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 .
Election/Restrictions
Applicant’s election without traverse of Group I in the reply filed on April 13, 2026, is acknowledged.
Claims 27 and 30 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on April 13, 2026.
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
The following title is suggested:
Method of making an optoelectronic device by depositing first and second non-porous layers of monocrystalline Ge onto a porous layer of a monocrystalline Ge substrate
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.
Claims 2-4, 6-8, 11-12, 14-17, and 21-22 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 pre-AIA the applicant regards as the invention.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 2 recites the broad recitation of a first temperature “below 400 °C,” and the claim also recites that the first temperature is “preferably between 150 and 300 °C” which is the narrower statement of the range/limitation. Similarly, claim 3 recites the broad recitation of a “low temperature precursor,” and the claim also recites that the precursor is “preferably digermane or germane” while claim 6 recites the broad recitation of a “high temperature precursor,” and the claim also recites that the precursor is “preferably germanium tetrachloride” and claim 21 recites the broad recitation of a temperature “between 100 and 400 °C,” and the claim also recites that the temperature is “preferably between 200 and 300 °C” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
The terms “low temperature precursor” in claim 3 and “high temperature precursor” in claim 6 are relative terms which renders the claims indefinite. The terms “low temperature” and “high temperature” are not defined by the claims, 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. Since neither the specification nor the claims as filed clearly define the temperature range that may be considered as a ‘low temperature” or a “high temperature,” its recitation in claims 3 and 6, respectively, is therefore considered to be indefinite.
Claims 3-4, 7-8, 12, 14, 17, and 21-22 recite the limitation "said first non-porous layer” or “the first non-porous layer” in l. 1, l. 2, and/or l. 3. There is insufficient antecedent basis for this limitation in the claims. It is assumed applicants intended to recite the “first non-porous layer of monocrystalline germanium.”
Claims 6-8, 11-12, 15, and 22 recite the limitation "said second non-porous layer” or “the second non-porous layer” in l. 1, l. 2, and/or l. 3. There is insufficient antecedent basis for this limitation in the claims. It is assumed applicants intended to recite the “second non-porous layer of monocrystalline germanium.”
Claim 14 recites forming “a porous external layer of monocrystalline germanium (Ge) in a non-porous substrate of monocrystalline germanium” in ll. 1-3. It is unclear whether the porous external layer and non-porous substrate are the same as or different from the porous layer and monocrystalline Ge substrate recited in claim 1. It is assumed applicants are attempting to recite that monocrystalline Ge substrate in claim 1 is non-porous and the “porous layer” is formed on the monocrystalline Ge substrate.
Claim 15 recites the limitation "the first layer” and “the second layer” in l. 3. There is insufficient antecedent basis for this limitation in the claim.
Claim 16 recites the limitation "said porous layers” in l. 1, “the first layer” in l. 2, and “said first layer” in l. 4. There is insufficient antecedent basis for this limitation in the claim. It is noted that there appears to be only one porous layer in claim 1, so it is unclear how or where a plurality of porous layers emerge in claim 15.
Claim 22 recites the limitation "the substrate” in l. 1 and l. 2. There is insufficient antecedent basis for this limitation in the claim. It is assumed applicants intended to recite “the monocrystalline Ge substrate.”
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-8, 11-12, and 14-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Appl. Publ. No. 2006/0166468 to Yonehara, et al. (hereinafter “Yonehara”) in view of Chinese Patent Appl. Publ. No. CN 102383192 A to Wei, et al. (“Wei”).
