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 § 112
Claim 1-6 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.
Claim 1 was amended to recite “a diameter of the similar shape is equal to or smaller than a diameter of the operating region” however see Applicant arguments page 5 “ paragraph [0026] of the present specification discloses: "The diameter of the concentric circle formed on the rear surface of the substrate 11 does not necessarily coincide with the diameter of the operating region 15 of the semiconductor light receiving element 10, that is, the contact layer 14." ” and “ Furthermore, paragraph [0021] of the present specification discloses: "On the rear surface of the light receiving element 10, a light shielding film 16 made of Ti is provided on an outside of a concentric circle having a same center as that of an operating region 15 defined by the contact layer 14." In other words, the light shielding film 16 provided outside the concentric circle does not need to coincide with the operating region 15 of the semiconductor light receiving element 10 ” and this is not sufficient support for the claim language “a diameter of the similar shape is equal to or smaller than a diameter of the operating region” because “does not necessarily coincide” can mean either larger or smaller and paragraph [0021] is actually illustrating the case of window in 16 is larger than operating region 15, thus the case of window in 16 is smaller than operating region 15 has no support in the specification paragraphs [0021] or [0026].
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hishizawa (EP 0145316 A2) in view of Tatum et al. (US 20150076647 A1) hereafter referred to as Tatum. Hsieh et al. (US 20110130008 A1) hereafter referred to as Hsieh is provided as evidence.
In regard to claim 1 Hishizawa teaches [see Fig. 16 “high speed operation of the photodiode. Since the photodiode is used in an inversely biased state, the electrostatic capacity in the pn junction obstructs its high speed operation. Reduction in area of the light receiving region (pn junction) is effective to reduce the electrostatic capacity. For this purpose, a mesa structure as shown in Figure 16 is used”] a semiconductor light-receiving element,
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including a semiconductor light absorbing layer [“A p-InP layer 32 is formed on an n-InP substrate 31 as by epitaxial growth. A narrow pn junction 33 between the substrate 31 and the layer 32 functions as the light receiving region. Further, the p-InP layer 32 and the pn junction 33 are etched off in stripes toward the upper portion of the n-InP substrate 31 on both sides to reduce the area of the light receiving region”] on a front surface of a semiconductor substrate, for receiving a signal light from [“it is impossible to pass the light from the p-layer. Instead a ring-shaped n-type AuGeNi electrode 35 is fixed to the bottom of the n-InP substrate 31. Then, the central portion of the bottom of the n-InP substrate 31 serves as a light receiving surface 36 through which the light passes. Therefore, under surface incident types shown in Figures 3, 4, 5 and 8 to 12 are demanded also for high speed operation of the photodiode”] a rear surface of the semiconductor substrate,
wherein a transmittance of an inner region [i.e. inside 35 in Fig. 16 see “ring-shaped n-type AuGeNi electrode 35 is fixed to the bottom of the n-InP substrate 31”] on the rear surface of the semiconductor substrate is higher than a transmittance of an outside of the inner region
but does not state in Fig. 16 that with a similar shape having a same center as an operating region defined in the semiconductor light absorbing layer and also “a diameter of the similar shape is equal to or smaller than a diameter of the operating region”.
See Hishizawa teaches “It is easier to get the optical fibre and the chip close to each other from the under surface” “light from the optical fibre 14 is incident on the photodiode chip 5 from its under surface”.
See Tatum teaches see paragraph 0056, 0063 “optical fiber optically coupled with a photodiode” “window layer 206 can include an anode 203, which can be an annular anode as shown. The annular anode 203 can define an optical aperture 205 by an aperture 207 of the annular anode 203” “the N-type layer 210 can be dimensioned such that it is only present in the optical aperture 205. That is, the sides of the N-type layer 210 can be aligned with the sides of the optical aperture 205, and thereby be aligned with the sides of the annular anode 203 that define the aperture 207. The N-type layer 210 can be only present in the optical aperture 205 so that it does not extend laterally past the sides of the optical aperture (e.g., the N-type layer 210 is not below the body of the annular anode 203, but only below the aperture 207 of the annular anode 203)” “N-type 210 layer can be considered the active layer”. Thus Tatum matches the junction to the optical aperture and it can be annular. See “For any given APD design it can be desirable to keep the area of the window layer 206 after mesa etch to a minimum to realize the minimum junction capacitance for the active area of that particular design. These parameters can be used in any embodiment of the avalanche photodiode described herein”, thus Tatum teaches the “similar shape having a same center” and also the “equal to” limitation in the claim amendment.
