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 .
Prosecution History
The applicant received an office action on 7/22/25 that rejected claims 1-13 because claim 1 would still encompass the subject matter of canceled claims 10 and 11.
The applicant’s response, filed 10/21/25, has canceled claims 10 and 11.
The examiner submits the applicant has not disavowed claim 1 encompassing the subject matter of claims 10 and 11. MPEP 2111.01 IV B. discloses “[a]pplicant may also rebut the presumption of plain meaning by clearly disavowing the full scope of the claim term in the specification. Disavowal, or disclaimer of claim scope, is only considered when it is clear and unmistakable. See SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1341, 58 USPQ2d 1059, 1063 (Fed. Cir. 2001)”. Since the applicant has not expressly disavowed the subject matter of claims 10 and 11, the examiner submits that claim would still encompass the subject matter of canceled claims 10 and 11.
The applicant received an office action on 7/22/25 that rejected claims 14-22 because claim 14 would still encompass the subject matter of canceled claims 16 and 17.
The applicant’s response, filed 10/21/25, has canceled claims 16 and 17.
The examiner submits the applicant has not disavowed claim 14 encompassing the subject matter of claims 16 and 17. MPEP 2111.01 IV B. discloses “[a]pplicant may also rebut the presumption of plain meaning by clearly disavowing the full scope of the claim term in the specification. Disavowal, or disclaimer of claim scope, is only considered when it is clear and unmistakable. See SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1341, 58 USPQ2d 1059, 1063 (Fed. Cir. 2001)”. Since the applicant has not expressly disavowed the subject matter of claims 16 and 17, the examiner submits that claim would still encompass the subject matter of canceled claims 16 and 17.
In the office action filed 7/22/25, the office required a response to interrogatories eliciting factual information.
The applicant responded to the requirement for information by noting “[r]egarding the item(s) of information required by the Office Action, Applicant respectfully submits that these item(s) are unknown and/or are not readily available to Applicant's representative” (examiner’s underline and bolding).
Response to Arguments
Applicant's arguments filed 10/21/25 have been fully considered but they are not persuasive.
Requirement for Information
In the office action filed 7/22/25, the office required a response to interrogatories eliciting factual information. The office asked:
What is the structure in the structure of the claimed vertical SiC device that makes it operable to detect a short circuit event “in one to five microseconds”? What is the size of the vertical device that makes it operable to detect a short circuit event “in one to five microseconds”? What are the dimensions of the gate and the width of the transition region that makes it operable to detect a short circuit event “in one to five microseconds”? What is the doping concentration and the depth of the drift region that makes it operable to detect a short circuit event “in one to five microseconds”? What is the thickness of the gate dielectric that makes it operable to detect a short circuit event “in one to five microseconds”? What is the thickness and width of the isolation region that makes it operable to detect a short circuit event “in one to five microseconds”? The examiner asked the same questions for “in tens of microseconds” and “in less than a microsecond”.
The applicant responded to the requirement for information by noting “[r]egarding the item(s) of information required by the Office Action, Applicant respectfully submits that these item(s) are unknown and/or are not readily available to Applicant's representative” (examiner’s underline and bolding).
MPEP 2162 [R-08.2017] discloses “[t]o obtain a valid patent, a patent application must contain a full and clear description of the invention for which a patent is sought in the manner prescribed by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph. The requirement for an adequate written description ensures that the public receives something in return for the exclusionary rights that are granted to the inventor by a patent” (underline italics and bolding added) and “[t]he applicant must not conceal from the public the best way of practicing the invention that was known to the patentee at the time of filing the patent application.” MPEP 2162[R-08.2017] discloses “the patentee must disclose sufficient information to demonstrate that the inventor had possession of the invention at the time of filing” (bolding underline and itallics added). In this case, since the applicant’s representative submitted that the information required by the office “are unknown and/or are not readily available”, the examiner submits the applicant’s response shows the specification fails to show the inventor had possession of the invention at the time of filing. Moreover, the applicant has not disavowed the dependent claim elements that were canceled in in the last office action. MPEP 2111.01 IV B discloses “[d]isavowal, or disclaimer of claim scope, is only considered when it is clear and unmistakable. See SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1341, 58 USPQ2d 1059, 1063 (Fed. Cir. 2001) (“Where the specification makes clear that the invention does not include a particular feature, that feature is deemed to be outside the reach of the claims of the patent, even though the language of the claims, read without reference to the specification, might be considered broad enough to encompass the feature in question.”); see also In re Am. Acad. Of Sci. Tech Ctr., 367 F.3d 1359, 1365-67, 70 USPQ2d 1827, 1831-33 (Fed. Cir. 2004)”.
