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 .
Claim Rejections - 35 USC § 112(a)
Examiner withdraws the 35 USC § 112(a) rejection based upon Applicant’s amendments to the claims.
Claim Rejections - 35 USC § 112(b)
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, and 3-8 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.
Regarding claim 1,
The limitation below is indefinite.
Wherein the semiconductor film is formed on a substrate made of any of a biaxial orientation substrate composed of alpha-Cr2O3 or a solid solution of alpha Cr2O3 and a different material, or a composite base substrate having an orientation layer composed of alpha-Cr2O3 or a solid solution of alpha Cr2O3 and a different material.
It is indefinite because it is unclear what the substrate needs to be made of. Does it need to be made of:
biaxial orientation substrate composed of…
alpha-Cr2O3
solid solution of alpha Cr2O3
alpha-Cr2O3 and a different material
solid solution of alpha Cr2O3 and a different material
composite base substrate having an orientation layer composed of
alpha-Cr2O3
solid solution of alpha Cr2O3
alpha-Cr2O3 and a different material
solid solution of alpha Cr2O3 and a different material
or
biaxial orientation substrate composed of…
alpha-Cr2O3
solid solution of alpha Cr2O3 and a different material
composite base substrate having an orientation layer composed of
alpha-Cr2O3
solid solution of alpha Cr2O3 and a different material
Because the claim can be interpreted in multiple ways it renders the claim indefinite.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1, 3-6, and 8 is/are rejected under 35 U.S.C. 103 as obvious over Takahashi et al. (WO 2018-084304 A1), in view of Gao et al., “The process of growing Cr2O3 thin films on α-Al2O3 substrates at low temperature by r.f. magnetron sputtering”, Journal of Crystal Growth 457 (2017) 158-163 (“Gao”), with cited reference Hones et al., “Characterization of sputter-deposited chromium oxide thin films”, Surface and Coatings Technology, Vol. 120-121, Nov. 1999, pgs. 277-283 (“Hones”).
Alternatively, the claims above are rejected under 35 U.S.C. 103 as obvious over Takahashi et al. (US 2019/0305091 A1) (“Takahashi”), in view of Gao, Hones.
Examiner note: The first reference and the second reference are in the same patent family. The WIPO was published before the PgPub. Examiner’s references will therefore be to the U.S. PgPub.
Regarding claim 1, Takahashi teaches:
Regarding the limitations:
A semiconductor film having a corundum-type crystal structure composed of a-Ga2O3 or an a-Ga2O3 solid solution,
wherein an X-ray rocking curve full width at half maximum of a (104) plane on at least one surface of the semiconductor film is 500 arcsec or less.
Applicant has claimed the above device in reference to how they measure it after it is formed. That is Applicant has claimed the characteristics of the device when measured.
The prior art teaches the claimed device; however, the prior art does not teach the measured aspect. This is not fatal to the application of the prior art onto the device. This is because the prior art teaches the same, and/or substantially similar method of making Applicant’s device. Therefore, the prior art would inherently, or obviously, have the same characteristic. MPEP 2112(III), where a 35 USC §§ 102 or 103 rejection can be made when the prior art seems identical, but is silent to an inherent characteristic.
The prior art teaches the claimed device for the following reasons.
The prior art teaches using the same substrate disclosed by Applicant. This is a crystalline sapphire substrate with an a-axis, m-axis, or off-axis orientation. Applicant figure 5, and ¶¶ 0034-35; Takahashi ¶ 0038.
The prior art then teaches using atomized droplets, and mist CVD to form a precursor layer. Takahashi ¶¶ 0041-47. The precursor layer is corundum type crystal, gallium. Takahashi ¶ 0043. Applicant teaches using aerosol deposition. Applicant ¶¶ 0036-41. The description of aerosol deposition appears to the same as atomized droplets and/or mist CVD. Thus, this is considered the same process.
The precursor is then annealed, Takahashi ¶ 0049, to a temperature around 1000 Celsius. Id. Because this is the same process disclosed by Applicant it will create the orientation layer, figure 5(c), and the gradient composition layer, figure 5(c). Applicant ¶¶ 0042.
