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 .
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.
Claims 7-16 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 applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 7 and 11 discloses an “a heat dissipation substrate comprising an insulating material having a thermal conductivity higher than that of InP”.
Paragraph [0065] discloses “[t]he heat dissipation substrate 101 can be made of, for example, a material having higher thermal conductivity and higher insulation than that of InP, such as high-resistance Si, SiC, AlN, and diamond.”
Si, SiC, AlN, and diamond are semiconductive substrates not insulating substrates.
Toshiba (https://toshiba.semicon-storage.com/us/semiconductor/knowledge/e-learning/basics-of-schottky-barrier-diodes/chap1/chap1-1.html) defines the differences between conductors, semiconductors and insulators.
Conductors: Materials that easily conduct electricity (i.e., materials with high electrical conductivity and low electrical resistivity)
Semiconductors: Materials with an electrical conductivity value that falls between that of a conductor and that of an insulator.
Insulators: Materials that do not readily conduct electricity (i.e., materials with high electrical resistivity).
Conductors have electrical resistivity on the order of 10-8 to 10-4 Ωcm whereas insulators have electrical resistivity on the order of 108 to 1018 Ωcm. Semiconductors have an electrical resistivity value between those of conductors and insulators—10-4 to 108 Ωcm.
The applicant fails to explicitly disclose a specific example of a insulating substrate.
MPEP 2163 II 3 (a) ii discloses:
The Federal Circuit has explained that a specification cannot always support expansive claim language and satisfy the requirements of 35 U.S.C. 112 “merely by clearly describing one embodiment of the thing claimed.” LizardTech v. Earth Resource Mapping, Inc., 424 F.3d 1336, 1346, 76 USPQ2d 1731, 1733 (Fed. Cir. 2005). The issue is whether a person skilled in the art would understand inventor to have invented, and been in possession of, the invention as broadly claimed. In LizardTech, claims to a generic method of making a seamless discrete wavelet transformation (DWT) were held invalid under 35 U.S.C. 112, first paragraph, because the specification taught only one particular method for making a seamless DWT and there was no evidence that the specification contemplated a more generic method. Id.
In this case, the applicant claims an insulating substrate, but only discloses semiconductive substrate such as Si, SiC, AlN, and diamond. One of ordinary skill would not recognize that the inventor in possession of an “a heat dissipation substrate comprising an insulating material having a thermal conductivity higher than that of InP”. Therefore, the examiner submits the applicant does not have possession of “a heat dissipation substrate comprising an insulating material having a thermal conductivity higher than that of InP”.
The Federal Circuit has held:
As we explained in Ariad, the written description inquiry looks to "the four corners of the specification" to discern the extent to which the inventor(s) had possession of the invention as broadly claimed. Ariad, 598 F.3d at 1351 ; see also Lockwood v. Am. Airlines, Inc., 107 F.3d 1565 , 1571 (Fed. Cir. 1997) ("It is the disclosures of the applications that count."). The knowledge of ordinary artisans may be used to inform what is actually in the specification, see Lockwood, 107 F.3d at 1571 , but not to teach limitations that are not in the specification, even if those limitations would be rendered obvious by the disclosure in the specification. Id. at 1571-72 .
Rivera v. Int'l Trade Comm'n, 857 F.3d 1315, 1322 (Fed. Cir. 2017)
In this case it might be obvious to have “a heat dissipation substrate comprising an insulating material having a thermal conductivity higher than that of InP”, but the specification as originally filed fails to disclose any specific insulating materials having a thermal conductivity higher than that of InP.
Examiner’s Note: the applicant could easily amend the claims to disclose “a semiconductive material, such as having a thermal conductivity higher than that of InP” in order to overcome the 112(a) rejection.
Claims 7-16 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The term “insulating material” in claim 7 is used by the claim to mean “semiconductive material,” while the accepted meaning is “semiconductive material”. The term is indefinite because the specification does not clearly redefine the term.
Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The term “insulating material” in claim 11 is used by the claim to mean “semiconductive material,” while the accepted meaning is “semiconductive material”. The term is indefinite because the specification does not clearly redefine the term.
Paragraph [0065] discloses “[t]he heat dissipation substrate 101 can be made of, for example, a material having higher thermal conductivity and higher insulation than that of InP, such as high-resistance Si, SiC, AlN, and diamond.”
Si, SiC, AlN, and diamond are semiconductive substrates not insulating substrates.
