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 § 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.
Claims 1, 3, 5-14, 18, 21, and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Hitora et al. (US 2015/0325659 A1; hereinafter “Hitora”).
Regarding claim 1, Hitora teaches a multilayer structure comprising: a semiconductor layer (101b) (Fig. 2 and paragraph 57); and a conductive metal oxide film (101a) and a metal layer (105a) that are positioned over the semiconductor layer (Fig. 2 and paragraph 57), wherein the conductive metal oxide film comprises a metal oxide as a major component (101a as a crystalline oxide semiconductor thin film including a corundum-structured oxide semiconductor as a major component in which the oxide semiconductor contains gallium Ga as a major component) (Fig. 2 and paragraphs 36-40 and 52), the metal oxide includes at least a first metal selected from a metal of Group 4 of the periodic table (titanium Ti) and a second metal selected from a metal of Group 13 of the periodic table (gallium Ga) (paragraphs 36-40), the metal layer comprises at least the first metal (paragraphs 53-54, Ti), the semiconductor layer comprises at least the second metal (paragraphs 36-40, Ga), the conductive metal oxide film is in direct contact with the semiconductor layer (Fig. 2, 101a is in direct contact with 101b), and where an amount of the first metal relative to a total amount of the first metal and the second metal is x in terms of a composition ratio in the metal oxide (paragraphs 36-40. For example, α-Ga2O3 obtained from α-phase InxAlyGazO3 with x=0, y=0, and z=2 and 0<z. Then, when Ti is doped into α-Ga2O3, Ti substitutes for Ga atoms within the lattice structure and the formula is written as α-(TixGa1-x)2O3, which is identical to that of the invention described in paragraph 67).
Hitora does not explicitly teach the value of x to be “0.5 < x < 1.0”.
However, the instant application contain no disclosure of either the critical nature of the claimed value to be “0.5 < x < 1.0” or any unexpected results arising therefrom (See, for example, paragraph 67 from the instant application describing “Materials used in the example 1 is as follows. α-(TixGa1-x)2O3 film (in the formula, 0<X<1) was used as the metal oxide layer (electrically-conductive metal oxide film) 102a…it can be seen that the film of α-(TixGa1-x)2O3 (in the formula, 0.5<X<1) is well formed.”): Where patentability is said to be based upon particular chose dimensions or upon another variable recited in a claim, the applicant must show that the chosen dimensions are critical. In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Furthermore, Hitora teaches α-(TixGa1-x)2O3, except for the value of x, known and suitable for use as the metal oxide before the invention as discussed above and the selection for the value of x alone would not establish patentability: The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). Also See In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960). As such, since the instant application contain no disclosure of either the critical nature of the claimed value to be 0.5 < x < 1.0 or any unexpected results arising therefrom as discussed above and since Hitora teaches α-(TixGa1-x)2O3, except for the value of x, known and suitable for use as the metal oxide before the invention as discussed above, it would have been obvious to one of ordinary skill in the art to adjust the value of x according to its usage and suitability of α-(TixGa1-x)2O3 from Hitora as the metal oxide, including the claimed value of 0.5 < x < 1.0, for obtaining desired metal oxide characteristics.
Regarding claim 3, Hitora teaches wherein the first metal is titanium (paragraph 36).
Regarding claim 5, Hitora teaches wherein the second metal is gallium (paragraph 36).
Regarding claim 6, Hitora teaches wherein the metal oxide is a crystalline metal oxide (paragraph 36).
Regarding claim 7, Hitora teaches wherein the metal oxide has a corundum structure (paragraph 36).
