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 11/17/22 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the Examiner.
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 3, 8, 32, 37, 40, 41, 47 and 66 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.
Regarding Claim 3, the language “the position of the self- centered passivation disc-like shape functions as a constraint to ensure the quantum well stack is deposited mostly along the vertical side of the column” fails to provide a clear cut indication of the scope of the subject matter embraced by the claim as the claims merely recite a description of the problem to be solved and do not specify any structure which accomplishes the function (see MPEP §2173.05(g)).
Regarding Claim 8, the language “optionally” renders the claim indefinite, as it is unclear whether the step adds any structural limitation or not, especially when combined with product-by-process language such as “grown” included in a product claim.
Regarding Claim 32, the language “the passivation layer inhibits any undesirable current injection through the top of the nanocolumns” fails to provide a clear cut indication of the scope of the subject matter embraced by the claim as the claims merely recite a description of the problem to be solved and do not specify any structure which accomplishes the function (see MPEP §2173.05(g)).
Regarding Claim 37, the language “the passivation layer (cap)” lacks antecedent basis in the claim as only “an electrically insulating passivation layer” has been established as well as a “capped nanocolumn.” The current claim language does not link the elements that have been previously created in the claim. Additionally, the use of the pronoun “it” in the claim is unclear, as the Examiner is unable to determine exactly which element “it” refers to, especially in combination with the antecedent basis issues previously established.
Regarding Claim 40, the language “the passivation disc-like shape functions as a constraint to ensure the quantum well stack is deposited only along the vertical side of the column” fails to provide a clear cut indication of the scope of the subject matter embraced by the claim as the claims merely recite a description of the problem to be solved and do not specify any structure which accomplishes the function (see MPEP §2173.05(g)).
Regarding Claim 41, the language “a second passivation layer can be deposited on the substrate between adjacent nanocolumns” fails to provide a clear cut indication of the scope of the subject matter embraced by the claim as the claims merely recite a description of the problem to be solved and do not specify any structure which accomplishes the function – it is unclear what structure must exist that allows “a second passivation layer can be deposited on the substrate between adjacent nanocolumns” that has not already been claimed (see MPEP §2173.05(g)).
Regarding Claim 47, the language “the second passivation layer” lacks antecedent basis in the claims. It appears Claim 47 may have been intended to depend from Claim 41. Appropriate correction is required.
Regarding Claim 66, the language “the predetermined distance” lacks antecedent basis in the claims. Appropriate correction is required.
Claim Rejections - 35 USC § 102
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 (i.e., changing from AIA to pre-AIA ) 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 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.
Claims 1-5, 8, 9, 11, 26, 32, 37, 40, 41, 47, and 66 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cha et al. (US Patent Application Publication No. 2014/0246647)(“Cha”).
Regarding Claim 1, Cha teaches a semiconductor heterostructure device for use as a component in an optoelectronic device (Figure 4D), the heterostructure device comprising: a semiconductor substrate (Figure 4D, item 22); a semiconductor nanocolumn (Figure 4D, item 25a) extending from the substrate; an electrically insulating passivation layer (Figure 4D, item 27) on top of the nanocolumn; an active region (Figure 4D, item 25b) which comprises a quantum well stack on a vertical side of the nanocolumn (¶0058); and wherein the passivation layer comprises a self-centred passivation disc-like shape positioned to extend horizontally outwards from the nanocolumn to overhang the nanocolumn and the quantum well stack stack (see Figure 4D, item 27 and shape relative to underlying nanocolumn); and a top contact (Figure 4D, item 26) formed in between and/or around individual nanocolumns.
