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 with traverse of Species IV in the reply filed on 7 June 2026 is acknowledged. The traversal is on the ground(s) that “the claims lack mutual exclusivity”, as stated on Pag. 8 of the aforementioned reply. This is not found persuasive because restriction practice between species regards “species [that] are preferably identified as the species of figures”, MPEP 809.02(a). However, no claims are withdrawn as a result of the election by the Examiner.
The requirement is still deemed proper and is therefore made FINAL.
Examiner’s Note
For the following objections, consider this annotated figure from the instant drawings.
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Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims, and the following features are either not shown or cannot be identified as being shown because they lack a reference character.
P+/N well structure
extra positive extrinsic electric field
extra negative extrinsic electric field
transimpedance amplifier (TIA) circuit
N+ well layers
shielded components are connected
unshielded components are connected
perimeter of the semiconductor device comprises metal layers
array of semiconductor devices
components thereof
photon trap
finger-type structure
meshed spatially modulated light detector structure
Therefore, the above features must be shown and/or identified with an appropriate reference character, or the feature(s) canceled from the claim(s). No new matter should be entered.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference character “15” has been used to designate both an inner ring in Fig. 1a & 1b and an outer ring in Fig. 2 & 3.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference character “22” has been used two distinct features in Fig. 1b.
The drawings are objected to because the features labeled A – D in the annotated figure above are not identified with a reference character.
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.
Specification
The disclosure is objected to because of the following informalities.
Reference character 12 is indicated to be apparently different elements:
Par. 24 & 25 “P-substrate 12”
Par. 25 & 36 “N+/P-substrate 12”
Reference character 14 is indicated to be apparently different elements:
Par. 24 & 25 “array 14 of P+, N+/N-well layers”
Par. 24 “array 14 with N+well layers 16 and P+ layers 18”
Par. 25 “array 14 with N-well layers 16 and P+layers 18”
Reference character 16 is indicated to be apparently different elements:
Par. 24 “N+well layers 16”
Par. 24 & 25 “N+/N-well layer 16 components”
Par. 25 “N-well layers 16”
Par. 26 “P+, N+/N-well layers 16, 18, respectively”
Reference character 18 is indicated to be apparently different elements:
Par. 24 & 25 “P+ layers 18”
Par. 24 & 25 “P+ layer 18 components”
Par. 25 & 36 “P+ well layers 18”
Par. 26 “P+, N+/N-well layers 16, 18, respectively”
The following features are not provided with a reference character, and are not otherwise clearly described so as to be easily identified in the figures:
Par. 7 “spatially modulated (or fingered type) P+/N-well structure”
Par. 24 & 25 “deep N-well layer”
Par. 28 & 31 “horizontal” plane
Par. 29 “NW cathode”
Par. 29 “P+ anode”
Par. 29 “N+ fingers”
Par. 30 “P+/NW junction”.
Par. 30 “P-sub/N-well junction”
Par. 12 states, a “Fig. 1b…without a shallow trench insulator”
However, “shallow trench insulator” (22) is present in Fig. 1b.
Par. 14 states, a “different extra bias connection of +V1 and -V1 of N-well layers to accelerate the carrier speed”.
However, an acceleration of speed would be “jerk” or the third time derivative of position, which does not appear to be Applicant’s intent.
Par. 25 & 36 state, regarding Fig. 1b & 6, respectively, “A shallow trench insulator (STI) 22 may be used between N-well layers 16 and P+ well layers 18”
However, neither Fig. 1b nor Fig. 6 nor any other figure shows 22 between 16 and 18.
Par. 26, reference character 10 appears to be mislabeled as reference character 30
Par. 27 states reference characters 30 and 32 are connected to the “N-well” in Fig. 3.
However, these connections are connected to an element marked with reference character 18, which is designated for P+ well layers in Par. 24, 25, 36.
Regarding the annotated figure above,
elements A – D are not identified with reference characters or otherwise clearly described in the instant specification.
Appropriate corrections are required.
Claim Interpretation – 35 U.S.C. 112(f) not invoked
What is claimed in the instant application is given a broadest reasonable interpretation (BRI), using the plain meaning of the claim language in light of the specification, as it would be understood by one of ordinary skill in the art, according to the guidelines set forth in MPEP 2111.01 V.
Regarding Claims 1 & 18, respectively,
Lin. 4 – 5 & 5 – 6, respectively recite:
“a first set of N well layers coupled to an extra positive extrinsic electric field”,
and
“coupling the first set of N well layers to an extra positive extrinsic electric field”,
respectively, both of which have a broad but reasonable interpretation of
“a first set of N well layers coupled to an electric field originating from outside the claimed device”.
Following the aforementioned guidelines, what is claimed has an ordinary and customary meaning to a person of ordinary skill in the art, as evidenced below. Further, the instant specification does not disclose express intent to provide a special definition of what is claimed by clearly redefining the plain meaning, clearly disavowing the full scope of the plain meaning, or any other manner. As such, an ordinary and customary meaning of what is claimed is deemed proper for a broadest reasonable interpretation of what is claimed, MPEP 2111.01 V.
