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 88-115 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 and 10-13 of U.S. Patent No. 12,227,873. Although the claims at issue are not identical, they are not patentably distinct from each other because instant claim 88 recites an AlN single crystal comprising an increasing diameter along a length from a minimum to a maximum diameter with a CAP of greater than 20, a mass of at least 78 grams, and a ratio of expansion length to maximum diameter of ~0.002-0.6 mm. This is patentably indistinct of claim 5 of the ‘873 patent which recites an AlN single crystal with increasing diameter along a length from a minimum diameter of 50-100 mm to a maximum diameter with a CAP of greater than 20 and a ratio of expansion length to maximum diameter of ~0.3-0.6 mm. The instant claims and those of the ‘873 patent recite substantially identical AlN single crystals with overlapping CAP parameters and expansion length to maximum diameter ratios and the courts have held that where claimed ranges overlap a prima facie case of obviousness exists. See MPEP 2144.05. While not expressed as a mass, the ‘873 patent recites a substantially identical material with CAP parameter and expansion length to maximum diameter ratio as that which is claimed and therefore the mass is expected to be present as a material and its properties are inseparable, absent an objective showing. See MPEP 2112.01.
Instant claims 89-91 recite masses overlapping claim 5 of the ‘873 patent for the rationale set forth above. Instant claim 92 recites a CAP value overlapping claims 1-5 of the ‘873 patent. Instant claims 93-94 recite ratios overlapping claims 5-6, respectively, of the ‘873 patent. Instant claims 95-96 recite diameters overlapping claim 5 of the ‘873 patent. Instant claim 97 recites a threading dislocation overlapping claims 10-11 of the ‘873 patent. Instant claim 98 recites an x-ray rocking curve overlapping claim 12 of the ‘873 patent. Instant claim 99 recites Urbach energy values overlapping claim 13 of the ‘873 patent. Instant claims 100-101 recites a thermal conductivity and UV coefficient expected to be present and overlapping with claim 5 of the ‘873 patent as a material and its properties are inseparable, absent an objective showing. See MPEP 2112.01. Instant claim 102 recites an AlN single crystal with an increasing diameter along a length from a minimum to a maximum diameter with a CAP of greater than 20 and a mass of at least volume of at least 24 cm-3 which is patentably indistinct of claim 5 of the ‘873 patent by virtue of the substantially identical structure as outlined above, absent an objective showing. See MPEP 2112.01. Instant claims 103-105 recite volumes overlapping claim 5 of the ‘873 patent for the rationale as set forth above. Instant claim 106 recites a CAP value overlapping claims 1-5 of the ‘873 patent. Instant claims 107-108 recites ratios overlapping claims 5-6, respectively, of the ‘873 patent. Instant claims 109-110 recite diameters overlapping claim 5 of the ‘873 patent. Instant claim 111 recites a threading dislocation overlapping claims 10-11 of the ‘873 patent. Instant claim 112 recites an x-ray rocking curve overlapping claim 12 of the ‘873 patent. Instant claim 113 recites Urbach energy values overlapping claim 13 of the ‘873 patent. Instant claims 114 and 115 recites a thermal conductivity and UV absorption coefficient expected to be present and overlapping with claim 5 of the ‘873 patent as a material and its properties are inseparable, absent an objective showing. See MPEP 2112.01.
Claims 88-115 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 69-72, 77-78, 80-82, and 84-92 of copending Application No. 18/931,766 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because instant claim 88 recites an AlN single crystal comprising an increasing diameter along a length from a minimum to a maximum diameter with a CAP of greater than 20, a mass of at least 78 grams, and a ratio of expansion length to maximum diameter of ~0.002-0.6 mm. This is patentably indistinct of claim 69 of the ‘766 application which recites an AlN single crystal comprising a first region with length LE of at least 14 mm and a diameter increasing along an axis from a minimum diameter dS to a maximum diameter dE and a second region having a length and a substantially constant diameter dE and a CAP parameter ranging from 20-44. The instant claims and those of the ‘766 application recite substantially identical AlN single crystals with overlapping CAP parameters and the courts have held that where claimed ranges overlap a prima facie case of obviousness exists. See MPEP 2144.05. While not expressed as a mass, the ‘766 application recites a substantially identical material with CAP parameter as that which is claimed and therefore the mass is expected to be present as a material and its properties are inseparable, absent an objective showing. See MPEP 2112.01.
