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 .
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 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,814,745. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding instant claim 1, claim 1 of Patent ‘745 discloses a method of making a monocrystalline silicon which is doped with red phosphorus, has a diameter of 301-330 mm, and a resistivity of 0.7-1.0 mΩcm, which overlaps the claimed range. While Patent ‘745 is directed to a method and not a product, the recited method is largely defined with respect to the properties of the product and the claimed product is obvious over the method of Patent ‘745.
Regarding claims 2-3, it would have been obvious at the effective time of filing for the claimed invention for one of ordinary skill in the art to further process the silicon produced by claim 1 of Patent ‘745 to obtain a silicon wafer and an epitaxial silicon wafer as these are conventional steps in the art.
Claims 2-3 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 13 of U.S. Patent No. 10,233,564. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding instant claim 2, claim 9 of Patent ‘564 discloses a method of making a monocrystalline silicon which is doped with red phosphorus, has a diameter of 300 mm, and a resistivity of 0.7-1.5 mΩcm, which overlaps the claimed range.
Regarding claim 3, it would have been obvious at the effective time of filing for the claimed invention for one of ordinary skill in the art to further process the silicon of claim 13 of Patent ‘564 to obtain an epitaxial silicon wafer as this is a conventional step in the art.
Claim 3 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 34 of copending Application No. 17/979,879 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding instant claim 3, claim 34 of copending ‘879 discloses a silicon wafer having a diameter of 300 mm, doped with phosphorus, and having a resistivity of 1.2 mΩcm or less. This overlaps the claimed range, creating a prima facie case of obviousness. While claim 34 of copending ‘879 does not specify the phosphorus is red phosphorus, it is apparent from [0049] of the corresponding PGPub for copending ‘879 that the claimed phosphorus is red phosphorus.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Claims 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over Narushima (JP 2017-031004). Reference to Narushima is made to English language equivalent US 2017/0029975.
Regarding claims 1-2, Narushima discloses a n-type silicon monocrystal (¶ 11) doped with red phosphorus (¶ 32). Narushima teaches the monocrystal can have a diameter of 300 mm or more (¶ 71), and exhibits an electrical resistivity of less than 4.0 mΩ·cm depending on the dopant used (¶ 22). Narushima teaches a wafer cut from the monocrystal which has a resistivity of 0.7 mΩ·cm to 2.0 mΩ·cm when red phosphorus is the dopant (¶ 72). These ranges overlap the claimed ranges, creating a prima facie case of obviousness. See MPEP 2144.05 I.
Regarding claim 3, Narushima teaches forming an epitaxial film on the monocrystal (¶ 73).
Claims 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over Falster et al. (US 2009/0130824) in view of Kawashima (US 2014/0001605).
Regarding claims 1-2, Falster teaches a phosphorus doped single crystal silicon wafer (¶ 7). The wafer is cut from a silicon ingot having a nominal diameter of 300 mm (¶ 13), which is interpreted to mean that the ingot diameter is about 300 mm and the wafer has a similar diameter. The wafer has a resistivity of about 0.1 mΩ-cm to about 2 mΩ-cm (¶ 15). It is presumed the ingot has the same resistivity absent objective evidence to the contrary. See MPEP 2112. These ranges overlap the claimed ranges, creating a prima facie case of obviousness. See MPEP 2144.05 I.
Falster does not teach the phosphorus is red phosphorus. Kawashima teaches a red phosphorus doped monocrystal silicon ingot (¶ 178). It would have been obvious at the effective time of filing for the claimed invention for one of ordinary skill in the art to use red phosphorus because the prior art recognizes this is conventional for doping silicon with phosphorus.
Regarding claim 3, Falster teaches forming an epitaxial layer on the silicon wafer (¶ 37).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to XIAOBEI WANG whose telephone number is (571)270-5705. The examiner can normally be reached M-F 8AM-5PM EST.
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/XIAOBEI WANG/Primary Examiner, Art Unit 1784
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