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
Status of Claims
1. Applicant's submittal of claims 1-20 in the “Claims” filed on 04/16/2022 is acknowledged and entered by the Examiner.
This office action consider claims 1-20 pending for prosecution.
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.
Notes: when present, semicolon separated fields within the parenthesis (; ;) represent, for example, as (100; Fig 3A; [0063]) = (element 100; Figure No. 3A; Paragraph No. [0063]). For brevity, the texts “Element”, “Figure No.” and “Paragraph No.” shall be excluded, though; additional clarification notes may be added within each field. The number of fields may be fewer or more than three indicated above. These conventions are used throughout this document.
2. Claims 10 and 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gocho et al. (US 5498565 A; hereinafter Gocho).
Regarding claim 10, Birner teaches a semiconductor device (see the entire document, specifically Fig. 1(a)+; C8 L28+, and as cited below), comprising (see alternative rejection for claim 10 below):
a semiconductor substrate (1; Fig. 9(c); see C9 L11) having a first face and a protrusion portion (61; Fig. 9(c); see C18 L3) provided in a first region of the first face; and
a first insulation film (5; Fig. 9(c); see C18 L42-46, C19 L14-15) provided on the first face in a second region of the first face different from the first region,
wherein the first insulation film (5; Fig. 9(c); see C18 L42-46, C19 L14-15) has a projection portion (see Fig. 9(c)) projecting from an upper surface of the first insulation film (5; Fig. 9(c); see C18 L42-46, C19 L14-15) around the protrusion portion (61; Fig. 9(c); see C18 L3) to an opposite side of the semiconductor substrate (1; Fig. 9(c); see C9 L11).
Regarding claim 11, Gocho teaches all of the features of claim 10.
Gocho further teaches wherein: the semiconductor substrate (1; Fig. 9(c); see C9 L11) further including a semiconductor layer (22; Fig. 9(c); see C19 L48; polysilicon) of a first conductivity type provided on the protrusion portion (61); and the semiconductor device further comprising: a third insulation film (7; Fig. 9(c); see C19 L35) provided on the protrusion portion (61); and a conductive film (8; Fig. 9(c); see C13 L41; polysilicon) provided on the third insulation film (7; Fig. 9(c); see C19 L35).
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, orin public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Notes: when present, semicolon separated fields within the parenthesis(; ;) represent, for example, as (100; Fig 3A; [0063]) = (element 100; Figure No. 3A; Paragraph No. [0063]). For brevity, the texts “Element”, “Figure No.” and “Paragraph No.” shall be excluded, though; additional clarification notes may be added within each field. The number of fields may be fewer or more than three indicated above. These conventions are used throughout this document.
3. Claim 10 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Birner et al. (US 20180082853 A1; hereinafter Birner).
Regarding claim 10, Birner teaches a semiconductor device (see the entire document, specifically Fig. 1+; [0006+], and as cited below), comprising (see alternative rejection for claim 10 above):
a semiconductor substrate (51; Fig. 10; [0078]) having a first face and a protrusion portion (53; Fig. 10 in view of Fig. 8; [0085]) provided in a first region of the first face; and
a first insulation film (62; Fig. 10; [0090-0094]) provided on the first face in a second region of the first face different from the first region,
wherein the first insulation film (62; Fig. 10; [0090-0094]) has a projection portion (67; Fig. 10; [0090-0094]) projecting from an upper surface of the first insulation film (62; Fig. 10; [0090-0094]) around the protrusion portion (53; Fig. 10 in view of Fig. 8; [0085]) to an opposite side of the semiconductor substrate (51; Fig. 10; [0078]).
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 of this title, 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.
Notes: when present, semicolon separated fields within the parenthesis (; ;) represent, for example, as (30A; Fig 2B; [0128]) = (element 30A; Figure No. 2B; Paragraph No. [0128]). For brevity, the texts “Element”, “Figure No.” and “Paragraph No.” shall be excluded, though; additional clarification notes may be added within each field. The number of fields may be fewer or more than three indicated above. These conventions are used throughout this document.
4. Claims 12-13 are rejected under 35 U.S.C.103 as being unpatentable over Gocho et al. (US 5498565 A; hereinafter Gocho), in view of the following comment.
Regarding claim 12, Gocho teaches all of the features of claim 10.
Gocho further teaches wherein a height of an upper surface of the first insulation film (5; Fig. 9(c); see C18 L42-46, C19 L14-15) is (see below for “substantially the same as”) a height of an upper surface of the protrusion portion (61; Fig. 9(c); see C18 L3)
As noted above, Gocho does not expressly disclose “wherein a height of an upper surface of the first insulation film is substantially the same as a height of an upper surface of the protrusion portion”.
