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 .
Election/Restrictions
Claims 12-21 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 8.6.2025.
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 1-11 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 1, “two spacers, wherein each of the two spacers is provided respectively on opposite sidewalls of the first dielectric layer and the second dielectric layer, and a shallow trench process is performed along opposite surfaces of the two spacers to divide the source heavily doped area into the first heavily doped region and the second heavily doped region through the metal contact window, and the first metal-source surface contact region and the second metal-source surface contact region are exposed after the two spacers are removed” (emphasis added) renders the claim indefinite.
Even when the claimed steps (highlighted above) are treated in accordance with MPEP 2113 (Product-by-Process Claims), the product itself and/or the structure implied by said processes as required by MPEP 2113 are obscured to the point of indefiniteness because the claimed product-by-process limitations above refer to intermediate products which are different and mutually exclusive from the final product, and as such patentability on the product itself nor the structure implied by the processes can be determined.
The “two spacers” are only part of an intermediate product (Figs. 9-10) which cannot be part of the final structure (Fig. 12) because said spacers must be removed prior to the formation of source contact metal 130 with said source contact metal being claimed in claim 1. Claim 1 includes mutually exclusive elements in the form of intermediate and final products wherein the final product itself or the final structure implied by the processes claimed are obscured and rendered indefinite because it is unclear what the scope of the claim is supposed to be when a positively recited element (i.e., “two spacers”) with a specific configuration (i.e., “each of the two spacers is provided respectively on opposite sidewalls of the first dielectric layer and the second dielectric layer”) is employed in a process (i.e., “a shallow trench process”) and is later removed (i.e., “after the two spacers are removed”); what is the product itself or the structure implied? The examiner cannot determine it and therefore the claim is indefinite even when treated in accordance with MPEP 2113.
Moreover, while MPEP 2173.05(p) states “A claim to a device, apparatus, manufacture, or composition of matter may contain a reference to the process in which it is intended to be used without being objectionable under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, so long as it is clear that the claim is directed to the product and not the process”(emphasis added) and the claim is deemed indefinite because it appears applicant’s intent is to define the scope of the claim by the process and not by the product. Basis for the examiner’s position can be found in applicant’s remarks, filed 10.3.2025, at pg. 10-13 which the examiner deems as evidence, in addition to the claim language, that the scope of the claim is defined by the process and not by the product.
In summary, the scope of the claim is obscured and indefinite because the claimed product-by-process limitations above are drawn to temporary elements which are used in intermediate steps and later removed wherein (a) it is unclear what the product itself of the structure implied by said steps per MPEP 2113 is supposed to be when said elements are removed and wherein their presence/use leads to intermediate products which are mutually exclusive from the final product, and, (b) it appears applicant’s intent is to define the scope of the claim by the process and not by the product which is opposite to the requirement of MPEP 2173.05(p).
Hence, claim 1 is deemed indefinite for the reasons stated above; none of the dependent claims 2-11 address the deficiencies of claim 1, and, since the scope of the product itself or the structure implied by the steps cannot be determined, no prior art is applied to claim 1 per MPEP 2173.06 (“where there is a great deal of confusion and uncertainty as to the proper interpretation of the limitations of a claim, it would not be proper to reject such a claim on the basis of prior art”).
Response to Arguments
Applicant's arguments filed 10.03.2025 have been fully considered but they are not persuasive.
The applicant alleges the prior art of record fails to disclose or suggest “two spacers, wherein each of the two spacers is provided respectively on opposite sidewalls of the first dielectric layer and the second dielectric layer, and a shallow trench process is performed along opposite surfaces of the two spacers to divide the source heavily doped area into the first heavily doped region and the second heavily doped region through the metal contact window, and the first metal-source surface contact region and the second metal-source surface contact region are exposed after the two spacers are removed” of newly amended claim 1 at pgs. 13-16. This is not found persuasive because the limitation in question renders the claim indefinite for the reasons stated above wherein no prior art rejection is deemed applicable per MPEP 2713.06 (“where there is a great deal of confusion and uncertainty as to the proper interpretation of the limitations of a claim, it would not be proper to reject such a claim on the basis of prior art”).
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 ANDRES MUNOZ whose telephone number is (571)270-3346. The examiner can normally be reached 8AM-5PM Central Time.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eva Montalvo can be reached at (571)270-3829. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Andres Munoz/ Primary Examiner, Art Unit 2818