Drawings
The applicant alleges “as shown in FIG. 12 of the present application …, a portion 402' of an insulating layer 402 has a thickness that is greater than thicknesses of other portions of the insulating layer 402.” The applicant does not explicitly disclose the elements shown in figure 12 are drawn to scale. MPEP 2125 II discloses “Hockerson-Halberstadt, Inc. v. Avia Group Int’l, 222 F.3d 951, 956, 55 USPQ2d 1487, 1491 (Fed. Cir. 2000) (The disclosure gave no indication that the drawings were drawn to scale. ‘[I]t is well established that patent drawings do not define the precise proportions of the elements and may not be relied on to show particular sizes if the specification is completely silent on the issue.’)”
112(f) claim interpretations
The examiner agrees that claim 23 does not have a generic placeholder that may invoke 112(f).
112(b) rejections
The applicant canceled claims 10-11, 16-17 and 26-28. The examiner notes that the subject matter of claims 10-11, 16-17 and 26-28 are still encompassed by claims 1, 14 and 23 (see MPEP 2164.08). The examiner is not clear if the claim amendment is disavowing the subject matter of claims 10-11, 16-17 and 26-28. Therefore, there are two different interpretation of what claims 1, 14 and 23 encompass. The first interpretation is that claims 1, 14 and 23 do encompass the subject matter of 10-11, 16-17 and 26-28, as they did in the original specification. The second interpretation is that claims 1, 14 and 23 do not encompass the subject matter of 10-11, 16-17 and 26-28, as they did in the original specification.
The applicant alleges “Regarding Claims 23-25, Applicant respectfully submits that the structure of the claimed vertical SiC device that makes it operable to detect a short circuit event are the disclosed embodiments of the invention, which are shown in the figures and described in the Specification of the present application.”. The examiner disagrees that the structure of the vertical SiC that makes it operable to detect a short circuit event are the disclosed in the specification. Under a duty of candor, the applicant responded to the 105 requirement for information by noting “[r]egarding the item(s) of information required by the Office Action, Applicant respectfully submits that these item(s) are unknown and/or are not readily available to Applicant's representative” (examiner’s underline and bolding). The examiner submits this is evidence the specification does not disclose “structure of the vertical SiC that makes it operable to detect a short circuit event” in one microsecond to three microseconds, because the applicant has admitted that information is unknown and/or are not readily available.
102a1 rejection
The applicant alleges the examiner cites to figs 1-4 of Furukawa. The examiner disagrees. The examiner only cites figures 2-4 or Furukawa in the office action filed 7/22/25.
The applicant alleges the gate wiring is not in a transition region between the a device region and the sensor region. The examiner disagrees. The examiner noted that the device region was cell well 41 and the sensor region was well 42 which is shown in both figures 2 and 3. The examiner notes that figure 3 represents the cross section A-A’ (A-A’ is in the lateral direction in fig 2). The examiner notes that figure 4 represents B-B’ (B-B’ is in the vertical direction in fig 2) and is shown in figure 2. The examiner found that the transition region was shown in figure 4 along the B-B’. Since B-B’ is between the elements 41 (device region) and 42 (sensor region) as shown in figure 2, then the transition region shown in figure 4 would also be between the elements elements 41(device region) and 42 (sensor region). MPEP 2131 discloses “[t]he elements must be arranged as required by the claim, but this is not an ipsissimis verbis test, i.e., identity of terminology is not required. In re Bond, 910 F.2d 831, 15 USPQ2d 1566 (Fed. Cir. 1990). “ Therefore the applicant’s argument is not persuasive.
