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 2-24 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 12,046,583. Although the claims at issue are not identical, they are not patentably distinct from each other because they overlap in scope.
Pertaining to Claim 2: Claim 2 overlaps in scope with Claim 16 of the issued patent, the only difference being the use of the term “metal pads” in place of “contact” and which are obvious functional equivalents as a metal pad is encompassed by the term contact.
Pertaining to Claims 3, 4, 5 and 9: See Claims 17 and 18, It would have been obvious to one of ordinary skill in the art of making semiconductor devices to determine the workable or optimal value for the pitch/spacing through routine experimentation and optimization to obtain optimal or desired device performance because the pitch/spacing is a result-effective variable and there is no evidence indicating that it is critical or produces any unexpected results and it has been held that it is not inventive to discover the optimum or workable ranges of a result-effective variable within given prior art conditions by routine experimentation. See MPEP § 2144.05
Given the teaching of the references, it would have been obvious to determine the optimum thickness, temperature as well as condition of delivery of the layers involved. See In re Aller, Lacey and Hall (10 USPQ 233-237) “It is not inventive to discover optimum or workable ranges by routine experimentation.” Note that the specification contains no disclosure of either the critical nature of the claimed ranges or any unexpected results arising therefrom. Where patentability is said to be based upon particular chosen dimensions or upon another variable recited in a claim, the Applicant must show that the chosen dimensions are critical. In re Woodruff, 919 f.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990).
Any differences in the claimed invention and the prior art may be expected to result in some differences in properties. The issue is whether the properties differ to such an extent that the difference is really unexpected. In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicants have the burden of explaining the data in any declaration they proffer as evidence of non-obviousness. Ex parte Ishizaka, 24 USPQ2d 1621, 1624 (Bd. Pat. App. & Inter. 1992).
An Affidavit or declaration under 37 CFR 1.132 must compare the claimed subject matter with the closest prior art to be effective to rebut a prima facie case of obviousness. In re Burckel, 592 F.2d 1175, 201 USPQ 67 (CCPA 1979).
Pertaining to Claims 6 and 7: Claims 6 and 7 overlap in scope with Claim 16 of the issued patent (‘583) the only difference being obvious, direct bonding implies no intervening adhesive as is widely understood in the art.
Pertaining generally to claims 2-18, claims 2-18 overlap in scope with claims 1-15 of the cited issued patent (‘583), the dependent claims containing all the elements with only minor and obvious variations in descriptive language.
Pertaining to Claim 19: Claim 19 is nearly identical to Claim 1 of the present application with the additional element of claiming a dielectric field region. Claim 16 of the issued patent contains this element and as in the rejection noted in Claim 1 above, it also contains all the other elements with the only difference being the use of the term “metal pads” in place of “contacts”.
Pertaining to Claims 20 and 21: See Claims 17 and 18, It would have been obvious to one of ordinary skill in the art of making semiconductor devices to determine the workable or optimal value for the pitch/spacing through routine experimentation and optimization to obtain optimal or desired device performance because the pitch/spacing is a result-effective variable and there is no evidence indicating that it is critical or produces any unexpected results and it has been held that it is not inventive to discover the optimum or workable ranges of a result-effective variable within given prior art conditions by routine experimentation. See MPEP § 2144.05
Pertaining to Claims 22 and 23: See Claims 19 and 20 respectively of the cited issued patent (‘583)
Pertaining to Claim 24: See Claim 21 of the cited issued patent (‘583)
Claims 25-31 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of U.S. Patent No. 12,218,107. Although the claims at issue are not identical, they are not patentably distinct from each other because they overlap in scope.
Pertaining to Claim 25, Claim 25 overlaps in scope with Claim 1 of the cited issued patent (‘107). The only difference being the use of the term “metal pads” as opposed to “contact pads”. Metal for a contact pad is obvious and metal pad encompassed by the term “contact pad” and thus overlaps in scope. All other elements are identical.
Claim 26 overlaps in scope with Claim 2 of the cited issued patent (‘107)
Claim 27 overlaps in scope with Claim 3 of the cited issued patent (‘107)
Claim 28 overlaps in scope with Claim 4 of the cited issued patent (‘107)
Claim 29 overlaps in scope with Claim 5 of the cited issued patent (‘107)
Claim 30 overlaps in scope with Claim 6 of the cited issued patent (‘107)
Claim 31 overlaps in scope with Claim 7 of the cited issued patent (‘107)
Claims 2-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 13-20, 22-30 of U.S. Patent No. 11,842,894. Although the claims at issue are not identical, they are not patentably distinct from each other because they overlap in scope.
Pertaining to Claim 2: Claim 2 overlaps in scope with Claim 13 of the issued patent, the only difference being the use of the term “metal pads” in place of “contact” and which are obvious functional equivalents as a metal pad is encompassed by the term contact.
Pertaining to claims 3-10: Claims 3-10 overlap in scope with Claims 14-20 and 22 respectively of the cited issued patent (‘894)
Pertaining to Claims 11 and 12: Claims 11 and 12 overlap in scope with Claims 28 and 29 of the cited issued patent respectively.
Pertaining to Claims 13-17: Claims 13-17 overlap in scope with Claims 23-27 of the cited issued patent (‘894) respectively.
Pertaining to claim 18: Claim 18 overlaps in scope with Claim 13 of the cited issued patent.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICHOLAS J TOBERGTE whose telephone number is (571)272-6458. The examiner can normally be reached M-F 7:30-4:30.
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/NICHOLAS J TOBERGTE/Primary Examiner, Art Unit 2817
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