DETAILED ACTION
Applicant’s Response
Acknowledged is the applicant’s request for reconsideration filed on May 26, 2026. Claim 1 is amended; claims 10 and 11 are new.
The applicant contends that the cited prior art fails to disclose Expressions 1’ through 3’, as elaborated by independent claim 1 (pp. 6-8).
In response, the examiner observes that each of the three expressions incorporates a parameter related to either the substrate or the “film quality guaranteed region,” thereby confounding the expressions’ invariance. In claims drawn to an apparatus, the substrate is merely the article worked upon and does not constitute a basis for patentability – expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining the patentability of the apparatus (Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969)). Further, the substrate is not a permanent component of the apparatus but, instead, may be arbitrarily selected by the operator. So, with regard to the first expression, X > 2D1, where D1 is the distance between an “outer peripheral edge of the substrate and an inner peripheral edge of the outer region,” the operator can simply choose a substrate whose diameter satisfies the expression. For example, for a fixed value of X, the operator can select a substrate whose diameter minimizes the value of D1.
Similarly, the parameter of “film quality guaranteed region” denotes a deposition profile of arbitrary radius, which is a matter of intended use. In such cases, the prior art must merely demonstrate the structural capacity to reproduce the claimed function in order to satisfy the threshold for rejection – it has been held that a recitation drawn to the intended manner of employing a claimed apparatus does not differentiate said apparatus from a prior art apparatus satisfying the claimed structural limitations (Ex parte Masham, 2 USPQ2d 1647 (1987)). For example, with regard to Expression 3’, the operator can simply regulate the deposition profile to minimize the radius of “quality guaranteed” deposition, thereby maximizing delta, to ensure the expression is satisfied.
The examiner suggests reciting only those parameters which correspond to permanent fixtures of the apparatus itself, rather than relying upon parameters, like substrate size or deposition radius, that can be arbitrarily selected through operations of intended use.
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 of this title, 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 1-4 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Daigo et al., US 2020/0190692, in view of Kashiwagi, JP 5-238882, wherein machine translation is provided.
Claim 1: Daigo discloses a vapor phase growth apparatus, comprising:
A reactor (10) (Fig. 1);
A holder (14) provided in the reactor to place a substrate (W) thereon;
A first heater (22) provided in the reactor and located below the holder [0031];
A second heater (42) provided in the reactor and located above the holder [0031];
Wherein the holder includes:
An inner region (d3) (Fig. 3);
An annular outer region (14a) surrounding the inner region.
Daigo’s holder does not comprise a “support portion…having an annular shape,” as claim 1 requires. In supplementation, Kashiwagi discloses a susceptor adapted for a vapor phase growth system comprising an annular support portion (2), disposed within an inner region (1), capable of supporting a bottom surface of a substrate (W) ([0010]; Fig. 1). By raising the wafer above the holder’s bottom surface (3), slippage during deposition can be suppressed (Abstract). As Daigo shares this same desideratum, it would have been obvious to incorporate an annular support portion, since the use of a known technique to improve a similar device in the same way is within the scope of ordinary skill.
Lastly, claim 1 concludes with three expressions each incorporating parameters related to substrate dimension and film deposition radius. The examiner observes that the substrate is an article worked upon by the apparatus and does not constitute patentable subject matter: expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining the patentability of the apparatus (Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969)). The operator can simply procure a substrate of the necessary diameter to satisfy the recited expressions.
The parameter denoting film deposition radius, “film quality guaranteed region,” invokes the act of intended use, whereby the prior art must simply demonstrate the structural capacity to reproduce the claimed function in order to satisfy the threshold for rejection – it has been held that a recitation drawn to the intended manner of employing a claimed apparatus does not differentiate said apparatus from a prior art apparatus satisfying the claimed structural limitations (Ex parte Masham, 2 USPQ2d 1647 (1987)). The operator can regulate the deposition process to form a film profile of whatever radius is required to satisfy the recited expression.