Claim Rejections - 35 USC § 112
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 1-3, 5-9, 14, 15, 18, 20, 21, and 34-44 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.
Canceled claims 10 and 16 disclose “the conductive segment and the isolation region enable detection of a short circuit event in less than one microsecond of an occurrence of the short circuit event.”
Canceled claims 11 and 17 disclose “the conductive segment and the isolation region enable detection of a short circuit event within one to five microseconds of an occurrence of the short circuit event”.
The examiner notes that the subject matter of claims 10-11, 16-17 and 26-28 are still encompassed by claims 1, 14 and 23 (see MPEP 2164.08). The examiner is not clear if the claim amendment is disavowing the subject matter of claims 10-11, 16-17 and 26-28. Therefore, there are two different interpretation of what claims 1, 14 and 23 encompass. The first interpretation is that claims 1, 14 and 23 do encompass the subject matter of 10-11, 16-17 and 26-28, as they did in the original specification. The second interpretation is that claims 1, 14 and 23 do not encompass the subject matter of 10-11, 16-17 and 26-28, as they did in the original specification.
The written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. Specification [0008, 0080, 0082]. Paragraph [0082] discloses “[i]n one example embodiment, the sixth semiconductor device 1100 (e.g., a current sensor in the sixth semiconductor device 1100) can detect an event (e.g., a short circuit event) in less than a microsecond” and also discloses “another example embodiment, the sixth semiconductor device 1100 (e.g., a current sensor in the sixth semiconductor device 1100) can detect an event in tens of microseconds” and also discloses “a current sensor in the sixth semiconductor device 1100) can detect an event, such as a short circuit event, in one to five microseconds.” The examiner is not clear what structure of the current sensor is dictating the different result times in the detection of the short circuit.
Claims 23-25 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.
Claim 23 discloses the limitation “vertical SiC device is operable to detect a short circuit event in one microsecond to three microseconds”. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. Specification [0008, 0080, 0082]. Paragraph [0082] discloses “[i]n one example embodiment, the sixth semiconductor device 1100 (e.g., a current sensor in the sixth semiconductor device 1100) can detect an event (e.g., a short circuit event) in less than a microsecond” and also discloses “another example embodiment, the sixth semiconductor device 1100 (e.g., a current sensor in the sixth semiconductor device 1100) can detect an event in tens of microseconds” and also discloses “a current sensor in the sixth semiconductor device 1100) can detect an event, such as a short circuit event, in one to five microseconds.” The examiner is not clear what structure of the current sensor is dictating the different result times in the detection of the short circuit.
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.
Written Description: Original specification does not support “vertical wide bandgap semiconductor device”
Claims 1-3, 5-9, 14, 15, 18, 20, 21, and 34-44 are 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.
Claims 1, and 14 have been amended to disclose “A vertical wide bandgap semiconductor device comprising”.
MPEP 2111 discloses “[t]he Patent and Trademark Office (“PTO”) determines the scope of claims in patent applications not solely on the basis of the claim language, but upon giving claims their broadest reasonable construction ‘in light of the specification as it would be interpreted by one of ordinary skill in the art.’ In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364[, 70 USPQ2d 1827, 1830] (Fed. Cir. 2004).” Phillips v. AWH Corp., 415 F.3d 1303, 1316, 75 USPQ2d 1321, 1329 (Fed. Cir. 2005)
Claim 23 discloses “A vertical silicon carbide (SiC) device comprising”.
The examiner submits the applicant has possession of the vertical silicon carbide device.
