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 .
Prior Art of Record
The applicant's attention is directed to additional pertinent prior art cited in the accompanying PTO-892 Notice of References Cited, which, however, may not be currently applied as a basis for the following rejections. While these references were considered during the examination of this application and are deemed relevant to the claimed subject matter, they are not presently being applied as a basis for rejection in this Office action. The pertinence of these documents, however, may be revisited, and they may be applied in subsequent Office actions, particularly in light of any amendments or further clarification of the claimed invention.
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.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 10-11 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.
Claims 10-11 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 10 broadly claims a physical HR-SOI structure (a product) but depends from process Claim 1. Per guidance found in MPEP 608.01(n) III, a product claim cannot depend on a base method claim unless the product must be made by that specific method and cannot be made any other way.
The claim impermissibly intertwines structural limitations with method steps (e.g., "characterized by, manufactured by a process of claim 1," and "subjected to homogenizing treatment by dry etching"). This blurs the claim boundaries.
Because it fails to use proper "made by" format and does not reference the base claim properly, the scope of the claim is confusing and indefinite, rendering it unpatentable under 35 U.S.C. 112(d). These issues also extend to depending Claim 11.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claim 10 is drafted as a product claim ("A high-resistivity silicon-on-insulator...") that improperly attempts to depend from or incorporate a process claim ("...manufactured by a process of claim 1"). According to MPEP § 608.01(n), if claim 1 recites a method of making a specified product, a claim to the product itself is not a proper dependent claim if the product can be made by a method other than that recited in the base method claim.
Because the product set forth in Claim 10 could theoretically be manufactured by methods other than the process recited in Claim 1, Claim 10 fails to include all the limitations of the base claim and creates confusion regarding the exact scope and boundaries of the product claimed.
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.
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.
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 7 and 8 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 enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. The specification does not reasonably convey to those skilled in the art that the inventor had possession of a method where a mere "cleaned and washed" step results in the formation of an oxide layer. The original disclosure fails to identify the active chemical components of the cleaning/washing step, the underlying reaction mechanism, or the required process conditions, rendering the claimed invention inadequately supported by the written description.
Claims 7 and 8 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. The claims recite that the first surface is "cleaned and washed to form the oxide layer." However, this language is indefinite because the terms "cleaned" and "washed" do not provide the specific chemical parameters, reagents, or process steps required to achieve the necessary oxidation. One of ordinary skill in the art would be left to speculate as to what specific cleaning/washing process or chemicals are utilized to convert or treat the surface into an oxide layer..
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 (i.e., changing from AIA to pre-AIA ) 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, 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.
Claim(s) 1 is/are rejected under 35 U.S.C. 103 as being unpatentable over Reinmuth (US 20220172981 A1) in view of Habuka (Hitoshi et al. ,Dominant rate process of silicon surface etching by hydrogen chloride gas, Thin Solid Films, Volume 489, Issues 1–2, 2005, Pages 104-110).
CLAIM 1. A process for manufacturing a structure of high-resistivity silicon-on-insulator (HR-SOI) [e.g. polysilicon-SOI substrate) embedded with a charge capture layer comprising: providing a first substrate 30 having a first surface 6, forming a pinning layer 12 on the first surface by deposition, and homogenizing (Figs. 2B-C & ¶28 – smoothing/planarization) the pinning layer surface by etching (¶28- ion trimmer is a form of dry etching).
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Reinmuth (US 20220172981 A1) in view of Ngai (US 20020175384 A1).
CLAIM 2. Reinmuth teaches the process of claim 1, however are silent upon a specific gas used for the dry etching, thus do not explicitly teach wherein the homogenizing step comprising: treating a surface of the pinning layer by hydrogen chloride (HCl) in situ etching to adjust a thickness uniformity of the pinning layer.
A Person Having Ordinary Skill in the Art (PHOSITA) at the time of the invention would find it obvious to utilize hydrogen chloride (HCl) as the halogen-based etching gas for polysilicon. As expressly disclosed in Ngai (paragraph [0014]), halogen-based chemistries such as HCl are conventional, well-known, and predictable go-to gases for etching polysilicon surfaces. Selecting HCl from this recognized list of suitable etching gases involves no more than the application of ordinary skill and routine optimization to achieve the desired etch characteristics. See MPEP 2144.07 (Art-Recognized Suitability for an Intended Purpose); In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960). Therefore, it would have been obvious to a PHOSITA to modify Reinmuth by incorporating Ngai’s teaching to select HCl as the gas for the dry etching of polysilicon.
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Reinmuth (US 20220172981 A1) in view of Ngai (US 20020175384 A1) in view of Habuka (Hitoshi et al., Dominant rate process of silicon surface etching by hydrogen chloride gas, Thin Solid Films, Volume 489, Issues 1–2, 2005, Pages 104-110).