Regarding Claim 2, the language "the overhang is formed by etching the nanocolumn to reduce the width of the nanocolumn and to reduce the number of dislocations" is directed towards the process of making an overhang. It is well settled that "product by process" limitations in claims drawn to structure are directed to the product, per se, no matter how actually made. In re Hirao, 190 USPQ 15 at 17 (footnote 3). See also, In re Brown, 173 USPQ 685; In re Luck, 177 USPQ 523; In re Fessmann, 180 USPQ 324; In re Avery, 186 USPQ 161; In re Wethheim, 191 USPQ 90 (209 USPQ 554 does not deal with this issue); In re Marosi et al., 218 USPQ 289; and particularly In re Thorpe, 227 USPQ 964, all of which make it clear that it is the patentability of the final product per se which must be determined in a "product by process" claim, and not the patentability of the process, and that an old or obvious product produced by a new method is not patentable as a product, whether claimed in "product by process" claims or otherwise. The above case law further makes clear that applicant has the burden of showing that the method language necessarily produces a structural difference. As such, the language "the overhang is formed by etching the nanocolumn to reduce the width of the nanocolumn and to reduce the number of dislocations" only requires a passivation layer with an overhang, which does not distinguish the invention from Cha, who teaches the structure as claimed.
Regarding Claim 3 in so far as definite, Cha further teaches the position of the self-centred passivation disc-like shape functions as a constraint to ensure the quantum well stack is deposited mostly along the vertical side of the column (see Figure 4D, note location of 27 relative to 25).
Regarding Claim 4, Cha further teaches a second passivation layer (Figure 4D, item 28) is deposited on the substrate between adjacent nanocolumns.
Regarding Claim 5, the language " the nanocolumns with the passivation layer are annealed and/or overgrown in an appropriate atmosphere to controllably form crystallographic vertical facets and/or remove some residual dislocations prior to deposition of the quantum well shell stack" is directed towards the process of making a nanocolumn. It is well settled that "product by process" limitations in claims drawn to structure are directed to the product, per se, no matter how actually made. In re Hirao, 190 USPQ 15 at 17 (footnote 3). See also, In re Brown, 173 USPQ 685; In re Luck, 177 USPQ 523; In re Fessmann, 180 USPQ 324; In re Avery, 186 USPQ 161; In re Wethheim, 191 USPQ 90 (209 USPQ 554 does not deal with this issue); In re Marosi et al., 218 USPQ 289; and particularly In re Thorpe, 227 USPQ 964, all of which make it clear that it is the patentability of the final product per se which must be determined in a "product by process" claim, and not the patentability of the process, and that an old or obvious product produced by a new method is not patentable as a product, whether claimed in "product by process" claims or otherwise. The above case law further makes clear that applicant has the burden of showing that the method language necessarily produces a structural difference. As such, the language "the nanocolumns with the passivation layer are annealed and/or overgrown in an appropriate atmosphere to controllably form crystallographic vertical facets and/or remove some residual dislocations prior to deposition of the quantum well shell stack" only requires nanocolumns with a passivation layer, which does not distinguish the invention from Cha, who teaches the structure as claimed.
Regarding Claim 8 in so far as definite, Cha further teaches the top contact layer is of a type of conductivity opposite to that of nanocolumn body (¶0065-0068 and 0059). The language "the contact layer grown upwards from the substrate in-between nanocolumns and optionally grown by expanding the nanocolumns laterally" is directed towards the process of making a contact layer. It is well settled that "product by process" limitations in claims drawn to structure are directed to the product, per se, no matter how actually made. In re Hirao, 190 USPQ 15 at 17 (footnote 3). See also, In re Brown, 173 USPQ 685; In re Luck, 177 USPQ 523; In re Fessmann, 180 USPQ 324; In re Avery, 186 USPQ 161; In re Wethheim, 191 USPQ 90 (209 USPQ 554 does not deal with this issue); In re Marosi et al., 218 USPQ 289; and particularly In re Thorpe, 227 USPQ 964, all of which make it clear that it is the patentability of the final product per se which must be determined in a "product by process" claim, and not the patentability of the process, and that an old or obvious product produced by a new method is not patentable as a product, whether claimed in "product by process" claims or otherwise. The above case law further makes clear that applicant has the burden of showing that the method language necessarily produces a structural difference. As such, the language "the contact layer grown upwards from the substrate in-between nanocolumns and optionally grown by expanding the nanocolumns laterally" only requires the contact layer, which does not distinguish the invention from Cha, who teaches the structure as claimed.
Regarding Claim 9, Cha further teaches a metal contact (Figure 4D, item 29b) is deposited on or around the top contact layer (¶0077).
