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 .
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “removing a conductive layer” of claim 1 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
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.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 1-7 and 9-10 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, 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, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 1, “wherein the step of irradiating with the particle beam includes implanting a particle ion into an interface region between the silicon substrate and an AlN-based thin film by irradiating with the particle beam and removing a conductive layer” (emphasis added) causes the claim to fail to comply with the written description requirement.
There is no step disclosed in the specification/drawings originally filed in which a conductive layer is removed based on the commonly accepted meaning of the term removal which would indicate to one of ordinary skill in the art that the conductive layer is physically taken off or removed.
The drawings/specification as originally filed appear to teach away from physical removal of any layers (“The method for removing the silicon substrate has a problem in that an additionally complicated subsequent process is required” at pg. 3, “it is advantageous in terms of economy because breakdown voltage characteristics of the GaN-based power device can be improved through particle beam irradiation in a simple process without an additional and complicated subsequent process for removing the silicon substrate as in the prior art” at pg. 4 and “wherein the silicon substrate is not removed after irradiating the particle beam” claim 9).
While the specification discloses “Therefore, as the particle beam is irradiated onto the silicon substrate of the GaN-based power device, particle ions can be intensively implanted and/or distributed in the interface region between the AlN-based thin film and the silicon substrate without thin film damage (defect) or 2DEG defect. Therefore, the breakdown voltage can be improved by removing the conductive layer to block the cause of leakage current” at pg. 9, it is noted that this appears to be a translation issue wherein there is no physical layer removal as the claim would indicate to one of ordinary skill in the art but rather certain unwanted effect of the conductive layer is removed or avoided. The basis for the examiner’s position can be found, e.g., in “the power device is damaged due to vertical leakage current caused by the conductive layer, so there is a limit to improving a breakdown voltage” at pg. 2 and “the method for manufacturing a GaN-based power device of the present invention can have the effect of blocking the cause of leakage current and improving the breakdown voltage by irradiating the particle beam onto the silicon substrate of the power device” at pg. 12.
Finally, as claimed, removal of the conductive layer is not supported by the specification/drawings as originally filed and this causes the claim to fail to comply with the written description requirement.
None of the dependent claims address this deficiency.
Claims 1-7 and 9-10 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, “wherein the step of irradiating with the particle beam includes implanting a particle ion into an interface region between the silicon substrate and an AlN-based thin film by irradiating with the particle beam and removing a conductive layer” (emphasis added) is indefinite.
First, it is unclear how “the step of irradiating with the particle beam” achieves both “implanting a particle ion into an interface region between the silicon substrate and an AlN-based thin film” and “removing a conductive layer”. That is, it is unclear how implanting an interface between a silicon substrate and an AlN layer can also lead to removal of a different layer (i.e., “conductive layer”) than the ones being implanted.
Second, applicant is reminded that MPEP 2173.03 states that inconsistencies between the claims and specification are a basis for indefinites rejections wherein “A claim, although clear on its face, may also be indefinite when a conflict or inconsistency between the claimed subject matter and the specification disclosure renders the scope of the claim uncertain as inconsistency with the specification disclosure or prior art teachings may make an otherwise definite claim take on an unreasonable degree of uncertainty” and in this case:
(a) there is no step disclosed in the specification/drawings in which a conductive layer is removed based on the commonly accepted meaning of the term removal which would indicate to one of ordinary skill in the art that the conductive layer is physically taken off or removed,
(b) the drawings/specification as originally filed appear to teach away from physical removal of any layers (“The method for removing the silicon substrate has a problem in that an additionally complicated subsequent process is required” at pg. 3, “it is advantageous in terms of economy because breakdown voltage characteristics of the GaN-based power device can be improved through particle beam irradiation in a simple process without an additional and complicated subsequent process for removing the silicon substrate as in the prior art” at pg. 4 and “wherein the silicon substrate is not removed after irradiating the particle beam” claim 9), and
(c) while the specification discloses “Therefore, as the particle beam is irradiated onto the silicon substrate of the GaN-based power device, particle ions can be intensively implanted and/or distributed in the interface region between the AlN-based thin film and the silicon substrate without thin film damage (defect) or 2DEG defect. Therefore, the breakdown voltage can be improved by removing the conductive layer to block the cause of leakage current” at pg. 9, it is noted that this appears to be a translation issue wherein there is no physical layer removal as the claim would indicate to one of ordinary skill in the art but rather certain unwanted effect of the conductive layer is removed or avoided. The basis for the examiner’s position can be found, e.g., in “the power device is damaged due to vertical leakage current caused by the conductive layer, so there is a limit to improving a breakdown voltage” at pg. 2 and “the method for manufacturing a GaN-based power device of the present invention can have the effect of blocking the cause of leakage current and improving the breakdown voltage by irradiating the particle beam onto the silicon substrate of the power device” at pg. 12.