Regarding claim 1, Yonehara teaches a method of making a component (see the Abstract, Figs. 1-24, and entire reference which teach a method of producing a component comprised of, inter alia, a Ge substrate (101), porous Ge layers (102) and (103), and an epitaxial Ge layer (104)), said method comprising the steps of:
at a first temperature, depositing a first non-porous layer of monocrystalline germanium (Ge) onto a porous layer of a monocrystalline Ge substrate (see Figs. 10-11 and ¶¶[0049]-[0051] which teach depositing a single crystal Ge layer (104) onto a porous layer (102) and (103) formed on a Ge substrate (101) at a first temperature which necessarily involves depositing at least a first monolayer of monocrystalline Ge);
at a second temperature, depositing a second non-porous layer of monocrystalline Ge onto said first non-porous layer (see Figs. 10-11 and ¶¶[0049]-[0051] which teach the deposition of a single crystal Ge layer (104) which, in providing the claim with its broadest reasonable interpretation, necessarily involves the deposition of a second and subsequent monolayers of monocrystalline Ge at a second temperature as part of the process of forming the single crystal Ge layer (104)); and
detaching the first non-porous layer, together with the second non-porous layer, from the monocrystalline Ge substrate (see Fig. 13 and ¶[0055] which teach that the single crystal Ge layer (104) is detached from the substrate (101)).
Yonehara does not teach that the second non-porous layer of monocrystalline Ge is deposited at a second temperature which his higher than the first temperature. However, in Figs. 2A-D and ¶¶[0019]-[0030] as well as elsewhere throughout the entire reference Wei teaches an analogous method of depositing a high quality epitaxial Ge layer onto a substrate (100). In order to increase the quality of the final single crystal Ge layer, the process involves initially growing a first epitaxial Ge layer (110) at a lower first temperature of 400 °C as shown in Fig. 2C followed by the growth of a second epitaxial Ge layer (120) at a second temperature of 650 °C in Fig. 2D. The initial low temperature Ge layer facilitates two-dimensional growth with complete relaxation due to the formation of more defects while the second high temperature Ge layer reduces the defect density and produces a highly epitaxial layer at a higher growth speed. Thus, a PHOSITA prior to the effective filing date of the invention would be motivated to deposit the Ge layer (104) in the method of Yonehara by depositing an initial low-temperature Ge layer followed by a second higher temperature Ge layer in order to reduce the defect density arising from growth on the porous Ge layer and thereby produce a higher quality single crystal Ge film. The combination of prior art elements according to known methods to yield predictable results has been held to support a prima facie determination of obviousness. All the claimed elements are known in the prior art and one skilled in the art could combine the elements as claimed by known methods with no change in their respective functions, with the combination yielding nothing more than predictable results to one of ordinary skill in the art. KSR International Co. v. Teleflex Inc., 550 U.S. 398, __, 82 USPQ2d 1385, 1395 (2007). See also, MPEP 2143(A).
Regarding claim 2, Yonehara does not teach that the first temperature is below 400 °C, preferably between 150 and 300 °C. However, in at least ¶[0025] Wei teaches that the first Ge layer (110) is deposited at a temperature 200 to 900 °C and preferably is 400 °C which is sufficiently close to the claimed upper limit that it would be reasonably expected to yield the same properties. A prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). See also MPEP 2144.05(I). Moreover, it would have been within the capabilities of a PHOSITA prior to the effective filing date of the invention to utilize routine experimentation to determine the optimal first epitaxial growth temperature, including within the claimed range of less than 400 °C, that optimizes the reduction of lattice stresses and defects arising from initial growth on the porous Ge layer in the method of Yonehara.
Regarding claim 3, Yonehara teaches that said first non-porous layer is deposited using a low temperature precursor, preferably digermane or germane (See ¶[0051] which teaches that GeH4 (i.e., germane) or GeCl4 may be used to form the single crystal Ge layer (104); accordingly, the use of a Ge-containing precursor such as GeH4 or GeCl4 to deposit the first and/or second epitaxial Ge layer would involve nothing more than the use of a known material according to its intended use. Use of a known material based on its suitability for its intended use has been held to support a prima facie determination of obviousness. Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1947). See also MPEP 2144.07.).
