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 .
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
The following title is suggested:
Method for preparing a C-plane GaN substrate by disposing a pattern mask on a GaN seed and ammonothermally growing a GaN crystal through the pattern mask
Terminal Disclaimer
The terminal disclaimer filed on December 19, 2025, disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of U.S. Patent Nos. 11,810,782 and 10,720,326 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
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Claims 19-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 of U.S. Patent No. 10,301,743 (“the ‘743 patent”). Although the claims at issue are not identical, they are not patentably distinct from each other.
Regarding claim 19, claims 1-2 of the ‘743 patent recite substantially the same limitations as recited in claim 19 of the instant application. It is noted that since the plurality of first linear openings in claim 1 have a constant pitch therebetween they necessarily are parallel.
Regarding claim 20, claims 1-2 of the ‘743 patent recite substantially the same limitations as recited in claim 20 of the instant application.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 19-20 are is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent No. 9,650,723 to D’Evelyn, et al. (hereinafter “D’Evelyn”) in view of U.S. Patent Appl. Publ. No. 2014/0167086 to Jang, et al. (“Jang”).
Regarding claim 19, D’Evelyn teaches a method for preparing a C-plane GaN substrate (see the Abstract, Figs. 1-10, and entire reference which teach a method for growing a GaN substrate with col. 39, ll. 40-45 specifically teaching the use of a c-plane orientation), comprising:
preparing a GaN seed (see Fig. 6A and col. 39, l. 26 to col. 40, l. 37 which teach preparing a GaN seed crystal (601) with col. 39, ll. 40-45 teaching that the GaN seed crystal may have a (0001) orientation which is either a + or – c-plane (i.e., can be nitrogen polar));
disposing a pattern mask on the nitrogen polar surface of the GaN seed, the pattern mask comprising a plurality of parallel linear openings arranged at a pitch of 10 mm or less (see Figs. 6A-B and col. 40, l. 38 to col. 41, l. 12 which teach forming a patterned mask (611) comprised of, inter alia, adhesion layer (605), diffusion barrier layer (607), and inert layer (609) with Figs. 6C4-5 & 6D1-2 and col. 41, l. 24 to col. 42, l. 24 teaching that the pattern may be comprised of a plurality of parallel linear openings with a pitch L of between 5 mm and 20 mm);
ammonothermally growing a GaN crystal through the pattern mask on the nitrogen polar surface of the GaN seed, such that at least one gap is formed between the GaN crystal and the pattern mask (See col. 41, ll. 1-31] which teach growing a GaN crystal through the pattern mask on the nitrogen polar surface of the GaN seed (601) by ammonothermal growth. Since growth is performed on the nitrogen-polar (i.e., -c plane), the differing growth rates in the vertical and lateral direction will necessarily produce or, alternatively, would be reasonably expected to produce at least some type of gap between the underlying mask and coalescing growth fronts from adjacent linear openings as growth in the vertical direction proceeds more quickly than growth in the lateral direction. Moreover, since the method of D’Evelyn performs each and every step of the claimed process it must necessarily produce the same results, namely the formation of a gap between the GaN crystal and the pattern mask. It is axiomatic that one who performs the steps of the known process must necessarily produce all of its advantages. Mere recitation of a newly discovered function or property, that is inherently possessed by things in the prior art does not cause a claim drawn to these things to distinguish over the prior art. Therefore, the formation of a gap between the GaN crystal and the pattern mask, if not clearly envisaged, would be reasonably expected by the skilled artisan. See Leinoff v. Louis Milona & Sons, Inc. 220 USPQ 845 (CAFC 1984).); and
processing the GaN crystal to obtain the C-plane GaN substrate (see, for example, col. 47, ll. 17-25 which teach that the ammonothermally-grown GaN crystal may be sliced, lapped, and polished to form c-plane GaN wafers).
