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 .
Election/Restrictions
Applicant’s election without traverse of claims 1-9 drawn to in the reply filed on 08/10/2026 is acknowledged. Claim 10 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected claims, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 08/10/2026. Claims 1-9 are currently examined on the merits.
Drawings
Figures 1A and 1B should be designated by a legend such as --Prior Art-- because only that which is old is illustrated. See MPEP § 608.02(g). Corrected drawings in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. The replacement sheet(s) should be labeled “Replacement Sheet” in the page header (as per 37 CFR 1.84(c)) so as not to obstruct any portion of the drawing figures. 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.
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 “side surface” 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.
Information Disclosure Statement
References lined-through on the information disclosure statement(s) were not considered because it is not provided in English.
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 1-9 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 pre-AIA the applicant regards as the invention.
The recited in claim 1 “A method for manufacturing an epitaxial wafer… forming a protective film on the back surface … forming an epi layer on the front surface of the wafer on which the protective film is formed to form an epitaxial wafer…” constitutes an indefinite subject matter. It is not clear whether “an epitaxial wafer” refers to the previously recited “epitaxial wafer” in preamble or not. It is also not clear whether the protective film is formed on the front surface, for example it is not clear what “forming an epi layer on the front surface of the wafer on which the protective film is formed to form an epitaxial wafer” means. Therefore, the metes and bounds of claim 1 are not readily ascertainable. Clarification and/or correction are/is required. Claims 2-9 are rejected because they depend on claim 1.
The recited in claim 2 “…a side surface …” constitutes an indefinite subject matter. It is not clear whether “a side surface” refers to the previously recited “front and back surfaces” or not. Therefore, the metes and bounds of claim 2 are not readily ascertainable. Clarification and/or correction are/is required.
Claim 3 recites the limitation "the first roughness" and “the second roughness”. There is insufficient antecedent basis for this limitation in the claim.
Claim 6 recites the limitation “the second roughness”. There is insufficient antecedent basis for this limitation in the claim.
The term “low” in claim 8 is a relative term which renders the claim indefinite. The term “low” 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.
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 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 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1 and 3-8 are rejected under 35 U.S.C. 103 as being unpatentable over Kang et al (KR 20090081901 A, machine translation, “Kang”), and further in view of Wenski et al (US 20020055324 A1, “Wenski”).
Regarding claims 1 and 5, Kang teaches a method for manufacturing an epitaxial wafer, comprising polishing second surface 12 and first surface 11 (front and back surfaces) of a wafer/substrate 10 (pages 4 and 5); forming an oxide film 110 (protective film) on the back surface (first surface 11) of the polished wafer (pages 4 and 5); forming an epitaxial layer 120 (epi layer) on the front surface (second surface 12) of the wafer on which the protective film is formed to form an epitaxial wafer (page 5); and removing the protective film 110 of the epitaxial wafer (cleaning the epitaxial wafer as instantly recited in instant claim 5) (abstract, page 5).
Kang teaches polishing the front and back surface of the wafer as addressed above but does not explicitly teach a double-side polishing process. However, it is conventionally known that a double-side polishing process is used for polishing of front and back surface of a wafer as taught by Wenski (0007, 0010, 0018, 0019, 0031, 0037, 0038). Therefore, it would have been obvious that one of ordinary skill in the art before the effective filing date of the claimed invention would have modified Kang per teachings of Wenski in order to provide the wafer with planarity and topology (0007, 0010, 0018, 0019, 0031, 0037, 0038).
Regarding claim 3, Kang/Wenski teaches that roughness of the front surface and back surface are identical (Wenski 0041), reading on the instantly claimed the front and back surfaces of the polished wafer have a first roughness and a second roughness, respectively, and wherein the second roughness is equal to or greater than the first roughness. Furthermore, as addressed above, Kang/Wenski teaches the front and back surface of a wafer being polished using a double-side polishing process, a similar process to instantly claimed. Therefore, Therefore, it is reasonably expected that “the front and back surfaces of the polished wafer have a first roughness and a second roughness, respectively, and wherein the second roughness is equal to or greater than the first roughness”, because a similar process/method is expected to produce similar results/effects.
Regarding claim 4, as addressed above, Kang/Wenski teaches a similar process of forming epitaxial wafer as instantly claimed. Therefore, it is reasonably expected that “the front and back surfaces of the formed epitaxial wafer have a third roughness and a fourth roughness, respectively, and wherein the third roughness is smaller than the first roughness, and the fourth roughness is equal to the second roughness”, because a similar process/method is expected to produce similar results/effects.
Regarding claim 6, as addressed above, Kang/Wenski teaches a similar process of the front and back surfaces of the epitaxial wafer from which the protective film has been removed as instantly claimed. Therefore, it is reasonably expected that “the front and back surfaces of the epitaxial wafer from which the protective film has been removed have a fifth roughness and a sixth roughness, respectively, and wherein the sixth roughness is equal to the second roughness”, because a similar process/method is expected to produce similar results/effects.
Regarding claim 7, Kang/Wenski teaches that the protective film comprises an oxide film (Kang pages 4 and 5).
Regarding claim 8, Kang/Wenski teaches that the oxide film is formed using a low-temperature oxidation process (Kang page 4).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Kang/ Wenski as applied to claim 1 above, or, in the alternative, under 35 U.S.C. 103 as being unpatentable over further in view of Funabiki Yuuki (JP 2010021441 A, machine translation, “Yuuki”).
Regarding claim 2, as addressed above, Kang/Wenski teaches forming the protective film on the back side surface (a side surface) of the polished wafer, meeting the claim. Furthermore, Yuuki teaches a method, wherein a protecting film is form on a chamfered surface of a substrate (abstract, 0006-0009, 0014). Therefore, it would have been obvious that one of ordinary skill in the art before the effective filing date of the claimed invention would have modified Kang/Wenski per teachings of Yuuki in order to provide an epitaxial substrate wafer with eliminating wafer cracking (Yuuki abstract).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Kang/ Wenski as applied to claim 1 above, and further in view of Jung et al (US 20170287706 A1, “Jung”).
Regarding claim 5, Kang/Wenski teaches the protective/oxide film as addressed above but does not explicitly teach the film being 250 Å or less. However, Jung teaches a method, wherein a thickness of an oxide formed on a surface is 20 nm (i.e., 200 Å) (0041). Therefore, it would have been obvious that one of ordinary skill in the art before the effective filing date of the claimed invention would have modified Kang/Wenski per teachings of Jung in order to control surface roughness of semiconductor substrates (Jung 0002, 0005-0007, 0041).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Hua Qi whose telephone number is (571)272-3193. The examiner can normally be reached 9am-6pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kaj Olsen can be reached at (571) 272-1344. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HUA QI/ Primary Examiner, Art Unit 1714
