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 § 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-7, 10-11, 14-16 and 18 is/are rejected under 35 U.S.C. 102(a1 and a2) as being anticipated by Takahashi (USPub 20200211919).
Regarding claim 1: Takahashi teaches a crystalline oxide film having a plane tilted from a c-plane as a principal plane (m-plane) (see Takahashi’s claim 6) comprising gallium which can further contain at least one additional metal selected from indium (Group 13), rhodium (Group 9) and iridium (Group 9) (0027, 0050, Takahashi claim 3).
Takahashi teaching clearly allows for an additional metal of one of the Group 9 rhodium or iridium metals. Given the presence of the additional metal, an atomic ratio of said metal to all other metals would necessarily have to be >0%. Takahashi teaches their gallium being the major component with the atomic ratio of gallium to all other metals present being 0.5 or more, 0.7 or more and even 0.8 or more (0050), which would consequently result in the rhodium or iridium to necessarily have to be contained within the remaining content of 50% or less, 30% or less and even 20% or less meeting the range of claim 1.
Regarding claim 2: The film has a corundum structure (see Takahashi claim 6).
Regarding claims 3 and 4: The film can have a m-plane as the principal plane (see Takahashi’s claim 6) which not only is known to be perpendicular to c-plane but note that is the same plane used by Applicants’ and it can be concluded to have the same relationship to the c-plane (MPEP 2112).
Regarding claim 5: As discussed above, the additional metal can be Group 9 iridium.
Regarding claim 6: Given that the film meets that claimed, it would be expected to have the same features/functionality when exposed to the same conditions (MPEP 2112).
Regarding claim 7: As discussed above, Takahashi anticipates making their film comprise Group 9 metal in an amount of 0 atomic % falling within the claimed range.
Regarding claim 10 and 18: The film can have p-type conductivity (0051, see p-type dopants) but additionally, given that the film meets that claimed, it would be expected to have the same properties (MPEP 2112).
The film can have a p-type carrier concentration of 1x1016/cm3 to 1x1022/cm3 (0051).
Regarding claim 11: Given that the film meets that claimed, it would be expected to have the same properties (MPEP 2112).
Regarding claim 14: Takahashi teaches semiconductor devices comprising the crystalline oxide film (see Takahashi’s claims 8-15) which can further include an electrode (0076).
Regarding claim 15: The semiconductor can be a power device (Takahashi claim 10).
Regarding claim 16: Takahashi also teaches a semiconductor system comprising the above-mentioned semiconductor device (Takahashi claim 15).
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) 7 and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Takahashi (USPub 20200211919).
Regarding claim 7: As discussed above, Takahashi teaches the invention of claim 1. Specifically, given the presence of the additional Group 9 metal of rhodium or iridium, an atomic ratio of said metal to all other metals would necessarily have to be >0%. Takahashi teaches their gallium being the major component with the atomic ratio of gallium to all other metals present being 0.5 or more, 0.7 or more and even 0.8 or more (0050), which would consequently result in the rhodium or iridium to necessarily have to be contained within the remaining content of 50% or less, 30% or less and even 20% or less overlapping the range claimed (MPEP 2144.05).
Regarding claim 17: As discussed above, Takahashi teaches the invention of claim 1. Takahashi teaches their gallium being the major component with the atomic ratio of gallium to all other metals present being 0.5 or more, 0.7 or more and even 0.8 or more (0050), which would consequently result in the rhodium or iridium to necessarily have to be contained within the remaining content of 50% or less, 30% or less and even 20% or less. Given the presence of the additional Group 9 metal of rhodium or iridium, an atomic ratio of said metal to all other metals would necessarily have to be >0%. overlapping the range claimed (MPEP 2144.05).
Claim(s) 8 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Takahashi (USPub 20200211919) in view of Hitora (USPub20150325659).
