DETAILED ACTION
This Office action is in response to the filing of this application on 20 June 2024. Claims 1-19 are pending in the application.
This application is a continuation of application Serial No. 17/654,221, filed on 09 March 2022, now US Patent 12,635,296; which is a continuation of application Serial No. 16/990,349, filed on 11 August 2020, now US Patent 11,342,484.
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 § 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 1-4 and 6-10 are rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by Ichinose et al., CA 2517024.
With respect to claim 1, Ichinose et al. disclose an optoelectronic semiconductor light emitting device, see Disclosure of the Invention and Fig.24, comprising:
a single crystal (AlxGa1-x)2O3 substrate 351/351 comprising a monoclinic or corundum crystal symmetry (see page 21: “in place of the (3-Ga203 seed crystal 107,
a P-Ga2O3 seed crystal being in the same monoclinic system as (3-Ga203, a space group thereof belongs to C2/m, and composed of a (3-Ga203 solid solution containing an oxide (oxides) of one, two or more of elements selected from the group consisting of
gallium, indium, aluminum, tin, germanium, nickel, copper, zinc, zirconium, niobium, molybdenum, titanium, vanadium, chromium, manganese, iron, cobalt, hafnium, tantalum, tungsten, silicon, and magnesium may be used to grow a P-Ga2O3 single crystal made of such solid solution.“), where 0<x<1; and
an optical emission region comprising an epitaxial oxide layer 352 (see pages 36-37: “Although the PLD method has been mentioned as a manner for growing aP-Ga2O3 single crystal thin film on a substrate made of a(3-Ga203 single crystal, the invention is not limited to the PLD method, but a physical vapor-phase growth method such as MBE (Molecular Beam Epitaxy) method, and MOCVD (Metal Organic Vapor Deposition) method; and a chemical vapor-phase growth method such as thermal CVD (Chemical Vapor Deposition), and plasma CVD are applicable.”) disposed on the single crystal (AlxGa1-x)2O3 substrate 350/351, as shown in Fig. 24;
wherein the optical emission region is configured to emit light having a wavelength in a range from 150 nm to 425 nm (260 nm), see the seventeenth embodiment on pages 65-68.
With respect to claim 2, as shown in Fig. 24 of Ichinose et al., in the optoelectronic semiconductor light emitting device of Ichinose et al., the optical emission region is configured to emit the light through the single crystal (AlxGa1-x)2O3 substrate 350/351.
With respect to claim 3, the epitaxial oxide layer 352 has cubic, rhombohedral, hexagonal, or monoclinic crystal symmetry, see page 21.
With respect to claim 4, in the optoelectronic semiconductor light emitting device of Ichinose et al., the epitaxial oxide layer comprises uniaxially, biaxially, or triaxially deformed unit cells, as shown in Fig. 6.
With respect to claim 6, in the optoelectronic semiconductor light emitting device of Ichinose et al., the epitaxial oxide layer 352 comprises MgyGa2(1-y)O3-2y, where 0≤y≤1, when y=0 epitaxial oxide layer 352 is Ga2O3.
With respect to claim 7, in the optoelectronic semiconductor light emitting device of Ichinose et al., the epitaxial oxide layer 252 comprises (AlyGa1-y)2O3, where 0≤y≤1, see the seventeenth embodiment on pages 65-68.
With respect to claim 8, in the optoelectronic semiconductor light emitting device of Ichinose et al., x=y for substrate 350 and oxide layer 352.
With respect to claim 9, in the optoelectronic semiconductor light emitting device of Ichinose et al., x and y have different values for substrate 351 and oxide layer 352.
With respect to claim 10, in the optoelectronic semiconductor light emitting device of Ichinose et al., the epitaxial oxide layer 252 comprises Ga2O3, see the seventeenth embodiment on pages 65-68.
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.
Claims 11-14 are rejected under 35 U.S.C. 103 as being unpatentable over Ichinose et al., CA 2517024, as applied to claim 1 above, in view of Cora et al, the article entitled The real structure of ε-Ga2O3 and its relation to κ-phase.
Ichinose et al. is applied as above. Ichinose et al. disclose the epitaxial oxide layer 352 comprises β-Ga2O3. However, Ichinose et al. lack anticipation only of the epitaxial oxide layer 352 comprising a polar form of Ga2O3 with a hexagonal crystal symmetry. In the same field of endeavor, Cora et al. disclose that ε-Ga2O3is a polar form of Ga2O3 having a hexagonal structure, and is the second most stable polymorph of Ga2O3 after β. Cora et al. disclose that since the bandgap of ε-Ga2O3 is comparable to that of β-Ga2O3, ε-Ga2O3 can be used in technological application, see Introduction section of the article. Therefore, in light of the disclosure of Cora et al., it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to try to substitute ε-Ga2O3for the β-Ga2O3used in the known optoelectronic semiconductor light emitting device of Ichinose et al. It has been well established that an obvious to try rationale can support an obviousness rejection where one skilled in the art is choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421, 82 USPQ2d 1385, 1397 (2007)
With respect to claim 12, in light of the disclosure of Cora et al., it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the epitaxial oxide layer 352 could comprise a polar form of (AlyGa1-y)2O3 with a hexagonal crystal symmetry, where 0≤y≤1 because when y=0, the layer would comprise Ga2O3.