Toshiba (https://toshiba.semicon-storage.com/us/semiconductor/knowledge/e-learning/basics-of-schottky-barrier-diodes/chap1/chap1-1.html) defines the differences between conductors, semiconductors and insulators.
Conductors: Materials that easily conduct electricity (i.e., materials with high electrical conductivity and low electrical resistivity)
Semiconductors: Materials with an electrical conductivity value that falls between that of a conductor and that of an insulator.
Insulators: Materials that do not readily conduct electricity (i.e., materials with high electrical resistivity).
Conductors have electrical resistivity on the order of 10-8 to 10-4 Ωcm whereas insulators have electrical resistivity on the order of 108 to 1018 Ωcm. Semiconductors have an electrical resistivity value between those of conductors and insulators—10-4 to 108 Ωcm.
Examiner’s Note: the applicant could easily amend the claims to disclose “a semiconductive material, such as having a thermal conductivity higher than that of InP” in order to overcome the 112(b) rejection.
Allowable Subject Matter
Claims 7-16 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), 1st paragraph, and 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Mays (US 2006/0072296) disclose an HBT (heterobipolar transistor) but fails to disclose a heat dissipation substrate comprising an semiconducting material having a thermal conductivity higher than that of InP; a first emitter electrode on the heat dissipation substrate; a second emitter electrode on the first emitter electrode and having an area smaller than that of the first emitter electrode; an emitter layer comprising a first compound semiconductor on the second emitter electrode; a base layer comprising a second compound semiconductor on the emitter layer; a collector layer comprising a third compound semiconductor on the base layer; a collector contact layer comprising a fourth compound semiconductor on the collector layer; a collector electrode on the collector contact layer; a base electrode configured to be connected to the base layer; a protective layer on the heat dissipation substrate covering a side of an element part, the first emitter electrode, and the base electrode the element part comprising the second emitter electrode, the emitter layer, the base layer, the collector layer, the collector contact layer; an emitter contact electrode in contact with a top of the first emitter electrode around the element part and penetrating the protective layer; an emitter wiring on the protective layer and connected to the emitter contact electrode; a heat dissipation structure comprising a metal and having one end in contact with a top of the heat dissipation substrate around the element part and extending through the protective layer; a collector wiring on the protective layer in contact with the top of the heat dissipation substrate and the collector electrode; a base contact electrode connected to the base electrode and penetrating the protective layer; and a base wiring on the protective layer and connected to the base contact electrode (claims 7-10) and performing crystal growth of an etch stop layer, a collector contact forming layer, a collector forming layer, a base forming layer, and an emitter forming layer in this order, wherein each of the etch stop layer, the collector contact forming layer, the collector forming layer, the base forming layer, and the emitter forming layer comprise a compound semiconductor on a growth substrate comprising InP;forming an element part by forming a second emitter electrode on the emitter forming layer, processing the emitter forming layer, the base forming layer, and the collector forming layer to form an emitter layer, a base layer, and a collector layer, and forming a base electrode on the base layer around the emitter layer; forming a first structure body comprising a first metal on the growth substrate around the element part; filling a periphery of the element part and forming a first protective layer in which one end side of the first structure body and the second emitter electrode are exposed and a surface is flattened; forming a first adhesive metal layer on the flattened surface of the first protective layer; preparing a heat dissipation substrate comprising an semiconductive material having higher thermal conductivity than that of InP and in which a second adhesive metal layer is formed on the surface; bringing the first adhesive metal layer of the growth substrate and the second adhesive metal layer of the heat dissipation substrate into contact with each other so as to face each other, forming an adhesive metal layer in which the first adhesive metal layer and the second adhesive metal layer are integrated, and laminating the growth substrate and the heat dissipation substrate; removing the growth substrate and the etch stop layer, bringing the element part into a state of being formed on the heat dissipation substrate in a state where the second emitter electrode is disposed on a side of the heat dissipation substrate, and exposing the collector contact forming layer; forming a collector electrode on the collector contact forming layer; forming a collector contact layer by processing the collector contact forming layer and further removing a part of the collector layer and the base layer and forming a contact hole reaching a part of the base electrode; forming a first emitter contact electrode comprising a part of an emitter contact electrode and a first heat dissipation structure comprising a second metal and comprising a part of a heat dissipation structure and forming a base contact electrode on the first structure body; forming an emitter contact layer by processing the first structure body and forming a second emitter contact electrode connecting to the first emitter contact electrode, forming a second heat dissipation structure comprising a part of the heat dissipation structure and connected to the first heat dissipation structure, forming a first emitter electrode by processing the adhesive metal layer, and forming a third heat dissipation structure connected to the second heat dissipation structure to form the heat dissipation structure comprising the first heat dissipation structure, the second heat dissipation structure, and the third heat dissipation structure; forming a second protective layer on the first protective layer to form a protective layer comprising the first protective layer and the second protective layer; and forming an emitter wiring, a base wiring, and a collector wiring.
