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 .
Election/Restrictions
Applicant's election with traverse of Group IIB, Species C, figures 4A-4D, claims 10-13, and 14-21 in the reply filed on August 10, 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 19-21 are withdrawn from consideration as the limitation of claim 19 it is not shown in the elected figures.
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 May 22, 2024 was considered by the examiner.
Drawing Objections
The drawings are objected to because:
In ¶ 0080, Applicant states the substrate is thinned. There is no figure showing this. Because of this claim 14 is objected to as the claimed subject matter is not shown in the drawings.
In ¶ 0079, Applicant states that figure 4B shows element 29. There is no element 29 in figure 4B.
The subject matter of claim 13 must be shown. None of the drawings show an interconnection network. Rather, at best the figures show that element 11 is an insulator region, and not an interconnection network.
The subject matter of claim 18 must be shown. None of the drawings show an interconnection network. Rather, at best the figures show that element 11 is an insulator region, and not an interconnection network.
The subject matter of claim 22 must be shown. None of the drawings show an interconnection network. Rather, at best the figures show that element 11 is an insulator region, and not an interconnection network.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification Objections
The disclosure is objected to because of the following informalities:
In ¶ 0048, Applicant needs to add “not shown” after the term “gate insulator”.
In ¶ 0052, Applicant needs to add “not shown” after the term “conductive vias”.
In ¶ 0080, Applicant states the “at the end of a step of thinning…”. There is no step of thinning. Therefore, Applicant needs to add “not shown” after this. Further in ¶¶ 0078-79, Applicant discusses figures 4A-4B, there is no discussion of thinning in either of these paragraphs.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(a)
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 10-11, and 13-18 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for a transistor, does not reasonably provide enablement for all radiofrequency components. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make the invention commensurate in scope with these claims.
Regarding claim 10,
According to the Courts the specification
Our precedents make clear that the specification must enable the full scope of the claimed invention. E.g., Sitrick, 516 F.3d at 999 (“The full scope of the claimed invention must be enabled.”); Liebel-Flarsheim Co. v. Medrad, Inc., 481 F.3d 1371, 1378–79
(Fed. Cir. 2007) (“That full scope must be enabled ....”); AK
Steel, 344 F.3d at 1244 (“[T]he applicant’s specification must enable one of ordinary skill in the art to practice the full scope of the claimed invention.”); Genentech, 108 F.3d at 1365 (similar); see Nat’l Recovery Techs., Inc. v. Magnetic Separation Sys., Inc., 166 F.3d 1190, 1195–96 (Fed. Cir. 1999) (“The enablement requirement ensures that the public knowledge is enriched by the patent specification to a degree at least commensurate with the scope of the claims. The scope of the claims must be less than or equal to the scope of the enablement.”).
Trustees of Boston Univ. v. Everlight Elec. Co., Ltd., 896 F.3d 1357, 1364 (Fed. Cir. 2018).
Here the full scope of the claim is any and all radiofrequency components. This includes amplifiers, mixers, oscillators, filters, attenuator, etc. Applicant only has support for making a transistor. Further, the radiofrequency component as claimed and described in the specification is not structurally different than any off the shelf transistor. Therefore, at best Applicant only has support for forming a transistor with an active region and an amorphous buried layer in the substrate.
Based upon the above the scope of the claims drastically exceeds Applicant written disclosure such that Applicant’s claims are greater than their scope of enablement. Which renders the full scope of the claims unenabled.
Regarding claim 15,
Claim 15 is rejected for the same reasons as claim 10 above.
Claim Rejections - 35 USC § 112(b)
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 13-14, 17 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 claim 13,
Applicant claims “wherein the forming of the amorphous buried layer is carried out after the forming of an interconnection network on a first surface of the semiconductor substrate”. However, Applicant never claimed a step of “forming an interconnection network…” Further, it is unclear of the relationship between the formation of the interconnection network and the rest of process steps are. Therefore, this limitation is indefinite and needs to be claimed as an active step.
Regarding claim 17,
Claim 17 is rejected as double inclusion under MPEP 2173.05(o) for the limitation “forming a plurality of doped regions having opposite doping types.” The reason this is double inclusion and indefinite is because claim 17 already claim the radiofrequency component (i.e. transistor), and the transistor comprises the doped regions such as the source and drain of said transistor. Therefore, Applicant is claiming the source and drain a second time. This is results in the question of what exactly is the transistor of claim 15, and what is included in the transistor of claim 15 and what is not included. This confusion prevents one of ordinary skill in the art from knowing the metes and bounds of the claim terms rendering the claim indefinite.