As per MPEP 2111.01 III, “the ordinary and customary meaning of a term may be evidenced by a variety of sources, including the words of the claims themselves”, In re Abbott Diabetes Care Inc., 696 F.3d 1142, 1149-50, 104 USPQ2d 1337, 1342-43 (Fed. Cir. 2012). Therefore, as www.merriam-webster.com defines “extrinsic” to be “originating from or on the outside”, the broad but reasonable interpretation of what is claimed provided above is deemed proper.
Further Regarding Claims 1 & 18, respectively,
Lin. 5 – 6 & 7 – 8, respectively, recite:
“a second set of N well layers coupled to an extra negative extrinsic electric field”,
and
“coupling the second set of N well layers to an extra negative extrinsic electric field”,
respectively, both of which, by parallel reasoning to the above BRI, have a broad but reasonable interpretation of
“a second set of N well layers coupled to an electric field originating from outside the claimed device”.
Further Regarding Claims 1 & 18, respectively,
Lin. 4 – 6 & 5 – 8, respectively, recite:
“a first set of N well layers coupled to an extra positive extrinsic electric field, and a second set of N well layers coupled to an extra negative extrinsic electric field”
and
“coupling the first set of N well layers to an extra positive extrinsic electric field; coupling the second set of N well layers to an extra negative extrinsic electric field;”
respectively, both of which have a broad but reasonable interpretation of
“a first set of N well layers coupled to an electric field, and a second set of N well layers coupled to an electric field different from and opposite to the electric field”
Following the aforementioned guidelines, what is claimed has an ordinary and customary meaning to a person of ordinary skill in the art, as evidenced below. Further, the instant specification does not disclose express intent to provide a special definition of what is claimed by clearly redefining the plain meaning, clearly disavowing the full scope of the plain meaning, or any other manner. As such, an ordinary and customary meaning of what is claimed is deemed proper for a broadest reasonable interpretation of what is claimed, MPEP 2111.01 V.
As per MPEP 2111.01 III, “the ordinary and customary meaning of a term may be evidenced by a variety of sources, including the words of the claims themselves”, In re Abbott Diabetes Care Inc., 696 F.3d 1142, 1149-50, 104 USPQ2d 1337, 1342-43 (Fed. Cir. 2012). Therefore, as “a positive electric field” is clearly different from and opposite to “a negative electric field”, and the sign convention provides only relative direction, the broad but reasonable interpretation of what is claimed provided above is deemed proper.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 1, 5, & 18—and their respective dependent claims—are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement because the claim(s) contains subject matter which is not described in the instant specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or joint inventors had possession of the claimed invention, Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991).
Regarding Claims 1 & 18, respectively,
Lin. 4 – 5 & 5 – 6, respectively recite:
“a first set of N well layers coupled to an extra positive extrinsic electric field”,
and
“coupling the first set of N well layers to an extra positive extrinsic electric field”,
respectively, both of which have a broad but reasonable interpretation of
“a first set of N well layers coupled to an electric field originating from outside the claimed device”.
as established in the Claim Interpretation section of this Office Action.
And, this subject matter is not described in the instant specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or joint inventors had possession of “a first set of N well layers coupled to an electric field originating from outside the claimed device”, as the instant specification does not satisfactorily resolve how an electric field originating from outside the first N well layers may be formed.
Admittedly, Par. 9 of the instant specification does disclose “a portion of the N-well layers are grouped and connected to an extra positive bias and the rest are connected to extra negative bias, resulting in an extrinsic electric field” providing a particular embodiment and, thus, another interpretation of
“a first set of N well layers coupled to an electric field originating from inside the claimed device”
for what is claimed. Further, the instant specification does reasonably convey to one skilled in the relevant art that the inventor or joint inventors had possession of “a first set of N well layers coupled to an electric field originating from inside the claimed device”, as the instant specification does satisfactorily resolve how an electric field originating from inside the claimed device may be formed, as evidenced above by Par. 9.
However, it is improper to import the limitation of “the electric field originating from inside the claimed device” into what is claimed. As it has been held that "though understanding the claim language may be aided by explanations contained in the written description, it is important not to import into a claim limitations that are not part of the claim. For example, a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment." Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875, 69 USPQ2d 1865, 1868 (Fed. Cir. 2004). See also Liebel-Flarsheim Co. v. Medrad Inc., 358 F.3d 898, 906, 69 USPQ2d 1801, 1807 (Fed. Cir. 2004) (discussing recent cases wherein the court expressly rejected the contention that if a patent describes only a single embodiment, the claims of the patent must be construed as being limited to that embodiment); E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369, 67 USPQ2d 1947, 1950 (Fed. Cir. 2003).
Further Regarding Claims 1 & 18, respectively,
Lin. 5 – 6 & 7 – 8, respectively, recite:
“a second set of N well layers coupled to an extra negative extrinsic electric field”,
and
“coupling the second set of N well layers to an extra negative extrinsic electric field”,
respectively, both of which have a broad but reasonable interpretation of
“a second set of N well layers coupled to an electric field originating from outside the claimed device”.
as established in the Claim Interpretation section of this Office Action.
And, this subject matter is not described in the instant specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or joint inventors had possession of “a second set of N well layers coupled to an electric field originating from outside the claimed device”, as the instant specification does not satisfactorily resolve how an electric field originating from outside the claimed device may be formed.
