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 of group 1, device embodiment 1 of fig. 1, modification A2 of figs. 21,28, and modification B1 of figs. 14, 26 (claims 1-4, 6-11 readable thereon, claim 5 withdrawn) in the reply filed on 4/28/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
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 1-4, 6-11 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 enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
The specification discloses the vertical IGBT combined with a diode region, wherein there is some defect labeled as 50 being provided form the back/main surface as discussed at paragraphs 28, 65, 67, and 96, which correspond to the currently claimed feature of “a first defect provided in the semiconductor layer and extending from the main surface side in a direction including a component in a thickness direction” recited in claim 1. In determining that the claims do not satisfy the enablement requirement, the Examiner has considered each of the factors specified in In re Wands. (858 F.2d 731, 737 (Fed. Cir. 1988)).
(A) The breadth of the claims;
(B) The nature of the invention;
(C) The state of the prior art;
(D) The level of one of ordinary skill;
(E) The level of predictability in the art;
(F) The amount of direction provided by the inventor;
(G) The existence of working examples; and
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
The limitations lacking enablement are as follows:
The claimed first defect is broadly claimed and the specification discloses generally that the defects are there as shown in the figures. Paragraph 96 states the cathode layer 26 is formed and an amorphous layer is formed by implantation damage. By irradiating it with a laser annealing process the amorphous layer is recrystallized . the defect is formed and controlled by adjusting the power of the laser annealing and the annealing duration. The specification lacks sufficient description so that a person of ordinary skill in the art would be able to make and use the device without undue experimentation.
The specification lacks what kind of defect element 50 is. Is it an area that is amorphous, or a threading dislocation, or damaged defect regions from the implantation; there is no disclosure as to what the actual defect is, and how it is shaped, and how it is made since no specific process is disclosed besides annealing with a laser with some power and some duration.
(B) Nature of the invention
As recited above, the specification lacks detail as to the specifics of the defect 50. What kind of defect is it? Is it a crystal defect of a void, an amorphous region, a threading dislocation, or a damaged region? How do you make the defect, what power laser, how long, and is the laser pointed and moved in a specific way so that the defect are formed in specific areas or is it annealed on the whole surface?
(D) The level of one of ordinary skill
Laser annealing is well-known. Vertical IGBTs with integrated FWDs, as well as their respective collector and cathode regions, are well-known.
(F) The amount of direction provided by the inventor
As stated above, the method of making the defect element 50 is generically described without specificity to allow one of ordinary skill to make and use the device.
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure
There would need to be an exhaustive amount of experimentation to figure out the laser power, laser exposure duration, where the laser is pointed, and what kind of laser to use. All of these questions would be huge hurdles to overcome to make and use the device, especially since the defect is barely described. One of ordinary skill in the art would not know if the defect of the instant application were made or not because such description is not provided.
Enablement conclusion:
The Examiner has considered the factors above and found that the what the “first defect” and how is it made is lacking in the specification far exceeds what is known in the art, and the quantity of experimentation necessary to create and use the claimed device.
Accordingly, claim 1 and their dependent claims 2-4, 6-11 are rejected for lack of enablement. This rejection applies equally to independent claims, as well as to dependent claims.
As such, the claims have not been rejected over the prior art because, in light of the 35 U.S.C. 112 rejections supra, there is a great deal of confusion and uncertainty as to what constitutes a proper “defect” of the limitations of the claims; hence, it would not be proper to reject the claims on the basis of prior art. As stated in In re Steele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962), a rejection under 35 U.S.C. 103 should not be based on considerable speculation about the meaning of terms employed in a claim or assumptions that must be made as to the scope of the claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSE Y MIYOSHI whose telephone number is (571)270-1629. The examiner can normally be reached M-F, 8:30AM-5:00PM.
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/JESSE Y MIYOSHI/
Primary Examiner, Art Unit 2898
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