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 .
Election/Restrictions
Applicant elected, without traverse, Species I (Figure 2) in the reply filed on February 11, 2026.
Claims 17 and 18 are currently withdrawn, subject to rejoinder upon allowance of generic claims.
Claims 10 has been REJOINED, due to the allowance of generic claim 8 from which it depends.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 15 and 16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 11 and 16 of U.S. Patent No. 11,430,945 B2.
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application are anticipated by the claims 11 and 16 of U.S. Patent No. 11,430,945 B2.
That is, claim 15 of the instant application recites, a magnetic tunneling junction (MTJ) structure, comprising: a first (bottom) electrode over a substrate; a MTJ material stack over the first (bottom) electrode, the MTJ material stack includes: a seed layer; a pinned layer on the seed layer; a barrier layer on the pinned layer; a free layer on the barrier layer; and a capping layer on the free layer; a second (top) electrode over the MTJ material stack; and a stress (first and/or second) modulating layer disposed vertically between the first electrode and the second electrode, the stress modulating layer in physical contact with MTJ material stack (which are found in claim 11 of U.S. Patent No. 11,430,945 B2), wherein the stress modulating layer has an elastic modulus between 20 gigapascals (GPa) and 400 GPa (which is found in claim 16 of U.S. Patent No. 11,430,945 B2).
Note: the first electrode of the instant application equates to the bottom electrode of claim 11 of U.S. Patent No. 11,430,945 B2, and the second electrode of the instant application equates to the top electrode of claim 11 of U.S. Patent No. 11,430,945 B2.
As per claim 16 of the instant application, see claim 11 of U.S. Patent No. 11,430,945 B2.
The limitations of claims 15 and 16 of the instant application are all found in claims 11 and 16 of U.S. Patent No. 11,430,945 B2.
As such, since the language of claims 15 and 16 of the instant application are readily found in claims 11 and 16 of U.S. Patent No. 11,430,945 B2, claims 15 and 16 are anticipated by claims 11 and 16 of U.S. Patent No. 11,430,945 B2.
Claims 15 and 16 of the instant invention are broader in scope, i.e., the entire scope of the reference claim(s) fall(s) within the scope of the examined claim. In such a situation, a later patent to a genus would, necessarily, extend the right to exclude granted by an earlier patent directed to a species or sub-genus. In this type of nonstatutory double patenting situation, an obviousness analysis is not required for the nonstatutory double patenting rejection. Therefore, a patent to the genus would improperly extend the right to exclude granted by a patent to the species or sub-genus should the genus issue as a patent after the species or sub-genus. See MPEP 804.
A patent to a genus would, necessarily, extend the rights of a species or sub-species should the genus claims of the instant application issue after the after the species or subgenus.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 4 of U.S. Patent No. 11,785,864 B2.
Although the claim at issue is not identical, it is not patentably distinct from claims 1 and 4 of U.S. Patent No. 11,785,864 B2, because the claim of the instant application is anticipated by the claims 1 and 4 of U.S. Patent No. 11,430,945 B2.
That is, claim 1 of the instant application recites, a magnetic tunneling junction (MTJ) structure, comprising: a stress modulating layer on a first electrode layer, a MTJ material stack on the stress modulating layer, the MTJ material stack includes: a seed layer, the seed layer physically contacting (on) the stress modulating layer; a pinned layer on the seed layer; a barrier layer on the pinned layer ;a free layer on the barrier layer; and a capping layer on the free layer; and a second electrode layer on the MTJ material stack (e.g., as found with claim 1 of U.S. Patent No. 11,785,864 B2), wherein the stress modulating layer includes Zr, Hf, Al, or Mg (e.g. see claim 4 of U.S. Patent No. 11,785,864 B2).
As such, since the language of claim 1 of the instant application is readily found in claims 1 and 4 of U.S. Patent No. 11,785,864 B2, claim 1 is anticipated by claims 1 and 4 of U.S. Patent No. 11,785,864 B2.
Claim 1 of the instant invention is broader in scope, i.e., the entire scope of the reference claim(s) fall(s) within the scope of the examined claim. In such a situation, a later patent to a genus would, necessarily, extend the right to exclude granted by an earlier patent directed to a species or sub-genus. In this type of nonstatutory double patenting situation, an obviousness analysis is not required for the nonstatutory double patenting rejection. Therefore, a patent to the genus would improperly extend the right to exclude granted by a patent to the species or sub-genus should the genus issue as a patent after the species or sub-genus. See MPEP 804.
A patent to a genus would, necessarily, extend the rights of a species or sub-species should the genus claims of the instant application issue after the after the species or subgenus.
Response to Arguments
Applicant's arguments filed June 16, 2026, have been fully considered, and are considered persuasive.
More concretely, the Examiner has reconsidered the rejection of claims 3, 8, 9, 11-14 and 19 under 35 U.S.C. 112(a), first paragraph, as failing to comply with the written description requirement.
The Applicant's arguments at pp. 6-7 (the First and Second arguments) of the Response filed on June 16, 2026, regarding such a rejection of the claims, has been considered persuasive.
Additionally, the Examiner has reconsidered the rejection of claims 1-9, 11-16, 19, and 20, rejected under 35 U.S.C. 103 as being unpatentable over Iba (JP 2014-154604 A) in view of Ranjan et al. (US 2008/0225585 A1).
The Applicant's arguments at pp. 8-13 of the Response filed on June 16, 2026, regarding such a rejection of the claims, has been considered persuasive.
The Applicant has not argued the merits of the Double Patenting rejections, and the rejection of Claims 15 and 16 on the ground of nonstatutory double patenting, as being unpatentable over claims 11 and 16 of U.S. Patent No. 11,430,945 B2, is maintained, as is the rejection of Claim 1 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 4 of U.S. Patent No. 11,785,864 B2.
Allowable Subject Matter
Claims 2-7, 20, and 21 are tentatively objected to as being dependent upon a rejected base claim, but, pending an updated search, amendments or arguments presented by the Applicant and considered by the Examiner in reply to this office communication, would be favorably considered if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 8-14 are tentatively considered allowable over the art of record, pending an updated search, amendments or arguments presented by the Applicant and considered by the Examiner in reply to this office communication.
Conclusion
THIS ACTION IS MADE FINAL. 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 William J Klimowicz whose telephone number is (571)272-7577. The examiner can normally be reached Monday-Thursday, 8:00AM-6PM, ET.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Steven Lim can be reached at (571)270-1210. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WILLIAM J KLIMOWICZ/Primary Examiner, Art Unit 2688
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