Admittedly, Par. 9 of the instant specification does disclose “a portion of the N-well layers are grouped and connected to an extra positive bias and the rest are connected to extra negative bias, resulting in an extrinsic electric field” providing a particular embodiment and, thus, another interpretation of
“a second set of N well layers coupled to an electric field originating from inside the claimed device”
for what is claimed. Further, the instant specification does reasonably convey to one skilled in the relevant art that the inventor or joint inventors had possession of “a second set of N well layers coupled to an electric field originating from inside the claimed device”, as the instant specification does satisfactorily resolve how an electric field originating from inside the claimed device may be formed, as evidenced above by Par. 9.
However, it is improper to import the limitation of “the electric field originating from inside the claimed device” into what is claimed. As it has been held that "though understanding the claim language may be aided by explanations contained in the written description, it is important not to import into a claim limitations that are not part of the claim. For example, a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment." Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875, 69 USPQ2d 1865, 1868 (Fed. Cir. 2004). See also Liebel-Flarsheim Co. v. Medrad Inc., 358 F.3d 898, 906, 69 USPQ2d 1801, 1807 (Fed. Cir. 2004) (discussing recent cases wherein the court expressly rejected the contention that if a patent describes only a single embodiment, the claims of the patent must be construed as being limited to that embodiment); E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369, 67 USPQ2d 1947, 1950 (Fed. Cir. 2003).
Further Regarding Claims 1 & 18, respectively,
Lin. 4 – 6 & 5 – 8, respectively, recite:
“a first set of N well layers coupled to an extra positive extrinsic electric field, and a second set of N well layers coupled to an extra negative extrinsic electric field”
and
“coupling the first set of N well layers to an extra positive extrinsic electric field; coupling the second set of N well layers to an extra negative extrinsic electric field;”
respectively, both of which have a broad but reasonable interpretation of
“a first set of N well layers coupled to an electric field, and a second set of N well layers coupled to an electric field different from and opposite to the electric field”
as established in the Claim Interpretation section of this Office Action.
And, this subject matter is not described in the instant specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or joint inventors had possession of “a first set of N well layers coupled to an electric field, and a second set of N well layers coupled to an electric field different from and opposite to the electric field”, as the instant specification does not satisfactorily resolve how an electric field different from and opposite to the electric field may be formed.
Admittedly, Par. 9 of the instant specification does disclose “a portion of the N-well layers are grouped and connected to an extra positive bias and the rest are connected to extra negative bias, resulting in an extrinsic electric field” providing a particular embodiment and, thus, another interpretation of
“a first set of N well layers coupled to an electric field, and a second set of N well layers coupled to an electric field the same as the electric field”
for what is claimed. Further, the instant specification does reasonably convey to one skilled in the relevant art that the inventor or joint inventors had possession of “a first set of N well layers coupled to an electric field, and a second set of N well layers coupled to an electric field the same as the electric field”, as the instant specification does satisfactorily resolve how an electric field the same as the electric field may be formed, as evidenced above by Par. 9.
However, it is improper to import the limitation of “an electric field the same as the electric field” into what is claimed. As it has been held that "though understanding the claim language may be aided by explanations contained in the written description, it is important not to import into a claim limitations that are not part of the claim. For example, a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment." Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875, 69 USPQ2d 1865, 1868 (Fed. Cir. 2004). See also Liebel-Flarsheim Co. v. Medrad Inc., 358 F.3d 898, 906, 69 USPQ2d 1801, 1807 (Fed. Cir. 2004) (discussing recent cases wherein the court expressly rejected the contention that if a patent describes only a single embodiment, the claims of the patent must be construed as being limited to that embodiment); E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369, 67 USPQ2d 1947, 1950 (Fed. Cir. 2003).
Regarding Claim 5,
Lin. 3 – 5 recite:
“used as a differential photodetector pair to supply an input signal for a transimpedance amplifier (TIA) circuit, thereby minimizing the effect of slow carriers and improving speed of the carriers”.
Admittedly, the instant specification does describe in such a way as to reasonably convey to one skilled in the relevant art that the inventor or joint inventors had possession of a photodetector connected in some way to an amplifier—as evidenced in Par. 7, 23, & 29.
However, the claim defines the invention in functional language “used as a differential photodetector pair to supply an input signal for a transimpedance amplifier (TIA) circuit” and specifies a desired result “thereby minimizing the effect of slow carriers and improving speed of the carriers”. And, the instant disclosure fails to sufficiently identify how this function is performed—the only details provided by the instant specification for the claimed connectivity are found in Par. 29, which discloses only a single connection explicitly between the claimed photodetector and an amplifier: “connecting the P+ anode to the amplifier input”—or how this result is achieved. Regarding the latter, the instant specification admittedly provides some explanation as to how the claimed amplifier circuit may minimize the effect of slow carriers in Par. 29 & 30. However, the instant specification does not link the improvement of carrier speeds to the use of and/or connection to said amplifier circuit.
Further, MPEP 2163.03 V states “An original claim may lack written description support when (1) the claim defines the invention in functional language specifying a desired result but the disclosure fails to sufficiently identify how the function is performed or the result is achieved… See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1349-50 (Fed. Cir. 2010) (en banc). The written description requirement is not necessarily met when the claim language appears in ipsis verbis in the specification. "Even if a claim is supported by the specification, the language of the specification, to the extent possible, must describe the claimed invention so that one skilled in the art can recognize what is claimed. The appearance of mere indistinct words in a specification or a claim, even an original claim, does not necessarily satisfy that requirement." Enzo Biochem, Inc. v. Gen-Probe, Inc., 323 F.3d 956, 968, 63 USPQ2d 1609, 1616 (Fed. Cir. 2002)”. The fact that this claim is not an original claim is immaterial, as the original claim would have been given the same rejection and for the same reasons.
