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
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
Allowable Subject Matter
Claims 71-72, 74-76, 78-79, 81, 83, and 89-91 may be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims and if a terminal disclaimer were filed over US 12,227,873 and copending 19/020936.
The following is a statement of reasons for the indication of allowable subject matter: The closest prior art to the instant claims is that of Dalmau which does not adequately teach the claimed CAP values, length Le, minimum/maximum diameters, third region, threading dislocation, or carbon concentration.
Response to Arguments
Applicant' s arguments, see remarks p.7 continuing paragraph, filed 03 August 2026 with respect to 35 USC 103 have been fully considered and are persuasive. The rejection of claims 69-95 has been withdrawn. Applicant persuasively argues that the CAP parameters suggested by Schowalter are beyond the upper limit of 40 as claimed and the examiner agrees that Schowalter does not teach with sufficient specificity that any and all values fall within the claimed 20-40.
Applicant's arguments filed 03 August 2026 have been fully considered but they are not persuasive. Applicant’s arguments are addressed as follows:
Applicant argues that the measurements set forth for the AlN single crystal of Dalmau are not set forth in Figure 1a and the photograph is taken at a tilt angle and measurements are impaired by parallax (remarks p.6, 1st section). This is not persuasive as prior art is relevant for all that it discloses and Dalmau is not limited to the disclosure of Figure 1a alone, but also discloses where the minimum diameter of the AlN crystal is 32 mm and where the maximum diameter is 47 mm (p.924, ‘Results and Discussion’) and the structure and dimensions of the AlN single crystal are clearly set forth within the disclosure of Dalmau and therefore the disclosure of Dalmau anticipates that which is claimed. See MPEP 2123 and 2125.
Applicant argues that the Double Patenting Rejections be held in abeyance until allowance (remarks p.7, last paragraph). This is not persuasive as outlined above the instant claims are patentably indistinct over US 12,227,873 and copending 19/020936. As such, the prior rejections are maintained.
Conclusion
THIS ACTION IS MADE FINAL. 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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
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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SETH DUMBRIS
Primary Examiner
Art Unit 1784
/SETH DUMBRIS/Primary Examiner, Art Unit 1784
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