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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
`
`mae
`
`aR
`PEA
`PEARNE & GORDON LLP
`1801 EAST 9TH STREET
`SUITE 1200
`CLEVELAND,OH 44114-3108
`
`EVERHART, CARIDAD
`
`2895
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`03/14/2022
`
`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.and 4-12 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`Cj] Claim(s)
`is/are allowed.
`Claim(s) 1 and 4-12 is/are rejected.
`(1 Claim(s)__is/are objectedto.
`Cj) Claim(s
`are subjectto restriction and/or election requirement
`S)
`* 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://www.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)0) The drawing(s) filedon__ is/are: a)(J accepted or b)() 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)1) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`c)Z None ofthe:
`b)() Some**
`a)C All
`1.2 Certified copies of the priority documents have been received.
`2.1.) Certified copies of the priority documents have been received in Application No.
`3.1.) 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 20220307
`
`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 12/17/2021.
`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
`
`Notice of Pre-AlA 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.
`
`Response to Arguments
`
`Applicant's argumentsfiled 12/17/2021 have beenfully considered. Applicant has argued that
`
`Belle is directed to a process for recycling a support substrate. With respect to withdrawnclaim 7,
`
`rejoinder is not considered because claim 1 upon which claim 7 depends is notin allowable. This
`
`argumentis respectfully found to be not persuasive becauseBelle discloses a manufacture process for
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`semiconductor manufacture (para. 0001-0002) and Belle discloses the semiconductor layers include
`
`functional layers (para. 0004) as well as for support substrates (para. 0004 and 0061). With respect to
`
`Applicant’s argument that Tanaka does not disclose “ a thickness of the modified layer is larger than a
`
`surface roughness of an unmodified layer of the wafer, Tanaka discloses a reformed layer L1 in the rest
`
`of the thickness of the semiconductor to be sliced as shownin Fig. 3 for example and described in para.
`
`0003. This description satisfies a layer with a larger roughness than an unmodified layer, as an
`
`unmodified layer has not been processed to have a high surface roughness, whereas a modified layer
`
`has been processed to have a relatively high surface roughness, and the description given by Tanaka
`
`inherently discloses this feature.
`
`In addition, Tanaka discloses 10 micrometers for the reformed layer I|1
`
`whichis the roughened layer (para. 0020) and Tanaka further discloses roughness of the other layeris
`
`suppressed to less than 10 micrometers (para. 0031). Applicant has amended the claims to include
`
`“thickness of the modified layer is larger than a surface roughness of an unmodified layer”. Applicant’s
`
`additional argumentsare primarily based upon Applicant’s amendment. New grounds of rejection are
`
`made.
`
`

`

`Application/Control Number: 16/263,382
`Art Unit: 2895
`
`Page 3
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`Claims 1, 4-5 and 11 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”) and of Endo et al (US
`
`2007/0004169 A1)(“Endo”).
`
`Belle discloses a slicing method, as Belle discloses a method for separation of a modified layer
`
`(para. 0051) including
`
`A modified layer forming step of forming a modified layer inside a workpiece whichis a III-N
`
`material such as GaN or AlGaN (para. 0005) by collecting a laser beam inside the workpiece, as Belle
`
`discloses forming a modified layer at a level in a substrate 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 in the III-N semiconductor layer (para. 0038),
`
`A step in which the modified layer is melted by heating at a temperatureless than that of the
`
`workpiece and equal to or more than that of the modified layer, as Belle discloses that the surrounding
`
`semiconductor substrate is not damaged, and Belle also discloses that the surrounding semiconductor
`
`substrate melts at a higher temperature than the modified layer (para. 0039)
`
`And a separating step of separating the workpiece at the melted modified layer as a boundary,
`
`as Belle discloses laserlift off at the boundary, which Belle discloses is the modified layer (para. 0051).
`
`Belle suggests the laser beam is collected as stated above, although the collected is not explicitly
`
`stated. Belle is silent with respect to thickness of the modified layer is larger than a surface roughnessof
`
`an unmodified layer.
`
`Ando,in the same field of endeavor oflaser lifting off or peeling (Abstract and para. 0071), and
`
`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).
`
`

