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
Newly submitted claim 11 is directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
The invention encompassed by new claim 11 is related to the invention of originally submitted claims 1-10 as subcombinations disclosed as usable together in a single combination. The subcombinations are distinct if they do not overlap in scope and are not obvious variants, and if it is shown that at least one subcombination is separately usable. In the instant case, the subcombination encompassed by original claims 1-10 has separate utility such as to produce electronic devices other than a CMOS image sensor component. See MPEP § 806.05(d).
The examiner has required restriction between subcombinations usable together. Where applicant elects a subcombination and claims thereto are subsequently found allowable, any claim(s) depending from or otherwise requiring all the limitations of the allowable subcombination will be examined for patentability in accordance with 37 CFR 1.104. See MPEP § 821.04(a). Applicant is advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claim 11 is withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Claim Rejections - 35 USC § 112
The 35 U.S.C. 112(b) rejection of claims 1-7 is withdrawn in view of applicants’ claim amendments.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1 and 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Appl. Publ. No. 2004/0192015 to Von Ammon, et al. (hereinafter “Von Ammon”) in view of U.S. Patent Appl. Publ. No. 2011/0300371 to Omote, et al. (“Omote”) and further in view of U.S. Patent Appl. Publ. No. 2014/0374861 to Hoshi, et al. (“Hoshi”).
Regarding claim 1, Von Ammon teaches a method of producing an epitaxially coated semiconductor wafer from monocrystalline silicon (see the Abstract, Figs. 1-17, and entire reference which teach a method of growing a Si wafer by the Czochralski (CZ) method), the method comprising:
providing a melt of silicon in a crucible (see Fig. 14, ¶¶[0038]-[0050], and Example 1 at ¶¶[0057]-[0065] which teach providing a melt of Si in a crucible);
pulling of a single crystal of silicon from a surface of the melt with a pulling speed v by the CZ method (see Fig. 14, ¶¶[0038]-[0050], and Example 1 at ¶¶[0057]-[0065] which teach pulling a Si single crystal (1) from the melt at a pulling speed v by the CZ method),
wherein oxygen and boron are incorporated into the single crystal of silicon and a concentration of the oxygen in the single crystal of silicon is not less than 6.4×1017 atoms/cm3 and not more than 8.0×1017 atoms/cm3 (see ¶[0018] which teaches that the Si is doped with boron and has an oxygen concentration of 4×1017 to 7.2×1017 atoms/cm3), and
wherein there is no doping of the melt with nitrogen and carbon (see ¶[0018] which teaches that doping with carbon and nitrogen is optional which means that in at least one embodiment no carbon and nitrogen doping is provided);
applying a CUSP magnetic field to the melt during the pulling of the single crystal of silicon, surrounded by a heat shield (see Fig. 14, ¶¶[0038]-[0050], and Example 1 at ¶¶[0057]-[0065] which teach that a CUSP magnetic field is applied using a magnet (13) during crystal growth while the Si single crystal (1) is surrounded by a heat shield (18));
controlling the pulling speed v and an axial temperature gradient G at a phase boundary between the single crystal of silicon and the melt in such a way that a quotient v/G is not less than 0.13 mm2/°C min and not more than 0.20 mm2/°C min (see Fig. 2 and ¶[0039] which teach that the ratio v/G is preferably between approximately 1.2 to 1.4×10-3 cm2/K-min (i.e., 0.12 to 0.14 mm2/°C min) in order to produce a perfect Si single crystal);
heating of the single crystal by a ring-shaped heater, which is disposed above the melt and surrounds the single crystal of silicon (see Fig. 14, ¶¶[0038]-[0050], and Example 1 at ¶¶[0057]-[0065] which teach that the Si single crystal (1) is heated by a ring-shaped heater (19) which is disposed above the melt and surrounds the Si single crystal (1));
producing a substrate wafer from the monocrystalline silicon having a polished lateral face by processing the single crystal of silicon (see Example 1 at ¶¶[0057]-[0065] which teaches that a Si wafer is produced from the grown Si single crystal (1) which, as exemplified by at least ¶[0013], necessarily involves cutting and polishing the Si single crystal (1) to produce wafers which are suitable for the formation of electronic devices thereupon).
