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 .
Response to Amendment
Applicant’s amendment dated 12/09/2025, in which claims 1 and 11 were amended, claim 2 was cancelled, has been entered.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: claim 8 recites the limitation “the first region and the second region are included in one crystal grain.” However, the specification does not describe the above claimed subject matter in sufficient detail 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.
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.
Claim 8 is 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(s) 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 8, claim 8 recites the limitation “the first region and the second region are included in one crystal grain.” However, the specification does not provide sufficient description of how to form the first region and the second region so that they are included in one crystal grain. Further, there is no description of any such steps whether conventional or inventive that demonstrates possession thereof or therefor. Accordingly, claim 8 was not in possession of Applicant at the time of filing.
The purpose of the written description requirement in 35 U.S.C. §112(a) is to determine if “the description clearly allow persons of ordinary skill in the art to recognize that he or she invented what is claimed." In re Gosteli, 872 F.2d 1008, 1012, 10 USPQ2d 1614, 1618 (Fed. Cir. 1989). See also MPEP § 2163.02. In addition, the written description requirement of 35 U.S.C.§112(a) applies to all claims including original claims that are part of the disclosure as filed. Ariad, 598 F.3d at 1349. As stated by the Federal Circuit, “[a]lthough many original claims will satisfy the written description requirement, certain claims may not.” Ariad, 598 F.3d at 1349; "[e]ven if a claim is supported by the specification, the language of the specification, to the extent possible, must describe the claimed invention so that one skilled in the art can recognize what is claimed. The appearance of mere indistinct words in a specification or a claim, even an original claim, does not necessarily satisfy that requirement." Enzo Biochem, Inc. v. Gen-Probe, Inc., 323 F.3d 956, 968, 63 USPQ2d 1609, 1616 (Fed. Cir. 2002); see also LizardTech, Inc. v. Earth Res. Mapping, Inc., 424 F.3d 1336, 1343–46 (Fed. Cir. 2005). "Generic claim language appearing in ipsis verbis in the original specification does not satisfy the written description requirement if it fails to support the scope of the genus claimed [see Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co. (Fed. Cir. 2010) (en banc)].” See also MPEP §2163.03.
The instant specification lacks any description of an actual reduction to practice which would be evidenced by specific examples, drawings and an accompanied description of structural features and/or an accompanied description of processing steps, etc. that are sufficiently detailed to show that Applicant was in possession of the claimed invention as a whole. Thus, there is no evidence of a complete specific application or embodiment to satisfy the requirement that the description is set forth “in such full, clear, concise, and exact terms” to show possession of the claimed invention. Fields v. Conover, 443 F.2d 1386, 1392, 170 USPQ 276, 280 (CCPA 1971).
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.
Claim 8 is 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.
Regarding claim 8, claim 8 recites the limitation “wherein the first region and the second region are included in one crystal grain”. However, the specification fails to provide sufficient description of how to form the first region and the second region so that the first region and the second region are included in one crystal grain. In addition, paragraph [0055] discloses “[t]he oxide semiconductor layer 140 has a polycrystalline structure including multiple crystal grains.” It is unclear how the first region and the second region are included in one crystal grain when the oxide semiconductor layer 140 including multiple crystal grains.
For the purpose of this Action, the above limitation of claim 8 will be interpreted and examined as -- wherein a grain boundary does not exist between the first region and the second region--.
Appropriate correction is required.
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 7-8, 9, 12 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Yamazaki (US Pub. 20130196468).
Regarding claim 1, Yamazaki discloses in Fig. 1C a semiconductor device comprising:
an oxide semiconductor layer [119] having a polycrystalline structure on an insulating surface [103][paragraph [0054], [0072]];
a gate electrode [115] over the oxide semiconductor layer [119][paragraph [0054]]; and
a gate insulating layer [123] between the oxide semiconductor layer [119] and the gate electrode [125][paragraph [0054]],
wherein the oxide semiconductor layer [119] comprises:
a first region [119a] having a first crystal structure overlapping the gate electrode [115][paragraph [0055], [0104]], and
a second region [119b] having a second crystal structure not overlapping the gate electrode [115][paragraph [0055], [0104]],
an electrical conductivity of the second region [119b] is larger than an electrical conductivity of the first region [119a][paragraph [0102]], and
the second crystal structure is identical to the first crystal structure [the first region 119a and the second regions 119b may have the same crystal structure] [paragraph [0104]];
wherein a d-value of the second crystal structure is substantially identical to a d-value of the first crystal structure [paragraph [0104] discloses the first region 119a and the second regions 119b may have the same crystal structure. d-value is a property of a crystal structure. If the crystal structures are the same, their d-values appear to be the same].