Hence, the claimed removal of the conductive layer is inconsistent with the with the specification/drawings which renders the claim indefinite per MPEP 2173.03. None of the dependent claims address this deficiency and are rejected along with claim 1.
For purposes of examination and consistent with MPEP 2173.06 (“First, where the degree of uncertainty is not great, and where the claim is subject to more than one interpretation and at least one interpretation would render the claim unpatentable over the prior art, an appropriate course of action would be for the examiner to enter two rejections: (A) a rejection based on indefiniteness under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph; and (B) a rejection over the prior art based on the interpretation of the claims which renders the prior art applicable.”):
- The presence of a conductive layer is inherent to a Si/AlN interface per Applicant’s admission at pg. 2 of the specification:
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The claimed removal is inherent of an irradiating step.
Claim 10 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Regarding claim 10, “A GaN-based power device which is manufactured by the method for manufacturing a GaN-based power device of claim 1” fails to include all the limitations of the claim upon which it depends because the product can be made by a method other than that recited in the base method claim. For example, the product can be made by a method where a conductive layer is not included.
Furthermore, the claim fails to further limit the subject matter of the claim upon which it depends since “A GaN-based power device” does not appear to add any additional structural limitations to the claim.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claims 1-7 and 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (of record, KR 20120027799 A, machine translation previously provided) in view of Saxler (of record, US 7030428 B2).
Regarding claims 1, 4-7 and 9-10, Kim discloses (claim 1) a method for manufacturing a GaN-based power device, comprising a step of irradiating with a particle beam (“irradiating protons to the rear surface of the substrate”, “most protons are thus disposed at the lower portion of the interface between the substrate and the crystal layer”) onto a silicon substrate (“it may be desirable to use a silicon (Si) substrate”) of a GaN-based power device (“nitride semiconductor devices represented by gallium nitride (GaN) based compound semiconductors”, “GaN, AlGaN, or the like may be used as the crystal layer”), wherein the step of irradiating with the particle beam includes implanting a particle ion (protons) into an interface region between the silicon substrate and an AlN-based thin film (ALGaN) by irradiating with the particle beam (“irradiating protons to the rear surface of the substrate”, “most protons are thus disposed at the lower portion of the interface between the substrate and the crystal layer”, “it may be desirable to use a silicon (Si) substrate” and “GaN, AlGaN, or the like may be used as the crystal layer”), (claim 4) wherein the particle beam includes at least one selected from the group consisting of a proton beam (“irradiating protons”), a nitrogen(N) ion beam, an iron(Fe) ion beam, a carbon(C) ion beam, a helium(He) ion beam, and an argon(Ar) ion beam, (claim 5) wherein the particle beam includes a proton beam (“irradiating protons), (claim 6) wherein an energy of the particle beam is 5 to 15 MeV (“the energy of the proton may be 5 to 8 MeV”), (claim 7) wherein the silicon substrate has a thickness of 500 to 1,500 µm (“when the thickness of the silicon (Si) substrate is 500 μm”), (claim 9) wherein the silicon substrate is not removed after irradiating the particle beam (presumed inherent per “That is, through the graph comparing the source-drain currents before and after irradiating the protons on the back surface of the silicon substrate of the AlGaN / GaN High Electron Mobility Transistor (HEMT) on the silicon substrate, the result of the increase in the current in the example compared to the comparative example is The defects at the interface between GaN and the silicon substrate, and the defects in the GaN, could be interpreted as being reduced in combination with the irradiated protons”), and, (claim 10) A GaN-based power device which is manufactured by the method for manufacturing a GaN-based power device of claim 1 (MPEP 2113, “That is, through the graph comparing the source-drain currents before and after irradiating the protons on the back surface of the silicon substrate of the AlGaN / GaN High Electron Mobility Transistor (HEMT) on the silicon substrate, the result of the increase in the current in the example compared to the comparative example is The defects at the interface between GaN and the silicon substrate, and the defects in the GaN, could be interpreted as being reduced in combination with the irradiated protons”).
Kim fails to disclose “removing a conductive layer” (claim 1).
