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 .
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.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1 to 23 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 to 11 and 21 to 29 of copending Application No. 17/940,759 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the sole difference between the instant claims and the copending claims is the material being specifically gallium nitride. However, the instant claims recite a Group III nitride and the same property ranges as the copending. It is well within the skill of the art that gallium nitride is a group III nitride. Therefore, it would have been obvious to one of ordinary skill in the art before the filing date of the instant invention to grow gallium nitride in the instant claims from the genius that is claimed.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Claim(s) 17 to 19, 24, 26 and 28 to 34 is/are rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by Wang 2020 (applied physics letters).
The Wang 2020 reference teaches a method of fabricating a heterostructure, note entire reference. The method comprising providing a substrate (page 2, column 1, accord paragraph, ScxAl1-xN samples were grown GaN and AIN templates on sapphire); then implementing a non-sputtered, epitaxial growth procedure at a growth temperature to form a wurtzite structure supported by the substrate (abstract, and page 2, column 1, second paragraph). The apparatus used was a MBE system equipped with a radio frequency (BF) plasma-assisted nitrogen source. The growth conditions included the growth temperature is about 650 degrees Celsius or less (page 2. column 1, second paragraph).
Regarding Claims 18, 26 and 29, the Wang 2020 reference teaches forming a semiconductor layer supported by the substrate before implementing the non-sputtered, epitaxial growth procedure such that the wurtzite structure is formed on the semiconductor layer (page 2, column 1, second paragraph).
Regarding Claim 19, 31 and 32, the Wang 2020 reference teaches wherein forming the semiconductor layer comprises forming a III-nitride layer (page 2, column 1, second paragraph, ScAlN).
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.
Claim(s) 1 to 4, 6, 11 to 13 and 25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al 2020.
The Wang et al 2020 reference teaches a method and product of a heterostructure note entire reference. The reference teaches the growth of pure wurtzite phase ScxAl1-xN with a Sc composition as high as X = 0.34 on GaN and AIN templates using plasma-assisted molecular beam epitaxy, page 2, column 1, second paragraph, ScxAl1-xN samples were grown on GaN and AIN templates on sapphire. The method comprising providing a substrate (page 2, column 1, second paragraph, ScxAl1-xN samples were grown on GaN and AIN templates on sapphire); and implementing a non-sputtered, epitaxial growth procedure at a growth temperature to form a wurtzite structure supported by the substrate (abstract, the growth of pure wurtzite phase SoxAl1-xN with a Sc composition as high as X = 0.34 on GaN and AIN templates using plasma-assisted molecular beam epitaxy; page 2, column 1. second paragraph. The growth conditions included epitaxy in the range of 400-900 °C. The wurtzite structure comprising an alloy of a III-nitride material, the non-sputtered, epitaxial growth procedure being configured to incorporate a group IIIB element into the alloy of the Ill-nitride material (abstract, the growth of pure wurtzite phase SexAl1-XN with a Sc composition as high as X = 0.34 on GaN and AIN templates using plasma-assisted molecular beam epitaxy; page 2, column I, second paragraph. The growth conditions included a nitrogen flow rate of 0.3-0.6 standard cubie centimeters per minute (scom). RF plasma forward power of 350 W. Al beam equivalent pressure (BEP) in the range of 2.0-8.0x10^-8 Torr, Ga BEP of 2.0x10^-7 Tom, Sc deposition rate of 0.05-0.10 A/s, and TG in the range of 400-900 °C). The sole difference between the instant claim and the prior art is the wurtzite structure exhibits breakdown field strength greater than ferroelectric coercive field strength of the wurtzite structure. However, it would have been obvious to one of ordinary skill in the art to modify the Wang 202 reference to have the claimed properties of breakdown strength in order to grow the desired structure noting, the reference grows the same materials with similar process parameters, which would give rise to similar results.
Regarding Claim 2, the Wang 2020 reference teaches the growth temperature is at about 650 degrees Celsius or less page 2, column 1, second paragraph.