Regarding claim 8, Hitora teaches a semiconductor element comprising: a semiconductor layer (101b) (Fig. 2 and paragraph 57); and a conductive metal oxide film (101a) and a metal layer (105a) that are positioned over the semiconductor layer (Fig. 2 and paragraph 57), wherein the conductive metal oxide film comprises a metal oxide as a major component (101a as a crystalline oxide semiconductor thin film including a corundum-structured oxide semiconductor as a major component in which the oxide semiconductor contains gallium Ga as a major component) (Fig. 2 and paragraphs 36-40 and 52), the metal oxide includes at least a first metal selected from a metal of Group 4 of the periodic table (titanium Ti) and a second metal selected from a metal of Group 13 of the periodic table (gallium Ga) (paragraphs 36-40), the metal layer comprises at least the first metal (paragraphs 53-54, Ti), the semiconductor layer comprises at least the second metal (paragraphs 36-40, Ga), the conductive metal oxide film is in direct contact with the semiconductor layer (Fig. 2, 101a is in direct contact with 101b), and where an amount of the first metal relative to a total amount of the first metal and the second metal is x in terms of a composition ratio in the metal oxide (paragraphs 36-40. For example, α-Ga2O3 obtained from α-phase InxAlyGazO3 with x=0, y=0, and z=2 and 0<z. Then, when Ti is doped into α-Ga2O3, Ti substitutes for Ga atoms within the lattice structure and the formula is written as α-(TixGa1-x)2O3, which is identical to that of the invention described in paragraph 67).
Hitora does not explicitly teach the value of x to be “0.5 < x < 1.0”.
However, the instant application contain no disclosure of either the critical nature of the claimed value to be “0.5 < x < 1.0” or any unexpected results arising therefrom (See, for example, paragraph 67 from the instant application describing “Materials used in the example 1 is as follows. α-(TixGa1-x)2O3 film (in the formula, 0<X<1) was used as the metal oxide layer (electrically-conductive metal oxide film) 102a…it can be seen that the film of α-(TixGa1-x)2O3 (in the formula, 0.5<X<1) is well formed.”): Where patentability is said to be based upon particular chose dimensions or upon another variable recited in a claim, the applicant must show that the chosen dimensions are critical. In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Furthermore, Hitora teaches α-(TixGa1-x)2O3, except for the value of x, known and suitable for use as the metal oxide before the invention as discussed above and the selection for the value of x alone would not establish patentability: The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). Also See In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960). As such, since the instant application contain no disclosure of either the critical nature of the claimed value to be 0.5 < x < 1.0 or any unexpected results arising therefrom as discussed above and since Hitora teaches α-(TixGa1-x)2O3, except for the value of x, known and suitable for use as the metal oxide before the invention as discussed above, it would have been obvious to one of ordinary skill in the art to adjust the value of x according to its usage and suitability of α-(TixGa1-x)2O3 from Hitora as the metal oxide, including the claimed value of 0.5 < x < 1.0, for obtaining desired metal oxide characteristics.
Regarding claim 9, Hitora teaches a semiconductor element comprising: a semiconductor layer (101b) (Fig. 2 and paragraph 57); and an electrode (a combination of 101a and 105a) that is arranged on the semiconductor layer (Fig. 2 and paragraph 57), wherein the electrode includes an electrically conductive metal oxide film (101a) and a metal layer (105a) (Fig. 2 and paragraph 57), wherein the electrically conductive metal oxide film comprises a metal oxide as a major component (101a as a crystalline oxide semiconductor thin film including a corundum-structured oxide semiconductor as a major component in which the oxide semiconductor contains gallium Ga as a major component) (Fig. 2 and paragraphs 36-40 and 52), the metal oxide includes at least a first metal selected from a metal of Group 4 of the periodic table (titanium Ti) and a second metal selected from a metal of Group 13 of the periodic table (gallium Ga) (paragraphs 36-40), the metal layer comprises at least the first metal (paragraphs 53-54, Ti), the semiconductor layer comprises at least the second metal (paragraphs 36-40, Ga), the electrically conductive metal oxide film is in direct contact with the semiconductor layer (Fig. 2, 101a is in direct contact with 101b), and where an amount of the first metal relative to a total amount of the first metal and the second metal is x in terms of a composition ratio in the metal oxide (paragraphs 36-40. For example, α-Ga2O3 obtained from α-phase InxAlyGazO3 with x=0, y=0, and z=2 and 0<z. Then, when Ti is doped into α-Ga2O3, Ti substitutes for Ga atoms within the lattice structure and the formula is written as α-(TixGa1-x)2O3, which is identical to that of the invention described in paragraph 67).
Hitora does not explicitly teach the value of x to be “0.5 < x < 1.0”.
