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 without traverse of Species I (claims 1, 5-8, and 12) in the reply filed on 3/16/2026 is acknowledged.
Claims 2-4, 9-11, and 13-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 3/16/2026.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Objections
Claim 1 is objected to because of the following informalities: in line 4, "surfaces" should be amended to read -surface-. Appropriate correction is required.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 1, 5, and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kagawa et al (JP 2020-170782 and Kagawa hereinafter; a machine translation is used as an English language equivalent) in view of .
As to claims 1, 5, and 12: Kagawa discloses [claim 1] a semiconductor device (Fig. 25) comprising: a substrate (1; [0026]) having a first principal surface (1a; [0011]) and a second principal surface (bottom surface of 1) opposed to each other in a thickness direction (vertical direction), wherein the first principal surfaces (1a) includes a step (6a and 6b; [0061]) in a plan view from the thickness direction (vertical direction); an insulating film (2; [0026]) on the first principal surface (1a) of the substrate (1); a first electrode layer (21; [0027]) on the insulating film (2) and positioned within a boundary (21 is formed between the step 6a and 6b; claim doesn’t state that the first electrode is formed only within the boundary, just that it is at least within the boundary) defined by the step (6a and 6b) in the plan view; a dielectric film (3; [0028]) on the first electrode layer (21); a second electrode layer (22; [0029]) on the dielectric film (3); a moisture-resistant film (moisture-resistant film made of SiN below 41; [0031]) on the dielectric film (3) and the second electrode layer (22); a protective layer (41; [0031]) on the moisture-resistant film (moisture-resistant film made of SiN below 41); and an outer electrode (62; [0032]) penetrating through the protective layer (41); [claim 5] wherein the insulating film (2), the dielectric film (3), and the moisture-resistant film (moisture-resistant film made of SiN below 41) extend along the step (the three films all extend along a direction of the step comprising 6a and 6b); [claim 12] wherein the outer electrode (62) is a first outer electrode (62) connected to the first electrode layer (21); and the semiconductor device includes a second outer electrode (61; [0032]) penetrating the protecting layer (41) and connected to the second electrode layer (22).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
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.
Claims 6 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Kagawa.
As to claims 6 and 7: Although the structure disclosed by Kagawa shows substantial features of the claimed invention (discussed in paragraph 9 above), it fails to expressly disclose:
[claim 6] wherein a height of the step is 0.1% to 20% of a thickness of a portion of the substrate where the first electrode layer is positioned; [claim 7] wherein a width of the step is 0.1% to 20% of a width of the substrate, and length of the step is 0.1% to 20% of a length of the substrate.
Kagawa fails to expressly disclose the dimensions of step 6a and 6b. However, a person having ordinary skill in the art before the effective filing date of the claimed invention would have had it within their ordinary capabilities to form the step 6a and 6b such that the height, width, and length are within the claimed range (relative to the respective substrate dimension) as the length, width, and height are result effective variables as they affect the charge retention capability of the capacitor as the dimensions of the groove change correspond to the side of the capacitor.
Allowable Subject Matter
Claim 8 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH C NICELY whose telephone number is (571)270-3834. The examiner can normally be reached Monday-Friday 7:30 am - 4 pm, EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Steven Gauthier can be reached at (571) 270-0373. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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JOSEPH C. NICELY
Primary Examiner
Art Unit 2813
/JOSEPH C. NICELY/Primary Examiner, Art Unit 2813
3/31/2026
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