`

`Application/Control Number: 16/263,382
`Art Unit: 2895
`
`Page 4
`
`Endo,in the same field of endeavor of cleavage of semiconductor wafers (Abstract), discloses
`
`that the modified region 10d whichis in the region which has been implanted with hydrogen has a
`
`roughness and the roughnessof the active layer 10A is minimized by the splitting at the modified layer
`
`(para. 0065).
`
`It would have been obvious to one of ordinaryskill in the art before the effectivefiling date of
`
`the claimed invention to have combined the focusing of the laser beam bycollection as disclosed by
`
`Ando with the method disclosed by Belle because Ando discloses a step whichis of art recognized
`
`suitability for an intended purpose (MPEP 2144.07).
`
`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 disclosure made by Endo with the methoddisclosed by Bell
`
`in order to obtain the benefits disclosed by Endo.
`
`Re claim 4: The combination of Belle and Ando and Endo discloses a pulse width of equal to or
`
`more than 0.2 picoseconds and equal to or less than 100 picoseconds, as Ando discloses femtosecond
`
`laser (para. 0028-0029), which is a femtosecond laser (para. 0029), and therefore the pulse widthis in
`
`the femtosecond range and overlaps the recited spot size range, and therefore the recited range is
`
`obvious (MPEP 2144.05).
`
`It would have been obvious to one of ordinaryskill in the art before the
`
`effective filing date of the claimed invention to have combined the laser disclosed by Ando with the
`
`method disclosed by Belle in order to obtain the benefit disclosed by Ando of avoiding damage to the
`
`GaN-based semiconductor whichis not part of the modified layer by the laser irradiation (para. 0028).
`
`Re claim 5: The combination of Belle and Ando and Endo discloses the laser beam has a
`
`wavelength with a transmittance of 50% or more with respect to the workpiece, as Belle in view of Ando
`
`discloses the pulsed laser for which the wafer is transparent but absorbs wherethe laser is focused is
`
`used as stated above, and Belle discloses the portions of the III-N semiconductor which is not converted
`
`to modified layer has a transmittance of 90% ( Belle, para. 0046) for the intermediate layer (para. 0046).
`
`

`

`Application/Control Number: 16/263,382
`Art Unit: 2895
`
`Page 5
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`Belle discloses the intermediate layer may be GaN basedorIII-N semiconductor whichis not converted
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`to modified layer (para. 0038-0039).
`
`In an embodiment, Belle discloses a layer 12 of for example AlGaN
`
`(para. 0060) on a substrate 11 (para. 0060 and Fig. 5A), which is a disclosure that the III-N material which
`
`is not converted to modified layer material has a transmittance of at least 50%. The reasons for
`
`combining the references are the same as stated abovein the rejection of claim 1.
`
`Re claim 11: The combination of Belle and Ando and Endo discloses moving the wafer relative
`
`to the laser, as Ando discloses moving the stage (para. 0030), which is a disclosure of moving the wafer
`
`whichis on the stage, and Ando also discloses moving the stage in the vertical direction (para. 0059)
`
`using a controller (para. 0059). The reasons for combining the references are the same as stated in the
`
`rejection of claim 1 above.
`
`Claims 6 and 10 are ejected under 25 U.S.C. 103 as bing unpatentable over Belle (US
`
`2012/0258554 A1) in view of Ando et al (US 2011/0039356 A1)(“Ando”) and of Endo et al (US
`
`2007/0004169 A1)(“Endo”) and of Tanaka et al (US 2020/0180082 A1)(“Tanaka”) and of Kagamida (US
`
`5,582,536).
`
`Belle discloses a slicing method, as Belle discloses a method for separation of a modified layer
`
`(para. 0051) including
`
`A modified layer forming apparatus in which forming a modified layer inside a workpiece
`
`whichis a III-N material such as GaN or AlGaN (para. 0005) by collecting a laser beam inside the
`
`workpiece,as Belle discloses forming a modified layer at a level in a substrate 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 in the IIl-N semiconductor layer (para. 0038),
`
`