Von Ammon does not teach that a resistivity of the single crystal of silicon is not less than 10 mW-cm and not more than 25 mW-cm. However, in Figs. 1-2 and ¶¶[0028]-[0047] as well as elsewhere throughout the entire reference Omote teaches an analogous method of producing an epitaxial Si substrate (1) from a Si wafer grown by the Czochralski method. In ¶[0044] Omote specifically teaches that in order to enhance the aggregation of oxygen precipitate it is preferable that the Si substrate (1) is a p+ substrate doped with boron such that the resistivity has a value in the overlapping range of 1.1 mW-cm to 100 mW-cm. Thus, a person of ordinary skill in the art prior to the effective filing date of the invention would look to the teachings of Omote and would be motivated to dope the Si ingot produced in the method of Von Ammon with boron in an amount sufficient to produce a resistivity in the overlapping range of 1.1 mW-cm to 100 mW-cm in order to enhance the aggregation of oxygen precipitates and thereby form a gettering sink within the substrate.
Von Ammon and Omote do not teach depositing an epitaxial layer of silicon on the polished lateral face of the substrate wafer, wherein the depositing of the epitaxial layer is a first heat treatment in the course of which the substrate wafer is heated to a temperature of not less than 700 °C. However, in Figs. 1-3, ¶¶[0041]-[0060], and Example 1 at ¶[0062]-[0065], and Example 2 at ¶¶[0071]-[0074] Hoshi teaches an analogous method of growing a Si single crystal wafer by the CZ method followed by deposition of a Si epitaxial layer thereupon as part of a process for forming electronic devices. In Examples 1-2 Hoshi specifically teaches that epitaxial growth is accompanied by performing a heat treatment at 1,000 °C for 30 or 60 minutes in order to form oxide precipitates (BMDs) which function to capture impurities. Thus, a person of ordinary skill in the art prior to the effective filing date of the invention would be motivated to perform a heat treatment at a temperature of greater than 700 °C and deposit an epitaxial layer thereupon in order to getter impurities and provide a clean and highly crystalline surface for the formation of electronic devices thereupon. The combination of prior art elements according to known methods to yield predictable results has been held to support a prima facie determination of obviousness. All the claimed elements are known in the prior art and one skilled in the art could combine the elements as claimed by known methods with no change in their respective functions, with the combination yielding nothing more than predictable results to one of ordinary skill in the art. KSR International Co. v. Teleflex Inc., 550 U.S. 398, __, 82 USPQ2d 1385, 1395 (2007). See also, MPEP 2143(A).
Regarding claim 7, Von Ammon teaches that the single crystal of silicon has a diameter of 300 mm (see ¶[0039] and Example 1 at ¶¶[0057]-[0065] which teach that the Si single crystal has a diameter of 300 mm), and a power of the ring-shaped heater is not less than 7 kW and not more than 13 kW (see ¶[0023] and ¶[0050] which teach that depending on the geometrical arrangement, heating powers in the range from 1 to 60 kW are required).
Claim 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Von Ammon in view of Omote and further in view of Hoshi and still further in view of U.S. Patent Appl. Publ. No. 2020/0149184 to Mangelberger, et al. (“Mangelberger”).
Regarding claim 2, Von Ammon, Omote, and Hoshi do not teach cooling of the single crystal of silicon pulled from the melt at a cooling rate within a temperature range from 1000 °C to 800 °C, which is not less than 0.7 °C/min and not more than 1 °C/min. However, in ¶¶[0033]-[0081] as well as elsewhere throughout the entire reference Mangelberger teaches an analogous method of producing high quality Si single crystals by the Czochralski method. In ¶[0068] Mangelberger specifically teaches that the single crystal should be cooled relatively slowly in the temperature range of 1,000 to 800 °C at a cooling rate of 0.5 to 1.2 °C/min in order to, for example, promote the creation and stabilization of BMD nuclei. Thus, a person of ordinary skill in the art prior to the effective filing date of the invention would be motivated to cool the Si single crystal pulled from the melt in the method of Von Ammon, Omote, and Hoshi to the temperature range of 800 to 1,000 at a cooling rate of in the overlapping range of 0.5 to 1.2 °C/min in order to promote the creation and stabilization of BMD nuclei.
