DETAILED ACTION
This Office Action is in response to Amendment filed February 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 .
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Claim Objections
Claim 29 is objected to because of the following informalities:
On line 12, “that” should be replaced with “than” to be grammatically correct.
On lines 13-14, the limitation should be amended, because the limitation is rather awkward since when there is “only one second groove”, the phrase “the same second groove” should refer to the “only one second groove” rather than “the same second groove”.
Appropriate correction is required.
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, 6-8, 23, 24, 29 and 34-36 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 claim 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 inventors, at the time the application was filed, had possession of the claimed invention.
(1) Regarding claims 1, 23 and 29, Applicants originally disclosed in paragraph [0086] of current application that “Specifically, a material of the substrate 100 may be one or more of silicon, silicon carbide, aluminum nitride, and sapphire.” However, Applicants did not originally disclose “a substrate comprising a semiconductor material of at least one of silicon, silicon carbide, aluminum nitride, and sapphire” as recited on lines 2-3 of the amended claims 1, 23 and 29, because (a) the claimed sapphire, which is commonly expressed as Al2O3 and is commonly categorized as an insulator, may not be a semiconductor unless it is heavily doped with impurities, (b) in addition, the claimed aluminum nitride may be categorized as either a semiconductor or an insulator depending on doping concentration, crystallinity, etc. since an energy band gap of aluminum nitride is much larger than other nitride semiconductor materials, and (c) therefore, the newly added limitation cited above is noncompliant with the written description requirement. Claims 6-8 depend on claim 1, claim 24 depends on claim 23, and claims 34-36 depend on claim 29, and therefore, claims 6-8, 24 and 34-36 also fail to comply with the written description requirement.
(2) Regarding claim 29, Applicants did not originally disclose that “each first groove is connected to each second groove when there are an equal number of the first and second grooves” as recited on lines 9-10, because this newly added limitation suggests that each first groove is connected to each and every second groove or all the second grooves when there are an equal number of the first and second grooves.
(3) Further regarding claim 29, Applicants did not originally disclose that “at least two first grooves are connected to one second groove when there are more first grooves that [sic] second grooves; and all first grooves are connected to the same second groove when there is only one second groove” as recited on lines 11-14, because (a) it appears that the “at least two first grooves” recited on line 11 does not refer to “all first grooves” recited on line 13, and (b) Applicants did not originally disclose that only two or three grooves out of many grooves can be selectively connected to one second groove.
Claims 34-36 depend on claim 29, and therefore, claims 34-36 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 1, 6-8, 23 and 24 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 1, it is not clear what the limitation “the diamond structure comprising a longitudinally divided into a first diamond part and a second diamond part (emphasis added)” recited on lines 5-6 suggests, because (a) the term “a longitudinally divided” is not a noun or a pronoun, and therefore, the limitation cited above is not grammatical, and (b) in this case, it is not clear what “the diamond structure” comprises.
(2) Also regarding claim 1, it is not clear what the phrase “longitudinally divided” recited on line 5 suggests, because (a) the claimed first and second diamond part each refers to the first diamond part 112 and the second diamond part 113 shown in Fig. 3 of current application, (b) however, the first and second diamond part are in contact with each other rather than being “longitudinally divided”, and (c) therefore, it is not clear whether the phrase “longitudinally divided” is directed to any specific configuration, shape and/or size of the claimed first and second diamond part while the claimed first and second diamond part are in contact with each other, or the phrase “longitudinally divided” is merely directed to a process where the first and second diamond part are formed separately, in which case the limitation including the phrase “longitudinally divided” would be a product by process limitation.
(3) Further regarding claim 1, it is not clear in which direction the first and second diamond part are “longitudinally divided” as recited on lines 5-6, because (a) Merriam-Webster dictionary defines the adjective “longitudinal” as “of or relating to length or the lengthwise dimension”, (b) however, the first diamond part 112 and the second diamond part 113 shown in Fig. 3 of current application are not longitudinally divided or longitudinally connected, but rather the first diamond part 112 and the second diamond part 113 shown in Fig. 3 of current application are vertically connected or connected in a thickness direction rather than a lengthwise direction.
Claims 6-8 depend on claim 1, and therefore, claims 6-8 are also indefinite.