`

`Application/Control Number: 16/263,382
`Art Unit: 2895
`
`Page 6
`
`A apparatus in which the modified layer is melted by heating at a temperature less than that of
`
`the workpiece and equal to or morethan that of the modified layer, as Belle discloses that the
`
`surrounding semiconductor substrate is not damaged, and Belle also discloses that the surrounding
`
`semiconductor substrate melts at a higher temperature than the modified layer (para. 0039)
`
`And a separating apparatus of separating the workpiece at the melted modified layer as a
`
`boundary, as Belle discloseslaser lift off at the boundary, which Belle discloses is the modified layer
`
`(para. 0051).
`
`Belle suggests the laser beam is collected as stated above, although the collected is not explicitly
`
`stated. Belle is silent with respect to thickness of the modified layer is larger than a surface roughness of
`
`an unmodified layer.
`
`Ando,in the same field of endeavor oflaserlifting off or peeling (Abstract and para. 0071), and
`
`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).
`
`Endo,in the same field of endeavor of cleavage of semiconductor wafers (Abstract), discloses
`
`that the modified region 10d which is in the region which has been implanted with hydrogen has a
`
`roughness and the roughnessof the active layer 10A is minimized by the splitting at the modified layer
`
`(para. 0065).
`
`Tanaka, in the same field of endeavor of dividing semiconductor ingots (Abstract), discloses by
`
`laser irradiation (para. 0005) of a semiconductor ingot (para. 0006) N layers of reformed material (para.
`
`0009), which is a disclosure of forming modified layers, and by heating the reformedlayers (para. 0012),
`
`the heating using a heat source (para. 0034-0035). Tanaka also discloses the laser scan while the stage
`
`52 movesthe ingot (para. 0023). And Tanaka also discloses moving the ingot while applying force to
`
`separatethe slices (para. 0028 and 0036) and moving the ingot can also be done while heating (para.
`
`0023) and while maintaining the melting point of the melted semiconductor (para. 0034).
`
`

`

`Application/Control Number: 16/263,382
`Art Unit: 2895
`
`Page 7
`
`Kagamida, in the same field of endeavor ofslicing a wafer (Abstract), discloses a support for the
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`ingot at the upper portion in which the slicing takes place (Fig. 1 and col. 4, lines 1-8), in which Kagamida
`
`discloses the ingot 10 is movedin a direction D into position for slicing and the holder or slider 20 holds
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`the ingot around the top of the ingot, which position is above wherethe slice is cut, and provides
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`protection from the portion of the ingot which is not cut.
`
`It would have been obvious to one of ordinaryskill in the art before the effective filing date of
`
`the claimed invention to have combined the focusing of the laser beam by collection as disclosed by
`
`Ando with the method disclosed by Belle because Ando discloses a step whichis of art recognized
`
`suitability for an intended purpose (MPEP 2144.07).
`
`It would have been obvious to one of ordinaryskill in the art before the effectivefiling date of
`
`the claimed invention to have combined the disclosure made by Endo with the methoddisclosed by Bell
`
`in order to obtain the benefits disclosed by Endo.
`
`It would have been obvious to one of ordinaryskill in the art before the effectivefiling date of
`
`the claimed invention to have combned the arrangementdisclosed by Tanaka with the apparatus
`
`disclosed by Belle because Tanaka discloses a heating arrangement by which the reformed layer can be
`
`melted (Tanaka, para. 0034) and by whichthe ingot slices can be separated (Tanaka, para. 0035) which
`
`Tanaka discloses to be beneficial (Tanaka, para. 0036).
`
`It would have been obvious to one of ordinaryskill in the art before the effective filing date of
`
`the invention to have combined the arrangementdisclosed by Kagamida with the method disclosed by
`
`Belle in order to obtain the benefits disclosed by Kagamida.
`
`Re claim 10: The combnaton of Belle and Ando and Endo and Tanaka and Kagamida discloses
`
`the drive stage to form the layers by moving the ingot relative to the lase and apply a load to an
`
`endmost wafer and support the side of the ingot, as Tanaka discloses the laser scan while the stage 52
`
`movesthe ingot (para. 0023) and Tanaka also discloses moving the ingot while applying force to
`
`

