DETAILED ACTION
Examiner’s Note
The examiner has cited particular passages including column and line numbers, paragraphs as designated numerically and/or figures as designated numerically in the references as applied to the claims below for the convenience of the applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claims, other passages, paragraphs and figures of any and all cited prior art references may apply as well. It is respectfully requested from the applicant, in preparing an eventual response, to fully consider the context of the passages, paragraphs and figures as taught by the prior art and/or cited by the examiner while including in such consideration the cited prior art references in their entirety as potentially teaching all or part of the claimed invention. MPEP 2141.02 VI: “PRIOR ART MUST BE CONSIDERED IN ITS ENTIRETY, INCLUDING DISCLOSURES THAT TEACH AWAY FROM THE CLAIMS." MPEP 2123 (I): “PATENTS ARE RELEVANT AS PRIOR ART FOR ALL THEY CONTAIN.”
Additionally, in an effort to provide a timely Office response to amendments the Applicant may file in response to this Office Action, it is respectfully requested that, on accompanying remarks/arguments papers, every effort be made to provide specific (page No., paragraph No., FIG. No., etc.) Specification/Drawings support for such amendments, particularly claim amendments.
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.
Claim(s) 1-5 are rejected on the ground of nonstatutory double patenting as being unpatentable over at least claim(s) 10 of U.S. Patent No. 10439130. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are obviated by the patented claims. A later patent claim is not patentably distinct from an earlier patent claim if the later claim is obvious over (in a non-statutory double patent rejection) the earlier claim. In re Lonqi, 759 F.2d at 896, 225 USPQ at 651 (affirming a holding of obviousness-type double patenting because the claims at issue were obvious over claims in four prior art patents); In re Bercl, 140 F.3d at 1437, 46 USPQ2d at 1233 (Fed. Cir. 1998) (affirming a holding of obviousness-type double patenting where a patent application claim to a genus is anticipated by a patent claim to a species within that genus). Ely Lilly and Co. v Bar Laboratories, Inc., United States Court of Appeals for the Federal Circuit, on petition for rehearing en banc (decided: May 30, 2001).The instant claims are obviated by the patented claims; the patent and the application claim obvious common subject matter; in brief and saliently: a spin-orbit torque magnetoresistance effect element comprising: a magnetoresistance effect element having a first ferromagnetic metal layer with a fixed magnetization direction, a second ferromagnetic metal layer with a varying magnetization direction, and a non-magnetic layer sandwiched between the first ferromagnetic metal layer and the second ferromagnetic metal layer; spin-orbit torque wiring that extends in a first direction intersecting with a stacking direction of the magnetoresistance effect element and that is joined to the second ferromagnetic metal layer; wherein the magnetization of the second ferromagnetic metal layer is oriented in the stacking direction of the magnetoresistance effect element; the second ferromagnetic metal layer has shape anisotropy, such that a length along the first direction is greater than a length along a second direction orthogonal to the first direction and to the stacking direction; and a long axis of the magnetoresistance effect element is inclined by an angle 0 with respect to the first direction in which the spin-orbit torque wiring extends. Further, while claim 2 of the Application is obviated by at least claim 3 of the Patent, claim 3 of the Application is obviated by at least claim 5 of the Patent, claim 4 of the Application is obviated by at least claim 6 of the Patent, claim 5 of the Application is obviated by at least claim 7 of the Patent.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FERNANDO N HIDALGO whose telephone number is (571)270-3306. The examiner can normally be reached M-F 9:00-7:30 ET.
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FERNANDO N. HIDALGO
Primary Examiner
Art Unit 2827
/Fernando Hidalgo/Primary Examiner, Art Unit 2827
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