Claims 1, 5, & 18—and their respective dependent claims—are rejected under 35 U.S.C. 112(a) as failing to comply with the scope of enablement requirement because the specification, while being enabling for particular embodiments of the claimed invention, does not reasonably enable one of ordinary skill in the art to make and/or use the invention commensurate in scope with what is claimed without undue experimentation—In re Wright, 999 F.2d 1557, 1561,27 USPQ2d 1510, 1513 (Fed. Cir. 1993)—where the determination that undue experimentation is required is set forth by a Wands factor analysis, In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988), MPEP 2164.01(a).
These factors include, but are not limited to:
(A) The breadth of the claims;
(B) The nature of the invention;
(C) The state of the prior art;
(D) The level of one of ordinary skill;
(E) The level of predictability in the art;
(F) The amount of direction provided by the inventor;
(G) The existence of working examples; and
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
Regarding Claims 1 & 18, respectively,
Lin. 4 – 5 & 5 – 6, respectively recite:
“a first set of N well layers coupled to an extra positive extrinsic electric field”,
and
“coupling the first set of N well layers to an extra positive extrinsic electric field”,
respectively, both of which have a broad but reasonable interpretation of
“a first set of N well layers coupled to an electric field originating from outside the claimed device”
as well as another interpretation of
“a first set of N well layers coupled to an electric field originating from inside the claimed device”
suggested by the instant specification in Par. 9, as established in the section for rejections under 35 U.S.C. 112(a) as failing to comply with the written description of this Office Action.
And, the instant specification, while being enabling for “a first set of N well layers coupled to an electric field originating from inside the claimed device”—as evidenced in Par. 9 of the instant specification—does not reasonably provide enablement for “a first set of N well layers coupled to an electric field originating from outside the claimed device”, as the instant specification does not satisfactorily resolve how one of ordinary skill in the art would make and/or use an electric field originating from outside the claimed device without undue experimentation, as evidenced by the following Wands factor analysis:
Regarding Factor (A) — The Breadth of the Claims:
While practicing an embodiment comprising an electric field originating from inside the claimed device requires implementation techniques disclosed by the instant specification in Par. 9, practicing an embodiment comprising an electric field originating from outside the claimed device requires implementation techniques not disclosed by the instant specification. As such, the breadth of what is claimed exceeds the disclosure provided by the instant specification, and the disclosure provided by the instant specification is, therefore, not commensurate in scope with the breadth of what is claimed.
Regarding Factor (B) — The Nature of the Invention:
What is claimed involves significant engineering challenges not supported by the instant specification, i.e. providing an electric field originating from outside the claimed device, particularly an electric field strong enough to sufficiently “accelerate movement of carriers in the layers”, as recited in Claims 1 & 18. As such, the nature of the invention requires a greater degree of disclosure than is provided by the instant specification.
Regarding Factor (C) — The State of the Prior Art:
The relevant technology required to provide an electric field originating from outside the claimed device, particularly an electric field strong enough to sufficiently “accelerate movement of carriers in the layers”, as recited in Claims 1 & 18, is insufficiently developed to enable PHOSITA to practice what is claimed without additional guidance. Further, the prior art lacks a sufficient technical consensus regarding said implementation of what is claimed. As such, PHOSITA could not rely upon the prior art to supply information omitted from the instant specification. Therefore, the state of the prior art requires a greater degree of disclosure than is provided by the instant specification.
Regarding Factor (D) — The Level of One of Ordinary Skill:
Practicing an electric field originating from outside the claimed device, particularly an electric field strong enough to sufficiently “accelerate movement of carriers in the layers”, as recited in Claims 1 & 18, requires devising solutions not taught by the instant specification or the prior art. Therefore, practicing what is claimed requires the use of non-routine procedures and an expertise extending beyond the ordinary level of skill in the pertinent art. Consequently, PHOSITA could not supply information omitted from the instant specification based upon ordinary skill in the art, as the level of ordinary skill in the pertinent art is insufficient to supply the deficiencies in the instant specification.
Regarding Factor (F) — The Amount of Direction Provided by the Inventor:
Practicing an electric field originating from outside the claimed device, particularly an electric field strong enough to sufficiently “accelerate movement of carriers in the layers”, as recited in Claims 1 & 18, requires implementation details that are not meaningfully addressed by the instant specification. As such, the amount of direction provided by the instant specification is insufficient to support the full scope of what is claimed.
Regarding Factor (G) — The Existence of Working Examples:
The working examples provided by the instant application—which comprise an electric field originating from inside the claimed device, as per Par. 9—fail to demonstrate materially different embodiments encompassed by what is claimed, i.e. the embodiments comprising an electric field originating from outside the claimed device, particularly an electric field strong enough to sufficiently “accelerate movement of carriers in the layers”, as recited in Claims 1 & 18. As such, the working examples provided by the instant specification are insufficient to support the full scope of what is claimed.