`

`Application/Control Number: 16/263,382
`Art Unit: 2895
`
`Page 8
`
`separatethe slices (para. 0028 and 0036) and moving the ingot can also be done while heating (para.
`
`0023) and maintaining the melting point of the melted semiconductor (para. 0034). The reasons for
`
`combining the references are the same as stated abovein the rejection of claim 6.
`
`Re claim 12: The combination of Belle and Ando and Endo and Tanaka and Kagamida discloses
`
`The side surfaces of the wafers exposed, as Kagamidadisclosesin Fig. 1 the sides of the wafers exposed
`
`in the holder which movesin the direction D to lower the wafers into the slicer portion of the apparatus.
`
`Claim 8 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”) and of Endo et al (US 2007/0004169
`
`A1)(“Endo”) as applied to claim 1 above, and further in view of Uemura (US 2017/0348960 A1).
`
`Belle in view of Ando and Endo discloses the limitations of claim 1 as stated above. Belle in view
`
`of Ando and Endo is silent with respect to the wafer is separated in a direction parallel to a scanning
`
`direction of the laser beam.
`
`Uemura,in the same field of endeavor oflaser lift off (Abstract), discloses using a roller referred
`
`to a first end support (para. 0007) and which movesina direction from the first end of a substrate to
`
`the second end of a substrate (para. 0007) and which includes a portion referred to 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). Umemura also discloses a load applied to the end of the workpiece by the plate 11 (para.
`
`0046 and Fig. 4 B1).
`
`It would have been obvious to one of ordinaryskill in the art before the effectivefiling date of
`
`the claimed invention to have combined the arrangementdisclosed by Uemura with the method
`
`disclosed by Belle in view of Ando and Endo in orderto obtain the benefit of completely separating the
`
`layers which are desired to be separated (Uemura para. 0099).
`
`

`

`Application/Control Number: 16/263,382
`Art Unit: 2895
`
`Page 9
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`Applicant's anendment necessitated the new ground(s) of rejection presented in this Office
`
`action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the
`
`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
`
`the mailing date of this action.
`
`In the eventa first reply is filed within TWO MONTHS of the mailing date
`
`of this final action and the advisory action is not mailed until after the end of the THREE-MONTH
`
`shortened statutory period, then the shortened statutory period will expire on the date the advisory
`
`action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing
`
`date of the advisory action.
`
`In no event, however, will the statutory period for reply expire later than
`
`SIX MONTHS from the date ofthis final action.
`
`Any inquiry concerning this communication or earlier communications from the examiner
`
`should be directed to CARIDAD EVERHART whose telephone number is (571)272-1892. The examiner
`
`can normally be reached M-F 6:00 AM-4:00 PM.
`
`Examinerinterviews 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 AutomatedInterview Request (AIR) at http://www.uspto.gov/interviewpractice.
`
`If attempts to reach the 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 proceeding is assigned is 571-273-8300.
`
`

`

`Application/Control Number: 16/263,382
`Art Unit: 2895
`
`Page 10
`
`Information regarding the status of published or unpublished applications may be obtained from
`
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`
`/CARIDAD EVERHART/
`Primary Examiner, Art Unit 2895
`
`