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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 3.17.206 has been entered.
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 “wherein the irradiating with the particle beam includes implanting particle ions intensively into an interface region between the silicon substrate and an AlN-based thin film by irradiating with the particle beam such that a conductive layer is removed” (emphasis added; conductive layer removal not shown) 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 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(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 irradiating with the particle beam includes implanting particle ions intensively into an interface region between the silicon substrate and an AlN-based thin film by irradiating with the particle beam such that a conductive layer is removed” is indefinite.
First, “implanting particle ions intensively…” (emphasis added) is indefinite because “intensively” is a relative term which renders the claim indefinite. The term is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. In the instant case, there is no indication to one of ordinary skill in the art as to what the scope of “intensively” is or isn’t; e.g., when is an implanting considered intensively performed vs non-intensively performed? And/or, how is one of ordinary skill in the art supposed to determined when “intensively” implanting has been reached or not? The term “intensively” therefore obscures the scope of the claim and renders it indefinite. None of the dependent claims addresses this deficiency.
Second, it is unclear how “the irradiating with the particle beam” achieves both “implanting particle ions intensively into an interface region between the silicon substrate and an AlN-based thin film” and “such that a conductive layer is removed”. 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 when the claim fails to provide information as to the location of said conductive layer in relation to the silicon substrate and the AlN-based thin film. While the specification discloses “a high-concentration conductive layer is formed between an interface between the AIN thin film and the silicon substrate” the examiner notes that although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). The examiner suggests clarifying in the claim that said conductive layer is formed at the claimed interface region. None of the dependent claims addresses this deficiency.
Third, “implanting particle ions intensively into an interface region between the silicon substrate and an AlN-based thin film by irradiating with the particle beam such that a conductive layer is removed” (emphasis added) is indefinite because it is unclear what is meant by “removed”. The specification discloses “a high-concentration conductive layer is formed between an interface between the AIN thin film and the silicon substrate” and “the breakdown voltage can be improved by removing the conductive layer to block the cause of leakage current” but it is unclear what the scope of “removed” as recited in the claim should be; is the conductive layer physically removed (as in etched or ablated)? Or is it transformed into another layer? Or is the Si-AlN interface restored to not include said conductive layer? The scope of the claim is obscured by the current language and therefore the claim is rendered indefinite. None of the dependent claims addresses this deficiency.
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.”):
- Any implanting is considered to meet “intensively”.
- The presence of a conductive layer is inherent to a Si/AlN-based film interface per Applicant’s admission at pg. 2 of the specification, and
The claimed removal is inherent to 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.
MPEP 608.01(n)-III states “Similarly, if claim 1 recites a method of making a product, a claim for a product made by the method of claim 1 could be a proper dependent claim. On the other hand, if claim 1 recites a method of making a specified product, a claim to the product set forth in claim 1 would not be a proper dependent claim if the product can be made by a method other than that recited in the base method claim, and thus, does not include the limitations of the base claim” wherein as stated above the claim 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.
The examiner suggests canceling the claim.
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 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 irradiating with the particle beam includes implanting particle ions (protons) intensively (“the energy of the proton may be 5 to 8 MeV” and “most protons are thus disposed at the lower portion of the interface between the substrate and the crystal layer”) 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 “such that a conductive layer is removed” (claim 1).
However, recall that per the 35 USC 112(b) rejection above:
- Any implanting is considered to meet “intensively”.
- The presence of a conductive layer is inherent to a Si/AlN-based film interface per Applicant’s admission at pg. 2 of the specification, and
- The claimed removal is inherent to 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 “such that a conductive layer is removed” per the 35 USC 112(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 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, which 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 3.17.2026 have been fully considered but they are not persuasive.
The applicant alleges:
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212
654
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This is not persuasive because 37 C.F.R. 1.83 (a) states “The drawing in a nonprovisional application must show every feature of the invention specified in the claims” and/or MPEP 608.02(d) states “Any structural detail that is of sufficient importance to be described should be shown in the drawing” wherein the claimed conductive layer removal via the claimed irradiating is a critical aspect of the invention (“The present invention is to solve the above problems, and is to improve breakdown voltage characteristics by irradiating a particle beam onto a silicon substrate of a GaN-based power device using a particle beam irradiation technology to remove the cause of leakage current without damaging the thin film of the GaN-based power device” and “the breakdown voltage can be improved by removing the conductive layer to block the cause of leakage current”) and not a routine or conventional step.
Hence, drawings showing the claimed removal are necessary and no new matter should be entered.
The applicant alleges:
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252
652
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This is not persuasive because while the specification discloses “a high-concentration conductive layer is formed between an interface between the AIN thin film and the silicon substrate” the examiner notes that although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). The examiner suggests clarifying in the claim that said conductive layer is formed at the claimed interface region in the claim.
The applicant alleges:
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90
664
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and,
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48
680
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The examiner has reconsidered this ground of rejection and clarified above that while the specification discloses “a high-concentration conductive layer is formed between an interface between the AIN thin film and the silicon substrate” and “the breakdown voltage can be improved by removing the conductive layer to block the cause of leakage current”, it is unclear what the scope of “removed” as recited in the claim should be; is the conductive layer physically removed (as in etched or ablated)? Or is it transformed into another layer? Or is the Si-AlN interface restored to not include said conductive layer? The scope of the claim is obscured by the current language and therefore the claim is rendered indefinite.
The applicant alleges:
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270
670
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Greyscale
This is not persuasive because MPEP 608.01(n)-III states “Similarly, if claim 1 recites a method of making a product, a claim for a product made by the method of claim 1 could be a proper dependent claim. On the other hand, if claim 1 recites a method of making a specified product, a claim to the product set forth in claim 1 would not be a proper dependent claim if the product can be made by a method other than that recited in the base method claim, and thus, does not include the limitations of the base claim” wherein as stated above the claim 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.
The applicant alleges:
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198
646
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and,
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120
662
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This is not found persuasive because (a) intensively is indefinite as addressed above and (b) Kim discloses “The method for improving the electrical characteristics of a heterojunction structure semiconductor device according to the present invention is to irradiate high energy protons on the back surface of the substrate to reduce defects generated during semiconductor device growth, so that defects are combined with or affected by the protons. As a result, defects are reduced, and as a result, the electrical characteristics of the semiconductor device are improved” (emphasis added) and “Specifically, the principle of controlling the energy of protons according to the type and thickness of the substrate is used to stop most of the protons at the bottom of the water at the interface between the substrate and the crystal layer. At this time, some protons penetrate the interface between the substrate and the crystal layer. Some of these protons combine with defects on the interface and result in an improvement in electrical characteristics of the semiconductor device” (emphasis added) wherein Kim discloses implanting of particle ions into an interface region as claimed.
In addition, it is noted that “interface region” is a term which per MPEP 2111 includes not only an interface between two layers but also may include a portion of each of said two layers abutting said interface.
The applicant alleges:
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394
660
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Greyscale
This is not persuasive because as addressed above, regarding “such that a conductive layer is removed” per the 35 USC 112(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.
Conclusion
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Andres Munoz/Primary Examiner, Art Unit 2818
Prosecution Insights