In addition, “WHEN THE STRUCTURE RECITED IN THE REFERENCE IS SUBSTANTIALLY IDENTICAL TO THAT OF THE CLAIMS, CLAIMED PROPERTIES OR FUNCTIONS ARE PRESUMED TO BE INHERENT”. “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).” MPEP 2112.01.
Regarding claim 4, the limitation “wherein the first crystal structure and the second crystal structure are specified by a microelectron diffraction” directs to a process-by product claim. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Furthermore, "[b]ecause validity is determined based on the requirements of patentability, a patent is invalid if a product made by the process recited in a product-by-process claim is anticipated by or obvious from prior art products, even if those prior art products are made by different processes." Amgen Inc. v. F. Hoffman-La Roche Ltd., 580 F.3d 1340, 1370 n 14, 92 USPQ2d 1289, 1312, n 14 (Fed. Cir. 2009). (MPEP 2113).
Regarding claims 7-8, Yamazaki discloses in paragraph [0082]-[0084], [0104] wherein a grain boundary does not exist between the first region and the second region [“the first region 119a and the second regions 119b may be formed using a CAAC-OS film”, “a grain boundary in the CAAC-OS film is not found.”]
Regarding claim 9, Yamazaki discloses in paragraph [0100] wherein the second region [119b] contains at least one of boron, phosphorus, and argon.
Regarding claim 12, Yamazaki discloses in paragraph [0090] wherein the oxide semiconductor layer [119] contains at least two metal elements including an indium element, and a ratio of the indium element to the at least two metal elements is greater than or equal to 50% [oxide semiconductor film may have an atomic ratio of In to Ga and Zn of 3:1:2].
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, 3-8, 9-12 are rejected under 35 U.S.C. 103 as being unpatentable over Koezuka et al. (US Pub. 20120228606) in view of Yamazaki (US Pub. 20130196468).
Regarding claim 1, Koezuka et al. discloses in Fig. 1B, Fig. 4B a semiconductor device comprising:
an oxide semiconductor layer [103] having a polycrystalline structure on an insulating surface [102][paragraph [0068], [0072], [0074], [0079]];
a gate electrode [113] over the oxide semiconductor layer [103][paragraph [0069]]; and
a gate insulating layer [111] between the oxide semiconductor layer [103] and the gate electrode [113][paragraph [0069]],
wherein the oxide semiconductor layer [103] comprises:
a first region [105] having a first crystal structure overlapping the gate electrode [113][paragraph [0072], [0074]], and
a second region [123a, b] having a second crystal structure not overlapping the gate electrode [113][paragraph [0079]],
an electrical conductivity of the second region [123a,b] is larger than an electrical conductivity of the first region [105][paragraph [0080]].
Koezuka et al. does not explicitly disclose
the second crystal structure is identical to the first crystal structure;
wherein a d-value of the second crystal structure is substantially identical to a d-value of the first crystal structure.
However, Koezuka et al. discloses in Fig. 3A-3D, the first region [105] having the first crystal structure, and the second region [123a, b] having the second crystal structure are formed from the same material layer. Thus, it appears, if not, it would be obvious that the second crystal structure is same as/identical to the first crystal structure; and a d-value of the second crystal structure is substantially identical to a d-value of the first crystal structure.
For further providing support for the crystal structure of the first and second regions of the oxide semiconductor layer, Yamazaki is cited.
Yamazaki discloses in Fig. 1C, paragraph [0104]
the second crystal structure is identical to the first crystal structure [the first region 119a and the second regions 119b may have the same crystal structure];
wherein a d-value of the second crystal structure is substantially identical to a d-value of the first crystal structure [paragraph [0104] discloses the first region 119a and the second regions 119b may have the same crystal structure. d-value is a property of a crystal structure. If the crystal structures are the same, their d-values will be the same].
