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
Claims 1-8 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected method, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 03/30/2026.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Objections
Claims 15 and 19 are objected to because claim 15 requires the member to be a single member and claim 19 dependent from claim 15 requires that the member requires multiple layers the two appear to contradict themselves. Further clarification in the claim limitations is appreciated.
Claim Rejections - 35 USC § 102
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 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) 9-10, 12-14 is/are rejected under 35 U.S.C. 102(a)(2)/(a)(1) as being anticipated by Okada (US 20170358458).
Regarding claims 9 and 13, Okada discloses a member such as semiconductor [0024] comprising;
A recessed structure (110) formed by an opening in a first surface and surrounding side walls considered a bottomed surface and a through structure (see at least Fig 1)
The first surface comprises Si as depicted in Fig. 1 [0024]-[0026].
Okada discloses the recess formed by etching [0026]-[0027] thus at least one streak will exist as indicated in the specification of the present application [0128]-[0130].
Regarding claim 10, the surface of the recess is silica thus comprising O (fig 1)
Regarding claim 12, the recessed structure (110) is considered a bottomed groove, or bottomed hole, or bottomed groove given the broadest reasonable interpretation.
Regarding claim 14, Okada discloses the member may have a film of silica or silicon nitride [0028].
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) 11, 15-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Okada (US 20170358458).
Regarding claims 11, 15, Okada discloses a member such as semiconductor [0024] comprising;
A recessed structure (110) formed by an opening in a first surface and surrounding side walls considered a bottomed surface and a through structure (see at least Fig 1)
The first surface comprises Si as depicted in Fig. 1 [0024]-[0026].
Okada discloses the recess formed by etching [0026]-[0027] thus at least one streak will exist as indicated in the specification of the present application [0128]-[0130].
Okada does not disclose the dimensions of the recess however it would be obvious to one skilled in the art to for the recess as motivated to achieve the desired shape semiconductor.
In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device
In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that absent persuasive evidence that the particular configuration of the claimed container was significant.
the specification of the present application [0128]-[0130].
Regarding claim 16, the surface of the recess is silica thus comprising O (fig 1)
Regarding claims 17-19, the member (Fig. 1) disclosed by Okada may be a crystalline [0024], or silica glass [0024] considered to be formed of multiple members or a single member and multiple layers (Fig 1) given the broadest reasonable interpretation as none of the members have been defined
the use of a one piece construction instead of the structure disclosed in [the prior art] would be merely a matter of obvious engineering choice."; but see Schenck v. Nortron Corp., 713 F.2d 782, 218 USPQ 698 (Fed. Cir. 1983)
Regarding claim 20, Okada discloses the member may have a film of silica or silicon nitride [0028].
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JODI COHEN FRANKLIN whose telephone number is (571)270-3966. The examiner can normally be reached Monday-Friday 8 am-4 pm.
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JODI COHEN FRANKLIN
Primary Examiner
Art Unit 1741
/JODI C FRANKLIN/Primary Examiner, Art Unit 1741
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