DETAILED ACTION
This Office Action is in response to Amendment filed June 3, 2026.
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
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.
Claims 24-26 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 claims contain 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 inventors, at the time the application was filed, had possession of the claimed invention.
(1) Regarding claim 24, Applicants did not originally disclose “a ring-shaped member prepared in advance on the single crystal silicon layer before growing an AlN film” recited on lines 9-10, because (a) Applicants did not use the words “before” and “advance” in the original disclosure, and (b) Applicants originally disclosed in paragraphs [0045] and [0059] of current application “preparing at least a supporting substrate and a single crystal silicon substrate for laminating”, which are the only two sentences where Applicants used the verb to “prepare” in the original disclosure, but did not originally disclose when the claimed ring-shaped member is prepared, not to mention the claimed ring-shaped member having been prepared in advance.
(2) Further regarding claim 24, Applicants did not originally disclose “a ring-shaped member prepared in advance on the single crystal silicon layer before growing an AlN film” recited on lines 9-10, because (a) the amended claim 24 is much broader than the original disclosure even if arguendo Applicants originally disclosed “a ring-shaped member prepared in advance” at a certain point in time “on the single crystal silicon layer before growing an AlN film” since (i) as discussed above, Applicants did not use the word “advance” in the original disclosure, and (ii) therefore, the phrase “in advance” would be much broader than the original disclosure even if arguendo Applicants originally disclosed “a ring-shaped member prepared in advance” at a certain point in time “on the single crystal silicon layer before growing an AlN film”, (b) in other words, Applicants basically claim in the amended claim 24 four different steps of (i) “a ring-shaped member prepared in advance” or before the step of “preparing at least a supporting substrate and a single crystal silicon substrate for laminating” recited on lines 3-4 “on the single crystal silicon layer before growing an AlN film”, (ii) “a ring-shaped member prepared in advance” or between the steps of “preparing at least a supporting substrate and a single crystal silicon substrate for laminating” recited on lines 3-4 and “bonding the supporting substrate and the single crystal silicon substrate for laminating via a silicon oxide layer” recited on lines 5-6 “on the single crystal silicon layer before growing an AlN film”, (iii) “a ring-shaped member prepared in advance” or between the steps of “bonding the supporting substrate and the single crystal silicon substrate for laminating via a silicon oxide layer” recited on line 5-6 and “thinning the single crystal silicon substrate for laminating to be processed into a single crystal silicon layer” recited on lines 7-8 “on the single crystal silicon layer before growing an AlN film”, or (iv) “a ring-shaped member prepared in advance” or between the steps of “thinning the single crystal silicon substrate for laminating to be processed into a single crystal silicon layer” recited on lines 7-8 and “placing a ring-shaped member” recited on line 9 “on the single crystal silicon layer before growing an AlN film”, (c) however, Applicants did not originally disclose all of the above-listed four different steps, not to mention any specific single step out of the above-listed four different steps, and (d) therefore, the amended claim 24 fails to comply with the written description requirement since at least the amended claim 24 is much broader than the original disclosure.
Claims 25 and 26 depend on claim 24, and therefore, claims 25 and 26 also fail to comply with the written description requirement.
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 24-26 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.
(1) Regarding claim 24, it is not clear what the phrase “in advance” in the limitation “a ring-shaped member prepared in advance on the single crystal silicon layer before growing an AlN film” recited on lines 9-10 suggests, because (a) as discussed above under 35 USC 112(a) rejections, Applicants did not originally use the word “advance”, and any specific timing of the phrase “in advance”, and (b) therefore, it is not clear what the phrase “in advance” suggests, and at what point in time the claimed ring-shaped member is prepared.
(2) Also regarding claim 24, if arguendo the claimed ring-shaped member is prepared in advance as recited on line 9, it is not clear how the claimed ring-shaped member is prepared, and how it is placed on the single crystal silicon layer, because (a) Applicants claim that the claimed ring-shaped member is made of SiC in the new claim 26, (b) therefore, it is not clear how the SiC ring-shaped member is prepared since Applicants did not originally disclose how to form a ring-shaped or donut-shaped member from a very hard material of SiC, (c) furthermore, in view of Fig. 2 of current application, the claimed ring-shaped member 6 appears to have an inner portion whose thickness is smaller than an outer portion, and it is not clear how the SiC ring-shaped member having multiple thicknesses can be formed from a very hard material of SiC, and (d) finally, it is not clear whether the claimed ring-shaped member is placed only on a top surface of the single crystal silicon layer, or the claimed ring-shaped member should be in contact with both the top and side surface of the single crystal silicon layer as illustrated in Fig. 2 of current application, depending on which interpretation it should be, the shape of the claimed ring-shaped member and difficulty of preparing it and placing it on the single crystal silicon layer would vary.
