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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 08/14/2025 has been considered by the examiner.
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.
The factual inquiries 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 1-2 and 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over Nakajima (US 5,763,290) in view of Tanahashi et al. (JP 5842920).
Regarding claim 1, Nakajima teaches a circular semiconductor wafer which is formed from indium phosphide and has an orientation flat formed from mechanically grinding or polishing a periphery of the wafer (“an indium phosphide substrate having a main surface and an orientation flat”) (Col. 12-24; Fig. 1). The wafers have a circular shape and diameters of 2 inches (50.8 mm) and a thickness in the ranges of 400 to 600 microns (“an outer edge of the main surface comprises the orientation flat and a circular arc portion connected to the orientation flat, and wherein a maximum diameter of the main surface is more than or equal to a length of a ridge line, which is a line wherein the main surface is in contact with the orientation flat, and is from 49 to 76.2 mm”) (Col. 4, Lines 21-25; Fig. 1A).
Nakajima is silent with respect to the wafers having the property of a difference between maximum and minimum values of a maximum height Pz in each of four cross-sectional curves being less than or equal to 1.50/10000 of a length in a longitudinal direction of an orientation flat end face.
However, this property appears to be dependent on the method and materials of forming the substrates of claim 1 and one of ordinary skill in the art before the filing of the invention would recognize that a substrate formed from substantially identical methods and materials would result in identical properties. MPEP 2112.01: Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
In the instant case, the substrate of claim 1 is required to be an indium phosphide substrate. The substrates, and more specifically, the orientation flats of the substrates, are formed from grinding methods in which the flats are grinded with a grit size of #270 to #400 or #800 to #1200 (Instant Specification, PGPUB, Pgs. 3-4, Paragraphs [0042]-[0045]; Paragraphs [0057]-[0060]). One of ordinary skill in the art would recognize these grinding conditions are essential in forming the orientation flat (PGPUB, Pgs. 3-5, Paragraphs [0042]-[0071]).
Nakajima teaches the formation of indium phosphide wafers having an orientation flat formed by methods of grinding and/or polishing as discussed above.
Nakajima is silent with respect to the grinding being done at a grit of #270 to #400 or #800 to #1200.
Tanahashi teaches a grinding/polishing system for hard and brittle materials including indium phosphide wafers (Paragraphs [0001]; [0183]). The systems preferably include brush bristles which have two different grain sizes for abrasive grinding, #240-#500, and precision polishing, #800 to #1200, which ultimately allow for the removal of microcracks and for finely reducing the surface roughness of the substrates the system is used on (Paragraphs [0020]; [0040]).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing of the invention to form the wafers of Nakajima such that they are utilized in the systems of Tanahashi which is a grinding/polishing system with two different grain sizes for abrasive grinding, #240-#500, and precision polishing, #800 to #1200, which ultimately allow for the removal of microcracks and for finely reducing the surface roughness of the substrates the system is used on. Furthermore, one of ordinary skill in the art would now recognize that the methods and materials of forming the indium phosphide substrates, and particularly the orientation flats, of Nakajima in view of Tanahashi are substantially identical to that of applicant’s invention and would result in identical properties between the substrates including having the property of a difference between maximum and minimum values of a maximum height Pz in each of four cross-sectional curves being less than or equal to 1.50/10000 of a length in a longitudinal direction of an orientation flat end face.
Regarding claim 2, Nakajima teaches the wafers as discussed above with respect to claim 1. As discussed above, Nakajima in view of Tanahashi teaches substantially identical properties as that of applicant’s invention and this would include having the property of a difference between maximum and minimum values of a maximum height Pz in each of four cross-sectional curves being less than or equal to 1.41/10000 of a length in a longitudinal direction of an orientation flat end face.
Regarding claim 5, Nakajima teaches the wafers as discussed above with respect to claim 1. As discussed above, the wafers have thicknesses of 400 to 600 microns.
Regarding claim 6, Nakajima teaches the wafers as discussed above with respect to claim 1. Nakajima further teaches a 16 mm long orientation flat being formed form a 2-inch (50.8 mm) wafer, resulting in the orientation flat being 31% of the diameter (Col. 5, Line 35-55).
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 1-2 and 5-6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of copending Application No. 17/603,277 (‘277).
Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of ‘277 teaches the indium phosphide substrate having a main surface and an orientation flat as required by instant claim 1.
Application ‘277 fails to teach a difference between maximum and minimum values of a maximum height Pz in each of four cross-sectional curves being less than or equal to 1.50/10000 of a length in a longitudinal direction of an orientation flat end face.
However, the substrates of ‘277 and that of the instant invention are formed from identical methods (See ‘277, Pages 11-15, Paragraphs [0030]-[0033]; Instant Specification, PGPUB, Pgs. 3-4, Paragraphs [0042]-[0070]). As such, one of ordinary skill in the art would reasonably expect for both substrates to have identical properties, including a difference between maximum and minimum values of a maximum height Pz in each of four cross-sectional curves being less than or equal to 1.50/10000 of a length in a longitudinal direction of an orientation flat end face.