Regarding claims 8 and 9: As discussed above, Takahashi teaches the invention of claim 1. While Takahashi does not explicitly disclose the thickness or roughness of their crystalline oxide film, given that Takahashi does not appear to place any limits on their thickness other than it can be adjusted with deposition time (see 0070) nor do they appear to place any limits on roughness at all, it would have been well within the skill in the art to look to the prior art to find thicknesses and roughness deemed suitable/desirable in the art.
In the instant case, Takahashi’s crystalline oxide film is a semiconductor film having a corundum structure, contains gallium as a major component and can be formed by mist CVD (0053).
As Hitori, who similarly teaches semiconductor crystalline oxide films having a corundum structure, can contain gallium as a major component and be formed by mist CVD, discloses that desirable thicknesses for such films can be that of 0.1-100microns (0038) and desirable roughness of such films can be that of 0.1micron or less (see 0043-0044), it would have been obvious to one having ordinary skill at the time of invention to modify Takahashi to include making their film with 0.1-100micron (100-100000nm) thickness and 0.1micron or less (100nm or less) roughness (MPEP 2144.05) in obtaining a desirable semiconductor crystalline oxide film.
Response to Arguments
Applicant's arguments filed April 23, 2026 have been fully considered but they are not persuasive.
Applicants argue against the Office’s position of Takahashi’s teaching of an atomic ratio of gallium to all metal elements being 0.7, 0.8 or more being support for Takahashi’s disclosure of rhodium and/or iridium being included in the film meets the claimed feature of “the metal in Group 9 of the periodic table among all metallic elements in the crystalline oxide film having an atomic ratio of greater than 0% and equal to or less than 23%” for the following reasons.
Initially, Applicants argue that while Takahashi may disclose that the atomic ratio of gallium to all metal elements being 0.5, 0.7, 0.8 or more, there is no explicit disclosure of the atomic ratio of rhodium, iridium or any Group 9 metal.
This is not persuasive. While Takahashi may not explicitly disclose atomic ratio of rhodium, iridium or any Group 9 metal to all other metals, this does not mean that it would not still be implicitly met by Takahashi. Specifically, as discussed in the Office Action, Takahashi teaches a crystalline oxide film comprising gallium which can further contain at least one additional metal selected from indium (Group 13), rhodium (Group 9) and iridium (Group 9) (0027, 0050, Takahashi claim 3).
Takahashi teaching clearly allows for the additional metal to be one of the Group 9 rhodium or iridium metals. Further, given the mere presence of the additional metal, an atomic ratio of said metal to all other metals would necessarily have to be >0%. Even further, given that Takahashi teaches their gallium being the major component with the atomic ratio of gallium to all other metals present being 0.5 or more, 0.7 or more and even 0.8 or more (0050), this would consequently result in the additional metal of rhodium or iridium to necessarily have to be contained within the remaining content of 50% or less, 30% or less and even 20% or less meeting the range of claim 1.
Applicants go on to argue that even if the total amount of metal elements other than gallium contained in the film is implied by Takahashi’s disclosure, this does not provide any indication of amounts for the Group 9 metals alone as Takahashi discloses that the metal oxide can include one or more metals of the fourth to sixth period in the periodic table other than gallium.
This is not persuasive. It appears that Applicants are arguing that because Takahashi allows for additional metals that amounts of Group 9 metals alone would not be implied but this is not true. Initially, as already mentioned above, Takahashi clearly teaches that a Group 9 element of rhodium or iridium can be present and regardless of whether or not additional metals from Group 4 to Group 6 can also be added, given the mere presence of the Group 9 metal of rhodium or iridium, an atomic ratio of this metal to all other metals would necessarily have to be >0%.
Further, note again that Takahashi teaches their gallium being the major component with the atomic ratio of gallium to all other metals present being 0.5 or more, 0.7 or more and even 0.8 or more (0050) which would consequently result in any and all additional metals, including that of the rhodium or iridium to necessarily be contained within the remaining content of 50% or less, 30% or less and even 20% or less meeting the range of claim 1.
Applicants additional argue that it is not inherent from Takahashi that it is the crystalline oxide film having rhodium and/or iridium in an amount that meets that claimed but this is not persuasive.