Claims 3 and 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Von Ammon in view of Omote and further in view of Hoshi and still further in view of U.S. Patent Appl. Publ. No. 2008/0153261 to Weber, et al. (“Weber”).
Regarding claim 3, Von Ammon does not teach that wherein a distance of a lower edge of the heat shield from the surface of the melt is not less than 35 mm and not more than 45 mm. However, in Fig. 4 and ¶¶[0019]-[0036] as well as elsewhere throughout the entire reference Weber teaches an analogous system and method for the growth of Si single crystals by the magnetic Czochralski method. In ¶[0036] Weber specifically teaches that the distance g between the lower edge of the heat shield (2) and the surface of the melt is preferably in the overlapping range of 10 to 50 mm in order to control thermal gradients at the melt-solid interface, including the ratio v/G such that a Si single crystal having the desired materials properties may be obtained. Thus, a person of ordinary skill in the art prior to the effective filing date of the invention would look to the teachings of Weber and would be motivated to maintain a gap of 35 to 40 mm between the heat shield and the surface of the melt in the method of Von Ammon, Omote, and Hoshi in order to control temperature gradients at the melt-solid interface to produce the desired materials properties in the grown Si single crystal.
Regarding claim 5, Von Ammon teaches rotating of the crucible at a speed of not less than 3.5 rpm and not more than 6.0 rpm (see ¶[0026] of von Ammon which teaches that the crucible is rotated at a speed of at least 3 rpm which encompasses the claimed range; alternatively, see ¶[0026] of Weber which teaches that the crucible is preferably rotated in the overlapping range of 1 to 4 rpm in order to produce the desired thermal gradients and oxygen content within the melt).
Claim 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Von Ammon in view of Omote and further in view of Hoshi and still further in view of U.S. Patent Appl. Publ. No. 2020/0216975 to Basak, et al. (“Basak”).
Regarding claim 4, Von Ammon does not teach that the CUSP magnetic field attains a maximum field strength of not less than 105 mT and not more than 116 mT, and a plane of the CUSP magnetic field with a strength of 0 mT is not less than 30 mm and not more than 80 mm below the surface of the melt. However, in Figs. 1-8 and ¶¶[0030]-[0079] as well as elsewhere throughout the entire reference Basak teaches an analogous method of growing a Si single crystal by the Czochralski method using a CUSP magnetic field. In ¶[0066] Basak specifically teaches that the magnetic field strength is regulated in at least two stages in order to control the amount of oxygen that is incorporated into the growing crystal. During an intermediate stage the magnetic field strength is, for example, 0.02 to 0.05 Tesla (20 to 50 mT) at the edge of the crystal (27) at the melt-solid interface and 0.05 to 0.12 T (50 to 120 mT) at the wall of the crucible (10). During a late body growth stage the magnetic field strength is 0.03 to 0.075 Tesla (30 to 75 mT) and 0.075 to 0.18 Tesla (75 to 180 mT), respectively. Then in ¶[0076] Basak further teaches that the CUSP position is also regulated in order to control the flow of SiO from the crucible (10) to the crystal (27). Maintaining the CUSP position from 10 to 40 mm below the melt line (36) facilitates reducing the oxygen concentration. Thus, a person of ordinary skill in the art prior to the effective filing date of the invention would look to the teachings of Basak and would be motivated to utilize routine experimentation to determine the optimal maximum magnetic field strength and plane of 0 mT during crystal growth in the method of Von Ammon, Omote, and Hoshi, including within the claimed range of 105 to 116 mT and a location 30 to 80 mm below the surface of the melt, with the motivation for doing so being to produce the desired amount and type of stirring and, consequently, the desired oxygen concentration within the melt.
Claim 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Von Ammon in view of Omote and further in view of Hoshi and still further in view of U.S. Patent Appl. Publ. No. 2010/0059861 to Mueller, et al. (“Mueller”).
