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
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claim 18 is rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 1 of prior U.S. Patent No. 12,349,497. This is a statutory double patenting rejection.
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 1-3, 16-17, and 19-20 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claim 1 of US Patent 12,349,497 in view of Meinders (US PG Pub 2015/0086705).
Although the claims at issue are not identical, they are not patentably distinct from each other because of the following reasons:
Regarding claims 1 and 16-17, claim 1 of the ‘497 patent recites or renders obvious each of the features in these claims, except for two differences: a) the ‘497 teaches teaches printing the paste layers into a plurality of trenches on the source substrate, not the dents of instant claim 1, and b) the ‘497 patent teaches forming of transferred stack lines, not the stack bumps of instant claim 1.
However, Meinders teaches a similar laser pattern transfer method (abstract and para. 0005, Figs. 1-7), wherein the trenches on the source substrate comprise “a series of pits containing donor material” (para. 0007 and Figs. 2, 5, and 6) and wherein the release of the donor material from these pits forms transferred bumps on the receiving substrate (as shown in Figs. 1 and especially Fig. 7).
In view of Meinders’ teachings, it would have been obvious to one of ordinary skill in the art to select Meinders’ dents, as a suitable type of trench feature for the trenches of the ‘497 patent, which form corresponding bumps when transferred to the receiver,
Regarding claims 2 and 19, Meinders teaches the source substrate comprises a flexible polymer sheet (para. 0025).
Regarding claims 3 and 20, Meinders teaches the source substrate comprises a rigid glass substrate (para. 0025).
Claims 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, and 15 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 2, 5, 4, 5, 5, 4, 5, 6, 6, 7, 7, and 8, respectively of US Patent 12,349,497 in view of Meinders.
Although the claims listed in section 9 are not identical, they are not patentably distinct from each other because the ‘497 patent claims listed above recite equivalent or narrower corresponding features as the instant claims listed in section 9.
Prior Art of Record
Claims 1 and 18 were not found in a search of the prior art, but stand rejected as listed in the sections above.
Chandrasekaran (US PG Pub 2020/0211729, previously made of record), Schrauben (US PG Pub 2019/0019736, previously made of record), and Meinders (US PG Pub 2015/0086705, made of record herein), are the closest prior art of record.
Conclusion
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/JIMMY R SMITH JR./Examiner, Art Unit 1745
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