Regarding Factor (H) — The Quantity of Experimentation Needed:
Practicing embodiments encompassed by what is claimed—i.e. the embodiments comprising an electric field originating from outside the claimed device, particularly an electric field strong enough to sufficiently “accelerate movement of carriers in the layers”, as recited in Claims 1 & 18, requires implementation techniques substantially different from those disclosed in the instant specification, such as in Par. 9. As such, PHOSITA lacks a reasonable expectation that routine experimentation would successfully identify operative embodiments encompassed by what is claimed. Therefore, the quantity of experimentation necessary to make and/or use what is claimed exceeds that which is permissible under 35 U.S.C. § 112(a).
Accordingly, in view of the foregoing Wands factor analysis, the Examiner determines that the instant specification does not reasonably enable one of ordinary skill in the art to make and/or use the invention commensurate in scope with what is claimed without undue experimentation.
Further Regarding Claims 1 & 18, respectively,
Lin. 5 – 6 & 7 – 8, respectively, recite:
“a second set of N well layers coupled to an extra negative extrinsic electric field”,
and
“coupling the second set of N well layers to an extra negative extrinsic electric field”,
respectively, both of which have a broad but reasonable interpretation of
“a second set of N well layers coupled to an electric field originating from outside the claimed device”
as well as another interpretation of
“a second set of N well layers coupled to an electric field originating from inside the claimed device”
suggested by the instant specification in Par. 9, as established in the section for rejections under 35 U.S.C. 112(a) as failing to comply with the written description of this Office Action.
And, the instant specification, while being enabling for “a second set of N well layers coupled to an electric field originating from inside the claimed device”—as evidenced in Par. 9 of the instant specification—does not reasonably provide enablement for “a second set of N well layers coupled to an electric field originating from outside the claimed device”, as the instant specification does not satisfactorily resolve how one of ordinary skill in the art would make and/or use an electric field originating from outside the claimed device without undue experimentation, as evidenced by the same Wands factor analysis provided in the previous rejection above.
Further Regarding Claims 1 & 18, respectively,
Lin. 4 – 6 & 5 – 8, respectively, recite:
“a first set of N well layers coupled to an extra positive extrinsic electric field, and a second set of N well layers coupled to an extra negative extrinsic electric field”
and
“coupling the first set of N well layers to an extra positive extrinsic electric field; coupling the second set of N well layers to an extra negative extrinsic electric field;”
respectively, both of which have a broad but reasonable interpretation of
“a first set of N well layers coupled to an electric field, and a second set of N well layers coupled to an electric field different from and opposite to the electric field”
as well as another interpretation of
“a first set of N well layers coupled to an electric field, and a second set of N well layers coupled to an electric field the same as the electric field”
suggested by the instant specification in Par. 9, as established in the section for rejections under 35 U.S.C. 112(a) as failing to comply with the written description of this Office Action.
And, the instant specification, while being enabling for “a first set of N well layers coupled to an electric field, and a second set of N well layers coupled to an electric field the same as the electric field”—as evidenced in Par. 9 of the instant specification—does not reasonably provide enablement for “a first set of N well layers coupled to an electric field, and a second set of N well layers coupled to an electric field different from and opposite to the electric field”, as the instant specification does not satisfactorily resolve how one of ordinary skill in the art would make and/or use an electric field different from and opposite to the electric field without undue experimentation, as evidenced by the following Wands factor analysis:
Regarding Factor (A) — The Breadth of the Claims:
While practicing an embodiment comprising a first set of N well layers coupled to an electric field, and a second set of N well layers coupled to an electric field the same as the electric field requires implementation techniques disclosed by the instant specification in Par. 9, practicing an embodiment comprising a first set of N well layers coupled to an electric field, and a second set of N well layers coupled to an electric field different from and opposite to the electric field requires implementation techniques not disclosed by the instant specification. As such, the breadth of what is claimed exceeds the disclosure provided by the instant specification, and the disclosure provided by the instant specification is, therefore, not commensurate in scope with the breadth of what is claimed.
Regarding Factor (B) — The Nature of the Invention:
What is claimed involves significant engineering challenges not supported by the instant specification, i.e. providing a first set of N well layers coupled to an electric field, and a second set of N well layers coupled to an electric field different from and opposite to the electric field. As such, the nature of the invention requires a greater degree of disclosure than is provided by the instant specification.
Regarding Factor (F) — The Amount of Direction Provided by the Inventor:
Practicing a first set of N well layers coupled to an electric field, and a second set of N well layers coupled to an electric field different from and opposite to the electric field, requires implementation details that are not meaningfully addressed by the instant specification. As such, the amount of direction provided by the instant specification is insufficient to support the full scope of what is claimed.
Regarding Factor (G) — The Existence of Working Examples:
The working examples provided by the instant application—which comprise a first set of N well layers coupled to an electric field, and a second set of N well layers coupled to an electric field the same as the electric field, as per Par. 9—fail to demonstrate materially different embodiments encompassed by what is claimed, i.e. the embodiments comprising a first set of N well layers coupled to an electric field, and a second set of N well layers coupled to an electric field different from and opposite to the electric field. As such, the working examples provided by the instant specification are insufficient to support the full scope of what is claimed.
