DETAILED ACTION
Table of Contents
I. Notice of Pre-AIA or AIA Status 3
II. Continued Examination Under 37 CFR 1.114 3
III. Claim Rejections - 35 USC § 112 3
A. Claims 1-5, 7-10, and 21 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. 3
IV. Allowable Subject Matter 4
V. Response to Arguments 5
VI. Pertinent Prior Art 5
Conclusion 5
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I. 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 .
II. Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant’s submission filed on 01/02/2026 has been entered.
III. Claim Rejections - 35 USC § 112
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.
A. Claims 1-5, 7-10, and 21 are rejected under 35 U.S.C. 112(a) 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, at the time the application was filed, had possession of the claimed invention.
Claim 1, as amended, includes the limitation,
wherein a thickness of the insulating film in a direction intersecting the depth direction of the trench is 2 μm or more.
However, the Instant Application only provides support for the range of thickness T1 being from 2 μm to 6 μm (Instant Specification: ¶ 61 and “[Supplementary Note 1-6]” on p. 23). As such, the currently claimed range of “2 μm or more”, having no upper limit, literally reads outside the disclosed range, and therefore introduces new matter. In this regard, MPEP states,
With respect to changing numerical range limitations, the analysis must take into account which ranges one skilled in the art would consider inherently supported by the discussion in the original disclosure. In the decision in In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976), the ranges described in the original specification included a range of “25%- 60%” and specific examples of “36%” and “50%.” A corresponding new claim limitation to “at least 35%” did not meet the description requirement because the phrase “at least” had no upper limit and caused the claim to read literally on embodiments outside the “25% to 60%” range, however a limitation to “between 35% and 60%” did meet the description requirement.
(MPEP 2163.05 (III); emphasis added)
Claims 2-5 and 7-10 are rejected for including the same unsupported feature by depending from claim 1 directly or indirectly.
Claim 6 is not rejected because it adds the upper limit of 6 μm to the thickness range.
IV. Allowable Subject Matter
Claims 6 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.
The following is a statement of reasons for the indication of allowable subject matter:
Claim 6 reads,
6. (Currently Amended) The semiconductor device of Claim 1, wherein a thickness of the insulating film in the direction intersecting the depth direction of the trench is 6 μm or less.
The prior art does not reasonably teach or suggest—in the context of the claim—the claimed range for thickness of the insulating film of 2 μm or more and 6 μm or less.
V. Response to Arguments
Examiner agrees with Applicant (Remarks filed 01/02/2026 at pp. 8-9) that Usami does not disclose the limitation requiring “a thickness of the insulating film in a direction intersecting the depth direction of the trench is 2 um or more”, as consistent with the Final Rejection indicating original claim 6 included allowable subject matter (Final Rejection mailed 10/10/2025 at p. 10).
VI. Pertinent Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 2017/0256536 (“Nishida”) is cited for teaching an electric field relaxation trench 62, wherein the bottom of the trench includes a protrusion consistent with the Instant Application. See Figs. 1, 4, 5, and 7 and associated text.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERIK KIELIN whose telephone number is (571)272-1693. The examiner can normally be reached Mon-Fri: 10:00 AM-7:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Wael Fahmy can be reached on 571-272-1705. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Signed,
/ERIK KIELIN/
Primary Examiner, Art Unit 2814