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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address; COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`16/263,382
`
`01/31/2019
`
`Yoshiro KITAMURA
`
`WASHM-60469
`
`7649
`
`“een
`
`aR
`PEA
`PEARNE & GORDON LLP
`1801 EAST 9TH STREET
`SUITE 1200
`CLEVELAND,OH 44114-3108
`
`EVERHART, CARIDAD
`
`2895
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`05/05/2021
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`
`patdocket@ pearne.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`Disposition of Claims*
`1-10 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) 7 is/are withdrawn from consideration.
`() Claim(s)__ is/are allowed.
`Claim(s) 1-6 and 8-10 is/are rejected.
`1 Claim(s)__ is/are objected to.
`C] Claim(s)
`are subjectto restriction and/or election requirement
`* If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http:/Awww.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) ) ) )
`
`Application Papers
`10) The specification is objected to by the Examiner.
`11)() The drawing(s) filedon__ is/are: a)C) accepted or b)C) objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12). Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`cc) None ofthe:
`b)L) Some**
`a)D) All
`1.1) Certified copies of the priority documents have been received.
`2.1) Certified copies of the priority documents have beenreceived in Application No.
`3.2.) Copies of the certified copies of the priority documents have been receivedin this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`* See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1)
`
`Notice of References Cited (PTO-892)
`
`2) (J Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date
`U.S. Patent and Trademark Office
`
`3) (J Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
`
`4)
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20210426
`
`Application No.
`Applicant(s)
`16/263,382
`KITAMURAetal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`CARIDAD EVERHART
`2895
`Yes
`
`
`
`-- The MAILING DATEofthis communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom the mailing
`date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHSfrom the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133}.
`Any reply received by the Office later than three months after the mailing date of this communication, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`1) Responsive to communication(s) filed on 3/12/2021.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`2a)¥) This action is FINAL.
`2b) (J This action is non-final.
`3)02 An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
`4\0) Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`

`

`Application/Control Number: 16/263,382
`Art Unit: 2895
`
`Page 2
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`Notice of Pre-AlA or AIA Status
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`The present application,filed on or after March 16, 2013, is being examined under the first
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`inventorto file provisions of the AIA.
`
`Response to Arguments
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`Applicant's argumentsfiled 3/12/2021 have been fully considered. Applicant has amended
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`claim 1 to include the limitation “a modified-layer forming step of forming a modified layer inside a
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`workpiece by collecting a laser beam inside the workpiece” and “to form a melted modified layer” and
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`applicant has amended claim 6 to include “a modified-layer forming apparatus that forms a modified
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`layer inside a workpiece by collecting a laser beam inside the workpiece” and “to form a melted
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`modified layer’. Applicant has argued that the prior art relied upon in the last Office Action does not
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`disclose all of the limitations of the amended claims. New groundsof rejection are made.
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`Election/Restrictions
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`Newly submitted claim 7 is directed toan invention that is independent or distinct from the
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`invention originally claimed for the following reasons: Claim 7 includes the limitation “an adhering step
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`of holding the workpiece via an adhesive sheet that has pressure-sensitive adhesive strength ata
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`temperaturerange that is less than a heat peeling temperature...”, among other limitations and Claim 7,
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`is drawntoa method,classified in Y10T428/28.
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`Since applicant has received an action on the merits for the originally presented invention, this
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`invention has been constructively elected by original presentation for prosecution on the merits.
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`Accordingly, claim 7 is withdrawn from consideration as being directedto a non-elected invention. See
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`37 CFR 1.142(b) and MPEP § 821.03.
`
`

`

`Application/Control Number: 16/263,382
`Art Unit: 2895
`
`Page 3
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`Claim Rejections - 35 USC § 112
`
`The following is a quotation of 35 U.S.C. 112(b):
`(b}) CONCLUSION.—The s pecfication shallcondude with one or moreclaims particularly pointing out
`and distinctly claimingthe subject matter which the inventor ora joint inventor regards as the
`invention.
`
`The following is a quotation of 35 U.S.C. 112 (pre-AlA), 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 hisinvention.
`
`Claims 6, 9, and 10 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AlA), second
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`paragraph,as being indefinite forfailing to particularly point out and distinctly claim the subject matter
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`which the inventor or a joint inventor (or for applications subject to pre-AlA 35 U.S.C. 112, the
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`applicant), regards as theinvention. Claims 6, 9 and 10 are claims that claim an apparatus and method
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`steps using the apparatus. Claim 6 claims an apparatus and also claims “ forms a modified layer inside a
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`workpiece “ and “heating the modified layer at a temperaturethat is less than a melting point of the
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`workpiece” which are method steps. Claim 9 claims an apparatus and also claims “ heats the modified
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`layer at a temperaturethat is less than the heat peeling temperature andis equal to or more than the
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`melting point of the modified layer’. Claim 10 claims an apparatus and also claims “the modified-layer
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`forming apparatus forms a plurality of modified layers and a plurality of workpiece layers inside the
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`workpiece”(claim directed to an apparatus and a processin the same claim, MPEP 2173.05(p)(II)).
`
`Claim Rejections - 35 USC § 103
`
`Inthe event the determination of the status of the application as subject to AIA 35 U.S.C. 102
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`and 103 (or as subject to pre-AlA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory
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`basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and
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`the rationale supporting the rejection, would be the same under either status.
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`

