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.
Although the claims at issue in this application are not exactly identical, however, they are not patentably distinct from each other as indicated below, also through 35 USC § 102 and 35 USC § 103 Rejections.
Regarding Claim-1, HUANG et. al. [US 20210385940 A1], in the Claim Set- 1 through 20, discloses that an electronic device, comprising: a substrate; a conductive element, disposed on the substrate and having a side wall , wherein the conductive element comprises: a first layer, having a first thickness; and a second layer (5, Paragraph [0018]), disposed on the first layer having a second thickness, wherein the second thickness is greater than the first thickness; and an insulating layer, disposed on the conductive element (2), wherein at least a portion of the side wall is uneven (annotated Fig-1), and a portion of the insulating layer is disposed corresponding to the side wall (annotated Fig., 7).
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, 3, 6, 8, 9- are rejected under 35 U.S.C. 102(a)(1) as being anticipated by- TAKAMI [JP 2004140243 A], also, [JP 4127377B2].
Regarding Claim-1, TAKAMI [JP 2004140243 A], Figures- 1, 2, & 3(a) – 3(f), discloses that an electronic device, comprising: a substrate (4); a conductive element (2), disposed on the substrate (4) and having a side wall (annotated Fig-3), wherein the conductive element (2) comprises: a first layer, having a first thickness (4, 5 to 50 μm); and a second layer (5, Paragraph [0018]), disposed on the first layer having a second thickness, wherein the second thickness is greater than the first thickness (10 to 80 μm, Paragraph [0020]); and an insulating layer (1), disposed on the conductive element (2), wherein at least a portion of the side wall is uneven (annotated Fig-1), and a portion of the insulating layer is disposed corresponding to the side wall (annotated Fig., 7).
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Regarding Claim-2, TAKAMI [JP 2004140243 A], Figures- 1, 2, & 3(a) – 3(f), discloses that the portion of the insulating layer is uneven (annotated Fig-1).
Regarding Claim-3, TAKAMI [JP 2004140243 A], Figures- 1, 2, & 3(a) – 3(f), discloses that a recessed portion of the side wall is corresponding to a bumped portion of the insulating layer (1).
Regarding Claim-6, TAKAMI [JP 2004140243 A]- in Paragraph [0004] and in Claims listed, discloses that a material of the second layer is different from a material of the first layer.
Regarding Claim-8, TAKAMI [JP 2004140243 A], Figures- 1, 2, & 3(a) – 3(f), there is a gap between the insulating layer and the conductive element (7, annotated Picture-2).
Regarding Claim-9, TAKAMI [JP 2004140243 A], Figures- 1, 2, & 3(a) – 3(f), that the, wherein the conductive element further comprises a top side and a bottom side (of conducting element-2), wherein the side wall (side surface 2, side wall) connects the top side and the bottom side, wherein a first line connects a first point and a second point on the side wall, wherein a second line is defined as a line that starts from the second point and substantially parallel to an upper surface of the substrate (Layer 5), wherein the first point is the junction of the top side and the side wall, and the second point is the junction of the bottom side and the side wall (annotated Figure 3(f)), and wherein an angle between a first line and a second line (Line-2a at annotated Fig. 3(c))- ranges from 60 to 120 degrees ((Line-2a at annotated Fig. 3(c)).
Claim Rejections - 35 USC § 103
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 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- 4, 5 are rejected under 35 U.S.C. 103 as being unpatentable over TAKAMI (JP 2004140243 A)- in view of KONDO, Hitoshi (US 20130062108 A1).
Regarding Claim-4, TAKAMI (JP 2004140243 A)- does not disclose the conductive element further comprising: a third layer, wherein the second layer is disposed between the first layer and the third layer.
However, KONDO, Hitoshi (US 20130062108 A1), Figure-1, discloses that the conductive element further comprising: a third layer (21b), wherein the second layer is disposed between the first layer and the third layer (11, 21a, 21b). It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to use- a third layer, wherein the second layer is disposed between the first layer and the third layer in order to suppresses the occurrence of warping to stabilize the behavior under a high temperature environment as disclosed by Konda- in the section called- ADVANTAGE.
Regarding Claim-5, TAKAMI (JP 2004140243 A)- does not disclose that the third layer has a third thickness, and the second thickness is greater than the third thickness.
However, KONDO, Hitoshi (US 20130062108 A1), Figures- 1, discloses that the third layer has a third thickness (21b), and the second thickness (21a) is greater than the third thickness (21b)- refer to the annotated Figue-1. It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to use- that a third layer has a third thickness, and the second thickness is greater than the third thickness, in order to suppresses the occurrence of warping to stabilize the behavior under a high temperature environment as disclosed by Konda- in the section called- ADVANTAGE.
KONDO, Hitoshi (US 20130062108 A1), Figure-1:
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Claim-7 is rejected under 35 U.S.C. 103 as being unpatentable over TAKAMI (JP 2004140243 A)- in view of Koike et al., [US 20040171214 A1]-
Regarding Claim-7, TAKAMI [JP 2004140243 A]- does not disclose that the material of the second layer comprises aluminum, and the material of the first layer comprises of titanium or molybdenum. However, Koike et al., [US 20040171214 A1]- discloses that that the material of the second layer comprises aluminum, and the material of the first layer comprises of titanium or molybdenum as presented in Claim-3 of this prior art of the reference invention.
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to use multiple or, plurality of conductive layers to form a for a solid electrolyte layer comprised of an organic semiconductor and a top electrode layer comprised of metal on top as disclosed by Koike et al., in paragraph [0038].
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OBAIDUL GANI whose telephone number is (571)272-8665. The examiner can normally be reached Mon-Fri: 7:30 - 5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Timothy Thompson can be reached at (571) 272-2342. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/OBAIDUL GANI/Examiner, Art Unit 2847
/STANLEY TSO/Primary Examiner, Art Unit 2847
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