Alternatively, in at least Figs. 1-5 and ¶¶[0034]-[0056] as well as elsewhere throughout the entire reference Jang teaches an analogous method of growing a GaN epitaxial layer (27) onto a substrate (21) having a mask pattern (25) formed thereupon. Coalescence of adjacent growth fronts produces a plurality of voids (28a) and (28b) which form between the epitaxial layer (27) and the mask (25) in order to facilitate removal of the laterally overgrown epitaxial layer (29) from the underlying substrate (21) by weakening the bond between the epitaxial layer (27) and the substrate (21). Thus, a person of ordinary skill in the art prior to the effective filing date of the invention would be motivated to perform ammonothermal growth in the method of D’Evelyn such that growth proceeds faster vertically than laterally during at least the initial stages of growth so that gaps are formed between the epitaxial layer and the mask in order to promote ease of removal of the laterally overgrown epitaxial layer. The combination of prior art elements according to known methods to yield predictable results has been held to support a prima facie determination of obviousness. All the claimed elements are known in the prior art and one skilled in the art could combine the elements as claimed by known methods with no change in their respective functions, with the combination yielding nothing more than predictable results to one of ordinary skill in the art. KSR International Co. v. Teleflex Inc., 550 U.S. 398, __, 82 USPQ2d 1385, 1395 (2007). See also, MPEP 2143(A).
Regarding claim 20, D’Evelyn teaches that the plurality of parallel linear openings is arranged at a pitch of less than 4 mm (see Figs. 6C4-5 & 6D1-2 and col. 41, l. 24 to col. 42, l. 24 teaching that the pattern may be comprised of a plurality of parallel linear openings with a pitch L of between 5 mm and 20 mm).
Response to Arguments
Applicant's arguments filed December 19, 2025, have been fully considered but they are not persuasive.
Applicants’ proposed title has been reviewed, but remains overly generic as it does not provide any indication as to the claimed method used to produce a C-plane GaN substrate. A proposed replacement title has been suggested by the Examiner.
Applicants argue that claim 1 of the ‘743 patent does not suggest the pitch recited in claim 19 of the instant application and does not recite the step of processing the GaN crystal. See applicants’ 12/19/2025 reply, pp. 4-5. Applicants’ argument is noted, but it is pointed out that claim 2 of the ‘743 patent depends from claim 1 and specifically recites that the pitch is 3 mm or more and 20 mm or less which overlaps with a pitch of 10 mm or less as recited in claim 19 of the instant application. Moreover, the step of “processing the GaN crystal to obtain the C-plane GaN substrate” may be broadly interpreted as any process that results in or leads to the formation of the C-plane GaN substrate. In this case step (S3) of claim 1 of the ‘743 patent recites “forming a GaN crystal layer” while the last wherein clause further recites that the GaN crystals grow laterally above the pattern mask and coalesce with each other. Each of these steps may be broadly considered as contributing towards “processing the GaN crystal” as recited in claim 19 of the instant application. Alternatively, as noted supra with respect to the 35 U.S.C. 103 rejection of claim 19, col. 47, ll. 17-25 of D’Evelyn may be relied upon to teach slicing, lapping, and polishing the ammonothermally-grown GaN crystal to form c-plane GaN wafers.
Applicants initially argue against the 35 U.S.C. 103 rejection of claim 19 by contending that col. 49, ll. 36-41 of D’Evelyn teach that ammonothermal growth causes the GaN to grow laterally and coalesce fully such that gaps do not form. Id. at pp. 5-6. Applicants’ argument is noted, but is unpersuasive. In col. 49, ll. 36-41 D’Evelyn merely teaches that the GaN layer “grows laterally, and coalesces fully, forming ammonothermal GaN layers approximately 1160 micrometers thick.” Just because the GaN layer grows laterally and coalesces fully this does not automatically mean that gaps do not form because the GaN layer also grows vertically during this process. This is evident from Figs. 13C-E of the instant application which show that the GaN layer (40) also grows laterally and coalesces fully, but still forms a void (V) above the masked regions (30). Accordingly, D’Evelyn does not explicitly teach that ammonothermal growth on a masked substrate prohibits the formation of gaps.
