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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria1 Virginia 22313- 1450
`wwwnsptogov
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`APPLICATION NO.
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` F ING DATE
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`FIRST NAMED INVENTOR
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`ATTORNEY DOCKET NO.
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`CONF {MATION NO.
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`12/547,023
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`08/25/2009
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`Yosuke Mizuyama
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`MATE—43 5US
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`4478
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`EXAMINER
`RATNERPRESTIA —
`“”000“ —
`7590
`52473
`PO. BOX 980
`TSAI, H IEY
`VALLEY FORGE, PA 19482
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`PAPER NUMBER
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`ART UNIT
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`2895
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`MAIL DATE
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`11/30/2011
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`DELIVERY MODE
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`PAPER
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`Please find below and/or attached an Office communication concerning this application or proceeding.
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`The time period for reply, if any, is set in the attached communication.
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`PTOL—90A (Rev. 04/07)
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`Application No.
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`Applicant(s)
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`Office Action Summary
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` 12/547,023 MIZUYAMA, YOSUKE
`Examiner
`Art Unit
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`2895
`H. Jey TSAI
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
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`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 1MONTH(S) OR THIRTY (30) DAYS,
`WHICHEVER IS LONGER, FROM THE MAILING DATE OF THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(a).
`In no event however may a reply be timely filed
`after SIX () MONTHS from the mailing date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1.704(b).
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`Status
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`1)I:I Responsive to communication(s) filed on
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`2a)|:l This action is FINAL.
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`2b)|:l This action is non-final.
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`3)I:I An election was made by the applicant in response to a restriction requirement set forth during the interview on
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`; the restriction requirement and election have been incorporated into this action.
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`4)|:l Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
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`closed in accordance with the practice under Exparte Quay/e, 1935 CD. 11, 453 O.G. 213.
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`Disposition of Claims
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`5)|Zl CIaIm(s) 1-23is/are pending in the application.
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`5a) Of the above claim(s) _ is/are withdrawn from consideration.
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`6)I:l CIaIm(s) _ is/are allowed.
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`7)|:l CIaIm(s) _ is/are rejected.
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`8)I:l CIaIm(s)
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`is/are objected to.
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`9)IXI CIaIm(s) g are subject to restriction and/or election requirement.
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`Application Papers
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`10)I:I The specification is objected to by the Examiner.
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`11)|Xl The drawing(s) filed on 25 August 2009 is/are: a)|Z accepted or b)|:l objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
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`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
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`12)I:I The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PTO-152.
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`Priority under 35 U.S.C. § 119
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`13)I:| Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
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`a)|:| AII
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`b)|:l Some * c)I:I None of:
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`1.I:I Certified copies of the priority documents have been received.
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`2.|:l Certified copies of the priority documents have been received in Application No. _
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`3.I:I Copies of the certified copies of the priority documents have been received in this National Stage
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`application from the International Bureau (PCT Rule 17.2(a)).
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`* See the attached detailed Office action for a list of the certified copies not received.
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`Attachment(s)
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`1) I] Notice of References Cited (PTO-892)
`2) I] Notice of Draftsperson‘s Patent Drawing Review (PTO-948)
`3) I] Information Disclosure Statement(s) (PTO/SB/08)
`Paper No(s)/Mai| Date _.
`U.S. Patent and Trademark Office
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`4) I] Interview Summary (PTO-413)
`Paper N0(S )/Mai| Date. _
`5)I:I NOTICQ 0f Informal Patent Application
`6)I:I Other:—
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`PTOL-326 (Rev. 03-11)
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`Office Action Summary
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`Part of Paper No./Mai| Date 20111126
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`Application/Control Number: 12/547,023
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`Page 2
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`Art Unit: 2895
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`Restriction to one of the following inventions is required under 35 U.S.C. § 121:
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`l.
`subclass 82.
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`Claims 1-18, drawn to a semiconductor device, classified in Class 257,
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`Claims 19-23, drawn to process for making semiconductor devices,
`ll.
`classified in Class 438, subclass 34.
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`The inventions are distinct and independent, each from the other because of the
`following reasons:
`The inventions are distinct if either or both of the following can be shown: (1) that
`the process as claimed can be used to make other and materially different product or
`(2) A different field of search.
`In the instant case unpatentability of the group I invention
`would not necessarily imply unpatentability of the group II inventions, for example,
`connection of LRD formed by sputtering.
`Because these inventions are distinct for the reasons given above and as shown
`by the above different classifications, the fields of search are not co-extensive and
`separate examination would be required, restriction for examination purposes as
`indicated is proper.
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`Applicant is advised that the response to this requirement to be complete must
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`include an election of the invention to be examined even though the requirement be
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`traversed.
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`This application further contains claims directed to the following patentably
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`distinct species : 1. A first species described in figures 3-9B. 2. A second species
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`described in figure 8—13. The species are independent or distinct because claims to the
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`different species recite the mutually exclusive characteristics of such species.
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`In
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`addition, these species are not obvious variants of each other based on the current
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`record.
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`Applicant is required under 35 U.S.C. 121 to elect a single disclosed species for
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`prosecution on the merits to which the claims shall be restricted if no generic claim is
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`finally held to be allowable. Currently, none are generic.
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`Application/Control Number: 12/547,023
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`Page 3
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`Art Unit: 2895
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`There is an examination and search burden for these patentably distinct species
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`due to their mutually exclusive characteristics. The species require a different field of
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`search (e.g., searching different classes/subclasses or electronic resources, or
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`employing different search queries); and/or the prior art applicable to one species would
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`not likely be applicable to another species; and/or the species are likely to raise different
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`non-prior art issues under 35 U.S.C. 101 and/or 35 U.S.C. 112, first paragraph.
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`Applicant is advised that the reply to this requirement to be complete must
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`include (i) an election of a species to be examined even though the requirement
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`may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing
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`the elected species, including any claims subsequently added. An argument that a
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`claim is allowable or that all claims are generic is considered nonresponsive unless
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`accompanied by an election.
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`The election of the species may be made with or without traverse. To preserve a
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`right to petition, the election must be made with traverse. If the reply does not distinctly
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`and specifically point out supposed errors in the election of species requirement, the
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`election shall be treated as an election without traverse. Traversal must be presented at
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`the time of election in order to be considered timely. Failure to timely traverse the
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`requirement will result in the loss of right to petition under 37 CFR 1.144. lf claims are
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`added after the election, applicant must indicate which of these claims are readable on
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`the elected species.
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`Should applicant traverse on the ground that the species are not patentably
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`distinct, applicant should submit evidence or identify such evidence now of record
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`Application/Control Number: 12/547,023
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`Page 4
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`Art Unit: 2895
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`showing the species to be obvious variants or clearly admit on the record that this is the
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`case. In either instance, if the examiner finds one of the species unpatentable over the
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`prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103(a)
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`of the other species.
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`Upon the allowance of a generic claim, applicant will be entitled to consideration
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`of claims to additional species which depend from or otherwise require all the limitations
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`of an allowable generic claim as provided by 37 CFR 1.141.
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`Any inquiry concerning this communication or earlier communications from the
`examiner should be directed to H. Jey Tsai whose telephone number is (571) 272-
`1684. The examiner can normally be reached on from: Monday: 7:00 am-4:00 pm;
`Tuesday: 7:00am- 4:00pm; Friday: 7:00 am-11 :OOam. Tuesday & Wednesday are off.
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
`supervisor, Drew Richards, 571-272—1736.
`The fax phone number for this Group is 571-273-8300.
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`/H.Jey Tsai/
`Primary Examiner, Art Unit 2895
`11/29/2011
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