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 .
Status of Claims
The following is in response to the communication filed 7/23/2024.
Claims 1-17 are currently pending.
Claims 1-17 have been examined.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d) to Korean Patent Application No. 10-2023-0096285, filed on July 24, 2023, and Korean Patent Application No. 10-2024-0086323, filed on July 1, 2024. It is noted, however, that applicant has not filed a certified copy of the above applications as required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 7/23/2024, 7/2/2025, 8/1/2025, and 11/10/2025, are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the examiner.
Claim Interpretation
Claim 5 includes the terms “carbonization” and “nitridation”, both of these processes are described in the spec as being capable of being done by various vapor deposition methods. MPEP section 2112.02.I states “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.” For the purpose of examination, a process that has the same resulting materials, such as material layers deposited by a vapor deposition method, will be considered to teach “carbonization” or “nitridation”.
Claim 8 recites properties of light transmission of the substate. Claim 11, recites properties of the carbon layer including the structure and the peak around a wavelength of 1,6220 cm-1 in a D band in the Raman spectrum. MPEP section 2112.02.I states “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.” For purposes of examination, where the structure recited in the reference is substantially identical to the claims, any claimed properties will be presumed to be inherent in the reference device absent any statement in the reference or showing the property not to be inherent.
Claim Objections
Claims 12 and 13 are objected to because of the following informalities:
Regarding claim 12, the first instance of the term Ra, while understood by one ordinary skill in the art to mean the average of the peaks and valleys, for clarity it should be denoted in the claim that this is meaning of Ra that the applicant intended. Similarly, Rt, while understood by one of ordinary skill in the art to be the difference between the valley to peak roughness (i.e. total height), for clarity this also should be denoted in the claim.
For example, claim 12 should read:
The separable semiconductor substrate of claim 9, wherein the carbon layer has a surface roughness Ra (average roughness) of 27 nm or less and a surface roughness Rt (valley to peak roughness) 310 nm or less.
Claim 13 is objected to for similar reasons and would be corrected by similar amendment.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(a)
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.
Claims 9-13 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for the a nitride layer, and an aluminum nitride layer, does not reasonably provide enablement for a carbon layer. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make the invention commensurate in scope with these claims. When considering the scope of enablement one should consider (1) how broad the claim is with respect to the disclosure and (2) whether one skilled in the art could make and use the entire scope of the claimed invention without undue experimentation. See MPEP 2164.08. In particular, the following Wands factors were weighted when evaluating whether a disclosure satisfies the enablement requirement and whether any necessary experimentation is undue:
The breadth of the claims: In this case, the claim element of “a carbon layer” has a near infinite number of materials which are considered carbon layers that could satisfy the term. For example, a layer made of a graphene or a carbide or a layer or some other material is either intentionally or unintentionally doped with any amount of carbon. The scope of this covers just about all materials.
The state of the prior art: The state of the prior art as shown by some of the references used appears to only contemplate a small number of options. As such, there is very little guidance for such a large number of materials that a person of ordinary skill in the art might consider using given the large breadth of the claims.
The level of predictability in the art: As the “carbon layer” can cover just about all materials there is little to no predictability as to how and if the different types of material would work as expected within the device.
The amount of direction provided by the inventor: There are no examples of the material in the specification to provide guidance as to the intended meaning of the “carbon layer. ”
Based on this analysis provided above the examiner concludes that without undue experimentation one skilled in the art could not make and use the entire scope of the claimed invention.
Claim Rejections - 35 USC § 112(b)
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 4, 7, and 9-13 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.
Regarding claims 4 and 7: The term “size” in claims 4 and 7 is a relative term which renders the claim indefinite. The term “size” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The Merriam-Webster dictionary has multiple different definitions for size including at least “physical magnitude, extent, or bulk” or “relative or proportionate dimensions” or “relative aggregate amount or number” among other definitions. For the size of a 3D structure any number of dimensions could be used either individually or in combination to be considered the "size". This could be the height, length, width, volume, area, or diameter.
For the purposes of examination, size will be taken to mean the diameter of the substrate. Support for this interpretation comes from the specification at [0171] where a 4-inch sapphire substrate is used as a manufacturing example. (The examiner does not understand this to necessarily be the intended definition of size based on the language the specification at [0171].)
Regarding claim 9: The term “carbon layer” in claim 9 is a relative term which renders the claim indefinite. The term “carbon layer” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The term carbon layer could mean a layer made of a graphene or a carbide or a layer or some other material is either intentionally or unintentionally doped with any amount of carbon. The scope of this covers just about all materials. There are no examples of the material in the specification to provide guidance as to the intended meaning of the “carbon layer. ”
For purposes of examination the term “carbon layer” the mean will be any material which contains any amount of carbon in it either intentionally or unintentionally.
Claims 10-13 are rejected based on their dependence to claim 9.