Further, Takahashi Example 12 in Table 2 shows the resulting device will have the claimed half maximum of 500 arcsec or less, and because the same process disclosed by Applicant was used, it is inherent/obvious that when one measure the resulting (104) plane this will be true. MPEP 2112)I), where something old does not become patentable upon the discovery of a new property. Here the new property is the claimed X-ray rocking curve limitation. MPEP 2112(II), where the inherent feature need not be disclosed if it is inherent. Here while the (104) plane measurement is not disclosed because the prior art device is made by Applicant’s disclosed method it is inherent/obvious the prior art device would contain this feature.
Regarding the limitation,
wherein an X-ray rocking curve full width at half maximum of a (006) plane on at least one surface of the semiconductor film is 50 arcsec or less.
As stated above because the prior art teaches the same method of making the device, the prior art would inherently/obviously teach this same characteristic when the device is measured. MPEP 2112.
Takahashi does not state:
Wherein the semiconductor film is formed on a substrate made of any of a biaxial orientation substrate composed of alpha-Cr2O3 or a solid solution of alpha Cr2O3 and a different material, or a composite base substrate having an orientation layer composed of alpha-Cr2O3 or a solid solution of alpha Cr2O3 and a different material.
Takahashi does teach:
The substrate can be formed of alpha-Al2O3.
Gao teaches:
That Cr2O3 has the same corundum crystal structure as alpha-Al2O3. Pg. 158 at col. 1. Further, Gao teaches that Cr2O3 is a known replacement for Al2O3 and Cr2O3 can replace alpha-Al2O3. Id. In addition, Gao, by means of cited reference Hones teaches that depending on the amount of CO2 one uses during the formation of Cr2O3 one can create alpha-Cr2O3. Hones teaches that alpha-Cr2O3 shows a lower surface roughness than non-single phase Cr2O3. Based upon the widely used Cr2O3 films, including alpha-Cr2O3 it would have been obvious to one of ordinary skill in the art to replace the alpha-Al2O3 with alpha-CrO3 as Gao and Hines teach that alpha-Cr2O3 are art recognized as being equivalent for the same purpose and are known substitutes for each other. MPEP 2144.06-07.
Regarding claim 3,
Claim 3 is inherently/obviously taught for the same reasons stated in claims 1-2 above.
Regarding claim 4,
Per Applicant’s ¶¶ 0021, 31-32. the device made by the method described in the specification will result in the claimed defect density. Because, as stated in claims 1-2 above, the prior art teaches the same, or substantially similar, method of making the device of claim 1, the prior art would also inherently/obviously teach this limitation.
Regarding claim 5, Takahashi teaches:
wherein the semiconductor film has a thickness of 0.3 µm or more (¶ 0032).
Regarding claim 6, Takahashi teaches:
wherein the semiconductor film contains a Group 14 element as a dopant at a proportion of 1.0 x 1016 to 1.0 x 1021/cm3 (¶ 0030, where the dopant concentration 1x1018/cm3, and the dopants can be from group 14, ¶ 0033).
Regarding claim 8,
It would have been obvious to one of ordinary skill in the art that they could make a semiconductor film as large or as small in area as they desire. This is because the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. MPEP 2144.04(IV)(A).
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as obvious over Takahashi, in view of Gao with cited reference Hones, in view of Akaiwa et al., “Growth and Characterization of -Ga2O3 Films on Sapphire Substrates with alpha-(AlGa)2O3 Buffer Layer”, 2013 JSAP-MRS Joint Symposia, Japan Society of Applied Physics 2013 (“Akaiwa”).
Regarding claim 7, Takahashi teaches:
forming the device with the a-axis (¶¶ 0030-31, and 38).
Takahashi does not teach:
wherein the semiconductor film is a c-axis orientation film.
Akaiwa teaches:
That one of ordinary skill in the art would be able to choose the orientation of the crystalline film, a-axis or c-axis, based upon the amount of lattice mismatch their design is able to handle when using a sapphire substrate. This is because Sasaki teaches that a-axis results in a 4.81% lattice mismatch versus a 3.54% lattice mismatch with c-axis. Para 1. As such it would have been obvious to one of ordinary skill in the art to choose to have the semiconductor film oriented in the c-axis versus the a-axis in order to get less lattice mismatch.
Response to Arguments
Applicant’s amendments have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Takahashi, in view of Gao with cited reference Hones.
Conclusion
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/VINCENT WALL/Primary Examiner, Art Unit 2898