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 1-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7, 9-15 and 17 (hereafter patent claims) of U.S. Patent No. 12,288,568 (please see mapping of claims provided below). Although the claims at issue are not identical, they are not patentably distinct from each other for the following reasons.
Patent claim 1 includes all of the limitations of instant application claim 1. Patent claim 1 also includes additional limitations, e.g., the method steps in patent claim 1 which are not recited in instant claim 1. Hence, instant application claim 1 is generic to the species of invention covered by patent claim 1. As such, instant application claim 1 is anticipated by patent claim 1 and is therefore not patentably distinct therefrom. (See Eli Lilly and Co. v. Barr Laboratories Inc., 58 USPQ2D 1869, “a later genus claim limitation is anticipated by, and therefore not patentably distinct from, an earlier species claim”, In re Goodman, 29 USPQ2d 2010, “Thus, the generic invention is ‘anticipated’ by the species of the patented invention” and the instant “application claims are generic to species of invention covered by the patent claim, and since without terminal disclaimer, extant species claims preclude issuance of generic application claims”).
For the same reasons, instant application claims 2-17 are generic to the species of invention covered by the patent claims, and are therefore not patentably distinct therefrom. The instant application claims are believed to map to the patent claims as follows:
In regard to claim 1, patent claim 1 recites: a near field transducer (NFT) that is part of a thermally assisted magnetic recording (TAMR) head (patent claim 1, lines 1-2), the NFT comprising: a dielectric layer and a template layer disposed on a waveguide core (patent claim 1, lines 4-5); an NFT layer disposed adjacent to the dielectric layer (patent claim 1, line 7); an upper NFT layer disposed adjacent to the NFT layer (patent claim 1, line 9), wherein the NFT layer and the upper NFT layer are etched according to a pattern (patent claim 1, lines 6 and 10-12), and wherein the template layer is removed after etching of the NFT layer and the upper NFT layer (patent claim 1, line 12).
Additionally, claim 1 appears to recite a near field transducer that is produced by the method of fabricating a near field transducer recited in patent claim 1. While claim 1 and patent claim 1 recite two different statutory categories (product and process of making), they do not appear to be patentably distinct from each other.
In regard to claim 2, patent claim 1 recites that the template layer is patterned to form a template (patent claim 1, line 6).
In regard to claim 3, patent claim 1 recites that the NFT layer is planarized to generate a planar layer (patent claim 1, line 8).
In regard to claim 4, patent claim 1 recites a peg patterning mask (patent claim 1, line 10), wherein the NFT layer and the upper NFT layer are etched according to the pattern provided by the peg patterning mask (patent claim 1, lines 11-12).
Claim 5 maps to patent claim 2.
Claim 6 maps to patent claim 3.
Claim 7 maps to patent claim 4.
Claim 8 maps to patent claim 5 or patent claim 6.
Claim 9 maps to patent claim 7.
Claim 10 maps to patent claim 9.
Claim 11 maps to patent claim 10.
Claim 12 maps to patent claim 11.
Claim 13 maps to patent claim 12.
Claim 14 maps to patent claim 13.
Claim 15 maps to patent claim 14.
Claim 16 maps to patent claim 15.
Claim 17 maps to patent claim 17.
Allowable Subject Matter
Claims 1-17 would otherwise be allowable over the prior art of record if the double patenting rejection(s) are overcome.
The following is a statement of reasons for the indication of allowable subject matter:
The closest prior art of record, Zhou et al. (US 2014/0307534) discloses: in regard to claim 1, a near field transducer (NFT) that is part of a thermally assisted magnetic recording (TAMR) head (see Figures 3A-3M), the NFT comprising: a dielectric layer (Figure 3C, element 316) and a template layer (322) disposed on a waveguide core (312); and an NFT layer disposed adjacent to the dielectric layer (see paragraph 0039).
However, Zhou et al. does not disclose: in regard to claim 1, an upper NFT layer disposed adjacent to the NFT layer, wherein the NFT layer and the upper NFT layer are etched according to a pattern, and wherein the template layer is removed after etching of the NFT layer and the upper NFT layer.
Claims 2-17 are dependent upon claim 1.
Conclusion
The prior art made of record and not relied upon (see attached PTO-892 form) is considered pertinent to applicant's disclosure.
Habermas et al. (US 9,343,089) discloses a patterning operation including: injecting droplets of liquid photoresist on a substrate; placing a template pattern in close proximity to the substrate and in contact with the liquid photoresist; curing the photoresist; removing the template pattern from the cured photoresist and the substrate; and patterning areas surrounding the one or more microelectronic structures having non-critical geometry features within a common layer using optical lithography.
Cheng et al. (US 10,304,482) discloses depositing a substrate layer on a structure comprising a near field transducer (NFT) and a write head; depositing a template metal on at least a portion of the substrate layer, wherein the template metal protects the portion of the substrate layer it is deposited on; and selectively etching the substrate layer to remove at least part of the substrate layer to form a low energy surface layer having surface topography.
Zhao et al. (US 2022/0051694) discloses performing one or more repetitions each involving depositing a layer of a material to a first thickness T1 and ion beam etching the layer of material to remove thickness T2, where T2<T1, wherein after the repetitions, the resulting structure can be used as a template, in which case the method could further include depositing additional material to form a final structure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Peter Vincent Agustin whose telephone number is (571) 272-7567. The examiner can normally be reached on Monday - Thursday 8:30 am - 6:30 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Steven Lim can be reached on 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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/Peter Vincent Agustin/
Primary Examiner, Art Unit 2688