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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on July 20, 2026 was considered by the examiner.
Claim Rejections - 35 USC § 112(b)
Examiner withdraws the previous 35 USC § 112(b) based upon Applicant’s amendments to the claims.
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 8-9 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.
Regarding claims 8-9,
Under MPEP 2173.05(p)(II), “[a] single claim which claims both an apparatus and the method steps of using the apparatus is indefinite…”. This ruling was issued in Ex Parte Lyell, 17 USPQ2d 1548 (BPAI 1990), where the board held that a single claim cannot have both an apparatus and method of using said apparatus in it. The Federal Circuit in IPXL Holdings v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005) adopted this holding, and further cited Robert C. Faber, Landis on Mechanics of Patent Claim Drafting § 60A (2001) with the warning to "[n]ever mix claim types to different classes of invention in a single claim.". The Court went on to hold “recit[ing] both a system and the method for using that system … does not apprise a person of ordinary skill in the art of its scope, and it is invalid under section 112, paragraph 2”.1
In the current Application claim 8 claims:
8. (Original) The semiconductor device according to claim 1, wherein:
a first turn-on voltage is applied to the first electrode pad;
a second turn-on voltage is applied to the second electrode pad;
a third turn-on voltage is applied to the third electrode pad;
a third turn-off voltage is applied to the third electrode pad,
after the first turn-on voltage is applied to the first electrode pad, after the second turn-on voltage is applied to the second electrode pad, and after the third turn-on voltage is applied to the third electrode pad;
a second turn-off voltage is applied to the second electrode pad after the third turn- off voltage is applied to the third electrode pad; and
a first turn-off voltage is applied to the first electrode pad after the second turn-off voltage is applied to the second electrode pad.
(emphasis added). Each of the above underlined limitations is a process step to use the device of claim 1. As an dependent claim, claim 8 requires all of the limitations of the independent claim 1. Therefore, the full integrated claim 8 is presented below, where claim 1 will be presented in standard font, and claim 8 will be presented italicized with the method of using steps underlined:
A semiconductor device including RC-IGBT having IGBT and freewheeling diode, comprising:
a transistor region including
a first gate electrode provided in a first trench,
a second gate electrode provided in a second trench,
a third gate electrode provided in a third trench,
a semiconductor layer having a first face and a second face opposed to the first face,
a first semiconductor region of a first conductivity type provided in the semiconductor layer and in contact with the first face, and
a second semiconductor region of a second conductivity type provided in the semiconductor layer and in contact with the first face;
a diode region including
a diode having a conductive layer provided in a fifth trench, and
the semiconductor layer;
a boundary region provided between the transistor region and the diode region, the boundary region including
a fourth gate electrode provided in a fourth trench,
the semiconductor layer,
a third semiconductor region of the first conductivity type provided in the semiconductor layer and in contact with the first face,
a fourth semiconductor region of the first conductivity type provided in the semiconductor layer and in contact with the first face, and
having a first conductivity type impurity concentration higher than a first conductivity type impurity concentration of the third semiconductor region, and
a fifth semiconductor region of the second conductivity type provided in the semiconductor layer and in contact with the first face;
a first electrode pad electrically connected to the first gate electrode;
a second electrode pad electrically connected to the second gate electrode; and
a third electrode pad electrically connected to the third gate electrode and the fourth gate electrode,
wherein an occupation area ratio of the fourth semiconductor region on the first face of the boundary region is less than or equal to an occupation area ratio of the first semiconductor region on the first face of the transistor region.
wherein:
a first turn-on voltage is applied to the first electrode pad;
a second turn-on voltage is applied to the second electrode pad;
a third turn-on voltage is applied to the third electrode pad;
a third turn-off voltage is applied to the third electrode pad,
after the first turn-on voltage is applied to the first electrode pad, after the second turn-on voltage is applied to the second electrode pad, and after the third turn-on voltage is applied to the third electrode pad;
a second turn-off voltage is applied to the second electrode pad after the third turn- off voltage is applied to the third electrode pad; and
a first turn-off voltage is applied to the first electrode pad after the second turn-off voltage is applied to the second electrode pad.
As one can clearly see unified claim 8 clearly contains both limitations directed to the statutory class of machines (i.e. the device), and to the statutory class of processes (i.e. method of using the device). 2
Therefore, because claim 8 is directed to two different statutory classes “it does not apprise a person of ordinary skill in the art of its scope, and it is invalid under section 112, paragraph 2”. IPXL Holdings v. Amazon.com, Inc. 430 F.3d 1377, 1384 (Fed. Cir. 2005).
For the above reason claim 8 is indefinite as being indefinite under 35 USC § 112(b).
Regarding claim 9,
Claim 9 is rejected for the same reason as claim 8 above.
Claim Rejections - 35 USC § 112(a)
Examiner withdraws the 35 USC § 112(a) rejection based upon Applicant’s amendment to claim 6. Examiner notes the upper electrode is element 12 in the figures.
Allowable Subject Matter
Claims 1-7, and 10-16 are allowed.
The following is an examiner’s statement of reasons for allowance: see below.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Regarding claim 1, the prior art does not teach:
a fourth semiconductor region of the first conductivity type provided in the semiconductor layer and in contact with the first face, and
having a first conductivity type impurity concentration higher than a first conductivity type impurity concentration of the third semiconductor region, and
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.
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/VINCENT WALL/Primary Examiner, Art Unit 2898
1 Access to the Federal Reporter has been removed from Examiner access. Examiner has attached the Federal Circuit’s ruling. The relevant pages are numbered pages 11-13.
2 Under 35 USC § 101 there are only four statutory classes: processes, machines, manufactures and compositions of matter.
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