In addition, “WHEN THE STRUCTURE RECITED IN THE REFERENCE IS SUBSTANTIALLY IDENTICAL TO THAT OF THE CLAIMS, CLAIMED PROPERTIES OR FUNCTIONS ARE PRESUMED TO BE INHERENT”. “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).” MPEP 2112.01.
Yamazaki further discloses in paragraph [0104], the oxide semiconductor layer [119] having a polycrystalline structure.
It would have been obvious to one of ordinary skill in the art before the effective filling date of the invention to incorporate the teachings of Yamazaki into the method of Koezuka et al. to include the second crystal structure is identical to the first crystal structure; wherein a d-value of the second crystal structure is substantially identical to a d-value of the first crystal structure. The ordinary artisan would have been motivated to modify Koezuka et al. in the above manner for the purpose of providing suitable crystal structures of the first and second regions of the oxide semiconductor layer. Further, it would have been obvious to try one of the known methods with a reasonable expectation of success. KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385 (2007).
Regarding claim 3, Koezuka et al. discloses in Fig. 17B, paragraph [0252], [0258]
the second crystal structure is cubic.
As stated above, Koezuka et al. discloses in Fig. 3A-3D, the first region [105] having the first crystal structure, and the second region [123a, b] having the second crystal structure are formed from the same material layer. Thus, it appears, if not, it would be obvious that the second crystal structure is same as/identical to the first crystal structure. In addition, Yamazaki discloses in paragraph [0104] the first region 119a and the second regions 119b may have the same crystal structure.
Thus, the combination of Koezuka et al. and Yamazaki would result to “the first crystal structure and the second crystal structure are cubic.”
Regarding claim 4, the limitation “wherein the first crystal structure and the second crystal structure are specified by a microelectron diffraction” directs to a process-by product claim. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Furthermore, "[b]ecause validity is determined based on the requirements of patentability, a patent is invalid if a product made by the process recited in a product-by-process claim is anticipated by or obvious from prior art products, even if those prior art products are made by different processes." Amgen Inc. v. F. Hoffman-La Roche Ltd., 580 F.3d 1340, 1370 n 14, 92 USPQ2d 1289, 1312, n 14 (Fed. Cir. 2009). (MPEP 2113).
Regarding claims 5-6, Koezuka et al. and Yamazaki fails to disclose
wherein a sheet resistance of the second region is less than or equal to 1000 Ohm/sq;
wherein a sheet resistance of the second region is less than or equal to 500 Ohm/sq.
However, Koezuka et al. discloses in paragraph [0080], [0085], [0189], [0194], [0228] and Yamazaki discloses in paragraph [0055] the second region [23a, b] or [119b] has a low resistance to increase on-state current of the transistor.
In addition, Applicant has not provided criticality of the claimed range. It would have been obvious to modify Koezuka et al. and Yamazaki to provide wherein a sheet resistance of the second region is less than or equal to 1000 Ohm/sq; wherein a sheet resistance of the second region is less than or equal to 500 Ohm/sq for at least the purpose of optimization and routine experimentation to provide the S/D region having desired sheet resistance thus achieve desired device’s performance. The claimed ranges are merely optimizations, and as such are not patentable over the prior art. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382.
Regarding claims 7-8, Koezuka et al. discloses in paragraph [0075] and Yamazaki discloses in paragraph [0082]-[0084], [0104]
wherein a grain boundary does not exist between the first region and the second region [“the first region 119a and the second regions 119b may be formed using a CAAC-OS film”, “a grain boundary in the CAAC-OS film is not found”; “the CAAC-OS includes a crystal portion, a boundary between one crystal portion and another crystal portion is not clear”].
Regarding claim 9, Koezuka et al. discloses in paragraph [0079] and Yamazaki discloses in paragraph [0100] wherein the second region [123a,b] or [119b] contains at least one of boron, phosphorus, and argon.
Regarding claim 10, Koezuka et al. discloses in Fig. 1B, Fig. 4B
wherein an upper surface and an edge surface of the oxide semiconductor layer [103] is covered with the gate insulating layer [111].