Regarding claim 4, Yonehara does not teach that said first non-porous layer is deposited at a thickness between 10 and 100 nm. However, in ¶[0025] Wei teaches that the first epitaxial Ge layer may have a thickness of between 10 nm to a few microns. Accordingly, it would have been within the capabilities of a PHOSITA prior to the effective filing date of the invention to utilize routine experimentation to determine the optimal thickness of the first non-porous Ge layer, including within the claimed range of between 10 and 100 nm, optimizes the reduction of lattice stresses and defects arising from initial growth on the porous Ge layer in the method of Yonehara.
Regarding claim 5, Yonehara does not teach that the second temperature is above 400 °C. However, in ¶[0027] Wei teaches that the second epitaxial Ge layer (120) is deposited at a temperature of 200 to 900 °C and preferably is 650 °C, which falls within the claimed range. Accordingly, a PHOSITA prior to the effective filing date of the invention would be motivated to deposit the second epitaxial Ge layer (120) at a temperature of 650 °C in order to form a final and higher quality monocrystalline Ge layer that is substantially free of defects and internal stresses.
Regarding claim 6, Yonehara teaches that said second non-porous layer is deposited using a high temperature precursor, preferably germanium tetrachloride (GeCl4) (See ¶[0051] which teaches that GeH4 (i.e., germane) or GeCl4 may be used to form the single crystal Ge layer (104); accordingly, the use of a Ge-containing precursor such as GeH4 or GeCl4 to deposit the first and/or second epitaxial Ge layer would involve nothing more than the use of a known material according to its intended use. Use of a known material based on its suitability for its intended use has been held to support a prima facie determination of obviousness. Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1947). See also MPEP 2144.07.).
Regarding claim 7, Yonehara does not teach that that said first non-porous layer and said second non-porous layer have a combined thickness between 1 and 600 mm. However, in at least ¶[0025] and ¶[0027] Wei teaches that the thickness of the first Ge layer (110) and second Ge layer (120) may be up to a few microns which necessarily means that the total thickness of the first (110) and second (120) epitaxial Ge layer sis at least 1 micron as claimed. Moreover, it would have been within the capabilities of a PHOSITA prior to the effective filing date of the invention to utilize routine experimentation to determine the optimal total thickness of the single crystal Ge layer (104) in the method of Yonehara necessary to produce the desired materials properties including, for example, the desired defect density, surface roughness, and strain state.
Regarding claim 8, Yonehara does not teach that said second non-porous layer has a thickness of at least an order of magnitude greater than a thickness of the first non-porous layer. However, in ¶[0025] Wei teaches that the first Ge layer (110) may have a thickness as small as 1 nm while ¶[0027] teaches that the second Ge layer (120) may have a thickness of 1 mm which is more than an order of magnitude greater than the thickness of the first Ge layer (110). Moreover, it would have been within the capabilities of a PHOSITA prior to the effective filing date of the invention to utilize routine experimentation to determine the optimal relative thickness values for the first (110) and second (120) epitaxial Ge layers in the method of Wei necessary to produce a final monocrystalline Ge surface that has he desired materials properties including, for example, the desired defect density, surface roughness, and strain state.
Regarding claim 11, Yonehara teaches the step of depositing at least one additional layer onto said second non-porous layer, wherein said at least one additional layer includes one or more layers of Ill-V semiconductor crystalline materials and said component is a component of an opto-electrical device (see at least Figs. 11-12 and ¶¶[0051]-[0054] which teach the deposition of a GaAs layer (105) onto the epitaxial Ge layer (104) as part of a process for forming an optoelectronic device thereupon).
Regarding claim 12, Yonehara does not teach the step of annealing the first non- porous layer and the substrate at a temperature above 400 °C prior to depositing said second non-porous layer. However, in ¶[0026] Wei teaches that the first Ge layer (110) may be annealed at a temperature of 550 to 900 °C. Accordingly, a PHOSITA prior to the effective filing date of the invention would be motivated to anneal the first monocrystalline Ge layer (110) at a temperature of greater than 400 °C in a H2 or other inert gas environment order to remove surface oxides and improver the crystalline quality of the initial Ge layer.
