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 .
Detailed Action
Specification Objection
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
Claim Rejections – 35 U.S.C. 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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-AlA 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.
Claims 1, 2 and 5-10 rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nagaya (U.S. Patent Pub. No. 2019/0035684).
Regarding Claim 1
FIG. 3 of Nagaya discloses a SiC semiconductor device including a SiC semiconductor layer composed of SiC single crystal [0003], the SiC semiconductor layer comprising: a mounted surface (10a) on which an element (30) is mounted; a non-mounted surface (10b) opposed to the mounted surface; and a side surface (12, 13) connecting the mounted surface to the non-mounted surface, wherein the side surface is on a cleavage plane of the SiC single crystal.
Regarding Claim 2
The limitation “the amount (area ratio) of an area having crystal defects detected over the side surface of the SiC semiconductor layer by means of an EBSD (Electron Backscatter Diffraction Pattern) analysis is 10% or less” is considered to be a process or functional limitation. Even 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), MPEP 2113.
Regarding Claim 5
The limitation “the SiC semiconductor device is produced by forming a scribe line on a SiC semiconductor wafer using a scribing tool and then applying an external force along the scribe line to divide the SiC semiconductor wafer” is considered to be a process or functional limitation. Even 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), MPEP 2113.
Regarding Claim 6
The limitation “the second side region originates from a vertical crack generated by forming the scribe line, and the first side region is a divided surface formed by applying the external force along the scribe line to divide the SiC semiconductor wafer” is related to process. Even 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), MPEP 2113.
Regarding Claim 7
The limitation “on the side surface of the SiC semiconductor layer, the vertical crack surface is adjacent to the mounted surface, and the divided surface is adjacent to the non-mounted surface” is related to process. Even 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), MPEP 2113.
Regarding Claim 8
The limitation “on the side surface of the SiC semiconductor layer, the vertical crack surface is adjacent to the non-mounted surface, and the divided surface is adjacent to the mounted surface” is related to process. Even 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), MPEP 2113.
Regarding Claim 9
The limitation “a thickness of which the vertical crack surface extends along a thickness direction of the SiC semiconductor layer is 20% or less of a thickness of the SiC semiconductor layer” is related to process. Even 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), MPEP 2113. For example, [0013] of US 20220025546 discloses a method for thermal post-treatment of SiC crystals which allows to reduce stress in crystals. JP 2014013812 discloses use of a cutting blade to reduce crack.
Regarding Claim 10
The limitation “a horizontal arithmetic mean surface roughness (Ra, horizontal) along the horizontal direction is equal to or more than a vertical arithmetic mean surface roughness (Ra, vertical) along the horizontal direction to satisfy Ra [vertical crack surface, horizontal] ≤ Ra [divided surface, horizontal]” is related to process. Even 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), MPEP 2113.
Claim 1 rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ueno (U.S. Patent Pub. No. 2021/0234007).
Regarding Claim 1
FIG. 3 of Ueno discloses a SiC semiconductor device including a SiC semiconductor layer composed of SiC single crystal [0094], the SiC semiconductor layer comprising: a mounted surface (3) on which an element is mounted; a non-mounted surface (4) opposed to the mounted surface; and a side surface (21, 22) connecting the mounted surface to the non-mounted surface, wherein the side surface is on a cleavage plane of the SiC single crystal.
Claims 11-20 rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fuji (U.S. Patent Pub. No. 2021/0069926).
Regarding Claim 11
FIG. 23 of Fuji discloses a SiC semiconductor device containing a SiC [0404] semiconductor layer (1) composed of SiC single crystal, the SiC semiconductor layer comprising: a mounted surface (2) on which an element (53) is mounted; a non-mounted surface (3) opposed to the mounted surface; (FIG. 24) a first pair of side surfaces connecting the mounted surface to the non-mounted surface and opposing to each other, each of the first pair of side surfaces being on a cleavage plane of the SiC single crystal; and a second pair of side surfaces connecting the mounted surface to the non-mounted surface and opposing to each other, wherein each of the second pair of side surfaces includes first (52) and second (51) side regions, one of the first and second side regions being adjacent to the mounted surface and another one of the first and second side regions being adjacent to the non-mounted surface, and the first side region is inclined to the second side region by a predetermined angle.
Regarding Claim 12
FIG. 24 of Fuji discloses one of the second pair of side surfaces has a ridge line where the first side region meets the second side region, and another one of the second pair of side surfaces has a valley line where the first side region meets the second side region.
Regarding Claim 13
FIG. 24 of Fuji discloses the predetermined angle (C) between the first side region and the second side region is within the range of 0.1° to 10° [0151].
Regarding Claim 14
FIG. 24 of Fuji discloses the second side region is inclined by a given angle (A) within the range of 80° to 100°, to either one of the mounted surface or the non-mounted surface which is adjacent to the second side region [0151].