Regarding Factor (H) — The Quantity of Experimentation Needed:
Practicing embodiments encompassed by what is claimed—i.e. the embodiments comprising a first set of N well layers coupled to an electric field, and a second set of N well layers coupled to an electric field different from and opposite to the electric field—requires implementation techniques substantially different from those disclosed in the instant specification, such as in Par. 9. As such, PHOSITA lacks a reasonable expectation that routine experimentation would successfully identify operative embodiments encompassed by what is claimed. Therefore, the quantity of experimentation necessary to make and/or use what is claimed exceeds that which is permissible under 35 U.S.C. § 112(a).
Accordingly, in view of the foregoing Wands factor analysis, the Examiner determines that the instant specification does not reasonably enable one of ordinary skill in the art to make and/or use the invention commensurate in scope with what is claimed without undue experimentation.
Regarding Claim 5,
Lin. 1 – 4 recite:
“a differential photodetector pair to supply the input signal for a transimpedance amplifier (TIA) circuit”.
And, the instant specification, while being enabling for the general concept of connecting a photodetector to an amplifier—as evidenced in Par. 7, 23, & 29—does not reasonably provide enablement for the details of these connections. In fact, the only such details provided by the instant specification are found in Par. 29, which discloses only a single connection explicitly between the claimed photodetector and an amplifier: “connecting the P+ anode to the amplifier input”. As such, the instant specification does not satisfactorily resolve how one of ordinary skill in the art would connect the claimed photodetector to an amplifier in order to make and/or use the claimed invention without undue experimentation, as evidenced by the following Wands factor analysis:
Regarding Factor (A) — The Breadth of the Claims:
What is claimed encompasses numerous different structures, i.e. every conceivable way to connect the claimed photodetector to an amplifier. Further, what is claimed is defined primarily by the result achieved—i.e. the generic connection of the claimed photodetector to an amplifier—rather than by specific implementation—i.e. the specific connections required to make and/or use the claimed invention as intended, e.g. “minimizing the effect of slow carriers and improving speed of the carriers” as recited in Claim 5. As such, the disclosure provided by the instant specification is not commensurate in scope with the breadth of what is claimed.
Regarding Factor (B) — The Nature of the Invention:
What is claimed involves numerous interdependent variables—i.e. every possible way to connect the claimed photodetector to an amplifier. Small changes in implementation materially affect operation of what is claimed, i.e. changing a single connection can have drastic effects on the operation of the claimed invention, which is evident for even simple electronic devices. As such, the nature of the invention requires a greater degree of disclosure than is provided by the instant specification.
Regarding Factor (D) — The Level of One of Ordinary Skill:
Practicing what is claimed requires expertise extending beyond the ordinary level of skill in the pertinent art, i.e. devising a connection scheme sufficient to operate the claimed device as intended, e.g. “minimizing the effect of slow carriers and improving speed of the carriers” as recited in Claim 5. Therefore, PHOSITA could not supply information omitted from the instant specification based upon ordinary skill in the art. As such, the level of ordinary skill in the pertinent art is insufficient to supply the deficiencies in the instant specification.
Regarding Factor (E) — The Level of Predictability in the Art:
Similar implementations of embodiments encompassed by what is claimed produce materially different results, i.e. slightly different connection schemes can drastically change the manner in which the device operates, or make it inoperable, which is evident for even simple electronic devices. As such, the level of predictability in the art requires a greater degree of disclosure than is provided by the instant specification.
Regarding Factor (F) — The Amount of Direction Provided by the Inventor:
Practicing what is claimed requires implementation details that are not meaningfully addressed by the instant specification, i.e. a connection scheme sufficient to operate the claimed device as intended, e.g. “minimizing the effect of slow carriers and improving speed of the carriers” as recited in Claim 5. As such, the amount of direction provided by the instant specification is insufficient to support the full scope of what is claimed.
Regarding Factor (G) — The Existence of Working Examples:
The instant specification relies primarily on prophetic disclosure—simply stating the claimed device operates as desired—rather than providing working examples, as the instant application provides no circuit diagrams or equivalent descriptions that could be used by PHOSITA to make and/or use the claimed invention as intended, e.g. “minimizing the effect of slow carriers and improving speed of the carriers” as recited in Claim 5. As such, the examples provided by the instant specification are insufficient to support the full scope of what is claimed.
Regarding Factor (H) — The Quantity of Experimentation Needed:
The instant specification fails to identify one or more critical operating parameters needed to practice what is claimed, i.e. at least one specific connection scheme that would allow the claimed device to operate as intended, e.g. “minimizing the effect of slow carriers and improving speed of the carriers” as recited in Claim 5. As such, the quantity of experimentation necessary to make and/or use what is claimed exceeds that which is permissible under 35 U.S.C. § 112(a).
Accordingly, in view of the foregoing Wands factor analysis, the Examiner determines that the instant specification does not reasonably enable one of ordinary skill in the art to make and/or use the invention commensurate in scope with what is claimed without undue experimentation.
Claim Rejections - 35 USC § 112(b)
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.
Claims 1, 3, 5 – 8, 11 – 14, & 18 – 20—and their respective dependent claims—are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or joint inventor(s) regard(s) as the invention.