However, the instant application contain no disclosure of either the critical nature of the claimed value to be “0.5 < x < 1.0” or any unexpected results arising therefrom (See, for example, paragraph 67 from the instant application describing “Materials used in the example 1 is as follows. α-(TixGa1-x)2O3 film (in the formula, 0<X<1) was used as the metal oxide layer (electrically-conductive metal oxide film) 102a…it can be seen that the film of α-(TixGa1-x)2O3 (in the formula, 0.5<X<1) is well formed.”): Where patentability is said to be based upon particular chose dimensions or upon another variable recited in a claim, the applicant must show that the chosen dimensions are critical. In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Furthermore, Hitora teaches α-(TixGa1-x)2O3, except for the value of x, known and suitable for use as the metal oxide before the invention as discussed above and the selection for the value of x alone would not establish patentability: The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). Also See In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960). As such, since the instant application contain no disclosure of either the critical nature of the claimed value to be 0.5 < x < 1.0 or any unexpected results arising therefrom as discussed above and since Hitora teaches α-(TixGa1-x)2O3, except for the value of x, known and suitable for use as the metal oxide before the invention as discussed above, it would have been obvious to one of ordinary skill in the art to adjust the value of x according to its usage and suitability of α-(TixGa1-x)2O3 from Hitora as the metal oxide, including the claimed value of 0.5 < x < 1.0, for obtaining desired metal oxide characteristics.
Regarding claim 10, Hitora teaches wherein the semiconductor layer includes a crystalline oxide semiconductor as a major component (paragraph 36-40 and 52).
Regarding claim 11, Hitora teaches wherein the crystalline oxide semiconductor has a corundum structure (paragraph 36-40 and 52).
Regarding claim 12, Hitora teaches wherein the crystalline oxide semiconductor contains at least a metal selected from aluminum, gallium and indium (paragraph 36-40 and 52).
Regarding claim 13, Hitora teaches wherein the semiconductor element is a vertical device (paragraph 50).
Regarding claim 14, Hitora teaches wherein the semiconductor element is a power device (paragraph 50).
Regarding claim 18, Hitora teaches a semiconductor system, comprising: the semiconductor element according to claim 8 (paragraph 50).
Regarding claim 21, Hitora teaches wherein the conductive metal oxide film is between the semiconductor layer and the metal layer (Fig. 2, 101a is between 101b and 105a).
Regarding claim 23, Hitora teaches wherein the conductive metal oxide film is in ohmic contact with the semiconductor layer (Fig. 2, 101a is in ohmic contact with 101b).
Claims 15-17 are rejected under 35 U.S.C. 103 as being unpatentable over Hitora as applied to claim 8 above, and further in view of Takahashi et al. (US 2020/0211919 A1; hereinafter “Takahashi”).
Regarding claim 15, teaching of Hitora has been discussed above including that the semiconductor element (the crystalline multilayer structure) is useful for various types of semiconductor devices (paragraph 50). However, Hitora does not explicitly teach a semiconductor device recited in claim 15. Takahashi teaches a semiconductor device (201), comprising: the semiconductor element according to claim 8; a board (303); and a jointing material (304), and a semiconductor element (301a) that is bonded with the board by using the jointing material, the board is a circuit board or a heat dissipation board (Fig. 19 and paragraphs 96-98). Therefore, it would have been obvious to one of ordinary skill in the art to combine the teaching of Hitora with that of Takahashi in order to utilize the semiconductor element from Hitora in various types of semiconductor devices including the semiconductor device from Takahashi. While Hitora does not explicitly teach a semiconductor device in claim 15, it would have been obvious to one of ordinary skill in the art to form a semiconductor package (the claimed semiconductor device) comprising various types of semiconductor devices (as discussed in Hitora in paragraph 50) formed on a printed circuit board (claimed circuit board) using an adhesive material (claimed jointing material) in order to provide the fabricated semiconductor package for its usage.
Regarding claim 16, Takahashi teaches wherein the semiconductor device is a power module, an inverter, or a converter (paragraph 96).
Regarding claim 17, Takahashi teaches wherein the semiconductor device is a power card (paragraph 98).
Allowable Subject Matter
Claim 22 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Response to Arguments
Applicant’s arguments with respect to amended and newly submitted claims have been considered but are moot in view of new ground of rejection as set forth above in this Office Action.
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 DANIEL B WHALEN whose telephone number is (571)270-3418. The examiner can normally be reached on M-F: 8AM-5PM.
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, Sue Purvis can be reached on (571)272-1236. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DANIEL WHALEN/Primary Examiner, Art Unit 2893