The examiner submits the applicant does not have possession of the broad “vertical wide bandgap semiconductor device”.
MPEP 2163 II 3.(a) discloses "[T]he written description must lead a person of ordinary skill in the art to understand that the inventor possessed the entire scope of the claimed invention. Ariad, 598 F.3d at 1353–54 ('[T]he purpose of the written description requirement is to ensure that the scope of the right to exclude, as set forth in the claims, does not overreach the scope of the inventor's contribution to the field of art as described in the patent specification.' (internal quotation marks omitted)" (underline and bolding added)
In this case, the term “wide bandgap semiconductor” would encompass diamond, aluminum nitride and boron nitride semiconductor devices. However, the specification only discloses vertical SiC devices. MPEP 2111 [R-10.2019] discloses “an examiner must construe claim terms in the broadest reasonable manner during prosecution as is reasonably allowed in an effort to establish a clear record of what applicant intends to claim”. Moreover, MPEP 2111.02 I [R-07.2022] discloses “[a]ny terminology in the preamble that limits the structure of the claimed invention must be treated as a claim limitation.”. In this case, the “vertical wide bandgap semiconductor device” limits the structure. Therefore, “wide bandgap” is treated as a claim limitation.
Paragraphs [0039, 0084] only disclose SiC.
The applicant notes that paragraph [0039] discloses “ The semiconductor device 100 may embody wide bandgap semiconductor devices” but the applicant fails to disclose other wide band gap semiconductor devices other than SiC. MPEP 2161.01 I discloses “ generic claim language in the original disclosure does not satisfy the written description requirement if it fails to support the scope of the genus claimed. Ariad, 598 F.3d at 1349-50, 94 USPQ2d at 1171 (‘[A]n adequate written description of a claimed genus requires more than a generic statement of an invention’s boundaries.’)” In this case, the applicant generically claims “wide band gap” but only describes one species (SiC) within the generic claim limitation and has not described other species such as diamond or boron nitride or aluminum nitiride.
MPEP 2163 II 3 (a) ii) discloses "The Federal Circuit has explained that a specification cannot always support expansive claim language and satisfy the requirements of 35 U.S.C. 112 ‘merely by clearly describing one embodiment of the thing claimed.’ LizardTech v. Earth Resource Mapping, Inc., 424 F.3d 1336, 1346, 76 USPQ2d 1731, 1733 (Fed. Cir. 2005)". In this case, the applicant generically claims “wide band gap” but only describes one species (SiC) within the generic claim limitation and has not described other species such as diamond or boron nitride or aluminum nitiride.
The examiner submits the specification does not support the all “vertical semiconductor device[s]” when the specification only discloses/describes vertical silicon carbide devices.
The Federal Circuit has held:
As we explained in Ariad, the written description inquiry looks to "the four corners of the specification" to discern the extent to which the inventor(s) had possession of the invention as broadly claimed. Ariad, 598 F.3d at 1351 ; see also Lockwood v. Am. Airlines, Inc., 107 F.3d 1565 , 1571 (Fed. Cir. 1997) ("It is the disclosures of the applications that count."). The knowledge of ordinary artisans may be used to inform what is actually in the specification, see Lockwood, 107 F.3d at 1571 , but not to teach limitations that are not in the specification, even if those limitations would be rendered obvious by the disclosure in the specification. Id. at 1571-72 .
Rivera v. Int'l Trade Comm'n, 857 F.3d 1315, 1322 (Fed. Cir. 2017)
In this case, it might be obvious to one of ordinary skill to make the vertical semiconductor device out of a diamond, but the specification as filed does not disclose a specific embodiment using diamond.
Claims 29-33 and 45 are 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.
Claim 29 discloses “A vertical wide bandgap semiconductor device comprising”.
Claim 23 discloses “A vertical silicon carbide (SiC) device comprising”.
The examiner submits the applicant has possession of the vertical silicon carbide device.
The examiner submits the applicant does not have possession of the broad “vertical wide bandgap semiconductor device”.