Tsai et al. (US 2014/0321390) disclose an HBT (heterobipolar transistor) but fails to disclose a heat dissipation substrate comprising an semiconducting material having a thermal conductivity higher than that of InP; a first emitter electrode on the heat dissipation substrate; a second emitter electrode on the first emitter electrode and having an area smaller than that of the first emitter electrode; an emitter layer comprising a first compound semiconductor on the second emitter electrode; a base layer comprising a second compound semiconductor on the emitter layer; a collector layer comprising a third compound semiconductor on the base layer; a collector contact layer comprising a fourth compound semiconductor on the collector layer; a collector electrode on the collector contact layer; a base electrode configured to be connected to the base layer; a protective layer on the heat dissipation substrate covering a side of an element part, the first emitter electrode, and the base electrode the element part comprising the second emitter electrode, the emitter layer, the base layer, the collector layer, the collector contact layer; an emitter contact electrode in contact with a top of the first emitter electrode around the element part and penetrating the protective layer; an emitter wiring on the protective layer and connected to the emitter contact electrode; a heat dissipation structure comprising a metal and having one end in contact with a top of the heat dissipation substrate around the element part and extending through the protective layer; a collector wiring on the protective layer in contact with the top of the heat dissipation substrate and the collector electrode; a base contact electrode connected to the base electrode and penetrating the protective layer; and a base wiring on the protective layer and connected to the base contact electrode (claims 7-10) and performing crystal growth of an etch stop layer, a collector contact forming layer, a collector forming layer, a base forming layer, and an emitter forming layer in this order, wherein each of the etch stop layer, the collector contact forming layer, the collector forming layer, the base forming layer, and the emitter forming layer comprise a compound semiconductor on a growth substrate comprising InP;forming an element part by forming a second emitter electrode on the emitter forming layer, processing the emitter forming layer, the base forming layer, and the collector forming layer to form an emitter layer, a base layer, and a collector layer, and forming a base electrode on the base layer around the emitter layer; forming a first structure body comprising a first metal on the growth substrate around the element part; filling a periphery of the element part and forming a first protective layer in which one end side of the first structure body and the second emitter electrode are exposed and a surface is flattened; forming a first adhesive metal layer on the flattened surface of the first protective layer; preparing a heat dissipation substrate comprising an semiconductive material having higher thermal conductivity than that of InP and in which a second adhesive metal layer is formed on the surface; bringing the first adhesive metal layer of the growth substrate and the second adhesive metal layer of the heat dissipation substrate into contact with each other so as to face each other, forming an adhesive metal layer in which the first adhesive metal layer and the second adhesive metal layer are integrated, and laminating the growth substrate and the heat dissipation substrate; removing the growth substrate and the etch stop layer, bringing the element part into a state of being formed on the heat dissipation substrate in a state where the second emitter electrode is disposed on a side of the heat dissipation substrate, and exposing the collector contact forming layer; forming a collector electrode on the collector contact forming layer; forming a collector contact layer by processing the collector contact forming layer and further removing a part of the collector layer and the base layer and forming a contact hole reaching a part of the base electrode; forming a first emitter contact electrode comprising a part of an emitter contact electrode and a first heat dissipation structure comprising a second metal and comprising a part of a heat dissipation structure and forming a base contact electrode on the first structure body; forming an emitter contact layer by processing the first structure body and forming a second emitter contact electrode connecting to the first emitter contact electrode, forming a second heat dissipation structure comprising a part of the heat dissipation structure and connected to the first heat dissipation structure, forming a first emitter electrode by processing the adhesive metal layer, and forming a third heat dissipation structure connected to the second heat dissipation structure to form the heat dissipation structure comprising the first heat dissipation structure, the second heat dissipation structure, and the third heat dissipation structure; forming a second protective layer on the first protective layer to form a protective layer comprising the first protective layer and the second protective layer; and forming an emitter wiring, a base wiring, and a collector wiring.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRADLEY K SMITH whose telephone number is (571)272-1884. The examiner can normally be reached Monday-Friday, 10am-6pm.
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/BRADLEY SMITH/Primary Examiner, Art Unit 2817