Instant claims 89-91 recite masses overlapping claim 69 of the ‘766 application for the rationale set forth above. Instant claim 92 recites a CAP value overlapping claims 70-72 of the ‘766 application. Instant claims 93-94 recite ratios overlapping claims 77-78 of the ‘766 application. Instant claims 95-96 recite diameters overlapping claims 88 and 89-92, respectively, of the ‘766 application. Instant claim 97 recites a threading dislocation overlapping claims 80-81 of the ‘766 application. Instant claim 98 recites an x-ray rocking curve overlapping claim 82 of the ‘766 application. Instant claim 99 recites Urbach energy values overlapping claims 85-86 of the ‘766 application. Instant claim 100 recites a thermal conductivity overlapping claim 84 of the ‘766 application. Instant claim 101 recites a UV coefficient overlapping claim 87 of the ‘766 application. Instant claim 102 recites an AlN single crystal with an increasing diameter along a length from a minimum to a maximum diameter with a CAP of greater than 20 and a mass of at least volume of at least 24 cm-3 which is patentably indistinct of claim 69 of the ‘766 application by virtue of the substantially identical structure as outlined above, absent an objective showing. See MPEP 2112.01. Instant claims 103-105 recite volumes overlapping claim 69 of the ‘766 application for the rationale as set forth above. Instant claim 106 recites a CAP value overlapping claims 70-72 of the ‘766 application. Instant claims 107-108 recite ratios overlapping claims 77-78 of the ‘766 application. Instant claims 109-110 recite diameters overlapping claims 88 and 89-92, respectively, of the ‘766 application. Instant claim 111 recites a threading dislocation overlapping claims 80-81 of the ‘766 application. Instant claim 112 recites an x-ray rocking curve overlapping claim 82 of the ‘766 application. Instant claim 113 recites Urbach energy values overlapping claims 85-86 of the ‘766 application. Instant claim 114 recites a thermal conductivity overlapping claim 84 of the ‘766 application. Instant claim 115 recites a UV coefficient overlapping claim 87 of the ‘766 application. See MPEP 2112.01.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant’s arguments, see remarks p.7, 35 USC 112 section, filed 29 July 2026, with respect to 35 USC 112-b have been fully considered and are persuasive. The rejection of claims 89-101 and 103-115 has been withdrawn. Applicant has corrected the dependency of the claims.
Applicant’s arguments, see remarks p.7, 35 USC 102 section, filed 29 July 2026, with respect to 35 USC 102(a)(1) have been fully considered and are persuasive. The rejection of claims 88-89, 95-103, 105, and 109-115 has been withdrawn. Applicant has amended the claims to recite an expansion length to maximum diameter ratio which is not adequately disclosed by Dalmau.
Applicant’s arguments, see remarks p.8, filed 29 July 2026, with respect to 35 USC 103 rejections in view of Schowalter have been fully considered and are persuasive. The rejection of claims 88-115 has been withdrawn. Applicant persuasively argues that Schowalter does not teach the claimed expansion length to maximum diameter ratio either in the specific teachings of Fig.1D or where one would arrive at said ratio with sufficient specificity from the general teachings in Paragraphs 11 and 37-38. As such, the prior rejection is withdrawn.
Applicant's arguments filed 29 July 2026 regarding Double patenting have been fully considered but they are not persuasive. Applicant requests that the double patenting rejections be withheld in abeyance (remarks p.8 last paragraph – p.9). This is not persuasive as outlined above as the instant claims are not patentably distinct from US 12,227,873 and copending 18/931766. As such, the prior rejection is maintained.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Humera Sheikh can be reached at 571-272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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SETH DUMBRIS
Primary Examiner
Art Unit 1784
/SETH DUMBRIS/Primary Examiner, Art Unit 1784
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