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 .
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.
Election/Restriction
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claim(s) 1-12 and 18, drawn to a method for the separation of a carrier substrate from a product substrate.
Group II, claim(s) 13-17, drawn to a substrate system for the production of semiconductor components.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Groups I and II lack unity of invention because even though the inventions of these groups require the technical feature of a carrier substrate, a product substrate, and an inorganic separating layer, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Dang (US20150035554A1). Dang discloses a method for the separation of a carrier substrate from a product substrate (paras 0021-0022, Fig. 1), comprising: providing the carrier substrate (para 0028, Fig. 2 numeral 22) and the product substrate (para 0028, Fig. 2 numeral 21) with an inorganic separating layer arranged in between (paras 0028-0030, 0034), the separating layer being configured to fix the product substrate on the carrier substrate (paras 0021-0022); irradiating the separating layer with laser beams of a laser unit (paras 0025-0029, Figs. 1-3); and separating the carrier substrate from the product substrate (paras 0025-0026, 0056, Figs. 1 and 9), i.e. all of claim 1.
During a telephone conversation with Christopher Monday on 12/19/2025 a provisional election was made without traverse to prosecute the invention of group II, claims 13-17. Affirmation of this election must be made by applicant in replying to this Office action. Claims 1-12 and 18 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
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 13-17 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.
In reference to claim 13:
Claim 13 recites the limitation "the separating layer" in line 5. There is insufficient antecedent basis for this limitation in the claim.
Claim 13 further recites “an inorganic separating layer” in line 7 followed by “the separating layer” in lines 10 and 11. It is unclear whether “the separating layer” in lines 10 and 11 refers to the separating layer of line 5 or the inorganic separating layer of line 7.
For the purposes of examination, “the separating layer” in line 5 is interpreted as -an inorganic separating layer-, “an inorganic separating layer” in line 7 is interpreted as -the inorganic separating layer- and “the separating layer” of lines 10 and 11 are interpreted as -the inorganic separating layer-. Support for this interpretation can be found in paras 0025, 0029-0031 of Applicant’s specification as published.
Claims 14-17 are rejected as depending from an indefinite claim and failing to overcome the indefiniteness.
In reference to claim 14:
Claim 14 recites “the separating layer” in line 2. It is unclear whether “the separating layer” of claim 14 is intended as “the separating layer” of claim 13 line 5 or the “inorganic separating layer” of claim 13 line 7. For the reasons discussed in reference to claim 13, above, “the separating layer” of claim 14 is interpreted as -the inorganic separating layer-.
In reference to claim 17:
Claim 17 recites “the separating layer” in line 2. It is unclear whether “the separating layer” of claim 17 is intended as “the separating layer” of claim 13 line 5 or the “inorganic separating layer” of claim 13 line 7. For the reasons discussed in reference to claim 13, above, “the separating layer” of claim 17 is interpreted as -the inorganic separating layer-.
Claim Rejections - 35 USC § 102
(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.
Claim(s) 13-16 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Burggraf (US20230347637A1).
In reference to claim 13:
Burggraf discloses a substrate system for the production of semiconductor components (paras 0007, 0049, 0123), comprising:
a carrier substrate (carrier base substrate 3, para 0184, Fig. 1);
a product substrate (product base substrate 7, paras 0186-0188) arranged on the separating layer (release layer 4, paras 0189, 0191, Figs. 1-2 showing the claimed orientation); and
an inorganic separating layer arranged in between the carrier substrate and the product substrate (release layer 4, paragraphs 0133-0139),
wherein the carrier substrate is separable from the product substrate by irradiation of the separating layer with a laser unit (paras 0033, 0131), and
wherein the separating layer fixes the product substrate on the carrier substrate (Fig. 1).
In reference to claim 14:
In addition to the discussion of claim 13, above, Burggraf further discloses wherein at least one further layer is arranged between the separating layer and the product (contact layer 8, para 0191, Fig. 6a),
wherein the product substrate is fixed to the carrier substrate by the at least one further layer (Figs. 6a-6d), and
wherein the at least one further layer is inorganic (para 0191 disclosing silicon oxide).
In reference to claim 15:
In addition to the discussion of claim 14, above, Burggraf further discloses wherein the at least one further layer is a bonding layer (para 0148), and
wherein the bonding layer is produced at least from a first oxide layer and a second oxide layer by fusion bonding (para 0148).
In reference to claim 16:
In addition to the discussion of claim 13, above, Burggraf further discloses wherein exclusively inorganic layers are arranged between the carrier substrate and the product substrate (paras 0133 disclosing the release layer 4 is preferably a metal, an alloy, or a semiconductor material, para 0130 disclosing growth layer 5 is preferably a metal layer, para 0148 disclosing the contact layer 8 is preferably a silicon oxide, para 0184 disclosing transfer layer 6 is graphene, Fig. 6b).
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(s) 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Burggraf as applied to claim 13, above, and further in view of Shimoda (US20030057423A1).
In addition to the discussion of claim 13, above, Burggraf fails to disclose wherein the separating layer has a separating layer thickness between 10 nm and 500 nm. However, this would have been obvious in view of Shimoda. Shimoda a substrate system for the production of semiconductor components comprising two substrates bonded by a separable layer (abstract). Shimoda further discloses that the thickness of the separation layer may vary depending on the purposes and separation conditions, but is preferably 40 nm to 1 μm and that if the thickness is too small nonuniform separation may occur but if the thickness is too large separation will require more time is required for separation (paras 0150). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to combine the system of Burggraf with the separation thickness of Shimoda in order to obtain a system which uniformly separates the substrates within a reasonable amount of time.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW L SWANSON whose telephone number is (571)272-1724. The examiner can normally be reached M-Th 0800-1900 and every other Friday 0800-1600.
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, Phillip Tucker can be reached at (571)272-1095. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ANDREW L SWANSON/ Examiner, Art Unit 1745
Prosecution Insights