(3) Further regarding claim 24, if the claimed ring-shaped member 6 in Fig. 2 of current application has an inner portion whose thickness is smaller than an outer portion as discussed above, it is not clear whether each “ring-shaped member prepared in advance” should be formed in a custom tailored manner, because (a) as recited in the new claim 26, the claimed ring-shaped member is made of SiC, which is a hard material, (b) therefore, unless the claimed supporting substrate, silicon oxide layer and single crystal silicon layer are of an exactly the same size, and are perfectly aligned, one would not be able to use a generic ring-shaped member due to the hardness of the material of the ring-shaped member, and (c) therefore, it is not clear whether the claimed ring-shaped member is custom tailored to an individual composite structure of the supporting substrate, the silicon oxide layer and the single crystal silicon layer, which would require measurement of the sizes of the supporting substrate, the silicon oxide layer and the single crystal silicon layer in advance before preparation of the claimed ring-shaped member, and/or molding of the supporting substrate, the silicon oxide layer and the single crystal silicon layer.
(4) Still further regarding claim 24, it is not clear whether “an AlN film” recited on line 10 is the same with or different from “an AlN film” recited on line 12.
Claims 25 and 26 depend on claim 24, and therefore, claims 25 and 26 are also indefinite.
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 24 and 25, as best understood, are rejected under 35 U.S.C. 103 as being unpatentable over Ostermaier et al. (US 2017/0186600) in view of Saito et al. (US 7,935,983) in view of in view of Arena et al. (US 2008/0303118)
Regarding claim 24, Ostermaier et al. disclose a method for manufacturing a nitride semiconductor substrate (Fig. 10) ([0092]), the method comprising steps of: placing a member (151 in second/middle figure) ([0091]) prepared in advance before growing an AlN film or any other film so as to cover a single crystal silicon layer ((top portion of) 111) ([0072]) inward from an edge thereof, because (a) this limitation fails to comply with the written description requirement, and is also indefinite as discussed above, (b) Applicants do not specifically claim how the (ring-shaped) member is placed, not to mention what it is made of, and (c) therefore, the deposition process of the layer 151 in the edge regions 114 can be referred to be a step of placing a (ring-shaped) member; and growing a plurality of Group III nitride layers (116) ([0092]).
Ostermaier et al. differ from the claimed invention by not comprising steps of preparing at least a supporting substrate and a single crystal silicon substrate for laminating; bonding the supporting substrate and the single crystal silicon substrate for laminating via a silicon oxide layer; thinning the single crystal silicon substrate for laminating to be processed into a single crystal silicon layer; and growing an AIN film on the single crystal silicon layer; and growing a GaN film or an AlGaN film, or both thereof on the AIN film, and by not showing that the member is a ring-shaped member.
Ostermaier et al. further disclose in paragraph [0033] that “The substrate 21 is typically substantially circular” describing Fig. 1.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the member 151 shown in Fig. 10 of Ostermaier et al. can be a ring-shaped member, because (a) the substrate or single crystal silicon layer 111 shown in Fig. 10 of Ostermaier et al. can be substantially circular as is the case with the substrate 21 shown in Fig. 1 of Ostermaier et al. since circular semiconductor substrates have been one of the most commonly employed and most available substrates as a wafer manufacturing process commonly involves rotating an ingot to obtain a semiconductor crystal boule, which is then sliced into semiconductor substrates, and (b) in this case, when the substrate or single crystal silicon layer 111 shown in Fig. 10 of Ostermaier et al. is substantially circular, the member 151 would be a ring-shaped member.
Further regarding claim 24, Ostermaier et al. differ from the claimed invention by not comprising steps of preparing at least a supporting substrate and a single crystal silicon substrate for laminating; bonding the supporting substrate and the single crystal silicon substrate for laminating via a silicon oxide layer; thinning the single crystal silicon substrate for laminating to be processed into a single crystal silicon layer; and growing an AIN film on the single crystal silicon layer; and growing a GaN film or an AlGaN film, or both thereof on the AIN film.
Saito et al. disclose a method for manufacturing a nitride semiconductor substrate (composite structure of 2-5 in Fig. 1), comprising growing an AlN film (3) (col. 3, line 21) on a (single crystal) silicon layer (23) (col. 3, line 12); and growing a GaN film (4) (col. 3, line 24) or an AlGaN film (5) (col. 3, line 25), or both thereof on the AIN film, where the single crystal silicon layer 23 is a part of a silicon-on-insulator substrate (2) (col. 3, lines 9-10).
