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 I, claims 1-7 in the reply filed on 17 July 2026 is acknowledged.
Applicants traverse the basis for a posteriori lack of unity by stating that Odnoblyudov (U.S. Pub. No. 2019/0198311) does not suggest a seed layer having a thickness of more than 0.04 µm to less than 0.1 µm. However, Odnoblyudov discloses the single crystal silicon layer (corresponding to the claimed seed layer) has a thickness of 0.1 µm or less (paragraph [0076]). Such a thickness is sufficient evidence that the common technical feature does not make a contribution over the prior art.
The requirement is still deemed proper and is therefore made FINAL.
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.
Claims 1 and 3-6 are rejected under 35 U.S.C. 103 as being unpatentable over Odnoblyudov et al. (U.S. 2019/0198311 A1)(Odnoblyudov).
Odnoblyudov teaches a substrate for use in epitaxial growth of a layer 130. See Figure 1, and paragraph [0037]. The layered structure taught by Odnoblyudov corresponds to the claimed structure in the following table (the reference numerals in Odnoblyudov are in Figure 1):
Instant application claim 1 limitation
Instant application claim 1 thickness
Odnoblyudov layer
Odnoblyudov thickness
Instant application dependent claim limitation relating to the claim 1 limitation
Odnoblyudov teaching
Nitride ceramic core
Polycrystalline ceramic core 110 such as aluminum nitride [0021]
Aluminum nitride (claim 3)
Aluminum nitride [0021]
Encapsulating layer
0.05-1.5 µm
Barrier layer 118 [0028]
2000-5000 Å (0.2000-0.5000 µm) [0028]
Contains silicon nitride (claim 4)
Silicon nitride [0028]
Planarizing layer
0.05-3.0 µm
Bonding layer 120 [0036]
App. 1.5 µm [0036]
Contains any one of silicon oxide, silicon oxynitride, and aluminum arsenide (claim 5)
Silicon oxide [0036]
Seed crystal layer
More than 0.04 and less than 0.1 µm
Single crystal layer 122 [0037]
0.1 µm or less [0076]
Si<111>, SiC, sapphire, aluminum nitride, aluminum gallium nitride, or gallium nitride (claim 6)
Silicon(111), SiC, sapphire, GaN, AlN [0037] [0056] [0058]
The barrier layer 118 of Odnoblyudov encapsulates the core substrate 110 as shown in Figure 1 and paragraph [0028] of Odnoblyudov.
The bonding layer 120 of Odnoblyudov is polished (i.e., planarized). See paragraph [0057].
The single crystal layer 122 of Odnoblyudov has layer 130 grown on it, and is therefore considered a “seed layer.” See paragraph [0037].
Odnoblyudov differs from claims 1, 3-6 by teaching overlapping ranges of thickness rather than anticipatory ranges or examples. However, overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to have selected from the overlapping portion of the ranges taught by the reference, because overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
Claims 2 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Odnoblyudov et al. (U.S. 2019/0198311 A1)(Odnoblyudov) as applied to claim 1 above, and further in view of Kubota et al. (WO 2021/250991 A1)(Kubota).
The rejection is over Kuboto, WO 2021/250991 A1, because the reference has an earlier publication date, however, the English language equivalent, US 2023/0340694 A1, will be cited below.
Odnoblyudov renders obvious claim 1 for the reasons recited above. Odnoblyudov fails to disclose a stress adjusting layer (claim 2), or that the stress adjusting layer contains silicon (claim 7).
Kuboto discloses a stress adjusting layer 5 applied to the back of a substrate. See the title and paragraph [0048]. The stress adjusting layer reduces warpage. Id. The stress adjusting layer 5 may be silicon. See paragraph [0017].
Therefore, it would have bene obvious to one of ordinary skill in the art at the time of filing to have applied a silicon stress adjusting layer to the back surface of the substrate of Odnoblyudov because the resultant article would have a reduce warp.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of copending Application No. 18/845,148 (‘148). Although the claims at issue are not identical, they are not patentably distinct from each other.
Claims 1-14 completely encompass all of the limitations of instant claims 1-7 including overlapping ranges of thickness. Overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 7 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of copending Application No. 18/845,148 (‘148) as applied to claims 1 and 2 above and further in view of Kubota et al. (WO 2021/250991 A1)(Kubota).
The rejection is over Kuboto, WO 2021/250991 A1, because the reference has an earlier publication date, however, the English language equivalent, US 2023/0340694 A1, will be cited below.
Claims 1-14 of the ‘148 application render obvious claims 1 and 2 for the reasons recited above. Claim 4 of the ‘148 application discloses a stress adjusting layer applied to the bottom of the substrate, but the ‘148 claims fail to disclose the stress adjusting layer includes silicon.
Kuboto discloses a stress adjusting layer 5 applied to the back of a substrate. See the title and paragraph [0048]. The stress adjusting layer reduces warpage. Id. The stress adjusting layer 5 may be silicon. See paragraph [0017].
Therefore, it would have bene obvious to one of ordinary skill in the art at the time of filing to have applied a silicon stress adjusting layer to the back surface of the substrate of the ‘148 claims because the resultant article would have a reduce warp.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/David Sample/Primary Examiner, Art Unit 1784
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