Initially, again that Takahashi’s disclosure mentioned above is that Takahashi’s gallium is the major component with the atomic ratio of gallium to all other metals present being 0.5 or more, 0.7 or more and even 0.8 or more (0050). Note the citation of par 0050 shown below
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which makes it clear that Takahashi is disclosing the ratio of the gallium to all metal elements within the film itself. As such, if the atomic ratio of gallium to all other metals present in the film is 0.5 or more, 0.7 or more and even 0.8 or more (0050), this would consequently result in the additional metals, including that of the rhodium or iridium to necessarily be contained within the remaining content of 50% or less, 30% or less and even 20% or less of the film itself meeting the range of claim 1.
Applicants argue against the Office’s anticipation rejection, assert that the rejection of claim 1 involves picking and choosing between different embodiments/teachings of Takahashi and point to paragraph 0050 in Takahashi that references “an embodiment”.
This is not persuasive. Note that Takahashi’s paragraph 0050 provides the following.
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Initially, as clearly shown above, even though the paragraph may make mention of “an embodiment”, the rejection was not based on picking and choosing but rather, Takahashi is explicitly disclosing their film containing an oxide of gallium and then goes on to clearly discuss it being preferred that with the gallium, it is preferred to additionally add at least one of indium, rhodium and iridium. As such, Takahashi is anticipating a film containing an oxide of gallium with an addition of at least one of indium, rhodium and iridium. Further, while it is acknowledged that rhodium and iridium may be alternatives in a listing, note that rhodium and iridium are two out of the only three metals listed. As such, the rhodium and iridium metals would not be considered merely picking and choosing but instead, would be considered clearly taught and anticipated by Takahashi.
Applicants argue that although an obviousness position is not explicitly set forth in the Office Action, the claimed invention would not have been obvious as any such rejection would be based on impermissible hindsight.
This is not persuasive. Initially note that the rejection was based on anticipation and not obviousness, however for the sake of argument, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). In the instant case, the Office’s rejection was based on account only knowledge which was within the level of ordinary skill at the time the claimed invention was made (i.e. the Takahashi reference), and does not include knowledge gleaned only from the applicant's disclosure. Specifically, the Office did give articulated reasoning to support their conclusion that the claimed subject matter was supported by Takahashi and not from Applicants’ specification itself.
Applicants argue that their claimed limitation of the Group 9 element among all other elements having an atomic ratio of greater than 0 to 23% provides unexpected results which are neither taught nor suggested by Takahashi.
This is not persuasive. Initially, note that the rejection was based on anticipation in which arguing unexpected results is irrelevant and improper. However, for the sake of argument, it is initially noted that Applicants have not provided any actual evidence to support unexpected results. Further, Takahashi does not have to explicitly teach Applicants’ desired results/reasons for including the atomic ratio. The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Applicants argue that the prior art provides no reasonable expectation of including a Group 9 metal in the specified atomic ratio would result in Applicants’ desired results and in contrast, one would have expected different results.
This is not persuasive. Again, this argument is based on obviousness but the rejection was based on anticipation. As such, the is irrelevant and improper. However, for the sake of argument, initially, Takahashi does not have to explicitly teach an expectation that including the Group 9 metal in the claimed ratio would result in Applicants’ desired results. The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). In the instant case, given that Takahashi’s film meets that claimed for all reasons above, the same results would be expected (MPEP 2112). While Applicants assert that one skilled in the art would have expected a different result, note that Applicants have provided no actual support for this nor any evidence that Takahashi’s invention would not actually result in the same results desired by Applicants. However regardless, again the rejection is still based on anticipation so any argument related to unexpected results that would or would not have been expected are irrelevant.
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 LAUREN ROBINSON COLGAN whose telephone number is (571)270-3474. The examiner can normally be reached Monday thru Friday 9AM to 5PM.
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LAUREN ROBINSON COLGAN
Primary Examiner
Art Unit 1784
/LAUREN R COLGAN/Primary Examiner, Art Unit 1784
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