MPEP 2163 II 3.(a) discloses "[T]he written description must lead a person of ordinary skill in the art to understand that the inventor possessed the entire scope of the claimed invention. Ariad, 598 F.3d at 1353–54 ('[T]he purpose of the written description requirement is to ensure that the scope of the right to exclude, as set forth in the claims, does not overreach the scope of the inventor's contribution to the field of art as described in the patent specification.' (internal quotation marks omitted)" (underline and bolding added).
In this case, the term “wide bandgap semiconductor” would encompass diamond, aluminum nitride and boron nitride semiconductor devices. However, the specification only discloses vertical SiC devices. MPEP 2111 [R-10.2019] discloses “an examiner must construe claim terms in the broadest reasonable manner during prosecution as is reasonably allowed in an effort to establish a clear record of what applicant intends to claim”. Moreover, MPEP 2111.02 I [R-07.2022] discloses “[a]ny terminology in the preamble that limits the structure of the claimed invention must be treated as a claim limitation.”. In this case, the “vertical semiconductor device” limits the structure, and is a claim limitation.
Paragraphs [0039, 0084] only disclose SiC devices.
MPEP 2163 II 3 (a) ii) discloses "The Federal Circuit has explained that a specification cannot always support expansive claim language and satisfy the requirements of 35 U.S.C. 112 ‘merely by clearly describing one embodiment of the thing claimed.’ LizardTech v. Earth Resource Mapping, Inc., 424 F.3d 1336, 1346, 76 USPQ2d 1731, 1733 (Fed. Cir. 2005)". In this case the applicant generically claims “wide band gap” but only describes one species (SiC) within the generic claim limitation and has not described other species such as diamond or boron nitride or aluminum nitiride.
The examiner submits the specification does not support the all “vertical semiconductor device[s]” when the specification only discloses/describes vertical silicon carbide devices.
The Federal Circuit has held:
As we explained in Ariad, the written description inquiry looks to "the four corners of the specification" to discern the extent to which the inventor(s) had possession of the invention as broadly claimed. Ariad, 598 F.3d at 1351 ; see also Lockwood v. Am. Airlines, Inc., 107 F.3d 1565 , 1571 (Fed. Cir. 1997) ("It is the disclosures of the applications that count."). The knowledge of ordinary artisans may be used to inform what is actually in the specification, see Lockwood, 107 F.3d at 1571 , but not to teach limitations that are not in the specification, even if those limitations would be rendered obvious by the disclosure in the specification. Id. at 1571-72 .
Rivera v. Int'l Trade Comm'n, 857 F.3d 1315, 1322 (Fed. Cir. 2017)
In this case, it might be obvious to one of ordinary skill to make the vertical semiconductor device out of a diamond, but the specification as filed does not disclose a specific embodiment using diamond.
Written Description: “detection of a short circuit event within one to five microseconds of an occurrence of the short circuit event”
Claims 1-3, 5-9, 14, 15, 18, 20, 21, and 34-44 are 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.
Claim 1 would still encompass the subject matter of canceled claims 10 and 11. The applicant has not disavowed the subject matter claims 10 and 11. MPEP 2111.01 IV B discloses “Applicant may also rebut the presumption of plain meaning by clearly disavowing the full scope of the claim term in the specification. Disavowal, or disclaimer of claim scope, is only considered when it is clear and unmistakable.”
The examiner submits claim 1 is the genus and canceled claims 10 and 11 are the species. MPEP 2163 II 3.(a) discloses “[a] claim which is limited to a single disclosed embodiment or species is analyzed as a claim drawn to a single embodiment or species, whereas a claim which encompasses two or more embodiments or species within the scope of the claim is analyzed as a claim drawn to a genus.”
