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 .
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 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 1-11 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 written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. There is no support in disclosure indicating the polycrystalline silicon carbide film constituting the polycrystalline silicon carbide substrate from the second underlying substrate from which the carbon layer has been remove.
Claims 1-11 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. It is not clear what the applicant means by separating the polycrystalline silicon carbide film constituting the polycrystalline silicon carbide substrate from the second underlying substrate from which the carbon layer has been remove. For examination purposes it is considered as separating the polycrystalline silicon carbide film from the first underlaying substrate by removing the carbon layer from the second underlayer substrate constituting the second underlayer substrate.
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.
Claims 1-2, and 6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Taizo Kitagawa et al (Japanese Patent: 2021-031363, here after Kitagawa). Document #1 is cited for evidence of inherency.
Claim 1 is rejected. Kitagawa teaches a method for producing a polycrystalline
silicon carbide substrate, comprising:
a carbon layer forming step of forming a carbon layer (300) on a surface of a
first underlying substrate (200) to produce a second underlying substrate [page 5
paragraph 5], wherein the first underlayer substrate (200), polycrystalline silicon carbide [page 3 lines 1-3]; polycrystalline silicon carbide inherently has a heat resistance of 1200C or higher and characteristic that it does not burn away even in oxygen-containing atmosphere at 500C or higher (because an oxide layer forms on it and protect it from further oxidation) [see document #1 page 3, first paragraph 1 lines 5-8];
a polycrystalline silicon carbide film forming step of forming a polycrystalline
silicon carbide film (400) on a surface of the second underlying substrate by a chemical
vapor deposition method [page 3 paragraph 1 lines 1-2, 6-8];
a carbon layer exposing step of removing an outer peripheral edge of the
polycrystalline silicon carbide film formed on the surface of the second underlying
substrate to expose the carbon layer(grinding) [page 3 paragraph 1 lines 7-9]; and
a polycrystalline silicon carbide film separating step of burning the exposed
carbon layer in an oxygen-containing atmosphere(air) [page 3 paragraph 1 lines 9-12],
which in fact by burning the carbon layer separating the polycrystalline silicon carbide film from the first underlaying substrate by removing the carbon layer from the second underlayer substrate constituting the second underlayer substrate.
Claim 2 is rejected. Kitagawa teaches a grinding step of grinding for
flattening(polishing) a surface of the separated polycrystalline silicon carbide film after
the polycrystalline silicon carbide film separating step [page 8 paragraph 4].
Claim 6 is rejected as Kitagawa teaches the first underlying substrate is made of
polycrystalline silicon carbide (200) [page 3 lines 1-2].
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 8 is rejected under 35 U.S.C. 103 as being unpatentable over aizo Kitagawa et al (Japanese Patent: 2021-031363, here after Kitagawa).
Claim 8 is rejected. Kitagawa teaches the limitation of claim 1. Although
Kitagawa does not clearly teach the first underlying substrate (SiC film, 200) has a
groove on the surface thereof, extending to an outer peripheral edge of the first
underlying substrate. However, Kitagawa teaches a mismatch between thermal
expansion coefficient of carbon substrate and silicon carbide film causes stress [page
first paragraph lines 6-7], which obviously can result to crack in the SiC film if SiC film
grow to a certain thickness. Therefore, it would have been obvious to one of ordinary
skill in the art at the time of the invention was made to have a method of Kitagawa
where there is cracks in SiC film, because there is mismatch between coefficient of
expansion between carbon substrate and SiC film.
Claim 8 is rejected. Kitagawa teaches the limitation of claim 1. Although
Kitagawa does not clearly teach the first underlying substrate (SiC film, 200) has a groove on the surface thereof, extending to an outer peripheral edge of the first
underlying substrate. However, Kitagawa teaches a mismatch between thermal
expansion coefficient of carbon substrate and silicon carbide film causes stress [page
first paragraph lines 6-10], and teaches polishing and grinding the SiC film (200) after
removing the carbon substrate which obviously can results to crack in the SiC film.
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the
invention was made to have a method of Kitagawa where there is cracks in SiC film,
because the SiC film is wrapped after removing the carbon substrate due to internal
stresses.
Claims 3-5, and 9-11 are rejected under 35 U.S.C. 103 as being unpatentable
over Taizo Kitagawa et al (Japanese Patent: 2021-031363, here after Kitagawa), further
in view of Yuichi Takeuchi et al (Japanese Patent: 2006-041163, here after Takeuchi).