(4) Regarding claim 6, it is not clear whether “a plurality of first diamond parts” recited on lines 1-2 are in addition to “a first diamond part” recited on line 5 of claim 1, or “a first diamond part” recited on line 5 of claim 1 is a part of “a plurality of first diamond parts” recited on lines 1-2 of claim 6 due to the word “further” on line 1 of claim 6, because depending on how the limitation “a plurality of first diamond parts” is interpreted, when a semiconductor device comprises two first diamond parts, it may or may not read on claim 6.
(5) Further regarding claim 6, it is not clear whether the limitation “a spacing between each of the first diamond parts” recited on line 4 implies a spacing between “each” of the first diamond parts, i.e. the claimed spacing is even applicable to two most remotely separated first diamond parts, because (a) the currently presented limitation cited above implies such a configuration, and (b) it is not clear whether Applicants had intended to claim a spacing between two directly adjacent first diamond parts.
(7) Regarding claim 23, it is not clear whether the limitation “a diamond material within the first and second grooves” recited on line 10 suggests that a single diamond material having a uniform material composition is disposed within both the first and second grooves, because (a) the term “a diamond material” appears to suggest a single, uniform diamond material, and (b) however, it does not appear that Applicants originally disclosed that a single, uniform diamond material has been employed to fill both the first and second grooves.
(8) Further regarding claim 23, it is not clear what the limitation “the second groove and the first groove are connected” recited on lines 7-8 suggests, because (a) the first groove 101 shown in Fig. 6 of current application and the second groove 102 shown in Fig. 12 of current application are not exactly “connected” since (i) the first groove 101 and the second groove 102 do not exist simultaneously since the first groove 101 having a triangular shape as shown in Fig. 6 of current application is filled with the first diamond part 112 as shown in Fig. 8 of current application before the second groove 102 is formed as shown in Fig. 12 of current application, and (ii) furthermore, while the second groove 102 is formed as shown in Fig. 12 of current application, the triangular profile of the first groove 101 is altered, and thus, the first groove 101 is altered by forming the second groove 102, and (b) therefore, rather than the first and second groove being connected, the first diamond part and the second groove are connected, or the first diamond part and the second diamond part that fills the second groove are connected.
Claim 24 depends on claim 23, and therefore, claim 24 is 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 1, 6, 23 and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Kub et al. (US 9,685,513)
In the below prior art rejections the limitations “substrate”, “diamond part” and “groove(s)” are product-by-process limitations that do not structurally distinguish the claimed invention over the prior art, because (a) a vast majority of the substrate 100 shown in Fig. 5 of current application are removed during the manufacturing process of the claimed semiconductor device shown in Fig. 3 of current application, and therefore, the claimed limitation “substrate” is a material layer embedded with diamond parts, or the claimed limitation “substrate” is a material layer that is embedded in diamond parts, (b) the first and second diamond part recited in claim 1 are basically a connected diamond layer or a diamond structure 110 shown in Fig. 3 of current application, which does not need to be manufactured via the manufacturing processes shown in Figs. 5-10 and 12 of current application, and (c) the groove(s) recited in the new claims 23 and 29 are associated with the manufacturing processes shown in Figs. 5-10 and 12 of current application, where the first grooves 101 shown in Fig. 6 of current application and the second groove 102 shown in Fig. 12 of current application are formed at separate manufacturing steps followed by deposition of the two diamond materials to form the connected diamond structure 110 shown in Fig. 3 of current application; however, what Applicants claim in the previously presented claims 23 and 29 are directed to a semiconductor device, not a manufacturing method of the semiconductor device, and therefore, as long as there are discrete diamond regions at the top and a continuous diamond region at the bottom disclosed by a prior art reference, the limitations including “groove(s)” are satisfied since the limitations including the term “groove(s)” are directed to product by process limitations. Note that a product by process claim is directed to the product per se, no matter how actually made, In re Hirao, 190 USPQ 15 at 17 (footnote 3). See also In re Brown, 173 USPQ 685; In re Luck, 177 USPQ 523; In re Fessmann, 180 USPQ 324; In re Avery, 186 USPQ 161; In re Wertheim, 191 USPQ 90 (209 USPQ 554 does not deal with this issue); and In re Marosi et al, 218 USPQ 289, all of which make it clear that it is the patentability of the final product per se which must be determined in a product by process claim, and not the patentability of the process, and that an old or obvious product by a new method is not patentable as a product, whether claimed in product by process claims or not. Note that applicant has the burden of proof in such cases, as the above case law makes clear.