Regarding claim 11, Koezuka et al. discloses in Fig. 3C, paragraph [0141]-[0146] an implantation contains at least one of boron, phosphorus, and argon is performed on the gate insulating layer and heat treatment is performed after the implantation.
Thus, it would be obvious that the gate insulating layer contains at least one of boron, phosphorus, and argon either by the implantation or by diffusion of the at least one of boron, phosphorus, and argon from the second regions 123a,b during the heat treatment.
Regarding claim 12, Koezuka et al. discloses in paragraph [0072] wherein the oxide semiconductor layer [103] contains at least two metal elements including an indium element.
Yamazaki discloses in paragraph [0090] wherein the oxide semiconductor layer [119] contains at least two metal elements including an indium element, and a ratio of the indium element to the at least two metal elements is greater than or equal to 50% [oxide semiconductor film may have an atomic ratio of In to Ga and Zn of 3:1:2].
In addition, Applicant has not provided criticality of the claimed range. It would have been obvious to modify Koezuka et al. and Yamazaki to provide a ratio of the indium element to the at least two metal elements is greater than or equal to 50% for at least the purpose of optimization and routine experimentation to provide oxide semiconductor film having desired properties. The claimed ranges are merely optimizations, and as such are not patentable over the prior art. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382.
Response to Arguments
Applicant's arguments filed 12/09/2025 have been fully considered but they are not persuasive.
Regarding Applicant’s arguments with respect to rejection of claim 8 on pages 5-6, Examiner respectfully disagrees because “a region including only one crystal grain” does not mean “a region is included in one crystal grain.” A head includes a brain does not mean a head is included in a brain. A is a subset of B (B includes A) is different than B is a subset of A (B is included in A). No one would interpret “the oxide semiconductor layer 140 includes a region including only one crystal grain” as "the first region and the second region are included in one crystal grain". In addition, the limitation "the first region and the second region are included in one crystal grain" is simply non-sense.
Overall, Applicant’s arguments are not persuasive. Specification objection, 112a/b rejections of claim 8 are maintained.
Regarding Applicant’s arguments that “Yamazaki merely discloses the first region 119a and the second regions 119b may have the same crystal structure selected from a single crystal structure, a polycrystalline structure, and an amorphous structure. Yamazaki at [0105] clearly discloses the first region 119a and the second regions 119b may both have a single crystal structure, or might both have a polycrystalline structure, or might both have an amorphous structure, respectively, or even the first region 119a and the second regions 119b may have different structures,” Examiner respectfully disagrees because paragraph [0104] of Yamazaki clearly states “the first region 119a and the second regions 119b may have the same crystal structure.” That statement does not mean “the first region 119a and the second regions 119b may have different structures” as Applicant’s assertion. Such a conclusion is illogical and is not persuasive.
Regarding Applicant’s arguments that “when the crystal order is disturbed by dopants, the d-value can differ between the crystal structure of the first region 119a and the second regions 119b in Yamazaki even if the first region 119a and the second regions 119b have the same crystal structure”, Examiner respectfully disagrees because Applicant has not provided any evidence to show that the d-value differ between the crystal structure of the first region 119a and the second regions 119b even if the first region 119a and the second regions 119b have the same crystal structure.
As stated in the rejection above, paragraph [0104] of Yamazaki discloses the first region 119a and the second regions 119b may have the same crystal structure. d-value is a property of a crystal structure. Logically, if the crystal structures are the same, their d-values appear to be the same.
In addition, “WHEN THE STRUCTURE RECITED IN THE REFERENCE IS SUBSTANTIALLY IDENTICAL TO THAT OF THE CLAIMS, CLAIMED PROPERTIES OR FUNCTIONS ARE PRESUMED TO BE INHERENT”. “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).” MPEP 2112.01.
"When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. See also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). MPEP 2112.01
“An argument by the applicant is not evidence unless it is an admission…Arguments presented by applicant cannot take the place of evidence in the record. See In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984); In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997).” MPEP 2145.
Overall, Applicant’s arguments are not persuasive. The claims stand rejected and the Action is made FINAL.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is 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.
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/SOPHIA T NGUYEN/Primary Examiner, Art Unit 2893