Claims 3 and 9 are rejected. Kitagawa teaches the limitation of claims1, and 2,
and teaches the carbon layer is made by CVD [page 5 paragraph 6, page 4 paragraph
3], but does not each the carbon layer is formed by a sputtering method using a carbon
target. Takeuchi teaches a method of forming a silicon carbide layer (8) on a substrate
and also on a carbon layer (2) [page 5 paragraph 2] where the carbon layer is removed
by burning [page 5 paragraph 4]. Takeuchi teaches the carbon layer can be deposited
by CVD method or using organic photoresist film [page 8 first paragraph] and heating to
form carbon layer [page 5 paragraph 4]. Therefore, it would have been obvious to one
of ordinary skill in the art at the time of the invention was made to have a method of
Kitagawa where the carbon layer is deposited by depositing a photoresist layer and
heating, because it is another way to deposit carbon layer for making silicon carbide
layer.
Claims 4, and 10 are rejected. Kitagawa teaches the limitation of claims1, and 2,
and teaches the carbon layer is made by CVD [page 5 paragraph 6, page 4 paragraph
3], but does not each the carbon layer is formed by a sputtering method using a carbon
target. Takeuchi teaches a method of forming a silicon carbide layer (8) on a substrate
and also on a carbon layer (2) [page 5 paragraph 2] where the carbon layer is removed
by burning [page 5 paragraph 4]. Takeuchi teaches the carbon layer can be deposited
by CVD method or sputtering [page 8 first paragraph]. Therefore, it would have been
obvious to one of ordinary skill in the art at the time of the invention was made to have a
method of Kitagawa where the carbon layer is deposited by sputtering (obviously from a
carbon target), because it is another way to deposit carbon layer for making silicon
carbide layers.
Claims 5, and 11 are rejected for the same reason claims 3, and 9 are rejected
above. The carbonized photoresist film is a carbon sheet adhered to the surface of the
first underlying substrate (SiC) and form the carbon layer.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Taizo
Kitagawa et al (Japanese Patent: 2021-031363, here after Kitagawa), further in view of
Kuniaki Yagi et al (U. S. Patent Application: 2019/0153616, here after Yagi).
Claim 7 is rejected as Kitagawa teaches the first underlying substrate is
composed of carbon substrate (100) and a silicon carbide film (200) formed on a
surface of the carbon substrate (we considered the silicon carbide underlying layer and
carbon layer as substrate or complex substrate). Kitagawa does not teach the carbon
substrate is an isotropic carbon substrate. Yagi teaches a method of forming a silicon
carbide layer (22) on a substrate (21) [0034, fig. 3A] where SiC layer is removed by
from the substrate by burning the carbon substrate [0034], and where the substrate is
disc shape carbon [0034]. Therefore, it would have been obvious to one of ordinary skill
in the art at the time of the invention was made to have a method of Kitagawa where the
carbon support substrate is disk shape(anisotropic), because it is suitable substrate for
making polycrystalline silicon carbide.
Response to Arguments
Applicant's arguments filed 12/15/25 have been fully considered but they are not persuasive. The applicant argument regarding U.S.C 112(b) is not persuasive; the claim is still unclear. The polycrystalline silicon carbide film forms on polycrystalline underlaying substrate and is not constituting the polycrystalline silicon carbide substrate. Paragraph 0027 of the specification also does not teach that.
The applicant argument regarding U.S.C 102(a)(1) is not persuasive, Kitagawa teaches the first underlaying substrate (200) is polycrystalline silicon carbide which in fact inherently has properties requires by amendment to claim 1(see claim 1 rejection above).
The applicant argument regarding objective of the invention and objective of Kitagawa’s invention is not persuasive, claims do not require reusing the silicon carbide film as underlayer(first) substrate.
The applicant argument regrading fig. 6 of Kitagawa is not persuasive as the rejection is based on fig.1, and not fig. 6. Furthermore, rejection is based on considering polycrystalline silicon carbide layer (200) as first underlaying substrate and the first polycrystalline silicon carbide layer+ carbon layer as the second underlying substrate.
Same above statements are valid for the rest of the applicant argumnets.
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 TABASSOM TADAYYON ESLAMI whose telephone number is (571)270-1885. The examiner can normally be reached M-F 9:30-6.
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/TABASSOM TADAYYON ESLAMI/Primary Examiner, Art Unit 1718
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