`

`Application/Control Number: 16/263,382
`Art Unit: 2895
`
`Page 4
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`The text of those sections of Title 35, U.S. Code not included in this action can be found in a
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`prior Office action.
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`Claims 1-2, and 4-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Belle (US
`
`2012/0258554 A1) in view of Ando et al (US 2011/0039356 A1)(“Ando”).
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`Belle discloses a slicing method, as Belle discloses a method for separation of a modified layer
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`(para. 0051) including
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`A modified layer forming step of forming a modified layer inside a workpiece whichis alll-N
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`material such as GaN or AlGaN (para. 0005) by collecting a laser beam inside the workpiece,as Belle
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`discloses forming a modified layer at a level in a substrate which is to be separated (para. 0051), which
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`suggests that the laser beamis collected at the desired level in the substrate . Although Belle discloses
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`there may be an intermediate energy absorbing layer 24, Belle also discloses that the layer may instead
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`preferably be in the III-N semiconductorlayer (para. 0038),
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`A step in which the modified layer is melted by heating at a temperature less than that of the
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`workpiece and equal to or more than that of the modified layer, as Belle discloses that the surrounding
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`semiconductor substrate is not damaged, and Belle also discloses that the surrounding semiconductor
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`substrate melts at a higher temperature than the modified layer (para. 0039)
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`And a separating step of separating the workpiece at the melted modified layer as a boundary,
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`as Belle discloseslaser lift off at the boundary, which Belle discloses is the modified layer (para. 0051).
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`Belle suggests the laser beam is collected as stated above, although the collected is not explicitly
`
`stated.
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`Ando,in the same field of endeavoroflaser lifting off or peeling (Abstract and para. 0071), and
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`Ando also discloses collection of the laser beam, as Ando discloses forming the modified layer in a GaN
`
`substrate by focusing the laser light position in a GaN substrate (para. 0056).
`
`

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`Application/Control Number: 16/263,382
`Art Unit: 2895
`
`Page5S
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`It would have been obvious to one of ordinaryskill in the art before the effective filing date of
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`the claimed invention to have combined the focusing of the laser beam bycollection as disclosed by
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`Ando with the methad disclosed by Belle because Ando discloses a step which is of art recognized
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`suitability for an intended purpose (MPEP 2144.07).
`
`Reclaim 2: The combination of Belle and Ando discloses the thickness of the modified layer
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`larger than a surface roughness of an unmodified layer, as Belle discloses topology, which corresponds
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`to roughness, of unmodified layer of 30 nm (para. 0011), and thickness of modified layer which
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`correspondsto the absorbing layer or the intermediate layer (para. 0038) , as Belle discloses forming a
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`modified layer at a level in asubstrate which is to be separated (para. 0051), which suggests that the
`
`laser beam is collected at the desired level in the substrate . Although Belle discloses there may be an
`
`intermediate energy absorbing layer 24, Belle also discloses that the layer may instead preferably be the
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`III-N semiconductorlayer (para. 0038), a layer which Belle discloses tobe preferable at least 50 nm and
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`up to 500 nm (para. 0045), which satisfies the limitation of the modified layer larger than a surface
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`roughness of an unmodified layer. The reasons for combining the references are the same as stated
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`above in the rejection of claim 1.
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`Reclaim 4: The combination of Belle and Ando discloses a pulse width of equal to or more than
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`0.2 picoseconds and equal toor less than 100 picoseconds, as Ando discloses femtosecond laser (para.
`
`0028-0029), which is a femtosecond laser (para. 0029), and therefore the pulse width is in the
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`femtosecond range and overlaps the recited spot size range, and therefore the recited range is obvious
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`(MPEP 2144.05). It would have been obvious to one of ordinary skill
`
`in the art before the effective filing
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`date of the claimed invention to have combined the laser disclosed by Ando with the method disclosed
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`by Belle in order to obtain the benefit disclosed by Ando of avoiding damage tothe GaN-based
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`semiconductor which is not part of the modified layer by the laser irradiation (para. 0028).
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`