Furthermore, claim 5 of application ‘277 teaches wherein an outer edge of the main surface comprises the orientation flat and a circular are portion connected to the orientation flat, and wherein a maximum diameter of the main surface is more than or equal to the length of the ridge line, and is from 49 to 151 mm.
Additionally, claims 2 and 5-6 are taught by claims 1-5 of application ‘277.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments filed 10/27/2025 have been fully considered but they are not persuasive.
On pages 4-7, applicant argues that the combination of Nakajima and Tanahashi fails to render the limitations of claim 1 as obvious. Nakajima fails to teach “wherein a difference between maximum and minimum values of a maximum height Pz in each of four cross-sectional curves is less than or equal to 1.50/10000 of a length in a longitudinal direction of an orientation flat end face” as indicated in the rejection. Tanahashi fails to remedy the deficiency of Nakajima such that the polishing system of Tanahashi is not used for forming orientation flats and, as such, one of ordinary skill would not utilize the polishing system for forming the orientation flats of Nakajima. Furthermore, the applicant argues that merely controlling the grit is not the only factor in achieving the claimed property discussed above and instead a variety of factors are required to be controlled including the composition of the etching solution, the grit size of the grinding wheel used in the ingot grinding, the grinding wheel feed rate for the ingot grinding, the grit size of the grinding wheel used in the wafer grinding, and the grinding wheel feed rate set for the wafer grinding. Lastly, the applicant argues that the methods of measuring roughness from the resulting grinding process of Tanahashi only references a local measurement whereas the claimed substrate emphasizes flatness across the entire flat area.
Firstly, concerning applicant’s arguments concerning the grinding methods of Tanahashi not being used for the formation of an orientation flat, the examiner notes that the primary reference of Nakajima teaches the formation of an orientation flat by mechanical grinding or polishing (Col. 4, Lines 12-24). As such, Nakajima already appreciates this grinding method as being suitable for forming an orientation flat. Nakajima is merely silent with respect to the specifics of the grinding method. The rejection then turns to Tanahashi to provide these specifics to which Tanahashi teaches a grinding method for ingots to be used to form wafers for semiconductor substrates wherein the method eliminates microcracks and produces a fine surface roughness which improves process efficiency (Paragraphs [0001]-[0002]; [0020]). Therefore, the examiner contends that the grinding methods of Tanahashi are applicable as the grinding methods for forming the orientation flats of Nakajima such that Nakajima appreciates a grinding method to form the orientation flats, the grinding methods of Tanahashi are used on ingots for semiconductor wafers similar to Nakajima, and one of ordinary skill in the art would find it obvious that the methods of Tanahashi would provide the orientation flats of Nakajima with minimal surface cracks and a refined surface roughness.
The examiner is unpersuaded by applicant’s arguments that the methods of forming the orientation flats are not only dependent on the grit of the grinding wheel. Applicant first mentions a variety of factors of forming a wafer, however, applicant fails to argue how these factors separate the claimed invention from that which is described in the prior art combination of Nakajima and Tanahashi. Furthermore, the only formation step which appears to be directly related to the orientation flats of the present invention appears to be the grit of the grind wheel which are described in paragraphs [0042]-[0045] and [0057]-[0060] of the instant specification (PGPUB Version). These steps describe the formation of the orientation flat and appear to result in the difference between the maximum and minimum values of a maximum height as required by the claim. Lastly, the combination of Nakajima and Tanahashi aim to provide the orientation flats of Nakajima to have a refined surface roughness which would ultimately aims to achieve the same linearity as argued by the applicant. As such, the examiner contends that applicant’s arguments failed to distinguish the claimed invention from the combination of Nakajima and Tanahashi by indicating specific differences between the two products resulting in the claimed property not being present in the product of the prior art and the product of the prior art aiming to achieve a low surface roughness similar to the claimed invention.
The examiner is also unpersuaded concerning applicant’s arguments concerning the locality of the surface roughness rather than the flatness across the entirety of the substrate of the claimed invention. As noted above, the formation of the orientation flat in Nakajima is performed via a grinding process. One of ordinary skill in the art would recognize that the grinding process would be used to form the entirety of the orientation flat and not only a local portion. As such, the grinding methods of Tanahashi would be applicable over the entirety of the orientation flat and not a mere portion of the flat which would result in the refined roughness being applied to the entirety of the orientation, similar to the claimed invention.
Ultimately, the examiner contends that the combination of Nakajima and Tanahashi is proper and teaches each of the limitaitons of claim 1 including “wherein a difference between maximum and minimum values of a maximum height Pz in each of four cross-sectional curves is less than or equal to 1.50/10000 of a length in a longitudinal direction of an orientation flat end face.”
The current rejection is made FINAL.
Conclusion
THIS ACTION IS MADE FINAL. 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 DANIEL P DILLON whose telephone number is (571)270-5657. The examiner can normally be reached Mon-Fri; 8 AM to 5 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, MARIA V EWALD can be reached at 571-272-8519. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DANIEL P DILLON/Examiner, Art Unit 1783
/MARIA V EWALD/Supervisory Patent Examiner, Art Unit 1783