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 .
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the arrangements of claims 15 and 16, if supported by the originally filed disclosure (see the discussion in the Section 112(a) written description rejections), must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The disclosure is objected to because of the following informalities:
Page 1, paragraph 1, line 2: After “2022,” add “now U.S. Pat. No. 12,020,980, issued June 25, 2024,”.
Page 6, paragraph 23, line 1: Change “Referring” to “referring”.
Page 19, paragraph 64, line 2: Should the reference to Figures 2G-2L be Figures 2F to 2N? Double check.
Page 25, paragraph 82, line 2: Should the reference to Figure 2L be to Figure 2N?
Page 25, paragraph 82, last line of the paragraph: Change 210 to 710.
Page 25, paragraph 83, line 2: Should the reference to Figures 2M and 2N also include a reference to Figure 2J?
Appropriate correction is required.
Claim Objections
Claims 1-10 are objected to because of the following informalities:
Claim 1, lines 6, 8: In each line, change “dielectric layer” to “dielectric structure”. The first region is defined with respect to the dielectric structure, not the dielectric layer.
Claims 2-10 are objected to for depending from objected-to base claim 1.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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 15-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 15, which depends from claim 14, which depends from claim 11: Claim 11 requires:
wherein the dielectric structure includes a base structure and a plurality of isolation structures extending above a region of the base structure; forming a semiconductor layer extending from the semiconductor substrate, wherein the semiconductor layer also extends between the plurality of isolation structures and over the base structure; and forming a first transistor on the semiconductor layer between a first isolation structure and a second isolation structure of the plurality of isolation structures.
This language is directed to all embodiments.
Claim 14, which depends from claim 11, requires: “after forming the semiconductor layer over the semiconductor substrate, etching an opening in the semiconductor layer extending to a surface of the semiconductor substrate; and filling the opening with isolation material to form another isolation structure spaced a distance from the dielectric structure.” This language is directed to an embodiment in which an opening is etched in the semiconductor layer to the surface of the semiconductor substrate, and then filled with isolation material to form another isolation structure spaced a distance from the dielectric structure. This language narrows the embodiments to methods which have products shown in applicants’ Figures 2N and 4F, but not in Figure 7F because the another isolation structure (716-22) is not spaced a distance from the dielectric structure. Instead the another isolation structure (716-22) is a part of dielectric structure (716).
Claim 15, which depends from claim 14, which depends from claim 11, requires: “forming a second transistor on the semiconductor layer between the another isolation structure and the dielectric structure.” This is not shown in Figures 2N or 4F. Because this embodiment is not disclosed in the originally filed disclosure, claim 15 is rejected for failing to meet the written description requirement.
Regarding claim 16: This claim requires:
A semiconductor structure, comprising: a first dielectric structure and an isolation structure each over a semiconductor substrate, wherein the isolation structure has four-sided shape in a cross-sectional view and wherein the first dielectric structure has a shape in the cross-sectional view with a base portion and two isolation regions extending above the base portion; a semiconductor material layer having a first region extending between the first dielectric structure and the isolation structure and having a second region extending between the two isolation regions and over the base portion; a first transistor disposed on the first region of the semiconductor material layer; and a second transistor disposed on the second region of the semiconductor material layer.
(emphasis added). Because of the requirement for a first dielectric structure and an isolation structure which are separate from each other, as defined by their shapes, the first portion of the claim is directed to embodiments shown in Figures 2N and 4F. However, no embodiment is disclosed in which a semiconductor material layer between the first dielectric structure (216; 217) and the isolation structure (224) has disposed a transistor. Instead, the transistor is disposed between the isolation regions of the dielectric structure or between two isolation structures. Because claim 16’s embodiment is not supported by the originally filed disclosure, claim 16 is rejected for failing to meet the written description requirement.
Claims 17-20 are rejected for depending from rejected base claim 16.
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 1-10 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 claim 1: Claim 1, lines 3-4, recites: “etching the dielectric layer to form a dielectric structure having a first region having a first height and a second region having a second height;….” This associates the first region and the second region with the dielectric structure. However, claim 1, lines 5-6, states: “wherein a top surface of the first region of the dielectric layer is exposed; ….” Furthermore, claim 1, lines 7-8, recites: “forming a semiconductor device in the semiconductor layer adjacent the exposed top surface of the first region of the dielectric layer.” The language in these lines associates the first region with the dielectric layer, not the dielectric structure. Because a first region of the dielectric layer has not been defined, claim 1 is rejected as indefinite.
Claims 2-10 are rejected for depending from rejected base claim 1.
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, 3-5, 7, 11, and 12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 12 of U.S. Patent No. 12,020,980 [hereinafter “the ’980 patent”]. Although the claims at issue are not identical, they are not patentably distinct from each other because of the following.