Claim Rejections - 35 USC § 112(d)
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.
Claim 29 is 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.
Regarding claim 29,
Claim 29 fails to further limit the subject matter of claim 22, its independent claim. This is because Applicant is simply relabeling the radiofrequency component is a MOS transistor. Claim 22 already describes the structure of a MOS transistor. Therefore, relabeling does not bring life or meaning to any claim term. As such claim 29 fails to further limit the structure of claim 22.
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 § 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.
Claim(s) 10-11 is/are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Stamper et al. (US 2022/0181317 A1) (“Stamper”).
Regarding claim 10, Stamper teaches at least in figure 1:
forming a radiofrequency component (elements of the transistor including 22/24/26/28; hereinafter “A”) inside and on top of an active region (30) of a semiconductor substrate (10); and
forming, in the semiconductor substrate (10), an amorphous buried layer in contact, by its upper surface, with a lower surface of the active region (30) of the semiconductor substrate (10) (the top surface of 18 contacts the bottom surface of 30).
Regarding claim 11, Stamper teaches at least in figure 1:
wherein the forming of the amorphous buried layer (18) is carried out by ion implantation (¶ 0017).
Claim Rejections - 35 USC § 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.
Claim(s) 15-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Stamper, in view of Wood et al. (US 5,851,845) (“Wood”).
Regarding claim 15, Stamper teaches at least in figure 1:
forming a radiofrequency (RF) component (elements of the transistor including 22/24/26/28; hereinafter “A”) at a first side of a semiconductor substrate (10),
the semiconductor substrate (10) comprising the first side (top of 10) and an opposite second side (bottom of 10),
the RF component (A) comprising a device region (A) and a trench isolation region (14) laterally surrounding the device region (A); and
locally forming a buried isolation layer (18) by ion implantation (¶ 0017),
the buried isolation layer (18) aligned with the trench isolation region (14).
Stamper does not teach:
thinning the semiconductor substrate from the second side to form a thinned substrate.
Wood teaches at least in figure 2:
thinning the semiconductor substrate (10t) from the second side to form a thinned substrate (col. 3 at lines 28-61).
It would have been obvious to one of ordinary skill in the art to thin the backside of the wafer of Stamper as it would allow one to mount the resulting die from the wafer without thermal stresses and will allow one to harden the device against radiation. Col. 2 at lines 1-5.
Regarding claim 16, Stamper teaches at least in figure 1:
wherein forming the trench isolation region (14) comprises forming a shallow trench isolation comprising a dielectric material (¶ 0015).
Regarding claim 17, Stamper teaches at least in figure 1:
wherein forming the trench isolation region (14) comprises forming a plurality of doped regions having opposite doping types (29 has different polarity than 26/28).
Regarding claim 18, the combination of prior art teaches
further comprising forming an interconnection network (Wood top of the wafer with interconnects) before the thinning (Wood thins a finished device).
It would have been obvious to one of ordinary skill in the art that the interconnection, i.e. RDL, lines would be fully formed before the wafer is thinned. This is because according to Wood when the wafer is thinned the entire wafer has been processed such that it is ready for packaging. Therefore, it would have been obvious that any standard RDL process would have been performed.
Regarding claim 18, the combination of prior art teaches
Potentially Allowable Subject Matter
The following is a statement of reasons for the indication of potentially allowable subject matter:
Regarding claim 13, Stamper does not teach:
wherein the forming of the amorphous buried layer is carried out after the forming of an interconnection network on a first surface of the semiconductor substrate,
the forming of the amorphous buried layer being carried out from a second surface of the semiconductor substrate, opposite to the first surface.
Specifically, the prior art does not teach “the forming of the amorphous buried layer being carried out from a second surface of the semiconductor substrate, opposite to the first surface.”
Allowable Subject Matter
Claims 22-28 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 22,
Claim 22 is allowable for the same reasons as claim 13 above, in that the prior art does not teach implanting boron ions on the rear side (the second surface) of the substrate.;
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VINCENT WALL whose telephone number is (571)272-9567. The examiner can normally be reached Monday to Thursday at 7:30am to 2:30pm PST. Interviews can be scheduled on Tuesday thru Thursday at 10am PST or 2pm PST.
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/VINCENT WALL/Primary Examiner, Art Unit 2898
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