Separately regarding claim 11: The term "around" is a relative term which renders the claim indefinite; it is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. “Around” is defined as "on all or various sides” or “here and there” or “to a particular place” (see Merriam Webster online dictionary). This language is indefinite as the specification does not describe where the peak is “around” a wavelength of 1,620 cm-1 in a D band in a Raman spectrum is located. The term “around” modifies a target and implicitly requires boundaries at some maximum value above the target and at some minimum value below the target beyond which one is not “around” the target anymore. Neither the claims, nor the specification, defines these boundaries. Thus, it is unclear whether one must be within some small percentage of deviation of the target (such as 0.01 %, 0.1 %, 1 %, 2 %, 5 %, 10 %, or some other percentage) or within a certain number of units of the target and specifically which of these possible values defines the boundaries. If one were to poll 100 people having ordinary skill in the art, there would be many different responses for the boundaries. Thus, determining whether one is infringing the limitation is subjective, rather than objective, and thus the claim is unclear. Therefore, the claim is rejected 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.
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)(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.
Claims 1-3, 6, 8-10, and 14-17 are rejected under 35 U.S.C. (a)(2) as being anticipated by Fan et al. US 20240304757 A1 (hereinafter Fan).
Regarding claim 1, Fan discloses:
A method of manufacturing (Figs. 1-18 methods of manufacturing) a separable semiconductor substrate, comprising:
providing a substrate; (Fig. 1, sapphire substrate 101) and
forming a buffer layer including carbon ([0066], the substate 101 is also provided with a pre-deposited graphene film) and aluminum nitride. (AlN layer 111)
Regarding claim 2, Fan further discloses:
forming a compound semiconductor layer on the buffer layer; (epitaxial layers including layers 112, 115, 116) and
guiding the compound semiconductor layer to be self-separated. (Figs. 14 and 15 show that the device is separated from the substrate 101)
Regarding claim 3, Fan further discloses:
the compound semiconductor layer includes gallium nitride (Gan), (Fig.1, P-type Gan layer 116) aluminum nitride (AlN), (super lattice structure 112 which transitions from AlN to AlGaN and is understood to contain AlN.) and aluminum gallium nitride (AlGaN). (super lattice structure 112 which includes AlGaN)
Regarding claim 6, Fan discloses:
A separable semiconductor substrate (See Fig. 14) comprising:
a mother substrate; (sapphire substrate 101) and
a buffer layer disposed on the mother substrate ([0066], the substate 101 is also provided with a pre-deposited graphene film) and including carbon and aluminum nitride. (AlN layer 111)
Regarding claim 8 Fan further discloses:
an average light transmittance of the separable semiconductor substrate has an average light transmittance reduced by 20 to 80% compared to an average light transmittance of the mother substrate with respect to light having a wavelength of 400 nm. (The sapphire substrate 101 is considered to inherently have this property because the sapphire substrate of Fan is substantially identical to the one claim. absent any statement in the reference or showing the property not to be inherent. See the claim interpretation above. )
Regarding 9, Fan discloses the elements of claim 6.
Fan further specifically discloses:
the buffer layer includes a carbon layer, ([0066], the substate 101 is also provided with a pre-deposited graphene film) and an aluminum nitride layer. (AlN layer 111)
Fan indirectly discloses a nitride layer the process of forming an AlN layer on the carbon layer would form a nitride layer at the interface between the graphene and grown AlN layers. Therefore, it would by necessity have a nitride layer between the carbon layer and the aluminum nitride layer.
Regarding claim 10, Fan further discloses
the carbon layer has a three-dimensional structure. (The layer graphene layer is understood to be a 3D structure by virtue of being a layer.)
Regarding claim 14, Fan further discloses:
a first electronic device disposed on the buffer layer. (Fig. 14, LED device made from epitaxial layers 110.)
Regarding claim 15, Fan further discloses:
the mother substrate is separable from the buffer layer. (Figs. 14 and 15 show that the device is separated from the substrate 110)
Regarding claim 16, Fan further discloses:
a stress layer that covers the first electronic device; (second bonding layer 202) and
a support layer disposed on the stress layer. ( second substrate 201)
Regarding claim 17, Fan further discloses:
a second electronic device (See annotated Fig. 14 below, 2nd electronic device) including a second device layer (annotated Fig. 14, second device layer) in contact with a surface of a first device layer(See Fig. 14 annotated by Examiner, 1st electronic device is in contact with the second device layer on the surface of N-typer semiconductor layer 113 of the 1st device layer) of the first electronic device and formed as a single structure with the first device layer. (See Fig. 14, single structure)
The following figure will be used in discussion of the claim above.
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In the alternative Claims 1, 6, 9, and 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Miyake US 20230100683 A1 (hereinafter Miyake).