Regarding Claim 1,
Lin. 3 recites a “P+/N well structure”. However, the meaning of this limitation is unclear, as it fails to meet the metes and bounds of the disclosed invention. Specifically, Par. 24 & 25 of the instant specification teach an “array 14 of P+, N+/N-well layers”, an “array 14 with N+well layers 16 and P+ layers 18”, and an “array 14 with N-well layers 16 and P+layers 18”. All of which appear to be an array of a plurality of the claimed structure, and all of which have sufficiently different notation and apparent meaning as render meaning of the claimed “P+/N well structure” indefinite.
Lin. 4 recites a “N well layers”. However, the meaning of this limitation is unclear, as it fails to meet the metes and bounds of the disclosed invention. Specifically, Par. 24, 25, & 26 of the instant specification teach “N+well layers 16”, “N+/N-well layer 16 components”, “N-well layers 16”, and “P+, N+/N-well layers 16, 18, respectively”. All of which appear to be the claimed “N well layers”, and all of which have sufficiently different notation and apparent meaning as render meaning of the claimed “N well layers” indefinite.
Lin. 4 – 5 recite “a first set of N well layers coupled to an extra positive extrinsic electric field” where the phrase “coupled to an extra positive extrinsic electric field” is active language—e.g. “an element is coupled to an electric field”—and more than simply functional language, which would read more like “an element is configured to be coupled to an electric field”. The former constitutes a method of using the claimed device, and, as per MPEP 2173.05(p), “A single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112(b). See In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1318, 97 USPQ2d 1737, 1748-49 (Fed. Cir. 2011)”.
Lin. 5 – 6 recite the term “extra”, which is a relative term, rendering the claim indefinite. The term “extra” 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. As such, the terms “extra positive extrinsic electric filed” and “extra negative extrinsic electric field” are deemed indefinite.
Lin. 5 – 6 recite “a second set of N well layers coupled to an extra negative extrinsic electric field” where the phrase “coupled to an extra negative extrinsic electric field” is active language—e.g. “an element coupled to an electric field”—and more than simply functional language, which would read more like “an element configured to be coupled to an electric field”. The former constitutes a method of using the claimed device, and, as per MPEP 2173.05(p), “A single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112(b). See In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1318, 97 USPQ2d 1737, 1748-49 (Fed. Cir. 2011)”.
Lin. 7 – 8 recite “the extra positive extrinsic electric field and the extra negative extrinsic electric field accelerate movement of carriers in the layers”, which is active language—e.g. “the fields accelerate the carriers”—and is more than simply functional language, which would read more like “the fields configured to accelerate the carriers”. The former constitutes a method of using the claimed device, and, as per MPEP 2173.05(p), “A single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112(b). See In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1318, 97 USPQ2d 1737, 1748-49 (Fed. Cir. 2011)”.
Regarding Claim 3,
Recites in full “The semiconductor device of claim 2, wherein a portion of the N well layers is shielded by a metal strip.” This claim is rejected as being incomplete for omitting essential structural cooperative relationships of elements, such omission amounting to a gap between the necessary structural connections. See MPEP § 2172.01. The omitted structural cooperative relationship being the location of the “metal strip” with respect to the “portion of the N well layers”. This omitted structural cooperative relationship is essential, as without it the metal strips may be anywhere. Further, this claim does not require said metal strip to be a part of the claimed device.
Regarding Claim 5,
Lin. 1 – 5 recite “the portion of the shielded N well layers and a portion of the unshielded N well layers are used as a differential photodetector pair to supply the input signal for a transimpedance amplifier (TIA) circuit”, which is active language—e.g. “the layers are used as…”—and is more than simply functional language, which would read more like “the layers are configured to be used as…”. The former constitutes a method of using the claimed device, and, as per MPEP 2173.05(p), “A single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112(b). See In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1318, 97 USPQ2d 1737, 1748-49 (Fed. Cir. 2011)”.
Lin. 2 recites “a portion of the unshielded”. There is insufficient antecedent basis for this limitation in the claim.
Lin. 3 recites the phrase “used as”, which renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Lin. 3 recites “the input signal”. There is insufficient antecedent basis for this limitation in the claim.
Lin. 3 recites “the effect”. There is insufficient antecedent basis for this limitation in the claim.
Regarding Claim 6,
Recites in full “The semiconductor device of claim 4, wherein the shielding metal strip comprises a pattern of at least one of N well layers and N+ well layers”. This claim is rejected as being incomplete for omitting essential structural cooperative relationships of elements, such omission amounting to a gap between the necessary structural connections. See MPEP § 2172.01. The omitted structural cooperative relationship being the how a metal layer—the metal strip—may comprise semiconductor layers—i.e. the pattern of N well layers and N+ well layers. This omitted structural cooperative relationship is essential, as without it the relationship between these elements is ill-defined. Further, Claim 3, upon which this claim depends, does not require said metal strip to be a part of the claimed device.
Lin. 1 – 2 recite “the shielding metal strip”. There is insufficient antecedent basis for this limitation in the claim.
Regarding Claim 7,
Lin. 1 recites “the shielded components”. There is insufficient antecedent basis for this limitation in the claim.
Lin. 2 recites “connected as an electrode”, which renders the claim indefinite because it is unclear whether the limitations following “as” are part of the claimed invention. See MPEP § 2173.05(d).
Lin. 2 recites “the unshielded components”. There is insufficient antecedent basis for this limitation in the claim.
