystal having the claimed CAP value, this would have been obvious to one of ordinary skill in the art before the effective filing date in view of the teachings of Schowalter as the first and second diameters as well as the axial growth length of the AlN single crystal result in CAP values and LE values overlapping that which is claimed and the courts have held that where claimed ranges overlap or lie inside of those disclosed in the prior art a prima facie case of obviousness exists. See MPEP 2144.05.
Considering claims 70-72, Schowalter does not expressly teach the claimed CAP values. However, Schowalter teaches where the end diameter may 150 mm or even larger (Paragraph 12) and this open ended range of “or even larger” affords an AE value of near infinite value which would result in CAP values overlapping the claimed ranges. See MPEP 2144.05.
Considering claims 73-74, Schowalter teaches a diameter growth of at least 10 mm or 20 mm per 20 mm of axial growth (Paragraph 11) and this axial growth overlaps the claimed LE. See MPEP 2144.05.
Considering claims 75-76, Schowalter teaches a diameter growth of at least 10 mm or 20 mm per 20 mm of axial growth (Paragraph 11). As the largest the minimum diameter may be is no larger than the transition diameter and the 2nd diameter is at least as large as the transition diameter, using the 10-40 mm transition diameter disclosed in Paragraph 28 and a 20 mm diameter growth per 20 mm axial growth would result in LE and second region length totals overlapping that which is claimed. See MPEP 2144.05.
Considering claims 77-78, Schowalter teaches a second diameter (i.e. a maximum diameter) may be at least equal to a transition diameter of approximately 10-40 mm (Paragraph 38). The transition diameter expands the diameter approximately 10-20 mm or more per 20 mm of axial growth (Paragraph 11) and larger second diameters of 100 mm or 150 mm or larger are also taught (Paragraph 12). See MPEP 2144.05.
Considering claim 79, Fig. 1D above depicts where the upper surface of the crystal extends from the faceted surface with the diameter decreasing (e.g. a 3rd region).
Considering claims 80-81 and 95, Schowalter teaches where the threading dislocation density is less than approximately 2×103 cm-2 (Paragraph 81) encompassing both edge and screw dislocations. See MPEP 2144.05.
Considering claims 82 and 84-87, Schowalter does not specifically teach the claimed x-ray rocking curve with full width at half maximum value, thermal conductivity, Urbach energy, or UV absorption coefficient. However, as outlined above Schowalter teaches a substantially identical AlN single crystal as that which is claimed and one of skill in the art would expect these to be present as a material and its properties are inseparable, absent an objective showing. See MPEP 2112.01.
Considering claim 83, Schowalter teaches where the carbon concentration within the crystal may be at most 5×1018 cm-3 (Paragraph 41). See MPEP 2144.05.
Considering claims 88-89, Schowalter teaches where the first diameter (i.e. minimum diameter) is taught to not exceed the transition diameter and where the transition diameter is approximately 10-40 mm (Paragraph 38). See MPEP 2144.05.
Considering claims 90-92, Schowalter teaches where the second diameter (i.e. a maximum diameter) may be at least equal to a transition diameter of approximately 10-40 mm (Paragraph 38) as well as larger second diameters of 100 mm or 150 mm or larger are also taught (Paragraph 12). See MPEP 2144.05.
Considering claims 93-94, Schowalter does not specify the claimed mass. However, this is expected to be present as Schowalter teaches a substantially identical AlN single crystal as that which is claimed and a material and its properties are inseparable, absent an objective showing. See MPEP 2112.01.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Bondokov et al. (US 2015/0275393) teaches AlN crystal growth demonstrating the level of ordinary skill in the art.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SETH DUMBRIS whose telephone number is (571)272-5105. The examiner can normally be reached M-F 6:00 AM - 3:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Humera Sheikh can be reached at 571-272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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SETH DUMBRIS
Primary Examiner
Art Unit 1784
/SETH DUMBRIS/Primary Examiner, Art Unit 1784