Claim 14 would still encompass the subject matter of canceled claims 16 and 17. The applicant has not disavowed the subject matter claims 16 and 17. MPEP 2111.01 IV B discloses “Applicant may also rebut the presumption of plain meaning by clearly disavowing the full scope of the claim term in the specification. Disavowal, or disclaimer of claim scope, is only considered when it is clear and unmistakable.”
The examiner submits claim 14 is the genus and canceled claims 16 and 17 are the species. MPEP 2163 II 3.(a) discloses “[a] claim which is limited to a single disclosed embodiment or species is analyzed as a claim drawn to a single embodiment or species, whereas a claim which encompasses two or more embodiments or species within the scope of the claim is analyzed as a claim drawn to a genus.”
Claim 10 and 16 disclose “the conductive segment and the isolation region enable detection of a short circuit event in less than one microsecond of an occurrence of the short circuit event.” The examiner inquired about the structure that would “enable detection of a short circuit event in less than one microsecond of an occurrence of the short circuit event”. The applicant has admitted the various device parameters that make the SiC device “operable to detect a short circuit event in one microsecond to three microseconds” are “unknown and/or are not readily available to Applicant's representative”. Moreover, MPEP 704.11(a) (R) discloses “ if an inquiry by the examiner for such support is met by a stated lack of knowledge thereof by the applicant, the examiner could very well conclude that there is no such support and make appropriate rejections under, for example, 35 U.S.C. 112(a)”.
Claims 11 and 17 disclose “the conductive segment and the isolation region enable detection of a short circuit event within one to five microseconds of an occurrence of the short circuit event”. The applicant has admitted the various device parameters that make the SiC device “operable to detect a short circuit event in one microsecond to three microseconds” are “unknown and/or are not readily available to Applicant's representative”. Moreover, MPEP 704.11(a) (R) discloses “ if an inquiry by the examiner for such support is met by a stated lack of knowledge thereof by the applicant, the examiner could very well conclude that there is no such support and make appropriate rejections under, for example, 35 U.S.C. 112(a)”.
Again, the applicant has admitted the various device parameters that make the SiC device “operable to detect a short circuit event in one microsecond to three microseconds” are “unknown and/or are not readily available to Applicant's representative”. Moreover, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. Specification [0008, 0080, 0082]. Paragraph [0082] discloses “[i]n one example embodiment, the sixth semiconductor device 1100 (e.g., a current sensor in the sixth semiconductor device 1100) can detect an event (e.g., a short circuit event) in less than a microsecond” and also discloses “another example embodiment, the sixth semiconductor device 1100 (e.g., a current sensor in the sixth semiconductor device 1100) can detect an event in tens of microseconds” and also discloses “a current sensor in the sixth semiconductor device 1100) can detect an event, such as a short circuit event, in one to five microseconds.” The specification does not disclose the specific structure of the current sensor and the vertical SiC device dictating the different result times in the detection of the short circuit. Moreover, MPEP 704.11(a) (R) discloses “ if an inquiry by the examiner for such support is met by a stated lack of knowledge thereof by the applicant, the examiner could very well conclude that there is no such support and make appropriate rejections under, for example, 35 U.S.C. 112(a)”.
MPEP 2162 [R-08.2017] discloses “[t]o obtain a valid patent, a patent application must contain a full and clear description of the invention for which a patent is sought in the manner prescribed by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph. The requirement for an adequate written description ensures that the public receives something in return for the exclusionary rights that are granted to the inventor by a patent” (underline italics and bolding added) and “[t]he applicant must not conceal from the public the best way of practicing the invention that was known to the patentee at the time of filing the patent application.” .” MPEP 2162[R-08.2017] discloses “the patentee must disclose sufficient information to demonstrate that the inventor had possession of the invention at the time of filing” (bolding underline and itallics added). In this case, since the applicant’s representative submitted that the information required by the office “are unknown and/or are not readily available”, the examiner submits the specification fails to show the inventor had possession of the invention at the time of filing.
