DETAILED ACTION
This Action is responsive to the communication filed on 11/29/2023.
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 .
In the event the determination of the status of the application as subject to 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.
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.
Initially, and with respect to Claim 8, note that a “product-by-process” claim is directed to the product per se, no matter how actually made. See In re Thorpe, 227 USPQ 964 (CAFC, 1985) and the related case law cited therein which makes it clear that it is the final product per se which must be determined in a “product-by-process” claim, and not the patentability of the process, and that, as here, an old or obvious product produced by a new method is not patentable as a product, whether claimed in “product-by-process” claims or not. As stated in Thorpe,
[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA); In re Pilkington, 411 F.2d 1345, 1348, 162 USPQ 145, 147 (CCPA 1969); Buono v. Yankee Maid Dress Corp., 77 F.2d 274, 279, 26 USPQ 57, 61 (2d. Cir. 1935).
Note that the applicants have the burden of proof in such cases, as the above case law makes clear.
Claims 1 and 7-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Komiya (US 2020/0083239).
Regarding claim 1, Komiya (see, e.g., FIG. 1) discloses a semiconductor device, comprising:
a semiconductor substrate S (Para 0065); and
a substrate-side insulating layer 101 (2nd from top), 111A (top), 121A (top), 101 (top), disposed on the semiconductor substrate S, wherein the substrate-side insulating layer 101 (2nd from top), 111A (top), 121A (top), 101 (top) includes:
a first oxide film 101 (2nd from top) (Para 0069);
a second oxide film 101 (top), disposed on the first oxide film 101 (2nd from top) and separated from the first oxide film 101 (2nd from top) (Para 0069); and
a first nitride insulating layer 111A (top) and a second nitride insulating layer 121A (top) disposed between the first oxide film 101 (2nd from top) and the second oxide film 101 (top), wherein the second nitride insulating layer 121A (top) has a film density higher than a film density of the first nitride insulating layer 111A (top) (Para 0090, Para 0145).
Regarding claim 7, Komiya (see, e.g., FIG. 1) teaches semiconductor device of Claim 1, wherein the first nitride insulating layer 111A (top) has an upper surface e.g., upper surface 111A (top) and a lower surface e.g., lower surface of 111A (top) facing opposite to each other in a thickness direction of the substrate-side insulating layer 101 (2nd from top), 111A (top), 121A (top), 101 (top), the second nitride insulating layer 121A (top) is provided on the first nitride insulating layer 111A (top), the substrate-side insulating layer 101 (2nd from top), 111A (top), 121A (top), 101 (top) further includes a third nitride insulating layer 121A (2nd from top) in contact e.g., indirect contact with the lower surface e.g., upper surface 111A (top) of the first nitride insulating layer 111A (top), and the third nitride insulating layer 121A (2nd from top) has a film density higher than the film density of the first nitride insulating layer 111A (top) (Para 0090, Para 0145).
Regarding claim 8, Komiya (see, e.g., FIG. 1) teaches semiconductor device of Claim 1, wherein the substrate-side insulating layer 101 (2nd from top), 111A (top), 121A (top), 101 (top) is a plurality of insulating units including the second oxide film 101 (top), the first nitride insulating layer 111A (top) and the second nitride insulating layer 121A (top) (Para 0090, Para 0145).
Examiner Note: The following limitation is a product-by process limitation: “the substrate-side insulating layer is formed by laminating a plurality of insulating units.” "[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). In this case, whether or not the plurality of insulating units is laminated does not change the product, i.e., a plurality of insulating layers bonded to together.
Regarding claim 9, Komiya (see, e.g., FIG. 1) teaches semiconductor device of Claim 1, wherein the substrate-side insulating layer 101 (2nd from top), 111A (top), 121A (top), 101 (top) includes: a first insulating unit 111A (top), 121A (top), 101 (top), including the second oxide film 101 (top), the first nitride insulating layer 111A (top) and the second nitride insulating layer 121A (top) (Para 0145); and a second insulating unit 111A (2nd from top), 101 (third from top) including: a fourth nitride insulating layer 111A (2nd from top), formed of same material as the first nitride insulating layer 111A (top); and a third oxide film 101 (third from top), disposed on the fourth nitride insulating layer 111A (2nd from top) (Para 0090, Para 0145).
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.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Komiya (US 2020/0083239), in view of Kobayashi (US 2023/0197686).
Regarding claim 12, although Komiya shows substantial features of the claimed invention, Komiya fails to expressly teach a support member, supporting the semiconductor device; and a sealing resin, sealing the semiconductor device and the support member.
Kobayahi (see, e.g., FIG. 1) teaches a semiconductor module, comprising: the semiconductor device e.g., MD(1) (Para 0045); a support member PS, supporting the semiconductor device e.g., MD(1) (Para 0046); and a sealing resin 20, sealing the semiconductor device e.g., MD(1) and the support member PS for the purpose of electrically connecting the memory device and the controller to external electronic device(s) (Para 0045, Para 0046, Para 0129).
The combination of Komiya (see, e.g., FIG. 1) / Kobayahi (see, e.g., FIG. 1) teaches a semiconductor module, comprising: the semiconductor device e.g., semiconductor memory device (as taught by Komiya) of Claim 1; a support member PS (as taught by Kobayashi), supporting the semiconductor device e.g., semiconductor memory device (as taught by Komiya); and a sealing resin 20 (as taught by Kobayashi), sealing the semiconductor device e.g., semiconductor memory device (as taught by Komiya) and the support member PS (as taught by Kobayashi).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include the support member as described by Kobayashi to the memory device of Komiaya for the purpose of electrically connecting the memory device and the controller to external electronic device(s) (Para 0046).
Allowable Subject Matter
Claims 2-6, 10-11, and 13 are 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 ANTONIO CRITE whose telephone number is (571) 270-5267. The examiner can normally be reached Monday - Friday, 10:00 am - 6:30 pm.
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/ANTONIO B CRITE/Primary Examiner, Art Unit 2817