Regarding claim 1, Miyake teaches:
A method of manufacturing a separable semiconductor substrate, (See Figs. 10(b)) comprising:
providing a substrate; (substrate 2) and
forming a buffer layer including carbon and aluminum nitride. (AlN containing film 200 including first AlN film 10 first layer 201 and second layer 202 having some level of carbon concentration in the first layer there by having a carbon the buffer layer and an aluminum nitride.)
Regarding claim 6, Miyake discloses:
A separable semiconductor substrate (Fig. 10(B) comprising:
a mother substrate; (substrate 2) and
a buffer layer disposed on the mother substrate and including carbon and aluminum nitride. (AlN containing film 200 including first AlN film 10 first layer 201 and second layer 202 having some level of carbon concentration in the first layer thereby having a carbon the buffer layer and an aluminum nitride.)
Regarding claim 9, Miyake further discloses:
wherein the buffer layer includes a carbon layer, (See Fig. 10(b), layer 201 having some level of carbon concentration) a nitride layer, ([0235] layer 202 being an aluminum nitride layer with some oxygen concentration) and an aluminum nitride layer. (Fig, 10(b), AlN film 20)
Regarding claim 11, Miyake further discloses:
wherein the carbon layer(See Fig. 10(b), layer 201 having some level of carbon concentration is an amorphous layer that has a sp3 structure with a peak around a wavelength of 1,620 cm-1 in a D band in a Raman spectrum. (The carbon layer 201 is considered to inherently have this property because the carbon layer 201 is considered to have an sp3 structure and is substantially identical to the one claim. Absent any statement in the reference or showing the property not to be inherent. See the claim interpretation above. )
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Fan as applied to claim 1 above, and further in view of Thomas US 20180308684 A1 (hereinafter Thomas) as evidenced by Encyclopedia of Materials: Science and Technology (Second Edition) by K.J. Bachmann (hereinafter Bachmann).
Regarding claim 5, Fan discloses the elements of claim 1.
Fan further discloses:
… forming the carbon (Fig. [0066], the substate 101 is also provided with a pre-deposited graphene film)
performing nitridation on an upper surface of the carbon; and (Thomas teaches epitaxial growth of the AlN is taught starting at [0064]. The specifics of the epitaxial deposition are known as evidenced by Bachmann which teach methods of vapor-phase epitaxy. See Bachmann page 1.)
forming the aluminum nitride on the nitrided upper surface of the carbon. (Fig. 1, AlN layer 111 is formed on the substrate 101.)
Fan does not appear to disclose that the specific method of forming the carbon layer is done by a carbonization.
Thomas, which discloses growing graphene on a substrate (Thomas, Abstract), discloses:
providing a substrate (Figure 3, substrate 10);
forming a buffer layer including carbon ([0154] Example, a method for growing graphene on sapphire using CH4 - a carbonization process. – a vapor-phase growth process)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Fan to have form a buffer layer including carbon as taught by Thomas. Thomas does not teach a purpose for using similar or same process. However, Examiner takes OFFICAL NOTICE (see MPEP 2144.03) that in a manufacturing setting one of ordinary skill in the art would want to form different material in an apparatus that is capable of doing different process such an apparatus that does vapor-phase growth using different gas sources one or carbonization and one gas source for nitridation.
Claims 4 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Fan as applied to claim 1 above, and further in view of Oshima US 20070246733 A1 (hereinafter Oshima).
Regarding claim 4, Fan discloses all the elements of claim 1 above.
Fan does not appear to disclose:
the substrate is a sapphire substrate with a size of 2 inches or more.
Oshima which discloses forming semiconductor substrates which there is a mixed crystal composition, discloses:
the substrate is a sapphire substrate with a size of 2 inches or more. ([0068] sapphire substrates with a diameter for 2 inches.)
However, the ordinary artisan would have recognized the claimed size range to be a result effective variable. The size of 2 inches or more could be optimized in order to fit a particular number of devices on a given wafer but would need to the proper size for wafer handling in manufacturing line that is made for wafers that are standardized such as 4 inch wafers. Thus, it would have been obvious that Oshima discloses the use of a sapphire substrate within the claimed range, since optimum or workable ranges of such variables are discoverable through routine experimentation. see MPEP 2144.05 II.B
It is further noted that the specification contains no disclosure of either the critical nature of instant claimed range or any unexpected results arising thereof. Where patentability is said to be based upon particular chosen values or upon another variable recited in a claim, the applicant must show that the chosen values are critical. In re Woodruff, 919 F.2d 1575, 1578,16 USPQ2d 1934,1936 (Fed Cir.1990). See also In re Boesch, 205 USPQ 215 (CCPA) (discovery of optimum value of result effective variable in a known process is ordinarily within skill of art).To the extent understood by the Examiner, there is no evidence of criticality of the size of the sapphire substrate in the specification.