Lin. 2 – 3 recite “the other electrode”. There is insufficient antecedent basis for this limitation in the claim.
Lin. 2 – 3 recite “connected as the other electrode”, which renders the claim indefinite because it is unclear whether the limitations following “as” are part of the claimed invention. See MPEP § 2173.05(d).
Regarding Claim 8,
Recites in full “The semiconductor device of claim 7, comprising a shallow trench insulator (STI)”. This claim is rejected as being incomplete for omitting essential structural cooperative relationships of elements, such omission amounting to a gap between the necessary structural connections. See MPEP § 2172.01. The omitted structural cooperative relationship being the location of the “STI” with respect to the any other part of the claimed device. This omitted structural cooperative relationship is essential, as without it the STI may be anywhere.
Regarding Claim 11,
Recites in full “The semiconductor device of claim 9, comprising a grating”. This claim is rejected as being incomplete for omitting essential structural cooperative relationships of elements, such omission amounting to a gap between the necessary structural connections. See MPEP § 2172.01. The omitted structural cooperative relationship being the location of the “grating” with respect to the any other part of the claimed device. This omitted structural cooperative relationship is essential, as without it the grating may be anywhere.
Regarding Claim 12,
Lin. 2 recites “an array of semiconductor devices”. There is insufficient antecedent basis for this limitation in the claim. Specifically, it is unclear as to whether the claim is reciting an array of a plurality of the claimed semiconductor device of the preamble or an array of some other semiconductor devices.
Lin. 3 recites “the grating directs light”, which is active language and is more than simply functional language, which would read more like “the grating is configured to direct light”. The former constitutes a method of using the claimed device, and, as per MPEP 2173.05(p), “A single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112(b). See In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1318, 97 USPQ2d 1737, 1748-49 (Fed. Cir. 2011)”.
Regarding Claim 13,
Recites in full “The semiconductor device of claim 9, comprising at least one photon trap”. This claim is rejected as being incomplete for omitting essential structural cooperative relationships of elements, such omission amounting to a gap between the necessary structural connections. See MPEP § 2172.01. The omitted structural cooperative relationship being the location of the “at least one photon trap” with respect to the any other part of the claimed device. This omitted structural cooperative relationship is essential, as without it the at least one photon trap may be anywhere.
Regarding Claim 14,
Lin. 3 recites “an array of semiconductor devices”. There is insufficient antecedent basis for this limitation in the claim. Specifically, it is unclear as to whether the claim is reciting an array of a plurality of the claimed semiconductor device of the preamble or an array of some other semiconductor devices.
Regarding Claim 18,
Lin. 3 recites a “P+/N well structure”. However, the meaning of this limitation is unclear, as it fails to meet the metes and bounds of the disclosed invention. Specifically, Par. 24 & 25 of the instant specification teach an “array 14 of P+, N+/N-well layers”, an “array 14 with N+well layers 16 and P+ layers 18”, and an “array 14 with N-well layers 16 and P+layers 18”. All of which appear to be an array of a plurality of the claimed structure, and all of which have sufficiently different notation and apparent meaning as render meaning of the claimed “P+/N well structure” indefinite.
Lin. 4 recites a “N well layers”. However, the meaning of this limitation is unclear, as it fails to meet the metes and bounds of the disclosed invention. Specifically, Par. 24, 25, & 26 of the instant specification teach “N+well layers 16”, “N+/N-well layer 16 components”, “N-well layers 16”, and “P+, N+/N-well layers 16, 18, respectively”. All of which appear to be the claimed “N well layers”, and all of which have sufficiently different notation and apparent meaning as render meaning of the claimed “N well layers” indefinite.
Lin. 5, 7, & 9 recite the term “extra”, which is a relative term, rendering the claim indefinite. The term “extra” 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. As such, the terms “extra positive extrinsic electric filed” and “extra negative extrinsic electric field” are deemed indefinite.
Lin. 10 recites “improving bandwidth”. There is insufficient antecedent basis for this limitation in the claim. Specifically, “bandwidth” concerns the transfer of data per unit time. However, said data has not been identified in this claim.
Regarding Claim 19,
Lin. 2 recites “P+/N well structure as a finger-type structure”, which renders the claim indefinite because it is unclear whether the limitation following “as” is part of the claimed invention. See MPEP § 2173.05(d).
Regarding Claim 20,
Lin. 2 recites “P+/N well structure as a meshed spatially modulated light detector structure”, which renders the claim indefinite because it is unclear whether the limitation following “as” is part of the claimed invention. See MPEP § 2173.05(d).
Conclusion
Determining the scope and content of the claims is not reasonably feasible as substantial guesswork would be involved, see In re Steele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962); Ex parte Brummer, 12 USPQ 2d, 1653, 1655 (BdPatApp&Int 1989); and In re Wilson, 424 F.2d 1382, 165 USPQ 494 (CCPA 1970). In an effort to advance prosecution, prior art which may be pertinent to the disclosed invention is nevertheless cited below, and Applicant is reminded they must consider all cited art under Rule 111(c) when amending the claims.
NA (US 20180188356 A1)
CELO (US 20170317116 A1)
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/K.S.S./Examiner, Art Unit 2898
/JULIO J MALDONADO/Supervisory Patent Examiner, Art Unit 2898
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