Regarding claim 1, Kub et al. disclose a semiconductor device (Fig. 13G), comprising: a substrate (composite structure of 1305 and 1306) (col. 16, lines 65-67) comprising a semiconductor material (AlGaN; 1305) (col. 16, line 66) of at least one of silicon, silicon carbide, aluminum nitride, and sapphire, because (a) Applicants do not claim that the substrate essentially consists of at least one of silicon, silicon carbide, aluminum nitride, and sapphire, (b) the transitional phrase “comprising” does not preclude presence of other semiconductor materials, and (c) AlGaN is a solid solution of AlN and GaN, and thus AlGaN comprises a semiconductor material of aluminum nitride; a diamond structure (diamond in Fig. 13G) that longitudinally penetrates the substrate of the semiconductor device, the diamond structure comprising a longitudinally divided into a first diamond part (top part of diamond above top surface level of substrate layer 1305) and a second diamond part (bottom part of diamond below top surface level of substrate layer 1305) below the first diamond part, the first diamond part and the second diamond part having different lateral dimensions, because the bottom part of the diamond is wider than the top part of the diamond; a passivating layer (1304) (col. 17, line 1) and an electrode (1313, 1315a or 1315b) that are sequentially disposed on the diamond structure and the substrate.
Kub et al. differ from the claimed invetnion by not showing that the passivating layer 1304 is an epitaxial layer.
Kub et al. further disclose that “In some embodiments, an optional protective layer 210 comprising silicon oxide, silicon nitride, silicon carbide, Al2O3, AlN, AlGaN, or other protective material layers can also be deposited on the first side 203a of the semiconductor material” (col. 12, lines 20-24) describing Fig. 2.
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 passivating layer 1304 disclosed by Kub et al. can be an epitaxial layer of AlN or AlGaN as Kub et al. disclose for the embodiment shown in Fig. 2 of Kub et al., because (a) AlN or AlGaN and silicon nitride have been commonly and interchangeably employed as a passivating layer or a protective layer material for forming GaN-based semiconductor devices due to their compatibility with GaN-based semiconductor materials, (b) an epitaxial AlN or AlGaN layer would improve performance of the semiconductor device due to its high quality, 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.
Regarding claim 6, Kub et al. further include a plurality of first diamond parts (top part of diamond above top surface level of substrate layer 1305).
Kub et al. differ from the claimed invention by not showing that a lateral dimension of each of the first diamond part ranges from 1 to 10 µm, a longitudinal dimension of each of the first diamond part ranges from 1 to 10 µm, a spacing between each of the first diamond parts ranges from 1 to 10 µm, and a thickness of the substrate ranges from 50 to 100 µm.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that a lateral dimension of each of the first diamond part or each of the grooves, a longitudinal dimension of each of the first diamond part or each of the grooves, a spacing between each of the first diamond parts or between adjacent first grooves, and a thickness of the substrate can each range in the claimed ranges, because (a) these sizes of the lateral/longitudinal dimensions, spacing and thickness should be controlled and optimized to obtain a semiconductor device having a desired overall size, and desired electrical and thermal characteristics to improve semiconductor device performance, and (b) the claims are prima facie obvious without showing that the claimed ranges achieve unexpected results relative to the prior art range. In re Woodruff, 16 USPQ2d 1935, 1937 (Fed. Cir. 1990). See also In re Huang, 40 USPQ2d 1685, 1688 (Fed. Cir. 1996) (claimed ranges of a result effective variable, which do not overlap the prior art ranges, are unpatentable unless they produce a new and unexpected result which is different in kind and not merely in degree from the results of the prior art). See also In re Boesch, 205 USPQ 215 (CCPA) (discovery of optimum value of result effective variable in known process is ordinarily within skill of art) and In re Aller, 105 USPQ 233 (CCPA 1955) (selection of optimum ranges within prior art general conditions is obvious).
Please refer to the explanations of the corresponding limitations above.