CLAIM 3. Reinnuth in view of Ngai teach the process of claim 2, however is silent upon specific parameters wherein the etching of the surface of the pinning layer is conducted under an atmosphere of a gaseous mixture of HCl and hydrogen (H2) with a ratio of HCl: H2 being 1:100- 1:5, and an etching temperature of more than 1000℃.
At the time of the invention such parameters were known ideal conditions for dry eching of polysilicon to achieve smoother surfaces. Habuka teaches gas chemistries of HCl and H2 were known and used at higher temperatures greater than 1000C to produce smooth surfaces (pg. 107 Col. 2), and The study uses HCl concentrations of 1-100% in hydrogen (Abstract) . This translates to HCl:H2 ratios ranging from approximately 1:99 to 100:0, which overlaps with the specified range of 1:100 to 1:5.
These particular parameters as taught in Habuka are explicitly taught to produce smooth polysilicon surfaces at high temperatures. As such, it would be obvious to one of ordinary skill in the art to It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the planarization dry etching of Rienmuth with the specific dry etching as taught by Habuka, since simple substitution of one known element for another (one type of dry etching for another type of dry etching) to obtain predictable results (a smooth surface) is considered obvious to one of ordinary skill in the art (KSR International Co. v. Teleflex Inc., 550 U.S.-, 82 USPQ2d 1385).
Claim(s) 4-6, 9-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Reinmuth (US 20220172981 A1) in view of Ngai (US 20020175384 A1) in view of Habuka (Hitoshi et al., Dominant rate process of silicon surface etching by hydrogen chloride gas, Thin Solid Films, Volume 489, Issues 1–2, 2005, Pages 104-110) in view of Moen (US 20230360962 A1).
CLAIM 4. Reinnuth in view of Ngai in view of Habuka teach the process of claim 1, however are silent on any further steps comprising an annealing step after the homogenizing step . Moen paragraph 50 teaches that subsequent high-temperature processing steps, including annealing, are inherent to the fabrication of RF-SOI substrates. The limitation in the recited step is overly broad, as it encompasses any annealing inherently required to transform a base substrate into an operative semiconductor device.
Specifically, Moen discloses performing subsequent high-temperature steps, such as silicide layer formation—after the creation of the pinning layer, along with surface smoothing and homogenization. It would be obvious to a person having ordinary skill in the art (PHOSITA) that the base substrate of Reinmuth would undergo such standard semiconductor annealing processes during normal device fabrication.
CLAIM 5. Reinnuth in view of Ngai in view of Habuka in view of Moen teach the process of claim 1, further comprising an annealing step after the formation of pinning layer and before the homogenizing step (Rienmuth ¶27 - Deposition of polysilicon is understood to include an “annealing step”. Silicon when deposited is in an amorphous state requiring a annealing step to crystalize the silicon into a polycrystalline state. As such, an annealing step directly subsequent to the deposition step would be at minimum obvious to a PHOSITA, if not already inherent.).
CLAIM 6. Reinnuth in view of Ngai in view of Habuka in view of Moen teach teach the process of claim 1, further comprising: prior to the formation of pinning layer, forming a surface treatment layer 6 on the first surface of the first substrate 30, wherein the surface treatment layer is an oxide layer (Rienmuth ¶26), a nitride layer or an oxynitride layer (Rienmuth ¶27).
CLAIM 9. Reinnuth in view of Ngai in view of Habuka in view of Moen teach teach the process of claim 6, wherein the formation of pinning layer comprises: forming a pinning layer on the first surface by chemical vapor deposition, wherein the pinning layer is a polysilicon film layer (Rienmuth ¶27).
CLAIM 10. Reinnuth in view of Ngai in view of Habuka in view of Moen teach teach the high-resistivity silicon-on-insulator (HR-SOI) embedded with a charge capture layer characterized by, manufactured by a process of claim 1, and having a structure comprising a first substrate, a surface treatment layer and a pinning layer stacked in sequence, wherein the first substrate has a first surface, and the surface treatment layer and the pinning layer are formed on the side of the first surface, and the pinning layer is subjected to homogenizing treatment by dry etching (Rienmuth ¶26-27 & Figs. 2A-C).
CLAIM 11. Reinnuth in view of Ngai in view of Habuka in view of Moen teach teach the HR-SOI embedded with a charge capture layer of claim 10, wherein the structure further comprises an insulating buried oxide layer 6 and a second substrate 9 stacked in sequence on the pinning layer 12 (Rienmuth Fig. 5)..
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JARRETT J STARK whose telephone number is (571)272-6005. The examiner can normally be reached 8-4 M-F.
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JARRETT J. STARK
Primary Examiner
Art Unit 2822
6/25/2026
/JARRETT J STARK/Primary Examiner, Art Unit 2898
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