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 11 – 16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 11 – 16 of U.S. Patent No. 12,165,703. Although the claims at issue are not identical, they are not patentably distinct from each other because each and every limitation claimed herein has in fact been claimed and patented. Namely:
Pending claim 11 corresponds to patented claim 11.
Pending claim 12 corresponds to patented claim 12.
Pending claim 13 corresponds to patented claim 13.
Pending claim 14 corresponds to patented claim 14.
Pending claim 15 corresponds to patented claim 15.
Pending claim 16 corresponds to patented claim 16.
Claim Rejections - 35 USC § 112
4. The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
5. The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1 – 10 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
In claim 1, the limitation “wherein a votlage difference between the control signal and the power supply remains fixed, regardless of a level of a word line voltage provided at a drain of the second transistor” is considered new matter. The underlined teaching is not found from the originally filed specification.
Appropriate correction is required in order to overcome this type or rejection.
Claims 2 – 10 are also rejected for being dependent from rejected claim 1.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 11 – 16 and 17 – 20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
In claim 11 (line 8) and claim 17 (line 9), “about the same” is considered vague and indefinite because “about” is simply not clear whether or not and level of difference in possible variation that is considered within the scope of “about”.
If a range of voltage variation is expected as the voltage difference then the range is clearly set forth in the claims. “About” is just unclear and vague. If “the same” is what is expected from the engineering perspective, then the realistic minute variation in practice is not going to affect the scope of the invention.
It is recommended that “about the same” is replaced by “the same”.
Claims 12 – 16 and 18 – 20 are also rejected for being dependent from claims 11 and 17, respectively.
Appropriate corrections are required in order to overcome this type of rejection.
Claims 17 – 20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential structural cooperative relationships of elements, such omission amounting to a gap between the necessary structural connections. See MPEP § 2172.01. The omitted structural cooperative relationships are:
With respect to claim 17, lines 8 – 9, the phrase “wherein a voltage difference between the power supply and the control signal remains the same” is considered arbitrary as any constant voltage being applied as the control signal would induce a voltage difference between it and the power supply potential. The issue with this limitation is it does not set forth why or how maintaining this same voltage difference effect the operation of the circuit—what will result from maintaining this same voltage difference.
The limitation is considered to lack technical connectivity with the circuit arrangement and how it brings about usefulness in application, e.g. “as to generate at a drain of the second transistor, a word line volage at a read level when the power supply is provided at a first level and at a program level when the power supply is provided at a second level, respectively”, as observed in claim 11 (again as an example). Without this exemplary limitation renders the claim incomplete for omitting essential structural cooperative relationships of elements, amounting to a gap between the necessary structural connections.
Claims 18 – 20 are also rejected for being dependent from claim 17.
Appropriate revision is required in order to overcome this type of rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LY D PHAM whose telephone number is (571)272-1793. The examiner can normally be reached M-F: 8am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amir Zarabian can be reached at 571-272-1852. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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LY D. PHAM
Examiner
Art Unit 2827
/LY D PHAM/Primary Examiner, Art Unit 2827 May 29, 2026
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