Regarding claim 6, Von Ammon teaches that the pulling of the single crystal of silicon is in an atmosphere of purge gas (see at least ¶[0003] which teaches that an inert purge gas flows through the pulling system), but does not teach that the pressure is not less than 2500 Pa and not more than 8500 Pa. However, in Figs. 3-4 and ¶¶[0028]-[0048] as well as elsewhere throughout the entire reference Mueller teaches an analogous method of growing single crystal Si ingots by the Czochralski method under an applied magnetic field. In ¶[0036] Mueller specifically teaches that the flow rate and pressure of the purge gas can be used to control the amount of oxygen incorporated into the melt and, consequently, into the grown Si single crystal with a pressure in the overlapping range of 1 to 4 kPa being preferred. Thus, a person of ordinary skill in the art prior to the effective filing date of the invention would be motivated to utilize a purge gas pressure in the overlapping range of 1 to 4 kPa during crystal growth in the method of Von Ammon, Omote, and Hoshi in order to control the incorporated oxygen content to the desired level.
Claims 8-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Von Ammon in view of Omote and further in view of Hoshi and still further in view of U.S. Patent Appl. Publ. No. 2018/0371639 to Mueller, et al. (“Mueller”).
Regarding claim 8, Von Ammon, Omote, and Hoshi do not teach that the first heat treatment comprises heating the substrate wafer to 780°C over a period of 3 hours, and then heating the substrate wafer to 1000°C over a period of 16 hours. However, in the Abstract, Fig. 1, and ¶¶[0028]-[0052] as well as elsewhere throughout the entire reference Mueller teaches an analogous method of producing single crystal Si wafers by the Czochralski process which have a predetermined density of BMDs by depositing an epitaxial layer and then performing a heat treatment. In at least ¶[0038], ¶¶[0051]-[0052], and ¶[0057] Mueller specifically teaches that BMDs may be revealed by performing a heat treatment which involves initially heating at a temperature of 780 °C for 3 h and then at 1,000 °C for over 16 h. Thus, a PHOSITA prior to the effective filing date of the invention would perform a heat treatment on the epitaxial Si wafers produced in the method of Von Ammon, Omote, and Hoshi at 780 °C for 3 h and at 1,000 °C for 16 h as claimed with the motivation for doing so being to promote the formation of BMDs as part of a device manufacturing process and/or to enable the BMDs to be counted such that the materials properties of the resulting wafer can be accurately measured.
Regarding claim 9, Von Ammon, Omote, and Hoshi do not teach that as a result of the first heat treatment, bulk microdefects (BMDs) are formed beneath the epitaxial layer with a density of at least 1×109/cm3 in a radially homogeneous distribution. However, as noted supra with respect to the rejection of claim 8, in the Abstract, Fig. 1, and ¶¶[0028]-[0052] as well as elsewhere throughout the entire reference Mueller teaches an analogous method of producing single crystal Si wafers by the Czochralski process which have a predetermined density of BMDs by depositing an epitaxial layer and then performing a heat treatment. In ¶¶[0029]-[0033] and ¶¶[051]-[0052] Mueller specifically teaches that there are problems in the crystal if there are excess densities of BMDs, an inhomogeneous distribution of BMDs, or an excessively low density of BMDs and that the BMD density should be not less than 3×108/cm3 and not more than 2.5×109/cm3. Thus, a PHOSITA prior to the effective filing date of the invention would look to the teachings of Mueller and would be motivated to produce the Si wafers in the method of Von Ammon, Omote, and Hoshi under conditions, including an oxygen concentration which yields a BMD density of up to 2.5×109/cm3 with the motivation for doing so being to produce the optimal number of BMDs required for a particular device application which do not create problems in the crystal due to too few or too many BMDs.
