DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. 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
2. 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 1, 9 and 14-15 are non-provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 9, 14 and 17 of U.S. Patent No. 12315753 B2 respectively. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant application is broader than the patent, therefore, the patented claims anticipate the instant claims.
Claims 1, 9 and 14-15 of the instant application correspond to the patented claims as follows:
Instant application
USPAT 12315753 B2
1, 9
9
14, 15
14, 17 respectively.
Allowable Subject Matter
3. Claims 1, 9 and 15 would be allowable once the double patenting rejection set forth in this office action is overcome.
Claims 2-8, 10-14 and 16-20 would also be allowable because of their dependency status from Claims 1, 9 and 15 respectively.
Reason for Allowance
4. The following is a statement of reasons for the indication of allowable subject matter:
5. As to Claim 1, the prior arts of record alone or in combination fails to teach or suggest the claimed “an ion beam generator configured to generate an ion beam directed towards the wafer, wherein the first light beam is in a plane parallel to the ion beam”, along with all other limitations of claim 1.
6. As to Claim 9, the prior arts of record alone or in combination fails to teach or suggest the claimed “after shifting the position of the wafer holder in the first direction, exposing the wafer to an ion beam, wherein the first light extends in a plane parallel to the ion beam”, along with all other limitations of claim 9.
7. As to Claim 15, the prior arts of record alone or in combination fails to teach or suggest the claimed “performing a rotational scan to detect a rotational misalignment of the wafer with respect to the wafer holder;
after performing the rotational scan, performing a first scan to determine whether the wafer is misaligned with respect to the wafer holder in a first direction;
in response to detecting the wafer is misaligned with respect to the wafer holder in the first direction, adjusting a position the wafer relative to the wafer holder in the first direction;
in response to detecting rotational misalignment of the wafer, adjusting a rotation of the wafer relative to the wafer holder; and
exposing the wafer to an ion beam while the wafer is disposed on the wafer holder”, along with all other limitations of claim 17.
8. Tanimoto (JPS63296339A) teaches a semiconductor alignment apparatus but fails to teach the claimed limitations.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMIL AHMED whose telephone number is (571)272-1950. The examiner can normally be reached M-F: 9:00 AM - 5:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kara Geisel can be reached on 571-272-2416. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JAMIL AHMED/Primary Examiner, Art Unit 2877
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