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 .
Newly amended/submitted claims 11-17, 19 and 22-27 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: amended claims 11-17 and 19 are drawn to a blank wafer comprising a back side that includes at least a first implanted dopant profile and a second implanted dopant profile, where the first and second implanted dopant profiles have at least one of a different dopant type or a different depth. The newly submitted claims 22-26 are drawn to a wafer comprising: a front side that includes a first implanted dopant profile and a second implanted dopant profile, wherein the first implanted dopant profile has a first dopant type and a first depth, and wherein the second implanted dopant profile has a second dopant type different than the first dopant type and a second depth different than the first depth; and a back side that includes at least one implanted dopant profile, wherein the at least one implanted dopant profile includes at least one of the first implanted dopant profile or the second implanted dopant profile. And claims 27 is drawn to a blank wafer comprising: a front side that is not implanted with dopants. Furthermore, it should be noted the elected species 22 (fig. 27F) at least fails to show the above recited limitations. And the above claims are directed to species that is distinct from the original elected species.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 11-17, 19 and 22-27 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
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.
Claim 21 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.
Re claim 21, the phrase “wherein the dopant profile is configured to increase an amount of warpage in the blank wafer” was not described in the original specification.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-9 and 21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hamada et al., US Pub. No. 2017/0140934 A1.
Re claim 1, Hamada et al. disclose a wafer comprising: a front side and a back side (i.e., fig. 1); and a dopant profile 6 (fig. 1) implanted into the back side for controlling the shape of the wafer, wherein the wafer is a blank wafer (note: no special definition was given to the phrase “blank wafer” and the wafer in the cited prior art is considered to be the blank wafer. USPTO personnel are to give claims their broadest reasonable interpretation in light of the supporting disclosure. In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027-28 (Fed. Cir. 1997). Limitations appearing in the specification but not recited in the claim should not be read into the claim. E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369, 67 USPQ2d 1947, 1950 (Fed. Cir. 2003) (claims must be interpreted “in view of the specification” without importing limitations from the specification into the claims unnecessarily). In re Prater, 415 F.2d 1393, 1404-05, 162 USPQ 541, 550-551 (CCPA 1969). See also In re Zletz, 893 F.2d 319, 321-22, 13 USPQ2d 1320,1322 (Fed. Cir. 1989) (“During patent examination the pending claims must be interpreted as broadly as their terms reasonably allow.... The reason is simply that during patent prosecution when claims can be amended, ambiguities should be recognized, scope and breadth of language explored, and clarification imposed.... An essential purpose of patent examination is to fashion claims that are precise, clear, correct, and unambiguous. Only in this way can uncertainties of claim scope be removed, as much as possible, during the administrative process.”). See figs. 1-21 and pages 1-9 for more details. Furthermore, it should be noted that a recitation of the intended use and/or function of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use and/or function, then it meets the claim.
Re claim 2. The wafer according to claim 1, wherein the dopant profile is in at least one of a ring pattern, a ribbed pattern, a grid pattern, a ring and ribbed pattern and a pattern of discrete areas (i.e., figs. 8 and/or 9 etc).
Re claim 3. The wafer according to claim 1, wherein the dopant profile comprises at least two dopants (i.e., a plurality of phosphorus etc. paragraphs 62-64).
Re claim 4. The wafer according to claim 1, wherein the dopant profile creates a back side structure (fig. 1).
Re claim 5. The wafer according to claim 4, wherein the back side structure extends over less than the entire back side (fig. 8).
Re claim 6. The wafer according to claim 4, wherein the back side structure is in a masked pattern (i.e., fig. 8 and paragraph 77).
Re claim 7. The wafer according to claim 1, wherein the front side comprises an epitaxial layer 2 (fig. 1).
Re claim 8. The wafer according to claim 1, wherein the blank wafer has a warped shape (i.e., almost flat etc, paragraph 67).
Re claim 9. The wafer according to claim 1, wherein the blank wafer has a non-planar shape (i.e., almost flat etc, paragraph 67).
Re claim 21, wherein the dopant profile 6 is configured to increase an amount of warpage in the blank wafer (e.g., fig. 1, 8 or 9).
It should be noted that the process limitation of the above instant claims have no patentable weight in claim drawn to structure. Note that a product by process claim is directed to the product per se, no matter how actually made, In re Hirao, 190 USPQ 15 at 17 (footnote 3). See also In re Brown, 173 USPQ 685; In re Luck, 177 USPQ 523; In re Fessmann, 180 USPQ 324; In re Avery, 186 USPQ 161; In re Wertheim, 191 USPQ 90 (209 USPQ 554 does not deal with this issue); and In re Marosi et al, 218 USPQ 289, all of which make it clear that it is the patentability of the final product per se which must be determined in a product by process claim, and not the patentability of the process, and that an old or obvious product by a new method is not patentable as a product, whether claimed in product by process claims or not. Note that applicant has the burden of proof in such cases, as the above caselaw makes clear.
Therefore, the process limitation of the instant claims is thus non-limiting.
Furthermore, a recitation of the intended use and/or functions of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use and/or function, then it meets the claim.
Response to Arguments
Applicant's arguments filed 11/12/2025 have been fully considered but they are not persuasive for reasons herein above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JACK CHEN whose telephone number is (571)272-1689. The examiner can normally be reached Monday to Friday, 8am to 4pm.
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, Yara J. Green can be reached at (571)270-3035. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JACK S CHEN/ Primary Examiner, Art Unit 2893
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