Regarding claim 10, Von Ammon does not explicitly teach that the radially homogenous distribution is a BMD density over the radius of less than 170% calculated by a formula ((BMDmax-BMDmin)/BMDmean)x100%, where BMDmax, BMDmin and BMDmean respectively denote measured greatest BMD density, smallest BMD density, and average BMD density. However, since at least ¶¶[0008]-[0016] of Von Ammon specifically teach that the process conditions may be carefully controlled to eliminate OSFs and BMDs in order to produce “perfect silicon” the BMD density will be essentially zero. In this case, since the BMD density is zero, there necessarily is a homogeneous distribution over the radius which has a value of substantially zero which is less than 170% as claimed. Alternatively, as noted supra with respect to the rejection of claims 8-9, in the Abstract, Fig. 1, and ¶¶[0028]-[0052] as well as elsewhere throughout the entire reference Mueller teaches an analogous method of producing single crystal Si wafers by the Czochralski process which have a predetermined density of BMDs by depositing an epitaxial layer and then performing a heat treatment. In ¶¶[0029]-[0033] and ¶¶[051]-[0052] Mueller specifically teaches that there are problems in the crystal if there are excess densities of BMDs, an inhomogeneous distribution of BMDs, or an excessively low density of BMDs and that the BMD density should be not less than 3×108/cm3 and not more than 2.5×109/cm3. In ¶[0037], ¶[0052], and claims 13-14 Mueller further teaches that the mean density of BMDs preferably is not less than 1,100 cm-2, may be up to 10,000 cm-2, and varies not more than 80% based on a mean density. Thus, a PHOSITA prior to the effective filing date of the invention would look to the teachings of Mueller and would be motivated to produce the Si wafers in the method of Von Ammon, Omote, and Hoshi under conditions which yield a mean density of BMDs which varies by not more than 80% based on a mean density with the motivation for doing so being to produce the optimal distribution of BMDs required for a particular device application which do not create problems in the crystal due to an inhomogeneous distribution of BMDs.
Response to Arguments
Applicants’ arguments filed June 3, 2026, have been fully considered, but they are not persuasive.
Applicants initially argue that Von Ammon cannot be modified to arrive at the claimed invention because ¶¶[0008]-[0016] of Von Ammon teach that the goal is to produce “perfect silicon” which contains no agglomerated self-point defects. See applicants’ 6/3/2026 reply, pp. 7-9. Applicants’ argument is noted, but is unpersuasive. In ¶[0016] Von Ammon does not specifically state that the goal is to only produce “perfect silicon,” but instead this is but one of several different alternatives. In fact, the first sentence of ¶[0016] states that the object of the invention is to provide a method which makes it possible to deliberately set up the defect distributions required by a customer with ¶[0011] further teaching that in some embodiments this may involve the formation of OSFs and BMDs. It is also noted that claim 1 does not specifically recite a particular BMD concentration or distribution. Consequently, since the method of Von Ammon as modified by Omote and Hoshi performs each and every step of the claimed process it must necessarily produce the same results, namely that of producing BMDs.
Applicants then argue that Omote’s teaching is incompatible with the present invention because Omote relies on a method that requires carbon doping as an essential element of its gettering approach and that Omote’s resistivity disclosure cannot be extracted in isolation. Id. at pp. 9-10. This argument is not found persuasive as Omote is merely introduced to teach that doping the Si melt with a known p-type dopant such as boron in order to produce a p-type Si substrate having a resistivity in the range of 10 to 25 mW-cm is known in the art. Doping with either a Group III or V element to produce p- or n-type Si is well-known in the art and is routinely performed to produce Si wafers having the resistivity required for a particular application regardless of whether additives such as C or N are also utilized. As explained in ¶[0008] of Omote, carbon is added to concentrate the oxygen precipitates to the surface and is not specifically relied upon to produce a particular resistivity. Thus, the fact that Omote includes carbon is irrelevant in the context of producing a particular resistivity as Si can and will be doped p-type to a predetermined resistivity using boron as a dopant with the final resistivity being directly proportional to the amount of boron that is added. In the context of using boron to enhance the aggregation of oxygen precipitates, it is the Examiner’s position that although Omote appears to show improvements in the density of oxygen precipitates from the use of carbon in addition to boron doping, at least Figs. 3-4, Example 1 in ¶¶[0048]-[0050], and Comparative Example 1 in ¶[0051] show that the same resistivity of approximately 10 to 10.5 W-cm is obtained for a given boron doping concentration of 1.5×1018 atoms/cm3 even in the absence of carbon and that at least some benefit in terms of the density of oxygen precipitates is obtained as a result of boron doping. Although not explicitly stated in the rejection of claim 1, an additional motivation for doping with boron to produce Si wafers with a resistivity in the 10 to 25 mW-cm range as per the teachings of Omote would be to produce device wafers for applications which require that specific range of the resistivity. Thus, the teachings of Omote show that doping with boron to produce a p-type Si substrate with a resistivity in the claimed range of 10 to 25 mW-cm for a particular application is known in the art and that this promotes the aggregation of oxygen precipitates to some degree even in the absence of carbon as an additive. The Examiner’s position is supported by at least ¶[0053] and ¶[0059] of U.S. Patent Appl. Publ. No. 2017/0362736 to Kim, et al. which teaches that the use of n- and p-type dopants to change the concentration of BMDs within the ingot and to produce a resistivity of 20 mW-cm is known in the art and may be performed in the absence of carbon doping.