However, recall that per the 35 USC 112(b) rejection above:
- The presence of a conductive layer is inherent to a Si/AlN interface per Applicant’s admission at pg. 2 of the specification:
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The claimed removal is inherent of an irradiating step.
Saxler discloses (Fig. 1) a silicon substrate (12, “any suitable substrate…silicon”) and AlN-based thin film (14, “aluminum nitride buffer layer 14”) interface (the layers are abutting. Hence, the presence of a conductive layer is inherent per the 35 USC 112(b) rejection above).
It would have been obvious to one of ordinary skill in the art, before the effective filing date, to include the structure of Saxler in the method of Kim so as to achieve “reducing defects in the device without significantly affecting the electrode and the device. Defects present at the interface between the substrate and the compound semiconductor recombine and disappear due to recombination with the protons, thereby improving the flow of electrons and increasing the number of electrons, thereby improving the electrical characteristics of the entire device” per Kim in a device such as that of Saxler and/or so as to achieve strain balanced transistors per Saxler.
Regarding “removing a conductive layer” per the 35 USC 11(b) rejection above, the claimed removal is inherent of an irradiating step wherein Kim/Saxler meet this limitation because:
(a) A Si/AlN interface with a conductive layer is provided by the combination of Kim/Saxler for the reasons explained above, and
(b) Since Kim discloses “most protons are thus disposed at the lower portion of the interface between the substrate and the crystal layer” in the combination of Kim/Saxler, said interface is the Si/AlN with the conductive layer.
Hence, the combination of Kim/Saxler with the Si/AlN interface with a conductive layer and the irradiation at an interface thereof meets the claim per the 35 USC 112(b) rejection above.
Regarding claim 2, Kim/Saxler discloses (Fig. 1) wherein the GaN-based power device includes a structure in which the silicon substrate (12, “any suitable substrate…silicon”), the AlN-based thin film (14, “aluminum nitride buffer layer 14”), a first AlGaN-based thin film (16, “the bottom confinement layer 16 is AlGaN”), a first GaN-based thin film (18, “the channel layer 18 is GaN”), a second GaN-based thin film (15, “the channel layer 18 is GaN” and “2DEG sheet charge region 15”), and a second AlGaN-based (20, “the barrier layer 20 may be AlGaN”) thin film are sequentially stacked (Fig. 1).
Regarding claim 3, Kim/Saxler discloses wherein the AlN-based thin film (14, “aluminum nitride buffer layer 14”) includes an AlN-based (MPEP 2111, 2112 and/or 2114) nucleation layer (no structural difference), the first GaN-based thin film (18, “the channel layer 18 is GaN”) includes a GaN-based buffer layer (bottom of 18; no structural difference), the second GaN-based (15, “the channel layer 18 is GaN” and “2DEG sheet charge region 15”) thin film includes a GaN-based channel layer (top of 18; no structural difference), the first AlGaN-based thin film (16, “the bottom confinement layer 16 is AlGaN”)includes an AlGaN-based transition layer (no structural difference), and the second AlGaN-based thin film (20, “the barrier layer 20 may be AlGaN”) includes an AlGaN-based barrier layer (no structural difference).
Response to Arguments
Applicant's arguments filed 10.17.2025 have been fully considered but they are not persuasive.
The applicant alleges:
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And,
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This is not persuasive because (a) there is no HEMT claimed in claim 1 and (b) Kim discloses the crystal layer as AlN-based (“GaN, AlGaN, or the like may be used as the crystal layer”) therefore Kim discloses implanting a particle ion into an interface region between the silicon substrate and an AlN-based thin film by irradiating with the particle beam (“most protons are thus disposed at the lower portion of the interface between the substrate and the crystal layer”). Moreover, as detailed above “and removing a conductive layer” is indefinite and met by the combination of Kim/Saxler in view of MPEP 2173.06
The applicant alleges:
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And,
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This is not persuasive as Kim discloses the crystal layer as AlN-based (“GaN, AlGaN, or the like may be used as the crystal layer”) therefore Kim discloses implanting a particle ion into an interface region between the silicon substrate and an AlN-based thin film by irradiating with the particle beam (“most protons are thus disposed at the lower portion of the interface between the substrate and the crystal layer”). Moreover, as detailed above “and removing a conductive layer” is indefinite and met by the combination of Kim/Saxler in view of MPEP 2173.06.
The applicant alleges:
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This is not persuasive because as detailed above “and removing a conductive layer” is indefinite and met by the combination of Kim/Saxler in view of MPEP 2173.06.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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