Regarding Claim 15
FIG. 24 of Fuji discloses the first side region is on a {11-20} plane of the SiC single crystal [0140].
Regarding Claim 16
The limitation “wherein the SiC semiconductor device is produced by forming a scribe line on a SiC semiconductor wafer using a scribing tool and then applying an external force along the scribe line to divide the SiC semiconductor wafer” is considered to be a process or functional limitation. Even 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), MPEP 2113.
Regarding Claim 17
The limitation “the second side region originates from a vertical crack generated by forming the scribe line, and the first side region is a divided surface formed by applying the external force along the scribe line to divide the SiC semiconductor wafer” is related to process. Even 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), MPEP 2113.
Regarding Claim 18
FIG. 24 of Fuji discloses the first side region is adjacent to the mounted surface, and the second side region is adjacent to the non-mounted surface.
Regarding Claim 19
FIG. 9 of Fuji discloses a thickness of which the second side region extends along a thickness direction of the SiC semiconductor layer is 20% or less of a thickness of the SiC semiconductor layer [0207-0208].
Regarding Claim 20
FIG. 9 of Fuji discloses an angle between one of the non-mounted surface or the mounted surface and the first side region adjacent to the one of the non-mounted surface or the mounted surface is closer to 90° than another angle between another one of the mounted surface or the non-mounted surface and the second side region adjacent to the another one of the mounted surface or the non-mounted surface [0151].
Claim 11 rejected under 35 U.S.C. 102(a)(1) as being anticipated by Harada (U.S. Patent Pub. No. 2012/0068195).
Regarding Claim 11
FIG. 20 of Harada discloses a SiC semiconductor device containing a SiC [0106] semiconductor layer (20) composed of SiC single crystal, the SiC semiconductor layer comprising: a mounted surface (20A) on which an element is mounted [0110]; a non-mounted surface opposed to the mounted surface; a first pair of side surfaces (20B) connecting the mounted surface to the non-mounted surface and opposing to each other, each of the first pair of side surfaces being on a cleavage plane of the SiC single crystal; and a second pair of side surfaces connecting the mounted surface to the non-mounted surface and opposing to each other, wherein each of the second pair of side surfaces includes first and second side regions, one of the first and second side regions being adjacent to the mounted surface and another one of the first and second side regions being adjacent to the non-mounted surface, and the first side region is inclined to the second side region by a predetermined angle [0110].
Claim Rejections – 35 U.S.C. 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.
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.
Claims 3 and 4 rejected under 35 U.S.C. 103 as being unpatentable over Nagaya, in view of Shibata (U.S. Patent Pub. No. 2020/0206842).
Regarding Claim 3
Nagaya discloses Claim 1.
Nagaya is silent with respect to “in a middle portion of the side surface along a thickness direction of the SiC semiconductor layer, each of a vertical surface roughness (maximum height Rz, vertical) along the thickness direction and a horizontal surface roughness (maximum height Rz, horizontal) along a horizontal direction orthogonal to the thickness direction is 5 μm or less”.
Shibata discloses a similar semiconductor device, wherein in a middle portion of the side surface along a thickness direction of the SiC semiconductor layer, each of a vertical surface roughness (maximum height Rz, vertical) along the thickness direction and a horizontal surface roughness (maximum height Rz, horizontal) along a horizontal direction orthogonal to the thickness direction is 5 μm or less [0032].
It would have been obvious to one of ordinary skill in the art before the effective filing of the claimed invention to modify the device of Nagaya, as taught by Shibata. The ordinary artisan would have been motivated to modify Nagaya in the above manner for purpose of reducing optical coupling loss ([0006] of Shibata).
Furthermore, the limitation “the second side region originates from a vertical crack generated by forming the scribe line, and the first side region is a divided surface formed by applying the external force along the scribe line to divide the SiC semiconductor wafer” is related to process. Even 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), MPEP 2113. For example, US 20040134418 discloses a method to obtain a surface roughness of about 10nm to about 1000nm [0020]. [0041] of US 20110265616 discloses the roughness depends on the feed rate per revolution. Other references include US 20170073837 and JP 2012044040.
Regarding Claim 4
The limitation “a horizontal arithmetic mean surface roughness (Ra, horizontal) along the horizontal direction is equal to or more than a vertical arithmetic mean surface roughness (Ra, vertical) along the horizontal direction to satisfy Ra [horizontal direction]≥Ra [vertical direction]” is related to process. Even 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), MPEP 2113.
Pertinent Art
US 20040266138.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHENG-BAI ZHU whose telephone number is (571)270-3904. The examiner can normally be reached on 11am – 7pm EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Chad Dicke can be reached on (571)270-7996. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SHENG-BAI ZHU/Primary Examiner, Art Unit 2897
Prosecution Insights