MPEP 2163 II 3.(a) discloses "[T]he written description must lead a person of ordinary skill in the art to understand that the inventor possessed the entire scope of the claimed invention. Ariad, 598 F.3d at 1353–54 ('[T]he purpose of the written description requirement is to ensure that the scope of the right to exclude, as set forth in the claims, does not overreach the scope of the inventor's contribution to the field of art as described in the patent specification.' (internal quotation marks omitted)" (underline and bolding added). In this case, the specification does not disclose the specific structure of the current sensor and the vertical SiC device dictating the different result times in the detection of the short circuit. The claims fail to provide written description for the genus claims 1 and 14.
Claims 23-25 are 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.
MPEP 2163.03 V [R-01.2024] discloses: “a question as to whether a specification provides an adequate written description may arise in the context of an original claim. An original claim may lack written description support when (1) the claim defines the invention in functional language specifying a desired result but the disclosure fails to sufficiently identify how the function is performed or the result is achieved”.
In this case, the applicant has admitted the various device parameters that make the SiC device “operable to detect a short circuit event in one microsecond to three microseconds” are “unknown and/or are not readily available to Applicant's representative”. Moreover, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. Specification [0008, 0080, 0082]. Paragraph [0082] discloses “[i]n one example embodiment, the sixth semiconductor device 1100 (e.g., a current sensor in the sixth semiconductor device 1100) can detect an event (e.g., a short circuit event) in less than a microsecond” and also discloses “another example embodiment, the sixth semiconductor device 1100 (e.g., a current sensor in the sixth semiconductor device 1100) can detect an event in tens of microseconds” and also discloses “a current sensor in the sixth semiconductor device 1100) can detect an event, such as a short circuit event, in one to five microseconds.” The specification does not disclose the specific structure of the current sensor and the vertical SiC device dictating the different result times in the detection of the short circuit. Moreover, MPEP 704.11(a) (R) discloses “ if an inquiry by the examiner for such support is met by a stated lack of knowledge thereof by the applicant, the examiner could very well conclude that there is no such support and make appropriate rejections under, for example, 35 U.S.C. 112(a)”.
MPEP 2162 [R-08.2017] discloses “[t]o obtain a valid patent, a patent application must contain a full and clear description of the invention for which a patent is sought in the manner prescribed by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph. The requirement for an adequate written description ensures that the public receives something in return for the exclusionary rights that are granted to the inventor by a patent” (underline italics and bolding added) and “[t]he applicant must not conceal from the public the best way of practicing the invention that was known to the patentee at the time of filing the patent application.” .” MPEP 2162[R-08.2017] discloses “the patentee must disclose sufficient information to demonstrate that the inventor had possession of the invention at the time of filing” (bolding underline and itallics added).In this case, since the applicant’s representative submitted that the information required by the office “are unknown and/or are not readily available”, the examiner submits the specification fails to show the inventor had possession of the invention at the time of filing.
Written Description: amendments to claims 32-33
Claims 29-33 and 45 are 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.
Claim 29 would encompass claims 32 and 33. The examiner submits claim 29 is the genus and claims 32 and 33 are the species. MPEP 2163 II 3.(a) discloses “[a] claim which is limited to a single disclosed embodiment or species is analyzed as a claim drawn to a single embodiment or species, whereas a claim which encompasses two or more embodiments or species within the scope of the claim is analyzed as a claim drawn to a genus.”
The applicant amended both claims 32 and 33 on 11/25/24.
The applicant did not indicate support for the amendments. MPEP 2163 II 3 (b) discloses “when filing an amendment an applicant should show support in the original disclosure for new or amended claims. See MPEP §§ 714.02 and 2163.06 (‘Applicant should ... specifically point out the support for any amendments made to the disclosure.’).”
MPEP 2163 II 3.(a) discloses "[T]he written description must lead a person of ordinary skill in the art to understand that the inventor possessed the entire scope of the claimed invention. Ariad, 598 F.3d at 1353–54 ('[T]he purpose of the written description requirement is to ensure that the scope of the right to exclude, as set forth in the claims, does not overreach the scope of the inventor's contribution to the field of art as described in the patent specification.' (internal quotation marks omitted)" (underline and bolding added).
