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 .
Response to Arguments
Applicant's arguments filed 12/11/2025 have been fully considered but they are not persuasive. The applicant argues that the claims are clearly defined to overcome the 35 USC 112 rejection. However, the claim includes broadly either a damage pretreatment to create a particular Raman shift, or a damage and unevenness formation to create a surface roughness. Neither the damage pretreatment nor the unevenness formation is properly defined, and it is unclear what methods are being claimed to achieve the results. Further, the claim employs functional language to gain a desired result, and is defining the method on the desired result rather than what the method actually does. As is reflected in the further art arguments, a damage treatment or unevenness formation includes patterning as a broadest reasonable interpretation, for example, without further clarification. This rejection is maintained.
As to the art, the applicant argues that Kirkpatrick does not teach the Raman shift. However, the applicant admits on p5 of the instant arguments that a Raman shift at 520 cm-1 is inherent to single crystal silicon. Kirkpatrick uses single crystal silicon as its substrate throughout the document. It would be obvious that this shift occur as broadly claimed, as further detailed in the rejection below.
The applicant further argues that Kirkpatrick does not teach the damage and unevenness formation as it teaches a predetermined pattern. However, the damage and unevenness formation is not defined in the claims so as to exclude a predetermined pattern. A pattern damages a substrate and makes it uneven, even if it is intentional where the damage and unevenness occurs.
New grounds of rejection are due to amendments.
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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites the limitation "the damage and the unevenness formation" in lines 7-8. There is insufficient antecedent basis for this limitation in the claim.
In claim 1, the claim includes broadly either a damage pretreatment to create a particular Raman shift, or a damage and unevenness formation to create a surface roughness. Neither the damage pretreatment nor the unevenness formation is properly defined, and it is unclear what methods are being claimed to achieve the results. Further, the claim employs functional language to gain a desired result, and is defining the method on the desired result rather than what the method actually does. See MPEP 2173.05(g): “Notwithstanding the permissible instances, the use of functional language in a claim may fail "to provide a clear-cut indication of the scope of the subject matter embraced by the claim" and thus be indefinite. In re Swinehart, 439 F.2d 210, 213 (CCPA 1971). For example, when claims merely recite a description of a problem to be solved or a function or result achieved by the invention, the boundaries of the claim scope may be unclear. Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1255, 85 USPQ2d 1654, 1663 (Fed. Cir. 2008)”
Regarding the Raman shift peak, it is not clear if the peak is shifting from 520 cm-1 by 0.1 cm-1 or more or if the intensity/broadening of the peak at 520 cm-1 is changing or what the applicant means by “in Raman spectroscopy 0.1 cm-1 or more”. The language is unclear.
Claim Rejections - 35 USC § 102
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 (i.e., changing from AIA to pre-AIA ) 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.
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(s) 1-4 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kirkpatrick (US 5082359).
As to claim 1, Kirkpatrick subjects a silicon surface to an unevenness formation to create a surface roughness over 10 nm as broadly claimed in Example 1. It is inherent that Kirkpatrick includes the claimed Raman shift as taught above as Kirkpatrick teaches single crystal silicon (col 2 lines 13-25) and that is its typical Raman peak.
As to claim 2, hot filament CVD is used in Example 1.
As to claim 3, the Figures show crater or unevenness formation on parts of the regions of the substrate.
As to claim 4, hot filament CVD is used in Example 1.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kirkpatrick (US 5082359).
As to claim 1, Kirkpatrick subjects a silicon surface to an unevenness formation to create a surface roughness over 10 nm as broadly claimed in Example 1. Further, Kirkpatrick teaches a single crystal silicon substrate (col 2 lines 13-25) that inherently has a Raman shift at 520 cm-1 undamaged. It would have been obvious to one of ordinary skill in the art that when the surface roughness is changed to that claimed, the Raman shift peak is modified to the amount claimed as well as the peak depends upon the roughness treatment as claimed. Further, it would have been obvious to a person having ordinary skill in the art at the time the invention was made to include the claimed Raman shift based on the surface roughness, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 220 F.2d 454, 105 USPQ 223 (CCPA 1955).
As to claim 2, hot filament CVD is used in Example 1.
As to claim 3, the Figures show crater or unevenness formation on parts of the regions of the substrate.
As to claim 4, hot filament CVD is used in Example 1.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KELLY M GAMBETTA whose telephone number is (571)272-2668. The examiner can normally be reached M-F 9-5:30.
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KELLY M. GAMBETTA
Primary Examiner
Art Unit 1715
/KELLY M GAMBETTA/Primary Examiner, Art Unit 1718