Applicants then argue that there are sufficient differences between the methods of D’Evelyn and the methods disclosed in the present application that the process of D’Evelyn would not necessarily result in the formation of a gap between the GaN crystal and the pattern mask. Id. at pp. 6-7. Applicants’ argument is noted, but as an initial mater it is pointed out that applicants’ argument appears to be based upon features which are not claimed. As written, claim 19 merely recites performing ammonothermal growth of GaN such that at least one gap is formed and does not specifically recite the growth conditions including, for example, the temperature, pressure, duration, and the type of mineralizer used. Since the method of D’Evelyn also performs ammonothermal growth on a mask having the same dimensions it is inherent that it would also produce at least one gap as claimed. It is also pointed out that col. 3, ll. 47-56 of D’Evelyn specifically teach that the mask has a thickness of between 10 nm to 100 mm while the openings have a width of between 1 mm and 5 mm and a pitch of between 5 mm and 20 mm which substantially overlaps the mask dimensions in ¶¶[0185]-[0188] of the published application. In ¶[0104]-[0105] of the published application the specification teaches the use of an ammonium halide such as NH4F, NH4Cl, NH4Br, or NH4I as a mineralizer while col. 42, ll. 14-17 of D’Evelyn teaches the use of the same ammonium halides as a mineralizer. Then in at least ¶¶[0274]-[0276] of the published application the specification teaches that the growth temperature is preferably in the range of 550 to 700 °C, the growth pressure is 100 to 250 MPa, and the temperature difference between the growth and dissolution zones is about 5 °C. In at least col. 42, ll. 25-31 D’Evelyn teaches that ammonothermal growth is performed at a temperature above 400 °C and a pressure above 50 MPa with col. 49, ll. 25-35 of the Example specifically teaching the use of a NH4F mineralizer and heating the capsule to a temperature of approximately 650 °C. Since the conditions used for ammonothermal growth over a patterned mask as disclosed in D’Evelyn appear to be substantially the same as those disclosed in the instant application it is the Examiner’s position that the formation of at least one gap is a necessary result rather than a possible result. It is also noted that claim 19 merely recites that “at least one gap” is formed between the GaN crystal and the pattern mask. Thus, the claim only requires that a minimum of one gap is formed somewhere on the GaN seed between the pattern mask and the GaN crystal. GaN epitaxial growth necessarily will not proceed perfectly in all instances such that the GaN crystal is flush with the surface of the pattern mask and a gap is never formed therebetween. Since the parallel linear openings are arranged up to 10 mm apart, lateral epitaxial growth must necessarily proceed by a distance of up to 10 mm without any separation between the growing crystal and underlying mask in order to avoid forming at least one gap as claimed. Due to the presence of imperfections and experimental variations in the crystal growth process the probability that a gap never forms between the mask and the ammonothermally grown GaN crystal is essentially zero.
Finally, applicants argue that since the method of Jang utilizes MOCVD rather than ammonothermal growth to produce gaps between the GaN crystal and substrate, an ordinary artisan would not look to combine the teachings of Jang with those of D’Evelyn. Id. Applicants’ argument is noted, but remains unpersuasive. Even though Jang utilizes MOCVD rather than ammonothermal growth to produce a GaN epitaxial layer, the teachings of Jang are relevant for all they reasonably suggest to a person of ordinary skill in the art. In Figs. 2-4 and ¶¶[0045]-[00] of Jang the growth conditions are adjusted such that voids (28a) and (28b) are formed above the masked regions (25) such that the resulting epitaxial layer (28) can be easily separated from the growth substrate (21) through the application of stress. Thus, as detailed supra with respect to the rejection of claim 19, a person of ordinary skill in the art would be motivated to utilize routine experimentation to determine the optimal growth conditions during ammonothermal growth which result in the formation of gaps which are located between the masked regions and the resulting GaN crystal by controlling the rates of vertical and lateral growth. These gaps also have the effect of weakening the bond between the GaN crystal and the substrate such that the GaN crystal can be more easily detached once growth is complete. Thus, a person of ordinary skill in the art would be motivated to form these gaps during ammonothermal growth in the method of D’Evelyn such that the resulting GaN crystal may be more easily detached from the underlying substrate by the application of stress.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KENNETH A BRATLAND JR whose telephone number is (571)270-1604. The examiner can normally be reached Monday- Friday, 7:30 am to 4:30 pm EST.
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/KENNETH A BRATLAND JR/Primary Examiner, Art Unit 1714