For example, with regard to Expression 1’, the diameter of Kashiwagi’s support portion (2) is 95 percent of the inner diameter of the outer region (10) which, in turn, is equal to the diameter of the substrate plus 2 mm. In other words, given a diameter difference of 2 mm, the gap between the substrate edge and the outer region’s inner diameter will be 1 mm along said gap’s circumference, meaning that D1 is equal to 1 mm in Kashiwagi’s system. Because Kashiwagi’s support portion diameter is invariably 95 percent of the outer region diameter, X may be rewritten as 0.05*ID, where “ID” denotes the inner diameter of the outer region, so the lower bound of this inner diameter required to satisfy Expression 1’ is 0.05*ID > 2*(1 mm), which works out to 40 mm. Thus, so long as the inner diameter of the outer region is greater than 40 mm, Expression 1’ is satisfied. Or, in other words, so long as the operator chooses a substrate of greater than 38 mm, Expression 1’ is satisfied. It is the Office’s position that the operator can arbitrarily select a substrate of 39 mm in diameter or greater. (Notably, Kashiwagi uses a 5-inch, or 127 mm substrate, yielding an outer region inner diameter of 129 mm, thereby satisfying the expression.) Similar analyses may be applied to Expressions 2’ and 3’.
Claim 2: Daigo contemplates an embodiment in which the holder (14) is formed of carbon coated with silicon carbide [0050]. Arbitrarily, a portion of the outer region comprising carbon can be designated as the “first member” and a portion comprising SiC can be designated as the “second member.”
Claim 3: With reference to the rejection of claim 2, above, the “first member” can be taken from the bottommost portion of Daigo’s holder and the “second member” can be taken from an uppermost portion, where the claimed “boundary” can be arbitrarily drawn anywhere in between, including at a location below the substrate’s top surface.
Claim 4: Assuming that the SiC coating is being taken as the “second member,” the latter is formed of SiC, by definition.
Claim 11: Kashiwagi stipulates a support portion height of 0.1 mm and a support portion width of 0.5 mm.
Claims 5 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Daigo in view of Kashiwagi, and in further view of Sakai et al., US 2021/0010158.
Daigo does not disclose the claimed features of inner and outer periphery fixing portions. Sakai, then, is cited to remedy the deficiency. A shown by Figure 4, Sakai embeds a removable annular second member (8) within the outer region of a carbon substrate support (2), whereby the second member may be formed of silicon carbide [0029, 0043]. As shown by the profile view of Figure 1, the second member is bounded on both the inner and outer sides by the carbon portion of the outer region, whereby these inner and outer sides may be taken as the claimed “inner periphery fixing portion” and “outer periphery fixing portion,” respectively. Sakai provides the second member to decrease the reactivity of the growth gas at the holder’s periphery, thereby stabilizing growth characteristics on the wafer itself and increasing yield [0040]. As Daigo shares this same desideratum, it would have been obvious to embed a SiC member within the outer region of the holder.
Claim 10 rejected under 35 U.S.C. 103 as being unpatentable over Daigo in view of Kashiwagi, and in further view of Mabuchi et al., US 2021/0202294.
Kashiwagi discloses a support portion height of 0.1 mm, which is below the claimed threshold of 0.5 mm. Alternative configurations are known, however. Mabuchi, for instance, bears a wafer on a holder via support portions (4) having a height between 1 and 3 mm, thereby demonstrating the viability of these values within the context of film deposition [0010-11]. One of ordinary skill would have been motivated to reconfigure the height of the support portions to 1 mm, since it is obvious to choose from a finite number of identified, predictable solutions with a reasonable expectation of success.
Conclusion
The following prior art is made of record as being pertinent to Applicant’s disclosure, yet is not formally relied upon: Chen et al., US 2020/0161100. Chen discloses a vapor phase growth apparatus in which a holder (150) is disposed, said holder comprising an annular support portion (154a) and an annular outer region (156) surrounding the inner region ([0034; Fig. 2).
THIS ACTION IS MADE FINAL. 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 extension fee 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 NATHAN K FORD whose telephone number is (571)270-1880. The examiner can normally be reached on 11-7:30 PM. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Parviz Hassanzadeh, can be reached at 571 272 1435. The fax phone number for the organization where this application or proceeding is assigned is 571 273 8300.
/N. K. F./
Examiner, Art Unit 1716
/KARLA A MOORE/ Primary Examiner, Art Unit 1716
Prosecution Insights