Regarding Claim 3, the Wang 2020 reference teaches forming a semiconductor layer supported by the substrate before implementing the non-sputtered, epitaxial growth procedure such that the wurtzite structure is formed on the semiconductor layer (page 2, column 1, second paragraph).
Regarding Claim 4, the Wang 2020 reference teaches wherein forming the semiconductor layer comprises forming a III-nitride layer (page 2, column 1, second paragraph, ScAlN).
Regarding Claim 6, the Wang '2020 reference teaches wherein the semiconductor layer comprises gallium nitride (GaN) (page 2. column 1, second paragraph
Regarding Claim 11, the Wang 2020 reference teaches the group IIIB element is scandium (abstract, the growth of pure wurtzite phase ScxAI1-xN).
Regarding Claim 12, the Wang 2020 reference teaches the III-nitride material can be aluminum nitride (AIN) (page 2, column 1, second paragraph, ScAlN samples ware grown on GaN and AIN templates).
Regarding Claim 13, the Wang 2020 reference teaches the substrate comprising sapphire (page 2, column 1, second paragraph.
Claim(s) 5, 8, 20, 27 and 35 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al 2020 in view of Tsui.
The Wang 2020 reference is relied on for the same reasons as stated, supra, and differs from the instant claim in the wurtzite structure is nitrogen-polar. However, the Tsui reference teaches epitaxial grown wurtzite-structure semiconducting ScGaN (abstract) where the III-nitride layer is nitrogen-polar, page 84. first paragraph. It would have been obvious to one of ordinary skill in the at the time of the invention to modify Weng 12020 by the teachings of the Tsui reference to include a nitrogen-polar in order to grow pure wurtzite phase ScxAl1-xN using plasma-assisted molecular beam epitaxy.
Claim(s) 7, 9. 10 and 21-23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al 2020 in view of Tsui and Leone et al.
The Wang and Tsui references are relied on for the same reasons as stated supra, and differ from the instant claims in forming the semiconductor such that the substrate is not removed from the epitaxial growth chamber between forming the semiconductor layer and implementing the non-sputtered, epitaxial growth procedure. However, the Leone in the field of structures grown by molecular beam (MBE) epitaxy (abstract) teaches growing the semiconductor layer in an epitaxial growth chamber such that the substrate is not removed from the epitaxial growth chamber between forming the semiconductor layer and implementing the non-sputtered, epitaxial growth procedure (page A, column 1, second paragraph). It would have been obvious to one of ordinary skill in the art at the time of the invention to modify Wang 2020 by the teachings of the Leone et al reference to grow in one chamber in order to growing a pure wurtzite phase ScxAl1-xN lowering impurities by movement.
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al 2020 in view of wo 2018/217973
The Wang 2020 reference is relied on for the same reasons as stated, supra, and differs from the instant claim in off-cut sapphire. However, wo 2018/217973 reference teaches using the (page 2, lines 34) sapphire substrates to form inclined off the c-plane surfaces. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify Wang 2020 to include wherein a substrate comprises off-cut sapphire as taught by wo 2018/217973 reference in order to grow the desired orientation of the layers.
Claim(s) 15 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al 2020 in view of US 2014/0217553 to Arena at al.
The Wang 2020 reference is relied on for the same reasons as stated, supra, and differs from the instant claim in the annealing of the wurtzite structure at a temperature higher than the growth. Arena et al teaches in the field of depositing III-nitride semiconductor materials on substrates by HVPE process (abs) annealing wurtzite structure at a temperature higher than a growth temperature (Pare. [0009] Both are done in the same chamber (claim 16). It would have been obvious to one of ordinary skill in the art at the time of the Invention to modify Wang "2020 to include further comprising annealing the wurtzite structure as taught by Arena, for the benefit of reducing cracks in the layers.
Examiner’s Remarks
The remaining references are merely cited of interest as showing the state of the art in nitride growth.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT M KUNEMUND whose telephone number is (571)272-1464. The examiner can normally be reached M-F 8:00 am to 4:30 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kaj Olsen can be reached at 571-272-1344. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
RMK
/ROBERT M KUNEMUND/ Primary Examiner, Art Unit 1714