Regarding claim 1: Claim 12 of the ’980 patent discloses a method for forming a semiconductor structure, comprising (lines 1-2): forming a dielectric layer over a semiconductor substrate (lines 5-6); etching the dielectric layer to form a dielectric structure having a first region having a first height and a second region having a second height (lines 3-4, 7-14); forming a semiconductor layer covering the second region, wherein a top surface of the first region of the dielectric layer is exposed (see lines 15-18); and forming a semiconductor device in the semiconductor layer adjacent the exposed top surface of the first region of the dielectric layer (lines 20-24).
Regarding claim 3, which depends from claim 1: Claim 12 of the ’980 patent discloses a wherein the second height is less than the first height (see lines 5-14).
Regarding claim 4, which depends from claim 1: Claim 12 of the ’980 patent discloses the etching the dielectric layer includes removing the dielectric layer from a region of the semiconductor substrate to provide an exposed semiconductor surface (see id.).
Regarding claim 5, which depends from claim 4, which depends from claim 1: Claim 12 of the ’980 patent discloses the forming the semiconductor layer includes forming the semiconductor layer directly on the exposed semiconductor surface (see id.).
Regarding claim 7, which depends from claim 1: Claim 12 of the ’980 patent discloses the etching the dielectric layer to form the dielectric structure includes forming the dielectric structure having a third region of the first height, wherein the second region is between the first region and the third region (see lines 6-14).
Regarding claim 11: Claim 12 of the ’980 patent discloses a method for forming a semiconductor structure, comprising (lines 1-2): providing a dielectric structure on a first region of a semiconductor substrate, wherein the dielectric structure includes a base structure and a plurality of isolation structures extending above a region of the base structure (lines 3-14); forming a semiconductor layer extending from the semiconductor substrate, wherein the semiconductor layer also extends between the plurality of isolation structures and over the base structure (lines 3-19); and forming a first transistor on the semiconductor layer between a first isolation structure and a second isolation structure of the plurality of isolation structures (see lines 20-24).
Regarding claim 12, which depends from claim 11: Claim 12 of the ’980 patent discloses a channel region of the first transistor is disposed in the semiconductor layer (inherently present).
Claim 2 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 15 of U.S. Patent No. 12,020,980 [hereinafter “the ’980 patent”]. Although the claims at issue are not identical, they are not patentably distinct from each other because of the following.
Regarding claim 2, which depends from claim 1: Claim 15 of the ’980 patent, which depends from claim 12 of the ’980 patent, discloses after forming the semiconductor layer, forming an isolation structure in the semiconductor layer spaced a distance from the dielectric structure (see lines 1-3).
Claims 6, 8-10, and 13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 16 of U.S. Patent No. 12,020,980 [hereinafter “the ’980 patent”]. Although the claims at issue are not identical, they are not patentably distinct from each other because of the following.
Regarding claim 6, which depends from claim 5, which depends from claim 4, which depends from claim 1: Claim 16 of the ’980 patent, which depends from claim 12 of the ’980 patent, discloses the forming the semiconductor layer includes an epitaxial growth process (claim 16, lines 1-8).
Regarding claim 8, which depends from claim 1: Claim 16 of the ’980 patent, which depends from claim 12 of the ’980 patent, does not disclose the etching the dielectric layer includes patterning a hard mask layer overlying the dielectric layer. However, it is well known in the art to use a hard mask layer overlying a dielectric layer when patterning both. Thus, claim 8 is obvious.
Regarding claim 9, which depends from claim 1: Claim 16 of the ’980 patent, which depends from claim 12 of the ’980 patent, discloses the forming the semiconductor layer includes epitaxially growing silicon directly on the second region of the dielectric structure (see claim 12, lines 6-14; claim 16, lines 1-8).
Regarding claim 10, which depends from claim 9, which depends from claim 1: Claim 16 of the ’980 patent, which depends from claim 12 of the ’980 patent, discloses the forming the semiconductor layer further includes: epitaxially growing silicon directly on the first region of the dielectric structure; and planarizing the epitaxially grown silicon to expose the top surface of the first region (claim 12, lines 17-18; claim 16, lines 1-8).
Regarding claim 13, which depends from claim 11: Claim 16 of the ’980 patent, which depends from claim 12 of the ’980 patent, discloses the forming the semiconductor layer includes epitaxially growing silicon directly on a top surface of the base structure between the first isolation structure and the second isolation structure (see claim 12, lines 6-14; claim 16, lines 1-8).
Allowable Subject Matter
Claim 14 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.
Other claims may be allowable if the double patenting rejections, the Section 112 rejections, and the claim objections are addressed.
The following is a statement of reasons for the indication of allowable subject matter:
With regard to claim 14: The claim has been found allowable because the prior art of record does not disclose “after forming the semiconductor layer over the semiconductor substrate, etching an opening in the semiconductor layer extending to a surface of the semiconductor substrate; and filling the opening with isolation material to form another isolation structure spaced a distance from the dielectric structure”, in combination with the remaining limitations of the claim.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VICTORIA KATHLEEN HALL whose telephone number is (571)270-7567. The examiner can normally be reached Monday-Friday, 8 a.m.-5 p.m.
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/Victoria K. Hall/Primary Examiner, Art Unit 2897
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