Regarding claim 7, Fan discloses all the elements of claim 6 above.
Fan does not appear to disclose:
the substrate is a sapphire substrate with a size of 2 inches or more.
Oshima which discloses forming semiconductor substrates which there is a mixed crystal composition, discloses:
the substrate is a sapphire substrate with a size of 2 inches or more. ([0068] sapphire substrates with a diameter for 2 inches.)
However, the ordinary artisan would have recognized the claimed size range to be a result effective variable. The size of 2 inches or more could be optimized in order to fit a particular number of devices on a given wafer but would need to the proper size for wafer handling in manufacturing line that is made for wafers that are standardized such as 4 inch wafers. Thus, it would have been obvious that Oshima discloses the use of a sapphire substrate within the claimed range, since optimum or workable ranges of such variables are discoverable through routine experimentation. see MPEP 2144.05 II.B
It is further noted that the specification contains no disclosure of either the critical nature of instant claimed range or any unexpected results arising thereof. Where patentability is said to be based upon particular chosen values or upon another variable recited in a claim, the applicant must show that the chosen values are critical. In re Woodruff, 919 F.2d 1575, 1578,16 USPQ2d 1934,1936 (Fed Cir.1990). See also In re Boesch, 205 USPQ 215 (CCPA) (discovery of optimum value of result effective variable in a known process is ordinarily within skill of art).To the extent understood by the Examiner, there is no evidence of criticality of the size of the sapphire substrate in the specification.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Fan as applied to claim 9 above, and further in view of Balmer US 20140159055 A1 (hereinafter Balmer).
Regarding claim 12, Fan discloses all the elements of claim 9 above.
Fan does appear to disclose:
the carbon layer has a surface roughness Ra of 27 nm or less and a surface roughness Rt of 310 nm or less.
Balmer, which teaches a composite substrate for a semiconductor device (Balmer, Abstract), disclose a manufactured substrate such as sapphire and diamond which equivalent substrates ([0002]) which has silicon carbide layer deposited on the substrate ([0011]). Balmer further teaches that having a very low surface roughness Rq (the root mean square roughness which is known to be more sensitive than the comparative Ra and Rt values)on the surface of the substrate is advantageous because the thin silicon carbide layer deposit on it would be conformal therefore by necessity having the same surface roughness Rq.
Balmier specifically discloses:
the carbon layer (Fig. 2, silicon carbide 8) has a surface roughness Ra of 27 nm or less and a surface roughness Rt of 310 nm or less. ([0062], being conformal to the substrate having an Rq of no more than 1nm which is less than either 27nm or 310nm.)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Fan to have the carbon layer has a surface roughness Ra of 27 nm or less and a surface roughness Rt of 310 nm or less. as taught by Balmer for purposes of have good thermal heat spreading performing by reducing the thermal barrier resistance. ([0061])
Allowable Subject Matter
Claim 13 is objected to as being dependent upon a rejected base claim but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim 13 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Regarding claim 13, the cited prior art of record does not teach or fairly suggest, along with the other claimed features, a separable semiconductor substrate comprising the aluminum nitride layer has a surface roughness Ra of 20 nm or less and a surface roughness Rt of 170 nm or less.
Closest prior art is Miyake which teaches the deposition of AlN-containing film. Which discloses that AlN film 10 (Fig. 3) has high crystallinity and less surface roughness. ([0112]) But the exact surface roughness for Ra (average roughness) and Rt (valley to peak roughness) is not taught. The claim language of claim 13 is not found to be rejectable as obvious for optimalization because the criticality for the range cited in the claim was found in the specification in Table 2 and paragraphs [0182]-[0189].
However, none of the previously cited art or Miyake teach the aluminum nitride layer has a surface roughness Ra of 20 nm or less and a surface roughness Rt of 170 nm or less.
Prior Art Considered Pertinent
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Song et al. US 20250287730 A1 – Fig. 4 the formation of a semiconductor light-emitting device on the template which includes a sapphire substrate 11aa and AlN bonding layer 12a.
Goto et al. WO 2020162346 A1 – Fig. 5, layer 11 is a sapphire substrate nitride semiconductor layer 12.
Kim et al., US 12308227 B2 – Kim teaches the deposition of a carbon buffer layer 120 on a first substrate 110. (Fig. 1A-1D). Kim does disclose that the surface roughness of the first surface 115 which is the top layer of the first substrate 110 is about 100nm or greater. (Col. 4, lines 4-13.) The surface roughness would by necessity effect the surface roughness of any layers on top of it.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HEIM KIRIN GREWAL whose telephone number is (703)756-1515. The examiner can normally be reached Monday - Thursday 9:30 a.m. - 5:30 p.m. EST.
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/HEIM KIRIN GREWAL/Examiner, Art Unit 2812
/TYLER J WIEGAND/Examiner, Art Unit 2812
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