Regarding claim 14, Yonehara teaches the step of forming a porous external layer of monocrystalline germanium (Ge) in a non-porous substrate of monocrystalline germanium prior to depositing said first non-porous layer (see Fig. 10 and ¶¶[0049]-[0051] which teach forming a porous Ge layer (102) and (103) on a single crystal Ge substrate (101)).
Regarding claim 15, Yonehara teaches that said first non-porous layer, together with the second non-porous layer, is detached from said porous layer of said monocrystalline Ge substrate by pulling the first layer together with the second layer off from the substrate, including yielding of said porous layer to mechanical stress imparted by the pulling. (see Fig. 13 and ¶¶[0055]-[0057] which teach that the epitaxial Ge layer (104) is detached from the substrate (101) by detachment along the porous Ge layers (102) and (103) as a result of the application of a high pressure water jet which necessarily produces mechanical stresses that pull the substrate (101) from the epitaxial Ge layer; moreover, a PHOSITA prior to the effective filing date of the invention would be motivated to apply a pulling force during the separation to promote detachment).
Regarding claim 16, Yonehara teaches that said yielding of said porous layers includes breaking a plurality of pillars extending between the first layer and a non-porous portion of the monocrystalline Ge substrate, a plurality of protrusions including a portion of said plurality of pillars remaining on an exposed surface of said first layer subsequently to said detaching (see Fig. 13 and ¶¶[0055]-[0057] which teach that the epitaxial Ge layer (104) is detached from the substrate (101) by detachment along the porous Ge layers (102) and (103) as a result of the application of a high pressure water jet which will necessarily break any “pillars” or “protrusions” that are present between individual pores within the porous Ge layers (102) and (103) that connect the underlying substrate (101) to the epitaxial Ge layer (104) such that individual broken “pillars” or “protrusions” remain on the surfaces of the substrate (101) and/or epitaxial Ge layer (104) after detachment).
Regarding claim 17, Yonehara teaches the step of chemically cleaning an exposed face of said porous layer, prior to depositing said first non-porous layer (see ¶[0051] which teaches performing a high temperature hydrogen annealing step which necessarily has a reduction reaction at the surface of the porous Ge layer (102) and (103) that removes surface oxides).
Regarding claim 18, Yonehara teaches that said chemically cleaning includes replacing oxidation on said exposed surface by halogen surface terminations (see ¶[0051] which teaches performing a high temperature hydrogen annealing step which incluses the use of GeCl4 as the raw material gas which necessarily has a reduction reaction at the surface of the porous Ge layer (102) and (103) that removes surface oxides and leaves at least a portion of the surface terminated with halogen atoms due to the presence of Cl in the precursor gas).
Claim 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yonehara in view of Wei and further in view of U.S. Patent No. 6,537,370 to Hernandez, et al. (“Hernandez”).
Regarding claim 19, Yonehara and Wei do not teach that said chemical cleaning includes applying a halogen-solvent solution to the exposed surface. However, in col. 6, l. 51 to col. 8, l. 43 Hernandez teaches an analogous method of depositing high quality epitaxial Ge layers onto a substrate from one or more gaseous precursors. In col. 4, ll. 55-64 and col. 5, ll. 29-42 Hernandez further teaches that an optimal cleaning process removes metallic and organic residues by oxidizing the surface and then dissolving the oxide layer. A specific example of preparing the surface of Ge is disclosed in col. 8, ll. 11-43 which teaches a process in which the surface is cleaned by immersion in ozonated water followed by diluted HF and then drying under IPA and finally performing a stabilization annealing treatment. Thus, a PHOSITA prior to the effective filing date of the invention would look to the teachings of Hernandez and would be motivated to perform a cleaning step on the porous Ge layers (102) and (103) produced in the method of Yonehara prior to depositing the epitaxial layers of Wei using a process which includes immersion in a halogen-solvent such as HF in order to remove the surface oxide and provide a H-terminated surface that is more suitable for the growth of a high quality epitaxial layer thereupon.