Regarding claim 23, Kub et al. disclose a semiconductor device (Fig. 13G), comprising: a substrate (composite structure of 1305 and 1306) comprising a semiconductor material of at least one of silicon, silicon carbide, aluminum nitride, and sapphire, the substrate having a first surface (top surface of 1305) with a first groove (areas filled with top portion of diamond above top surface level of 1305), because as discussed above, the limitation “first groove” is directed to a product by process limitation, etched therein, which is also directed to a product by process limitation; a passivating layer (1304) and an electrode (one of 1313, 1315a and 1315b) formed on the first surface of the substrate; a second surface (bottom surface of 1306) of the substrate (composite structure of 1305 and 1306) with a second groove (areas filled with bottom portion of diamond below top surface level of 1306), because as discussed above, the limitation “second groove” is directed to a product by process limitation, etched therein, which is also directed to a product by process limitation, such that the second groove and the first groove are connected, and the first surface and the second surface are two opposite surfaces; and a diamond material disposed within the first and second grooves.
Kub et al. differ from the claimed invention by not showing that the passivating layer is an epitaxial layer, and the second groove and the first groove have different lateral dimensions.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the second groove and the first groove can have different lateral dimensions, because (a) Applicants do not specifically claim that second groove and the first groove have different lateral dimensions throughout the first and second groove along a vertical direction, and do not specifically claim how different the two lateral dimensions are, (b) therefore, as long as a portion of the first groove and a portion of the second groove have different lateral dimensions, the claim limitation cited above would be satisfied, (c) in this case, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that a portion of the second groove and a portion of the first groove can have different lateral dimensions since the etching process shown in Fig. 13D would result in variations of the sizes of the 1310a/1310b in the vertical direction, albeit small, since the etching process would not be able to remove exactly the same number of atoms from the bottommost surface of the layer 1306 to the topmost surface of the layer 1306, in which case, the second groove and the first groove would have different lateral dimensions, which may be small and which may be an Angstrom or two.
Further regarding claim 23, Kub et al. differ from the claimed invention by not showing that the passivating layer is an epitaxial layer.
Kub et al. further disclose that “In some embodiments, an optional protective layer 210 comprising silicon oxide, silicon nitride, silicon carbide, Al2O3, AlN, AlGaN, or other protective material layers can also be deposited on the first side 203a of the semiconductor material” (col. 12, lines 20-24) describing Fig. 2.
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 passivating layer 1304 disclosed by Kub et al. can be an epitaxial layer of AlN or AlGaN as Kub et al. disclose for the embodiment shown in Fig. 2 of Kub et al., because (a) AlN or AlGaN and silicon nitride have been commonly and interchangeably employed as a passivating layer or a protective layer for forming GaN-based semiconductor devices due to their compatibility with GaN-based semiconductor materials, (b) an epitaxial AlN or AlGaN layer would improve performance of the semiconductor device due to its high quality, 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.
Regarding claim 24, Kub et al. further disclose that the semiconductor device comprises a plurality of first groove (areas filled with top portion of diamond above top surface level of 1305).
Response to Arguments
Applicants’ arguments with respect to claims 1, 23 and 29 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.
Applicants’ arguments traversing the Restriction Requirement on pages 6-8 of the REMARKS filed February 3, 2026 are not persuasive, because (a) Applicants’ arguments are not based on the standard of a restriction requirement, especially when it appears that Applicants appear to argue that an alternative embodiment should belong to the same species without any substantiating evidence, (b) Applicants did not originally disclose that the first diamond part 112 and the second diamond part 113 shown in Figs. 2A and 2B can be arbitrarily mixed and/or blended to come up with a semiconductor device with both the first diamond part 112 having a rectangular shape and the first diamond part 112 having a trapezoidal shape in a single semiconductor device, and (c) Applicants already withdrew claims directed to nonelected species in the amendment filed February 3, 2026.
Applicants’ arguments regarding the indefiniteness of the term “a longitudinally divided” recited in claim 1 on page 9-10 of the REMARKS are not persuasive, because (a) it appears that Applicants do not understand that the transitional phrase “comprising” cannot be accompanied with an adjective “a longitudinally divided”, and (b) Applicants do not claim what is “longitudinally divided” in claim 1.
Conclusion
Applicants' amendment necessitated the new ground 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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/JAY C KIM/Primary Examiner, Art Unit 2815
/J. K./Primary Examiner, Art Unit 2815 April 1, 2026
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