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 .
DETAILED ACTION
Response to Amendment
Applicant’s Amendment filed March 4, 2026 has been fully considered and entered.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 of this title, 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Miller et al. (7,435,661 B2) in view of Collins (US 2015/0140720 A1).
Regarding claims 1 and 6-9, Miller discloses a semiconductor structure, comprising: a carrier substrate (101B in Figs. 1J-1L); a patterned silicon-based layer (101A) over the carrier substrate; a first layer of conformal oxide (125) comprising dished silicon oxide pockets (127) disposed laterally between pattern features of the patterned silicon-based layer, the dished silicon oxide pockets having a dishing height; a planarizing oxide layer (129) over the dished silicon oxide pockets between the pattern features of the patterned silicon-based layer; and an additional layer (column 5, lines 52-55 discloses further processing including deposition of additional layers) that is a separate layer from the planarizing layer deposited on a surface of the planarizing oxide layer, and defining a second layer on the planarizing oxide layer and the patterned silicon-based layer, the second layer conforming to the patterned silicon-based layer.
Still regarding claims 1 and 6-9, Miller teaches the claimed invention except for the second layer being conformal oxide defining a bonding interface. Collins discloses a carrier substrate (101 in Figs. 1D and 3A); a patterned silicon nitride layer (103”) configured to define a passive device of the semiconductor structure (see abstract; paragraph 0028); a first layer of conformal oxide (portion of 104 filling spaces in the patterned silicon-based layer 103”); and a second layer of conformal oxide (upper layer of 104) on the first layer of conformal oxide and over the patterned silicon-based layer; the second layer of conformal oxide with a thickness less than 300 nm defining a bonding interface with an active device in paragraphs 0047 and 0052. Collins further discloses a semiconductor material comprising a layer of silicon (203’) bonded to the second layer of conformal oxide, the semiconductor material comprises a patterned layer including one region forming at least a portion of an active photonic device in Fig. 4 and paragraph 0055. Since both inventions relate to semiconductor devices, one of ordinary skill in the art at the time of the invention would have found it obvious to use the second layer of conformal oxide as a bonding interface as disclosed by Collins in the semiconductor structure of Miller for the purpose of further processing which facilitates integration with optical components.
Regarding claim 2, Miller discloses the dished silicon oxide pockets comprise volumes of planarized conformal oxide material including the first layer of conformal oxide and the planarizing oxide layer in Fig. 1L.
Regarding claim 3, Miller discloses the volumes of planarized conformal oxide material of the dished silicon oxide pockets do not extend vertically beyond the silicon-based patterned layer in Fig. 1L.
Regarding claim 4, Miller discloses an upper surface of the planarized conformal oxide material of the dished silicon oxide pockets is recessed relative to a surface of the silicon-based patterned layer in Fig. 2A.
Regarding claim 5, Applicant is claiming the product including the process of forming the layer of conformal oxide, and therefore are of "product-by-process" nature. The courts have been holding for quite some time that: the determination of the patentability of product-by-process claim is based on the product itself rather than on the process by which the product is made. In re Thrope, 777 F. 2d 695, 227 USPQ 964 (Fed. Cir. 1985); and patentability of claim to a product does not rest merely on a difference in the method by which that product is made. Rather, it is the product itself which must be new and unobvious. Applicant has chosen to claim the invention in the product form. Thus a prior art product which possesses the claimed product characteristics can anticipate or render obvious the claim subject matter regardless of the manner in which it is fabricated. A rejection based on 35 U.S.C. section 102 or alternatively on 35 U.S.C. section 103 of the status is eminently fair and acceptable. In re Brown and Saffer, 173 USPQ 685 and 688; In re Pilkington, 162 USPQ 147. As such no weight is given to the process steps recited in claim 5.
Regarding claims 10-19, the proposed combination of Miller and Collins teaches the claimed invention except for specifically stating the thickness and the uniformity of the conformal oxide layer. However, it would have been obvious to one having ordinary skill in the art at the time of the invention to arrive at the claimed thickness and uniformity in order to reduce the size of the device while maintaining an even surface for optimal adhesion to complementary components, and since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 20, the proposed combination of Miller and Collins teaches the claimed invention except for specifically stating the surface roughness. However, it would have been obvious to one having ordinary skill in the art at the time of the invention to arrive at the claimed surface roughness in order to facilitate adhesion to complementary components and to improve alignment, and since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.id crystal moleculesand specifically stating the exposure voltage greater than a
Response to Arguments
Applicant's arguments, filed March 4, 2026, have been considered and are persuasive in regards to the Non-Final Office Action filed December 12, 2025. As such, this rejection will be non-final. However, the arguments are moot in view of the new grounds of rejection presented above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRIS H CHU whose telephone number is (571)272-8655. The examiner can normally be reached on Mon-Fri 9AM-5PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Uyen-Chau Le can be reached on 571-272-239797. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Any inquiry of a general or clerical nature should be directed to the Technology Center 2800 receptionist at telephone number (571) 272-1562.
Chris H. Chu
/CHRIS H CHU/Primary Examiner, Art Unit 2874 May 21, 2026
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