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`Application/Control Number: 16/263,382
`Art Unit: 2895
`
`Page 6
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`Reclaim 5: The combination of Belle and Ando discloses the laser beam has a wavelength with
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`a transmittance of 50% or more with respect to the workpiece, as Belle in view of Ando discloses the
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`pulsed laser for which the wafer is transparent but absorbs where thelaser is focused is used as stated
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`above, and Belle discloses the portions of the III-N semiconductor which is not converted to modified
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`layer has a transmittance of 90% ( Belle, para. 0046) for the intermediate layer (para. 0046). Belle
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`discloses the intermediate layer may be GaN based orIII-N semiconductor which is not converted to
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`modified layer (para. 0038-0039).
`
`In anembodiment, Belle discloses a layer 12 of for example AlGaN
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`(para. 0060) on a substrate 11 (para. 0060 and Fig. 5A), which is a disclosure that the III-N material which
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`is not converted to modified layer material has a transmittance of at least 50%. The reasonsfor
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`combining the references are the same as stated abovein the rejection of claim 1.
`
`Claim 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Belle (US 2012/0258554
`
`A1) in view of Andoet al (US 2011/0039356 A1)(“Ando”) as applied to claim 1 above, and further in view
`
`of Uemura (US 2017/0348960 A1).
`
`Belle in view of Ando discloses the limitations of claim 1 as stated above. Belle in view of Ando
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`is silent with respect to the wafer is separated in a direction parallel to a scanning direction of the laser
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`beam.
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`Uemura, inthe same field of endeavorof laser lift off (Abstract), discloses using a roller referred
`
`toa first end support (para. 0007) and which movesina direction from thefirst end of a substrate to
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`the second end of a substrate (para. 0007) and which includes a portion referredto as a first pillow
`
`(para. 0052) and which is used to carry outlift off by being applied in the x direction (para. 0082-0085
`
`and Fig. 11).
`
`

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`Application/Control Number: 16/263,382
`Art Unit: 2895
`
`Page 7
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`It would have been obvious to one of ordinary skill in the art before the effective filing date of
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`the claimed invention to have combined the arrangement disclosed by Uemura with the method
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`dicosed by Bellein view of Ando because Uemura discloses a method of art recognized suitability for an
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`intended purpose (MPEP 2144.07).
`
`Claim 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Belle (US 2012/0258554
`
`A1) in view of Andoet al (US 2011/0039356 A1)(“Ando”) as applied to claim 1 above, and further in view
`
`of Uemura (US 2017/0348960 A1).
`
`Belle in view of Ando discloses the limitations of claim 1 as statedabove. Belle in view of Ando
`
`is silent with respect to the wafer is separated in a direction parallel to a scanning direction of the laser
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`beam.
`
`Uemura, in the same field of endeavorof laser lift off (Abstract), discloses using a roller referred
`
`toa first end support (para. 0007) and which movesina direction from thefirst end of a substrate to
`
`the second end of a substrate (para. 0007) and which includes a portion referredto asafirst pillow
`
`(para. 0052) and which is used to carry outlift off by being applied in the x direction (para. 0082-0085
`
`and Fig. 11). Umemuraalso discloses a load applied tothe end of the workpiece by the plate 11 (para.
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`0046 andFig. 4 B1).
`
`It would have been obvious to one of ordinary skill in the art before the effective filing date of
`
`the claimed invention to have combined the arrangement disclosed by Uemura with the method
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`disclosed by Belle in view of Ando in order to obtain the benefit of completely separating the layers
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`which are desired to be separated (Uemura para. 0099).
`
`

`

`Application/Control Number: 16/263,382
`Art Unit: 2895
`
`Page 8
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`Applicant's amendmentnecessitated the new ground(s) of rejection presented in this Office
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`action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the
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`extension of time policy as set forth in 37 CFR 1.136(a).
`
`A shortened statutory period for reply to this final action is set to expire THREE MONTHS from
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`the mailing date of this action.
`
`In the event a first reply is filed within TWO MONTHS of the mailing date
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`of this final action and the advisory action is not mailed until after the end of the THREE-MONTH
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`shortened statutory period, then the shortened statutory period will expire on the date the advisory
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`action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing
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`date of the advisory action.
`
`In no event, however,will the statutory period for reply expire later than
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`SIX MONTHS from the date ofthis final action.
`
`Anyinquiry concerning this communication or earlier communications from the examiner
`
`should be directed to CARIDAD EVERHART whosetelephone number is (571)272-1892. The examiner
`
`can normally be reached on M-F 6:00 AM-4:00 PM.
`
`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/interview practice.
`
`If attempts to reachthe examiner by telephone are unsuccessful, the examiner’s supervisor,
`
`Eliseo Ramos-Feliciano can be reached on 571-272-7925. The fax phone number for the organization
`
`wherethis application or proceedingis assigned is 571-273-8300.
`
`Information regarding the status of an application may be obtained from the Patent Application
`
`Information Retrieval (PAIR) system. Status information for published applications may be obtained
`
`from either Private PAIR or Public PAIR. Status information for unpublished applications is available
`
`

`

`Application/Control Number: 16/263,382
`Art Unit: 2895
`
`Page 9
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`through Private PAIR only. For more information about the PAIR system, see https://ppair-
`
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`9199 (IN USA OR CANADA)or 571-272-1000.
`
`/CARIDAD EVERHART/
`Primary Examiner, Art Unit 2895
`
`