With respect to claim 13, in the optoelectronic semiconductor light emitting device of Ichinose et al. in view of Cora et al, x=y for substrate 350 and oxide layer 352.
With respect to claim 14, in the optoelectronic semiconductor light emitting device of Ichinose et al. in view of Cora et al., x and y have different values for substrate 351 and oxide layer 352.
Claims 15-19 are rejected under 35 U.S.C. 103 as being unpatentable over Ichinose et al., CA 2517024, in view of in view of Cora et al, the article entitled The real structure of ε-Ga2O3 and its relation to κ-phase.
With respect to claim 15, Ichinose et al. disclose a semiconductor structure, see Disclosure of the Invention and Fig.24, comprising:
a single crystal (AlxGa1-x)2O3 substrate 351/351 comprising a monoclinic or corundum crystal symmetry (see page 21: “in place of the (3-Ga203 seed crystal 107,
a P-Ga2O3 seed crystal being in the same monoclinic system as (3-Ga203, a space group thereof belongs to C2/m, and composed of a (3-Ga203 solid solution containing an oxide (oxides) of one, two or more of elements selected from the group consisting of
gallium, indium, aluminum, tin, germanium, nickel, copper, zinc, zirconium, niobium, molybdenum, titanium, vanadium, chromium, manganese, iron, cobalt, hafnium, tantalum, tungsten, silicon, and magnesium may be used to grow a P-Ga2O3 single crystal made of such solid solution.“), where 0<x<1; and
an epitaxial oxide layer 352 (see pages 36-37: “Although the PLD method has been mentioned as a manner for growing aP-Ga2O3 single crystal thin film on a substrate made of a(3-Ga203 single crystal, the invention is not limited to the PLD method, but a physical vapor-phase growth method such as MBE (Molecular Beam Epitaxy) method, and MOCVD (Metal Organic Vapor Deposition) method; and a chemical vapor-phase growth method such as thermal CVD (Chemical Vapor Deposition), and plasma CVD are applicable.”) disposed on the single crystal (AlxGa1-x)2O3 substrate 350/351, as shown in Fig. 24.
Ichinose et al. disclose the epitaxial oxide layer 352 comprises β-Ga2O3. However, Ichinose et al. lack anticipation only of the epitaxial oxide layer 352 comprises a polar form of (AlyGa1-y)2O3 with a hexagonal crystal symmetry, where 0≤y≤1. In the same field of endeavor, Cora et al. disclose that ε-Ga2O3is a polar form of Ga2O3 having a hexagonal structure, and is the second most stable polymorph of Ga2O3 after β. Cora et al. disclose that since the bandgap of ε-Ga2O3 is comparable to that of β-Ga2O3, ε-Ga2O3 can be used in technological application, see Introduction section of the article. Therefore, in light of the disclosure of Cora et al., it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to try to substitute ε-Ga2O3 for the β-Ga2O3 used in the known optoelectronic semiconductor light emitting device of Ichinose et al (when y=0, the layer would comprise Ga2O3). It has been well established that an obvious to try rationale can support an obviousness rejection where one skilled in the art is choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421, 82 USPQ2d 1385, 1397 (2007)
With respect to claim 16, in the semiconductor structure of Ichinose et al. in view of Cora et al, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention the epitaxial oxide layer comprises uniaxially, biaxially, or triaxially deformed unit cells, see Introduction section of the article.
With respect to claim 17, Cora et al. disclose that the epitaxial oxide layer comprises Ga2O3.
With respect to claim 18, in the optoelectronic semiconductor light emitting device of Ichinose et al. in view of Cora et al, x=y for substrate 350 and oxide layer 352.
With respect to claim 19, in the optoelectronic semiconductor light emitting device of Ichinose et al. in view of Cora et al., x and y have different values for substrate 351 and oxide layer 352.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Ichinose et al., CA 2517024, as applied to claim 1 above, in view of Iida et al., US 2021/0013374
Ichinose et al. is applied as above. Ichinose et al. lack anticipation only of the epitaxial oxide layer 352 comprises MgyAl2(1-y)O3-2y, where 0≤y≤1. In the same filed of endeavor, Iida et al. disclose that for an oxide substrate 105 comprising Ga2O3, an epitaxial oxide layer 110 can comprise Al2O3, see paragraph [0021]. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the epitaxial oxide layer could comprise MgyAl2(1-y)O3-2y, where 0≤y≤1, when y=0, the epitaxial oxide layer is Al2O3..
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 1-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 10, and 11 of U.S. Patent No. 11,342,484. Although the claims at issue are not identical, they are not patentably distinct from each other because the pending claims of the instant application are broader in scope than the patented claims. The patented claims clearly encompass the semiconductor device/structure of the pending claims.
Claims 1-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 12 of U.S. Patent No. 12,588,321. Although the claims at issue are not identical, they are not patentably distinct from each other because the pending claims of the instant application are broader in scope than the patented claims. The patented claims clearly encompass the semiconductor device/structure of the pending claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The additionally cited references disclose various optoelectronic semiconductor light emitting devices comprising a single crystal (AlxGa1-x)2O3 substrate and an epitaxial metal oxide layer on the substrate.
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MARY A. WILCZEWSKI
Primary Examiner
Art Unit 2898
/MARY A WILCZEWSKI/Primary Examiner, Art Unit 2898
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