Since both Ostermaier et al. and Saito et al. teach a method for manufacturing a nitride semiconductor substrate, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the method disclosed by Ostermaier et al. can comprise method steps disclosed by Saito et al. including using a silicon-on-insulator substrate, and growing an AlN film and GaN/AlGaN film as disclosed by Saito et al., because (a) Saito et al. state that “it is possible to alleviate electric field concentration on the edge of the gate electrode 8, and to improve the breakdown voltage of the nitride semiconductor device 1” on lines 60-63 of column 3, (b) therefore, a method employing a silicon-on-insulator substrate would allow one of ordinary skill in the art to form a field effect transistor having a higher breakdown voltage, and thus the higher-breakdown-voltage field effect transistor that can be employed as a component of a power semiconductor device, and (c) an AlN film has been commonly employed as a buffer layer for forming GaN-based semiconductor devices, a GaN film has been employed as a channel layer or a light emitting layer of GaN-based semiconductor devices, and an AlGaN film has been commonly employed as a barrier layer or an electron supply layer of GaN-based semiconductor devices.
Still further regarding claim 24, Ostermaier et al. in view of Saito et al. differ from the claimed invention by not comprising the steps of preparing at least a supporting substrate and a single crystal silicon substrate for laminating; bonding the supporting substrate and the single crystal silicon substrate for laminating via a silicon oxide layer; thinning the single crystal silicon substrate for laminating to be processed into a single crystal silicon layer.
Arena et al. disclose a method for manufacturing a nitride semiconductor structure (Fig. 2D) ([0072]) using a silicon-on-insulator substrate (Fig. 2C), comprising preparing at least a supporting substrate (10) ([0018] and [0049]) and a single crystal silicon substrate (11) ([0019] and [0049]) for laminating; bonding the supporting substrate and the single crystal silicon substrate for laminating via a silicon oxide layer (12a, 12b or composite layer of 12a and 12b) ([0050]), because (a) Applicants do not specifically claim what “a silicon oxide layer” refers to, and where the silicon oxide layer was located before the claimed bonding step, and (b) Applicants do not specifically claim that “a silicon oxide layer” is the only material layer that is disposed between the supporting substrate and the single crystal silicon substrate since the preposition “via” does not necessarily preclude another material layer or other material layers for the claimed bonding step; thinning the single crystal silicon substrate for laminating to be processed into a single crystal silicon layer (S6 in Fig. 2C) ([0060]).
Since both Ostermaier et al. and Arena et al. teach a method for manufacturing a nitride semiconductor structure, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the silicon-on-insulator substrate disclosed by Ostermaier et al. in view of Saito et al. can be manufactured in a manner disclosed by Arena et al., because the method disclosed by Arena et al. allows one of ordinary skill in the art to employ various materials for the silicon-on-insulator substrate, which can reduce the manufacturing cost, as well as allowing one of ordinary skill in the art to obtain a substrate with a high quality such as a lower surface roughness, a higher crystallinity, and a lower defect density.
Regarding claim 25, Ostermaier et al. in view of Saito et al. and further in view of Arena et al. differ from the claimed invention by not showing that the supporting substrate is a supporting substrate composed of polycrystalline silicon or single crystal silicon.
Arena et al. further disclose that the supporting substrate (10) is a supporting substrate composited of, for example, polycrystalline silicon carbide ([0018]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the supporting substrate can be composed of polycrystalline silicon, because (a) a polycrystalline silicon and a polycrystalline silicon carbide have been commonly and interchangeably employed as substrate materials due to their similar characteristics, (b) employing a polycrystalline silicon rather than a polycrystalline silicon carbide would lower the manufacturing cost, and (c) it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use, In re Leshin, 125 USPQ 416.
Response to Arguments
Applicants’ arguments with respect to claim 1 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument, because Applicants’ arguments in the REMARKS filed June 3, 2026 are primary based on the newly added limitation “prepared in advance on the single crystal silicon layer before growing an AlN film” in the amended claim 24, which fails to comply with the written description requirement and is also indefinite.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Maruyama et al. (US 5,989,985)
Yoshiharu et al. (US 5,225,235)
Ziad et al. (US 9,842,899)
Perng et al. (US 6,066,570)
Applicants' amendment necessitated the new grounds of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicants are 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 JAY C KIM whose telephone number is (571) 270-1620. The examiner can normally be reached 8:00 AM - 6:00 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joshua Benitez can be reached at (571) 270-1435. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JAY C KIM/Primary Examiner, Art Unit 2815
/J. K./Primary Examiner, Art Unit 2815 July 17, 2026
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