Claims 21-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yonehara in view of Wei and further in view of Hernandez and still further in view of a publication to Beattie, et al. entitled “Tunable conductivity in mesoporous germanium,” Nanotechnology, Vol. 29, p. 215701 (2018) (“Beattie”).
Regarding claim 21, Yonehara and Wei do not teach performing a low temperature annealing of the monocrystalline Ge substrate subsequently to said chemically cleaning and prior to depositing the first non-porous layer. However, as noted supra with respect to the rejection of claim 19, in col. 6, l. 51 to col. 8, l. 43 Hernandez teaches an analogous method of depositing high quality epitaxial Ge layers onto a substrate from one or more gaseous precursors. A specific example of preparing the surface of Ge is disclosed in col. 8, ll. 11-43 which teaches a process in which the surface is cleaned by immersion in ozonated water followed by diluted HF and then drying under IPA and finally performing a stabilization annealing treatment. The annealing treatment has the effect of, inter alia, reducing the surface roughness of the epitaxially deposited Ge layer. Thus, a PHOSITA prior to the effective filing date of the invention would look to the teachings of Hernandez and would be motivated to perform a cleaning process on the porous Ge layers (102) and (103) produced in the method of Yonehara which is followed by an annealing step that is performed prior to depositing the epitaxial layers of Wei in order to produce a surface that is more suitable for the growth of a high quality epitaxial layer thereupon.
Yonehara, Wei, and Hernandez do not teach that the low temperature annealing is performed at a temperature of between 100 and 400 °C, preferably between 200 and 300°C. However, in Figs. 1-2, the Method section at pp. 2-3, and the Section 3.1 of the Results section at p. 3 Beattie teaches an analogous method of producing a porous layer on the surface of a Ge substrate by electrochemical etching. In Figs. 1(a)-(d) Beattie discloses the effect of annealing at a temperature ranging from 350 to 650 °C on the size and density of pores produced within the surface of the Ge substrate. The results show that the size of the pores and the resulting Ge nanocrystallites is proportional to the annealing temperature with a temperature of 350 and 400 °C producing smaller and more evenly distributed pores and nanocrystallites. In this regard the annealing temperature is considered to be a result-effective variable, i.e., a variable which achieves a recognized result. See, e.g., In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977). See also MPEP 2144.05(II)(B). It therefore would have been within the capabilities of a PHOSITA prior to the effective filing date of the invention to utilize routine experimentation to determine the optimal annealing temperature, including within the claimed range of between 100 and 400 °C, necessary to produce a pore size and distribution which supports the formation of a higher quality epitaxial Ge layer thereupon.
Regarding claim 22, Yonehara does not explicitly teach moving the substrate into an oven prior to said low temperature annealing, and maintaining the substrate in the oven during the steps of performing deposition of the first non-porous layer and of performing deposition of the second non-porous layer. However, since the high temperature annealing and deposition process performed in at least Fig. 11 and ¶[0051] of Yonehara is performed at elevated temperatures using a CVD process this would necessarily entail the use of a growth chamber or oven which has one or more substrate heaters capable of heating the Ge substrate to the desired temperature. Accordingly, a PHOSITA prior to the effective filing date of the invention would be motivated to perform the annealing process of Hernandez and Beattie in the same “oven” that is used to deposit the epitaxial Ge layers in the method of Yonehara in order to streamline and increase the efficiency of the process. Moreover, use of the CVD growth chamber of Yonehara to perform the annealing process of Hernandez and Beattie would involve nothing more than the use of a known device according to its intended use which therefore supports a showing of prima facie obviousness.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. In Fig. 3 and associated descriptive text Japanese Patent Appl. Publ. No. JP 2003-282464 A to Yukimune Watanabe teaches a method of forming first (6) and second porous layers on a substrate (1) for the deposition of a Ge recrystallization layer (8) and a Ge epitaxial layer (4) thereupon.
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/KENNETH A BRATLAND JR/Primary Examiner, Art Unit 1714
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