DETAILED ACTION
Citation to the Specification will be in the following format: (S. # : ¶) where # denotes the page number and ¶ denotes the paragraph number of the pre-grant publication corresponding to the application, US 2024/0140797. Citation to patent literature will be in the form (Inventor # : LL) where # is the column number and LL is the line number. Citation to the pre-grant publication literature will be in the following format (Inventor # : ¶) where # denotes the page number and ¶ denotes the paragraph number.
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 .
Status of Application
This office action is in response to the papers as filed 8/18/2023.
Claim(s) 1-7 is/are pending.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 8/18/2023 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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.
I. Claims 7 – or as stated below – is/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.
Claim 7 states inter alia “an insulator layer formed on the N-type semiconductor layer; and layer,” The “and layer” language is imprecise. And layer [what]? And [what kind of] layer?
Claim Rejections - 35 USC §§ 102-103
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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.
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.
I. Claim(s) 1-7 – or as stated below - is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over WO 2016/153073 to Toshiaki, et al. (cited by Applicants; C04B 35/58; 09-29-2016).
Citation is to the machine translation accompanying the action.
With respect to Claim 1, this claim requires “[a] nitride semiconductor material that is a metal nitride represented by M-Si-N-Te (where M represents at least one kind of transition metal element, and Te represents an arbitrary element).” Semiconductor materials are taught. (Toshiaki at 3). Silicon is taught. Id. Nitrogen is taught. Id. Tungsten, one of the claimed “M” metals, is taught. Id. Other metals are taught. See e.g. (Toshiaki at 5). All metals in the entire reference are relied upon. The “Te represents an arbitrary element” – while oddly worded - is interpreted as an optional element. See (S. 1: [0010]: “To be noted, the notation “Te is an arbitrary element” indicates whether or not to contain Te (tellurium) is arbitrary. That is, it is indicated that Te may or may not be included. In other words, it is M-Si—N or M-Si—N—Te (where M represents at least one kind of transition metal element).”) (emphasis added). To the extent tellurium is not taught, the Examiner is interpreting it as ““arbitrary.””
Claim 1 further requires “a thermal effusivity of less than 2000 Ws0.5/m2K.” To the extent Toshiaki may not teach the thermal effusivity, as the compositional elements as claimed are taught, it is expected that the thermal effusivity is necessarily present. This is the rationale to show inherency. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Any difference – to the extent there is any (which is not conceded) – would be viewed as obvious based on the close structural similarity. MPEP 2144.09.
As to Claim 2, the discussion accompanying Claim 1 is relied upon.
As to Claim 3, the resistivity is taught. (Toshiaki at 1).
As to Claim 4, a nano-scale crystal size is taught. (Toshiaki at 2).
As to Claim 5, the discussion accompanying Claim 1 is relied upon.
As to Claim 6, notwithstanding the ambiguities noted above, a low thermal conduction material is taught. (Toshiaki at 3; passim).
With respect to Claim 7, this claim requires “an N-type semiconductor layer.” An n-type semiconductor layer is taught. See e.g. (Toshiaki at 2; passim).
Claim 7 further requires “an insulator layer formed on the N-type semiconductor layer; and layer.” Notwithstanding the issues above, an insulating layer is taught. Id.
Claim 7 further requires “wherein at least one of the N-type semiconductor layer and the P-type semiconductor layer is formed from the nitride semiconductor material according to claim 1.” The nitride material is taught. Id.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL C. MCCRACKEN whose telephone number is (571) 272-6537. The examiner can normally be reached on Monday-Friday (9-6).
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, Anthony J. Zimmer can be reached on 571-270-3591. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DANIEL C. MCCRACKEN/Primary Examiner, Art Unit 1736