However, the Applicant has not presented persuasive evidence that the claimed “wherein a height of an upper surface of the first insulation film is substantially the same as a height of an upper surface of the protrusion portion” is for a particular purpose that is critical to the overall claimed invention (i.e. the invention would not work without wherein a height of an upper surface of the first insulation film is substantially the same as a height of an upper surface of the protrusion portion). Also, the Applicant has not shown that “wherein a height of an upper surface of the first insulation film is substantially the same as a height of an upper surface of the protrusion portion” produces a result that was new or unexpected enough to patentably distinguish the claimed invention over the cited prior art. Therefore, no rationale is given that the invention will not function without “wherein a height of an upper surface of the first insulation film is substantially the same as a height of an upper surface of the protrusion portion”. Thus, the claimed “wherein a height of an upper surface of the first insulation film is substantially the same as a height of an upper surface of the protrusion portion” is not critical to the invention.
Examiner would like to note that MPEP §2144.04.IV(B) guideline, where change of shape is a Legal Precedent as Source of Supporting Rationale. See In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.).
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In view of the above, as there is no persuasive evidence that the particular configuration of “wherein a height of an upper surface of the first insulation film is substantially the same as a height of an upper surface of the protrusion portion” is significant. Thus, the claimed limitation of “wherein a height of an upper surface of the first insulation film is substantially the same as a height of an upper surface of the protrusion portion” is a matter of choice which a person of ordinary skill in the art would have found obvious as per MPEP §2144.04.IV(B) guideline. Therefore, the claimed limitation of “wherein a height of an upper surface of the first insulation film is substantially the same as a height of an upper surface of the protrusion portion” is not patentable over Gocho.
Regarding claim 13, Gocho teaches all of the features of claim 11.
Gocho further teaches wherein a height of an upper surface of the first insulation film (5; Fig. 9(c); see C18 L42-46, C19 L14-15) is substantially the same as a height of an upper surface of the protrusion portion (61; Fig. 9(c); see C18 L3).
As noted above, Gocho does not expressly disclose “wherein a height of an upper surface of the first insulation film is substantially the same as a height of an upper surface of the protrusion portion”.
However, the Applicant has not presented persuasive evidence that the claimed “wherein a height of an upper surface of the first insulation film is substantially the same as a height of an upper surface of the protrusion portion” is for a particular purpose that is critical to the overall claimed invention (i.e. the invention would not work without wherein a height of an upper surface of the first insulation film is substantially the same as a height of an upper surface of the protrusion portion). Also, the Applicant has not shown that “wherein a height of an upper surface of the first insulation film is substantially the same as a height of an upper surface of the protrusion portion” produces a result that was new or unexpected enough to patentably distinguish the claimed invention over the cited prior art. Therefore, no rationale is given that the invention will not function without “wherein a height of an upper surface of the first insulation film is substantially the same as a height of an upper surface of the protrusion portion”. Thus, the claimed “wherein a height of an upper surface of the first insulation film is substantially the same as a height of an upper surface of the protrusion portion” is not critical to the invention.
Examiner would like to note that MPEP §2144.04.IV(B) guideline, where change of shape is a Legal Precedent as Source of Supporting Rationale. See In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.).
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In view of the above, as there is no persuasive evidence that the particular configuration of “wherein a height of an upper surface of the first insulation film is substantially the same as a height of an upper surface of the protrusion portion” is significant. Thus, the claimed limitation of “wherein a height of an upper surface of the first insulation film is substantially the same as a height of an upper surface of the protrusion portion” is a matter of choice which a person of ordinary skill in the art would have found obvious as per MPEP §2144.04.IV(B) guideline. Therefore, the claimed limitation of “wherein a height of an upper surface of the first insulation film is substantially the same as a height of an upper surface of the protrusion portion” is not patentable over Gocho.
Allowable Subject Matter
5. Claims 1 is allowable.
The following is a statement of reasons for the indication of allowable subject
matter: A search of the prior art failed to disclose or reasonably suggest the limitations
of claim 1 (the individual limitations may be found just not in combination).
Regarding Claim 1: this is allowable, because, the references of the Prior Art of record and considered pertinent to the applicant's disclosure, and the examiner’s knowledge does not teach or render obvious, at least to the skilled artisan, the instant invention regarding: “forming a semiconductor layer of a first conductivity type on a protrusion portion of a semiconductor substrate having a first face and the protrusion portion provided in a first region of the first face; forming a first insulation film, on the first face, such that a film thickness of the first insulation film at a step portion of the protrusion portion is thinner than a film thickness of the first insulation film at an upper surface of the protrusion portion or a film thickness of the first insulation film at a second region of the first face different from the first region; forming a mask material on the first insulation film; removing the mask material above the protrusion portion; removing part of the first insulation film using the mask material as a mask to form an opening portion of the first insulation film and a projection portion of the first insulation film, the opening portion exposing an upper surface of the protrusion portion, the projection portion projecting from an edge portion of the opening portion to an opposite side of the semiconductor substrate; forming a second insulation film on the protrusion portion and the first insulation film; and removing the second insulation film together with part of the projection portion”, as recited in Claim 1, in combination with the remaining limitations of the claim.
Claims 2-9, are allowed as those inherit allowable subject matter from claim 1.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Omar Mojaddedi whose telephone number is 313-446-6582. The examiner can normally be reached on Monday – Friday, 8:00 a.m. to 4:00 p.m..
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Julio J. Maldonado, can be reached on 571-272-1864. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/OMAR F MOJADDEDI/Examiner, Art Unit 2898
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