Applicants then argue that the motivation utilized to combine Von Ammon with Omote is conclusory because Von Ammon is directed to producing defect-free Si and there is no motivation to alter Von Ammon’s teachings based on Omote to produce oxygen precipitates therein. Id. at p. 11. Applicants’ argument is noted, but is unpersuasive since, as discussed supra, Von Ammon does not explicitly teach or require the formation of defect-free Si. Instead, the defect-free Si is but one of several different possible configurations for the resulting crystalline Si that may be formed depending on the customer’s requirements. Since one possibility involves the formation of BMDs, it therefore is the Examiner’s position that the supplied motivation to combine is not a mere conclusory statement.
Applicants subsequently argue that the motivation to combine Hoshi with the cited art is similarly deficient because Hoshi solves a different problem than that addressed by the present invention. Id. at pp. 11-12. This argument is not found persuasive since even if Hoshi solves a different problem, the fact that Hoshi attains a beneficial effect from performing the same steps is a sufficient motivation for performing the claimed method. The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Applicants argue that even if one were to combine Von Ammon, Omote, and Hoshi, the result would not arrive at the claimed invention because Von Ammon’s process goal is to minimize defects, Omote’s teaching requires carbon doping, and Hoshi’s teachings is focused on epitaxial layer thickness to buffer against oxygen diffusion, and the process of claim 1 achieves unexpected results. Id. at pp. 12-13. Applicants’ argument is noted, but is unpersuasive. As detailed in several instances above, Von Ammon does not specifically require the formation of perfect silicon, but instead discloses this as one possible result depending on the specific requirements of the customer. Moreover, since the Examiner has provided a suitable motivation to utilize the teachings of Omote and Hoshi to remedy the noted deficiencies in Von Ammon, the combination of Von Ammon, Omote, and Hoshi therefore performs each and every step of the claimed process. Since the cited prior art performs the same steps it must necessarily produce the same advantage, namely that of producing a high and radially homogeneous BMD density. It is axiomatic that one who performs the steps of the known process must necessarily produce all of its advantages. Mere recitation of a newly discovered function or property, that is inherently possessed by things in the prior art does not cause a claim drawn to these things to distinguish over the prior art. Therefore, the production of a high and radially homogeneous BMD density, if not clearly envisaged, would be reasonably expected by the skilled artisan. See Leinoff v. Louis Milona & Sons, Inc. 220 USPQ 845 (CAFC 1984). As previously noted, it is also pointed out that claim 1 does not specifically recite or require a “high, radially homogeneous BMD density” and, consequently, applicants’ argument is also based upon features which are not claimed.
Finally, applicants argue that the combination of Von Ammon, Omote, and Hoshi is based on impermissible hindsight. Id. at p. 13. In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KENNETH A BRATLAND JR whose telephone number is (571)270-1604. The examiner can normally be reached Monday- Friday, 7:30 am to 4:30 pm EST.
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/KENNETH A BRATLAND JR/Primary Examiner, Art Unit 1714
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