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 .
Status of Claims
Claims 4 and 16-20 are cancelled. Claims 21-26 are newly added. Claims 1-3, 5-15 and 21-26 are pending. Claims 1, 2, 5, 6, 9, 12 and 14 are amended. Claim 1 is an independent claim. Claims 6-15 are withdrawn. Claims 1-3, 5 and 21-26 are currently examined on the merits.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “first silicon substrate,” “second silicon substrate” and “base,” must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 1 recites “…a first silicon substrate… a second substrate…the second substrate…first substrate…,” claim 2 recites “first silicon substrate,” claim 21 recites “second substrate… a second silicon substrate,” claim 22 recites “second substrate,” claim 23 recites “second substrate…first silicon substrate,” claim 24 recites “second substrate,” and claim 25 recites “second silicon substrate,” which are not disclosed in the specification. No new matter can be introduced.
Claim Rejections - 35 USC § 112
The following is a quotation 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 35 U.S.C. 112 (pre-AIA ), first paragraph:
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 1-3, 5 and 21-26 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(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.
Claim 1 recites "...second substrate… first substrate…", which is not described in the specification as originally filed. Specifically, second substrate and first substrate are broader than second silicon substrate and first silicon substrate as originally disclosed.
Claim 22 recites "... after bonding the second silicon substrate to the silicon-carbide epitaxial layer, the silicon-carbide epitaxial layer becomes buried between the silicon device layer and the second substrate," which is not described in the specification as originally filed.
Claim 23 recites "... the second substrate is bonded to a surface of the silicon-carbide epitaxial layer opposite the first silicon substrate," which is not described in the specification as originally filed.
Claim 24 recites "... the second substrate is bonded to the silicon- carbide epitaxial layer after forming the silicon-carbide epitaxial layer," which is not described in the specification as originally filed.
Claim 25 recites "... after bonding the second silicon substrate to the silicon-carbide epitaxial layer, the silicon-carbide epitaxial layer becomes buried between the silicon device layer and the second silicon substrate," which is not described in the specification as originally filed.
Claim 26 recites "... forming an electronic device, optical device, optoelectronic device, integrated circuit, and/or photonic integrated circuit, at least in part, in the silicon seed layer," which is not described in the specification as originally filed.
Claim Rejections - 35 USC § 112
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 1-3, 5 and 21-26 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 pre-AIA the applicant regards as the invention.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 1 recites the broad recitation “first substrate”, and the claim also recites “first silicon substrate” which is the narrower statement of the limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Also, there is insufficient antecedent basis for this limitation "the first substrate” in the claim. Clarification and/or correction are/is required. Claims 2, 3, 5 and 21-26 are rejected because they depend on claim 1.
Claim 2 recites the limitation "the base”. There is insufficient antecedent basis for this limitation in the claim.
The recited in claim 5 “The method of claim 5…” constitutes an indefinite subject matter. It is not clear how a claim depends on itself. Therefore, the metes and bounds of claim 5 are not readily ascertainable. Clarification and/or correction are/is required.
Claim 22 recites the limitation "the second silicon substrate” and “the silicon device layer”. There is insufficient antecedent basis for this limitation in the claim.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 22 recites the broad recitation “second substrate”, and the claim also recites “second silicon substrate” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 25 recites the limitation "the second silicon substrate”. There is insufficient antecedent basis for this limitation in the claim.
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 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 of this title, 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-3, 5, 21-23 and 26 are rejected under 35 U.S.C. 103 as being unpatentable over Myronov et al (US 20180209063 A1, “Myronov”) in view of Murphy et al (US 20090321747 A1, “Murphy”) and Po-Yu Yang (US 20220130956 A1, “Yang”).
Regarding claim 1, Myronov teaches a method of manufacturing a silicon-carbide structure (platform) comprising providing a silicon handle layer (first silicon substrate) (0010, 0011, 0014, 0046, 0077), a buried oxide (BOX) layer (0010, 0011, 0014, 0046, 0077), and a top/upper silicon layer/surface (silicon seed layer) (0010, 0011, 0014, 0046, 0077), the top/upper silicon surface (seed layer) having a (001) surface orientation (silicon seed layer having a (001) crystal lattice plane) and a top/upper surface parallel to the (001) crystal lattice plane (0027, 0058-0060,0066, 0068, 0073 and claim 42); and forming a silicon-carbide epitaxial layer by epitaxial growth directly on the top surface of the silicon seed layer (abstract, 0010-0012, 0058, 0059 and claim 26).
Myronov teaches the silicon-carbide epitaxial layer, the first silicon substrate and the BOX layer as addressed above, but does not explicitly teach providing a second substrate; bonding the second substrate to the silicon-carbide epitaxial layer; and removing the first substrate to expose the BOX layer. However, Murphy teaches a method for processing a multilayered wafer, wherein a handle wafer (second substrate) is provided to be bonded to a layer comprising silicon carbide, and a donor wafer/layer (first substrate) is removed (figs 2-7, abstract, 0079). Therefore, it would have been obvious that one of ordinary skill in the art before the effective filing date of the claimed invention would have modified Myronov per teachings of Murphy in order to provide structures for further application for example fabricating high-quality device (Murphy 0009). Myronov/Murphy teaches the box layer as addressed above, but does not explicitly teach expose the box layer. However, Yang teaches a method, wherein a buried oxide layer is exposed by removing a silicon substrate (0006, 0012). Therefore, it would have been obvious that one of ordinary skill in the art before the effective filing date of the claimed invention would have modified Myronov/Murphy per teachings of Yang in order to form a high resistivity substrate for further making devices (Yang abstract and 0001-0007).
