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 .
Election/Restrictions
Applicant’s election without traverse of Species I in the reply filed on 6/3/26 is acknowledged.
Applicant indicated that Claims 1-16 read on the elected species. However, Claims 4-6, 8-9, and 16 include a hole through a second insulator layer which appears to more appropriately read on a non-elected species such as possibly Fig. 17.
Accordingly, Claims 4-6, 8-9, and 16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 6/3/26
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-16 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
In Claim 1 (line 5), the limitation of the second hole-defining insulator layer being a single layer appears to be new matter not disclosed in the original disclosure (e.g. [0039] appears to disclose that 18a, i.e. the first hole-defining layer, is a single layer, but layer 16a is not disclosed as a single layer and Fig. 14 appears to show 16a as a plurality of layers fused together). If Applicant was attempting to claim the two single layers are layers 18a and 18b of Fig. 14 then that limitation is supported.
In Claim 2, the limitation of the first layer being smaller than the second layer appears to be new matter if it is attempting to refer respectively to layers 18a and 18b.
Claims 1-16 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
In Claim 1, it is not enabled how one of ordinary skill in the art could make and use the invention having the signal conductor layer is located in the first hole (of line 36 of Claim 1) and also have the signal conductor layer below the first hole-defining insulator layer (of lines 6-7) and also at least a portion of the first hole overlaps the signal conductor layer (of lines 23-24) since these limitations appear to contradict each other (how can the hole overlap the conductor if the conductor is in the hole and how can the conductor be below the insulator layer that forms the hole if the conductor is in the hole?). It appears, in elected Fig. 14, that the signal conductor layer (22) is in the first hole defined by layer 18a but there are numerous inconsistencies in the claims regarding which layers are defining which holes and the locations of each claimed element. The entirety of the Claims are not enabled how to make and use the claimed invention since the limitations regarding the second hole-defining insulating layer are inconsistent as to whether they are referring to 18b or 16a of Fig. 14 since the locations and orientations are inconsistent throughout (lines 25-32 appear to compound these issues).
Claims 1-16 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 lacks clarity including a conflict in that the claim requires "a signal conductor layer below the first hole-defining insulator layer" and "the signal conductor layer is located in the first hole" and "at least a portion of the first hole overlaps the signal conductor layer". These limitations appear to be incompatible since if the layer having the hole is above the signal layer then how could the signal layer be in the hole? It appears that the signal conductor layer 22 is in the first hole H1 but below the second hole H3 (i.e. the second hole H3 overlaps the conductor layer 22 that is in the first hole H1, e.g. see Fig. 14). Also, it appears that the hole H3 is larger in volume than the hole H1 which appears opposite from what is claimed. Claim 1 appears to have numerous inconsistencies throughout the claim that are not compatible with the Fig. 14.
Due to the compounded inconsistencies throughout the claims and the resulting lack of clarity as to which elements Applicant was attempting to claim, the entirety of the 112 issues that may be present cannot be determined by the examiner and no meaningful examination regarding prior art can be performed. The examiner suggests, in response to this office action, Applicant thoroughly comparing the claims to the elected Fig. 14 and amending accordingly to place the claims in condition for a full examination on the merits.
Dependent claims inherit the 112 defects/issues of the claims from which they depend.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHEN E JONES whose telephone number is (571)272-1762. The examiner can normally be reached 9AM to 5PM.
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, Andrea Lindgren Baltzell can be reached at 571-272-5918. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Stephen E. Jones/Primary Examiner, Art Unit 2843
Prosecution Insights