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 1-25 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of U.S. Patent No. 12,525,518 . Although the claims at issue are not identical, they are not patentably distinct from each other because while the claim scope of the instant claims recite the same invention of the issued patent.
Instant Application Claim
Issued Patent 518
Reasons Description of Double Patenting
1
1
Inst Claim 1 broadly encompasses same invention
2
1
Inst Claim 1 broadly encompasses same invention
3
5
Inst Claim 1 broadly encompasses same invention
4
1
Inst Claim 1 broadly encompasses same invention
5
6
Identical claim language
6
2
Identical claim language
7
1
Inst Claim 1 broadly encompasses same invention
8
1
Inst Claim 1 broadly encompasses same invention
9
5
Inst Claim 1 broadly encompasses same invention
10
1
Inst Claim 1 broadly encompasses same invention
11
2
Identical claim language
12
3
Identical claim language
13
4
Identical claim language
14
1
Inst Claim 1 broadly encompasses same invention
15
1
Inst Claim 1 broadly encompasses same invention
16
5
Inst Claim 1 broadly encompasses same invention
17
1
Inst Claim 1 broadly encompasses same invention
18
2
Identical claim language
19
3
Identical claim language
20
1
Inst Claim 1 broadly encompasses same invention
21
1
Inst Claim 1 broadly encompasses same invention
22
5
Inst Claim 1 broadly encompasses same invention
23
2
Identical claim language
24
3
Identical claim language
25
4
Identical claim language
Allowable Subject Matter
Claims 1-25 would be allowable if a timely filed terminal disclaimer is submitted to obviate the double patenting rejection asserted in this office action.
The following is a statement of reasons for the indication of allowable subject matter: The following is an examiner’s statement of reasons for allowance:
Applicant teaches a semiconductor device having a substrate, first electrical interconnect structures formed over a first and opposite second surface of the substrate with a via extending through the first electrical interconnect structure. A device layer formed over the second surface substrate opposite the first surface of the substrate where a first antenna is formed over the first interconnect structure and second antenna formed over the device layer.
Regarding Claims 9 and 26, the first and second antennas are configured to simultaneously operate at different frequencies
Kaeding (U.S. Pat. 11,018,098) discloses a semiconducting device with a substrate, interconnecting layer and vias and first and second antennas. However, the cited reference fail to individually disclose, or suggest when combined, device layer formed over the second surface and a conductive via extending through the device layer as well as an antenna disposed over the first electrical interconnect structure.
No prior art was found teaching individually, or suggesting in combination, all of the features of the applicants’ invention, specifically the device layers with a first antenna disposed over the first electrical interconnect structure in combination with the recited structural limitations of the claimed invention.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT J MAY whose telephone number is (571)272-5919. The examiner can normally be reached M-F 10AM-3:30pm.
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, Jong-Suk (James) Lee can be reached at 571-272-7044. 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.
/ROBERT J MAY/Primary Examiner, Art Unit 2875
Prosecution Insights