Regarding Claim 11, Cha further teaches the nanocolumn further comprises residual slanted facets near the cap (Figure 2B) and the distance between them and the top contact layer is predetermined to avoid their operative inter-coupling (see Figure 4D, note the space between the elements depicted).
Regarding Claim 26, the language “wherein the nanocolumn is formed by a top-down approach using masks which reduces the number of dislocations in the initial planar templates" is directed towards the process of making a nanocolumn. It is well settled that "product by process" limitations in claims drawn to structure are directed to the product, per se, no matter how actually made. In re Hirao, 190 USPQ 15 at 17 (footnote 3). See also, In re Brown, 173 USPQ 685; In re Luck, 177 USPQ 523; In re Fessmann, 180 USPQ 324; In re Avery, 186 USPQ 161; In re Wethheim, 191 USPQ 90 (209 USPQ 554 does not deal with this issue); In re Marosi et al., 218 USPQ 289; and particularly In re Thorpe, 227 USPQ 964, all of which make it clear that it is the patentability of the final product per se which must be determined in a "product by process" claim, and not the patentability of the process, and that an old or obvious product produced by a new method is not patentable as a product, whether claimed in "product by process" claims or otherwise. The above case law further makes clear that applicant has the burden of showing that the method language necessarily produces a structural difference. As such, the language " wherein the nanocolumn is formed by a top-down approach using masks which reduces the number of dislocations in the initial planar templates" only requires a nanocolumn, which does not distinguish the invention from Cha, who teaches the structure as claimed.
Regarding Claim 32 in so far as definite, Cha further teaches the passivation layer inhibits any undesirable current injection through the top of the nanocolumns (see Figure 4D, ¶0074).
Regarding Claim 37 in so far as definite, Cha teaches a method for creating a semiconductor heterostructure device for use as a component in an optoelectronic device (see Figure 4D), the method comprising the steps of: applying an electrically insulating passivation layer (Figure 5B, item 53) to a semiconductor wafer (Figure 5B, item 52); selectively applying a mask to the passivation layer (¶0093-0095); processing the semiconductor wafer to create capped nanocolumns in the positions defined by the mask (see Figure 5C, items 55a); removing a portion of the nanocolumn located under the passivation layer (cap) such that it overhangs the nanocolumn to form a self-centred passivation disc- like shape (see Figure 5H and 4D); and thermal annealing and/or re-growth to form vertical crystallographic facets of the nanocolumn (see Figure 5E); depositing a quantum well stack on a vertical side of the nanocolumn (see Figure 5F, item 55b); and depositing a top contact by in-filling the array of nanocolumns by growing material preferentially in between them (Figure 3C, item 26) or by expanding nanocolumns laterally.
Regarding Claim 40 in so far as definite, Cha further teaches the position of the self-centred passivation disc-like shape functions as a constraint to ensure the quantum well stack is deposited mostly along the vertical side of the column (see Figure 4D, note location of 27 relative to 25).
Regarding Claim 41 in so far as definite, Cha further teaches a second passivation layer (Figure 4D, item 28) can be deposited on the substrate between adjacent nanocolumns (see Figure 4D).
Regarding Claim 47 in so far as definite, Cha further teaches the second passivation layer comprises an insulating dielectric material (¶0076).
Regarding Claim 66 in so far as definite, Cha further teaches the nanocolumn further comprises residual slanted facets near the cap (Figure 2B) and the predetermined distance between them and the top contact layer is such that they do not operatively couple to each other (see Figure 4D, note the space between the elements depicted).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Hersee et al. (US Patent Application Publication No. 2008/0036038)
Fukui et al. (US Patent Application Publication No. 2012/0235117)
Svensson et al. (US Patent Application Publication No. 2014/0361244)
Mandl et al. (US Patent Application Publication No. 2014/0339577)
Gootz et al. (US Patent Application Publication No. 2015/0349215)
Ristic et al. (US Patent Application Publication No. 2016/0126702)
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARK W TORNOW whose telephone number is (571)270-7534. The examiner can normally be reached M-Th 6:30-4:30 EST.
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MARK W. TORNOW
Primary Examiner
Art Unit 2891
/MARK W TORNOW/Primary Examiner, Art Unit 2891