Regarding claim 2, Myronov/Murphy/Yang teaches that a base comprises a silicon-on-insulator (SOI) substrate comprising the first silicon substrate (Myronov 0046, 0077), the BOX layer (Myronov 0077; Yang 0006, 0012), and a silicon top layer (silicon device layer) (Myronov 0077), and wherein the silicon seed layer comprises the silicon device layer of the SOI substrate (Myronov 0010, 0011, 0046, 0066, 0068, 0077).
Regarding claim 3, Myronov/Murphy/Yang teaches forming an electronic device, at least in part in the silicon-carbide epitaxial layer and/or in the silicon device layer (Myronov 0002, 0003, 0032, 0033, 0064, 0065).
Regarding claim 5, Myronov/Murphy/Yang teaches forming an electronic device, at least in part in the silicon-carbide epitaxial layer and/or in the silicon device layer (Myronov 0002, 0003, 0032, 0033, 0064, 0065).
Regarding claim 21, Myronov/Murphy/Yang teaches that the second substrate is a second silicon substrate (Murphy abstract, 0079).
Regarding claim 22, Myronov/Murphy/Yang teaches that after bonding the second silicon substrate to the silicon-carbide epitaxial layer, the silicon-carbide epitaxial layer becomes buried between the silicon device layer and the second substrate (Myronov 0010, 0011, 0046, 0066, 0068, 0077; Murphy figs 2-7, abstract, 0079). Moreover, it is well-established that selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results. Exparte Rubin, 128 USPQ 440 (Bd. Pat. App. 1959). Also see MPEP 2144.04 IV C.
Regarding claim 23, Myronov/Murphy/Yang teaches that the second substrate is bonded to a surface of the silicon-carbide epitaxial layer opposite the first silicon substrate (Murphy figs 2-7, abstract, 0079).
Regarding claim 26, Myronov/Murphy/Yang teaches forming an electronic device, at least in part, in the silicon top/upper (device) layer (Myronov 0002, 0003, 0032, 0033, 0064, 0065).
Claims 24 and 25 are rejected under 35 U.S.C. 103 as being unpatentable over Myronov/Murphy/Yang as applied to claims 1 and 2 above, and further in view of Koga Yoshihiro (DE 102015218218 A1, machine translation, “Yoshihiro”),
Regarding claim 24, Myronov/Murphy/Yang teaches the second substrate and the silicon-carbide epitaxial layer as addressed above, but does not explicitly teach that the second substrate is bonded to the silicon-carbide epitaxial layer after forming the silicon-carbide epitaxial layer. However, Yoshihiro (entire document) teaches a method of manufacturing a multi-layered structure, wherein a silicon carbide layer is formed on a fist silicon wafer, and a second silicon wafer is bonded to the silicon-carbide epitaxial layer after forming the silicon-carbide epitaxial layer (0008, 0021-0030, 0032-0035, 0050-0053, claims 1 and 5-7). Therefore, it would have been obvious that one of ordinary skill in the art before the effective filing date of the claimed invention would have modified Myronov/Murphy/Yang per teachings of Yoshihiro in order to provide suitable structures for fabricating various devices (Yoshihiro 0002). Moreover, it is well-established that selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results. Exparte Rubin, 128 USPQ 440 (Bd. Pat. App. 1959). Also see MPEP 2144.04 IV C.
Regarding claim 25, Myronov/Murphy/Yang teaches bonding the second silicon substrate to the silicon-carbide epitaxial layer, the silicon-carbide epitaxial layer becomes buried between the silicon device layer and the second silicon substrate (Murphy figs 2-7), but does not explicitly teach after bonding the second silicon substrate to the silicon-carbide epitaxial layer, the silicon-carbide epitaxial layer becomes buried between the silicon device layer and the second silicon substrate. However, Yoshihiro (entire document) teaches a method of manufacturing a multi-layered structure, wherein after bonding a second silicon substrate to a silicon-carbide epitaxial layer, the silicon-carbide epitaxial layer becomes buried between a first silicon substrate and the second silicon substrate (0008, 0021-0030, 0032-0035, 0050-0053, claims 1 and 5-7). Thus, it would have been obvious that one of ordinary skill in the art before the effective filing date of the claimed invention would have modified Myronov/Murphy/Yang per teachings of Yoshihiro in order to provide suitable structures for fabricating various devices (Yoshihiro 0002). It is also well-established that selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results. Exparte Rubin, 128 USPQ 440 (Bd. Pat. App. 1959). Also see MPEP 2144.04 IV C.
Response to Arguments
Applicant's arguments filed 02/18/2026 have been fully considered but they are not persuasive, because the arguments do not apply to the new ground rejection provided above.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., “there is no disclosure of a substrate bonded to an already formed epitaxial layer”) are not recited in the rejected claim 1. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Moreover, it is well-established that selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results. Exparte Rubin, 128 USPQ 440 (Bd. Pat. App. 1959). Also see MPEP 2144.04 IV C.
Applicant’s arguments that “There is no disclosure in Murphy of a second substrate or Si Handle wafer that is bonded to a multilayered semiconductor wafer including an epitaxial layer as claimed” have been considered, but not found persuasive. As addressed above, Murphy teaches that a second substrate or Si Handle wafer (for example silicon layer 21) that is bonded to a multilayered semiconductor wafer including an epitaxial layer (for example silicon carbide layer 44)”. Also, the newly recited reference to Koga Yoshihiro (DE 102015218218 A1, machine translation, “Yoshihiro”) also teaches this limitation/argument.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, it is examiner’s position that a prima facie case of obviousness is well-established per teachings/combination of the instantly cited references.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Hua Qi whose telephone number is (571)272-3193. The examiner can normally be reached 9am-6pm.
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/HUA QI/ Primary Examiner, Art Unit 1714