The examiner cannot find support for “one or more sensor regions comprise a sensor region” in claim 32.
The examiner cannot find support for “the one or more sensor regions comprise a first sensor region and a second region” in claim 32. (The applicant does not disclose how one sensor region could be a first sensor region and a second sensor region.)
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.
Claim(s) 1-3, and 6-8 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Furukawa et al. (US 2013/0168700).
Regarding claim 1, Furukawa et al. disclose a vertical semiconductor device (figs 2-4) a drift region (21, Fig. 3) ; a device region (cell walls 41 and source contact 61 figs. 2 and 3)[0037] that comprises a first portion of the drift region (21 below 41, D1) (Fig. 3); a sensor region (wells 42 under sense pad 13 and source contact 62 under sense pad 13) [0030, current sensor] [0032, 13 sense pad] that comprises a second portion of the drift region (21 below 42, D2) (Fig. 3); and a transition region between the device region and the sensor region, the transition region comprising: a gate contact (50, fig 4); and a conductive segment (12, Fig 4) on and in direct contact with the gate contact. (The examiner notes the figure 2 cross section B-B’ shown in figure 4, if elongated downwards, would intersect the figure 2 cross section A-A' as shown in figure 3).
Regarding claim 2, Furukawa et al. disclose an insulating layer (31) between (under) the gate contact (12) and the drift region (21)(fig. 4); and a gate insulating layer (30) between the gate contact (12) and the drift region(21)(fig. 4).
Regarding claim 3, Furukawa et al. disclose a thickness of the insulating layer is at least 1.5 times greater than a thickness of the gate insulating layer (insulating layer 10 times greater than gate insulating layer or gate insulating layer is one tenth, [0063]).
Regarding claim 6, Furukawa et al. disclose the sensor region comprises a current sensor [0030,0032] (The sense pad is part of the sensor and sensor region).
Regarding claim 7, Furukawa et al. disclose the first portion of the drift region (21) is electrically connected between a first contact (65, 95) (fig. 3) and a second contact (65, 95) (fig. 3) (61, 81, 91) (fig. 3) and the second portion of the drift region is electrically connected between the first contact (65, 95) (fig. 3) and a sensor contact (62,82,92) (fig. 3).
Regarding claim 8, Furukawa et al. disclose the vertical semiconductor device comprises a metal-oxide-semiconductor field-effect transistor (MOSFET) (fig 3 50-gate), (61, 81, 91 -source) (65, 95 -drain), and the first contact (65, 95)is a drain contact and the second contact is a source contact (61, 81, 91).
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) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Furukawa et al. (US 2013/0168700) with respect to claim 1 above in view of Miura et al. (US 2012/0205669).
Furukawa et al.disclose the invention supra.
Furukawa et al.disclose fails to disclose a portion of the insulating layer has a thickness that is greater than thicknesses of other portions of the insulating layer.
Miura et al. disclose a portion (31) of the insulating layer has a thickness that is greater than thicknesses of other portions (30) of the insulating layer [0057].
The prior art included each element claimed, although not necessarily in a single prior art reference, with the only difference between the claimed invention and the prior art being the lack of actual combination of the elements in a single prior art reference.
One of ordinary skill in the art could have combined the elements as claimed by known methods (forming a insulation film with different thicknesses), and that in combination, each element merely performs the same function as it does separately.
One of ordinary skill in the art would have recognized that the results of the combination were predictable (the thickness of the oxide layers can be changed based on the desired properties of the gate voltage [0058]).
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 BRADLEY K SMITH whose telephone number is (571)272-1884. The examiner can normally be reached Monday-Friday, 10am-6pm.
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, Marlon Fletcher can be reached at 571-272-2063. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRADLEY SMITH/Primary Examiner, Art Unit 2817
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