Thus, it 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 to modify Hishizawa to include with a similar shape [such as circular like a fiber] having a same center as an operating region defined in the semiconductor light absorbing layer and also “a diameter of the similar shape is equal to or smaller than a diameter of the operating region”.
Thus it would be obvious to combine the references to arrive at the claimed invention.
The motivation is to get lower area of light receiving region and best absorption of light and also reduced junction capacitance and good performance.
In regard to claim 2 Hishizawa and Tatum as combined teaches wherein a light shielding film [see Fig. 16 “ring-shaped n-type AuGeNi electrode 35”] is formed on the outside of the inner region.
In regard to claim 3 Hishizawa and Tatum as combined does not teach wherein an anti-reflection film with the similar shape having the same center as the operating region is formed.
See Tatum teaches see paragraph 0054 “receiver 104 can include the photodiode 106 having an anti-reflection layer 107 on the entrance that receives light from the fiber port 111. The anti-reflection layer 107 can be a dielectric layer on the surface of the photodiode 106, and it can be configured to inhibit or minimize front surface reflection so that light is not reflected back into the fiber and transmitted back to the light emitter (e.g., laser diode, VCSEL, etc.) that is transmitting light to the photodiode 106”.
Thus, it 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 to modify Hishizawa to include wherein an anti-reflection film with the similar shape having the same center as the operating region is formed.
Thus it would be obvious to combine the references to arrive at the claimed invention.
The motivation is to best couple light from the fiber into the photodiode for best performance.
In regard to claim 4 Hishizawa and Tatum as combined in claim 3 teaches wherein an anti-reflection film is formed on the rear surface [see combination claim 3] of the semiconductor substrate, and a ring-shaped light-shielding film is formed on a concentric circle [see combination claim 1] having the same center as the operating region on the outside of the inner region.
In regard to claim 5 Hishizawa and Tatum as combined in claim 3 teaches [see Tatum “anti-reflection layer 107 can be a dielectric layer”] wherein the anti-reflection film is formed of a dielectric film but does not state multilayer.
However a person of ordinary skill in the art knows the design of anti-reflection coating, see evidence Hsieh see paragraph 0018 “As known by persons of ordinary skills in the art, the anti-reflection coating layer 222 may be a single or multi-layer anti-reflection coating layers”.
Thus, it 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 to modify Hishizawa to include multilayer.
Thus it would be obvious to combine the references to arrive at the claimed invention.
The motivation is that multilayer is a standard type of anti-reflection coating known to a person of ordinary skill in the art, and known to give excellent results to input light.
In regard to claim 6 Hishizawa and Tatum as combined teaches wherein the similar shape having the same center as that of the operating region is a [see combination claim 1 circular, like fiber] circular shape or an elliptical shape.
Response to Arguments
Applicant's arguments filed 10/1/2025 have been fully considered but they are not persuasive.
On page 6 the Applicant argues “In contrast to Hishizawa, paragraph [0026] of the present specification discloses: "The diameter of the concentric circle formed on the rear surface of the substrate 11 does not necessarily coincide with the diameter of the operating region 15 of the semiconductor light receiving element 10, that is, the contact layer 14."
Furthermore, paragraph [0021] of the present specification discloses: "On the rear surface of the light receiving element 10, a light shielding film 16 made of Ti is provided on an outside of a concentric circle having a same center as that of an operating region 15 defined by the contact layer 14."
In other words, the light shielding film 16 provided outside the concentric circle does not need to coincide with the operating region 15 of the semiconductor light receiving element 10.
Accordingly, amending claim 1 to recite that "a diameter of the similar shape is equal to or smaller than a diameter of the operating region" explicitly introduces a feature that is neither disclosed nor suggested in the prior art.
This configuration reduces the likelihood of incident light from the rear surface being irradiated onto areas outside the operating region 15, thereby providing advantageous effects as a light-receiving element. For example, because all photo-carriers are generated within and drift under the influence of the electric field formed in the operating region 15, the semiconductor light receiving element achieves the desired high-speed operation.
In contrast, the PN junction 33 is smaller than the light-receiving surface 36 in Hishizawa. As a consequence, this structure likely results in light from the rear surface being irradiated onto areas outside of the operating region in Hishizawa, which is contrary to the elements of claim 1.
As a result, claim 1 includes elements that are not disclosed or suggested in Hishizawa and/or Tatum.
For at least these reasons, it is respectfully submitted that claim 1 is patentable over the cited references”.
The Examiner responds that see the 112 rejection, the amendment appears to be new matter, see also the 103 rejection, see that the “equal to” limitation in the claim amendment is shown to be obvious by secondary reference Tatum.
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.
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/SITARAMARAO S YECHURI/ Primary Examiner, Art Unit 2893