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 .
Information Disclosure Statement
The Information Disclosure Statement (IDS) filed 27 November 2024 lists U.S. Patent Application Publications 1 and 2 to Naba, and Datta, respectively as 2019/385926 and 2010/032143 and each is missing a digit. These documents are likely 2019/0385926 and 2010/0032143 and are listed concurrently on a PTO-892 to be properly documented. If these are the intended documents, no further action is need by applicant.
Specification
The disclosure is objected to because of the following informalities: On pp.8-12 starting after Paragraph 52, all remaining Paragraphs are labeled as “0001” with no sequential numbering and numbering should continue numbering starting with “53”.
Appropriate correction is required.
Claim Objections
Claim 7 is objected to because of the following informalities: Claim 7 is missing the article “and” between “the metal-ceramic composite according to Claim 1, one or more semiconductor components” (e.g. the metal-ceramic composite according to Claim 1, and one or more semiconductor components”). Appropriate correction is required.
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 1-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 4-7 of copending Application No. 18/962,429 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because instant claim 1 recites a metal-ceramic composite comprising a ceramic substrate containing silicon nitride with metal coating on a front side having at least one recess exposing a surface of the ceramic substrate having Si2p signals in XPS of one or more peaks having a maximum in the range of 98.0-100.0 eV, 101.0-102.2 eV, and 102.5-104.0 eV. This is patentably indistinct of claim 1 of the ‘429 application which recites a metal-ceramic composite of β-silicon nitride and a metal coating on the front side having a recess where the recess displays SO-βSN/SB-βSN ≥ 0.8. While not expressly reciting the claimed XPS peaks, the ‘429 application states where the metal coated ceramic is etched with CuCl2 (Paragraph 65) and then lased by a IR picosecond laser (Paragraph 67) and this is substantially identical to that which applicant discloses as forming the instant metal-ceramic composite (p.11, 1st full paragraph – 3rd full paragraph). As such, one would reasonably expect the metal-ceramic of the ‘429 application to possess the claimed XPS features as substantially identical materials treated in a substantially identical manner are expected to behave the same, absent an objective showing. See MPEP 2112.02. Accordingly, the instant claims and those of the ‘429 application are not patentably distinct of one another.
Instant claims 2-3 recite I1/Iges, I2, and I3 features and XPS features expected to overlap claim 1 of the ‘429 application for the rationale set for the above, absent an objective showing. See MPEP 2112.02. Instant claim 4 recites a silicon nitride content overlapping claim 1 of the ‘429 application. Instant claim 5 recites coating materials overlapping claim 4 of the ‘429 application. Instant claim 6 recites a reaction layer overlapping claim 5 of the ‘429 application. Instant claim 7 recites semiconductor component(s) overlapping claim 6 of the ‘429 application. Instant claim 8 recites a casting component overlapping claim 7 of the ‘429 application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 4-7 of copending Application No. 18/962,570 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because instant claim 1 recites a metal-ceramic composite comprising a ceramic substrate containing silicon nitride with metal coating on a front side having at least one recess exposing a surface of the ceramic substrate having Si2p signals in XPS of one or more peaks having a maximum in the range of 98.0-100.0 eV, 101.0-102.2 eV, and 102.5-104.0 eV. This is patentably indistinct of claim 1 of the ‘570 application which recites a metal-ceramic composite of silicon nitride and a metal coating on the front side having a recess where the recess displays a Sdr of at least 7.0%. While not expressly reciting the claimed XPS peaks, the ‘570 application states where the metal coated ceramic is etched with CuCl2 (Paragraph 60) and then lased by a relatively low pulse energy laser (Paragraph 62) and this is substantially identical to that which applicant discloses as forming the instant metal-ceramic composite (p.11, 1st full paragraph – 3rd full paragraph). As such, one would reasonably expect the metal-ceramic of the ‘570 application to possess the claimed XPS features as substantially identical materials treated in a substantially identical manner are expected to behave the same, absent an objective showing. See MPEP 2112.02. Accordingly, the instant claims and those of the ‘570 application are not patentably distinct of one another.
Instant claims 2-3 recite I1/Iges, I2, and I3 features and XPS features expected to overlap claim 1 of the ‘570 application for the rationale set for the above, absent an objective showing. See MPEP 2112.02. Instant claim 4 recites a silicon nitride content overlapping claim 1 of the ‘570 application. Instant claim 5 recites coating materials overlapping claim 4 of the ‘570 application. Instant claim 6 recites a reaction layer overlapping claim 5 of the ‘570 application. Instant claim 7 recites semiconductor component(s) overlapping claim 6 of the ‘570 application. Instant claim 8 recites a casting component overlapping claim 7 of the ‘570 application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
Claims 1-8 may be placed in condition for allowance if terminal disclaimers were filed over copending 18/962,429 and 18/962,570 as outlined above.
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 Naba et al. (US 2019/0385926) which teaches a ceramic metal circuit board (abstract) having a metal layer on the ceramic substrate having concave recesses formed in the metal layer therein (Paragraph 33; Figs. 2-3). However, Naba only teaches where the concave portions may be formed by laser machining (Paragraph 51). However, applicant provides in the originally filed specification where the combination of etching and lasing is required to form the claimed XPS features and where lasing alone does not possess all three of the claimed maximum peaks within the claimed ranges (p.11 – table 1). Accordingly, one would not reasonably expect Naba to possess the claimed features and this would not have been obvious to one of ordinary skill in the art.
Other art to be made of record demonstrating the level of ordinary skill in the art is Kessler et al. (US 2005/0016969) which teaches a laser irradiating metalized ceramics, Roubal (US 2005/0224461) teaches etching of metalized ceramics, and Shealy et al. (US 2012/0156895) which teaches aluminum-silicon nitride materials analyzed by XPS for hydrogen content.
Conclusion
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
