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 .
DETAILED ACTION
Currently, claims 1-4 are pending and examined below.
Information Disclosure Statement (IDS)
The information disclosure statement submitted on 07/17/2024 ("07-17-24 IDS") is in compliance with the provisions of 37 CFR 1.97. Accordingly, the 07-17-24 IDS is being considered by the examiner.
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
The following title is suggested: SEMICONDUCTOR LIGHT RECEIVING DEVICE HAVING END SURFACE WITH SURFACE ROUGHNESS
Claim Rejections - 35 USC § 112
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 1-4 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 pre-AIA the applicant regards as the invention.
Section 2173.02.I. of the MPEP provides the following guidance on how pre-issuance claims under examination are construed differently than patented claims:
Patented claims are not given the broadest reasonable interpretation during court proceedings involving infringement and validity, and can be interpreted based on a fully developed prosecution record. While "absolute precision is unattainable" in patented claims, the definiteness requirement "mandates clarity." Nautilus, Inc. v. Biosig Instruments, Inc., 527 U.S. __, 134 S. Ct. 2120, 2129, 110 USPQ2d 1688, 1693 (2014). A court will not find a patented claim indefinite unless the claim interpreted in light of the specification and the prosecution history fails to "inform those skilled in the art about the scope of the invention with reasonable certainty." Id. at 1689.
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The Office does not interpret claims when examining patent applications in the same manner as the courts. In re Packard, 751 F.3d 1307, 1312, 110 USPQ2d 1785, 1788 (Fed. Cir. 2014); In re Morris, 127 F.3d 1048, 1054, 44 USPQ2d 1023, 1028 (Fed. Cir. 1997); In re Zletz, 893 F.2d 319, 321-22 (Fed. Cir. 1989). The Office construes claims by giving them their broadest reasonable interpretation during prosecution in an effort to establish a clear record of what the applicant intends to claim. Such claim construction during prosecution may effectively result in a lower threshold for ambiguity than a court's determination. Packard, 751 F.3d at 1323-24, 110 USPQ2d at 1796-97 (Plager, J., concurring). However, applicant has the ability to amend the claims during prosecution to ensure that the meaning of the language is clear and definite prior to issuance or provide a persuasive explanation (with evidence as necessary) that a person of ordinary skill in the art would not consider the claim language unclear. In re Buszard, 504 F.3d 1364, 1366 (Fed. Cir. 2007)( claims are given their broadest reasonable interpretation during prosecution "to facilitate sharpening and clarifying the claims at the application stage"); see also In re Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984); In re Zletz, 893 F.2d 319, 322, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989).
Here, the independent claim 1 is indefinite, because it is unclear what is meant by “where the light reflected by the reflecting portion and reached the second surface reaches by reflecting at the second surface.” The reflected light reaches the second surface so it is unclear how this reflect light “reached the second surface reaches by reflecting at the second surface.”
Claims 2-4 are indefinite, because they depend from the indefinite claim 1.
Claim Rejections - 35 USC § 1021
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.
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Pub. No. US 2014/0131825 A1 to Bui et al. (“Bui”).
Figs. 2A and 2B have been annotated to support the rejection below:
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Regarding independent claim 1, Bui teaches a semiconductor light receiving device (see Fig. 2A and Fig. 2B, for example) having a light receiving portion with a light absorbing layer 200a on a first surface side 202a (para [0041] - “For purposes of elucidation, the sides or facets of photochip 200a have been enumerated as proximate 202a, distant 204a, top 204a, bottom 205a, left 206a, and right 207a.”) of a semiconductor substrate 200a that is transparent to incident light in an infrared range for optical communications (para [0049] - “In one embodiment, photodiode 201a possesses the following specifications: device type is InP/InGaAs PIN photodiode; detection range varies from a minimum of approximately 800 nm to a maximum of approximately 1700 nm (i.e. optical bandwidth)…”); wherein
a reflecting portion 214a is provided on a second surface side 203a, 214a of the semiconductor substrate 200a opposite the first surface 202a in a region where the incident light incident on the light receiving portion and passed through the light absorbing layer 200a reaches, the reflecting portion 214a reflecting the incident light toward the second surface 203a, 214a,
an end surface 210a/210b (para [0046] - “Surface textured region 210a is shown in FIG. 2a and is further detailed in FIG. 2b.”; para [0046] - “For example, region 210b may be textured preferably forming a plurality of three-dimensional (3-D) square base pyramidal prisms therein. It must be noted here that the square base pyramidal prisms facilitate light trapping or confinement within photodiode 201b.”) of the semiconductor substrate 200a, where the light reflected by the reflecting portion 214a and reached the second surface 203a reaches by reflecting at the second surface 203a, 214a, is formed as a rough surface having roughness with a height equal to or greater than a wavelength of the incident light (para [0046] discloses that the square base pyramidal prisms facilitated light trapping or confinement so said prisms inherently has dimensions that are greater than the wavelength of light that is designed to trap or confine.).
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter:
Claim 2 is rejected to for depending on a rejected base claim 1, but would be allowable if it is rewritten in independent form to include all of the limitations of the base claim 1 or the base claim 1 is amended to include all of the limitations of claim 2; and the pending 35 U.S.C. 112(b) rejection of the base claim 1 is successfully traversed.
Claim 3 is rejected to for depending on a rejected base claim 1, but would be allowable if it is rewritten in independent form to include all of the limitations of the base claim 1 or the base claim 1 is amended to include all of the limitations of claim 3; and the pending 35 U.S.C. 112(b) rejection of the base claim 1 is successfully traversed.
Claim 4 is rejected to for depending on a rejected base claim 1, but would be allowable if it is rewritten in independent form to include all of the limitations of the base claim 1 or the base claim 1 is amended to include all of the limitations of claim 4; and the pending 35 U.S.C. 112(b) rejection of the base claim 1 is successfully traversed.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Pub. No. US 2023/0049438 A1 to Isomura et al.
Pub. No. US 2021/0193851 A1 to Tanaka et al.
Pub. No. US 2021/0384365 A1 to Isomura et al.
Pub. No. US 2021/0083131 A1 to Omura et al.
Patent No. US 11/143,827 B1 to Itazaki et al.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL JUNG whose telephone number is (408) 918-7554. The examiner can normally be reached on 8:30 A.M. to 7 P.M.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eliseo Ramos-Feliciano can be reached on (571) 272-7925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MICHAEL JUNG/Primary Examiner, Art Unit 2817 08 July 2026
1 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 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
Prosecution Insights