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`UNITEDSTATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`17/455,678
`
`11/19/2021
`
`Toshiyuki TAKASAKI
`
`ISHII-6538 1
`
`1804
`
`PEARNE & GORDON LLP
`1801 EAST 9TH STREET
`SUITE 1200
`
`CLEVELAND,OH 44114-3108
`
`KIM, JAY C
`
`2815
`
`10/11/2024
`
`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)
`
`

`

`Office Action Summary
`
`Application No.
`17/455,678
`Examiner
`JAY C KIM
`
`Applicant(s)
`TAKASAK et al.
`Art Unit
`AIA (FITF) Status
`2815
`Yes
`
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORYPERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensionsof 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 8/12/24.
`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) 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)(2) 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.
`
`Disposition of Claims*
`1-4 and 6 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) 6 is/are withdrawn from consideration.
`[] Claim(s)__ is/are allowed.
`Claim(s) 1-4 is/are rejected.
`[) Claim(s)__ is/are objectedto.
`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)M The drawing(s) filed on 11/19/21 is/are: a) 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)(¥) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`c)() None ofthe:
`b)( Some**
`a) All
`1.@) 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)
`
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date 6/12/24.
`U.S. Patent and Trademark Office
`
`3)
`
`4)
`
`(LJ Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20241007
`
`

`

`Application/Control Number: 17/455,678
`Art Unit: 2815
`
`Page 2
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`DETAILED ACTION
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`This Office Action is in response to Amendmentfiled August 12, 2024.
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`The present application, filed on or after March 16, 2013,
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`is being examined
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`underthefirst inventor to file provisions of the AIA.
`
`Claim Objections
`
`Claim 1
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`is objected to becauseof the following informalities:
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`On lines 16-17, “to exposed the compound semiconductor layer’ should be
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`replaced with another term, because (a) “a compound semiconductor layer’ recited on
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`line 2 has already been altered, modified or patterned by the individualization process of
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`forming the grooverecited on line 9, and (b) therefore, what is exposed should be an
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`altered/modified/patterned compound semiconductorlayer with the groove ora
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`remainder of the compound semiconductorlayer rather than the as-deposited
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`compound semiconductor layer.
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`On lines 18, 20-21, 24-25 and 32, “the compound semiconductor layer’ should
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`be replaced with another term forthe same reasons stated above.
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`On line 22, the comma (“,”) after “groove” should be deleted.
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`On line 25, “on the sidewall of the groove” should be amended, because (a) “the
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`groove” is an empty spaceor a void, and therefore, “the groove” does not exactly have
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`the sidewall, and (b) rather, the claimed “sidewall of the groove’ is a sidewall of the
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`altered/modified/patterned compound semiconductor layer or a sidewall of the
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`remainder of the compound semiconductorlayer.
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`On line 30, “the first process” should be amended to avoid indefiniteness,
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`becauseit appears that Applicants claim a plurality of first processes rather than a
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`

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`Application/Control Number: 17/455,678
`Art Unit: 2815
`
`Page 3
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`single first process, becausethe first, second and third process “are sequentially
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`repeated as one cycle’.
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`Appropriate correction is required.
`
`Claim Rejections - 35 USC § 112
`
`The following is a quotation of 35 U.S.C. 112(b):
`(b) CONCLUSION.—Thespecification shall conclude with one or more
`claims particularly pointing out and distinctly claiming the subject matter
`which the inventor or a joint inventor regards as the invention.
`
`The following is a quotation of 35 U.S.C. 112 (pre-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 his invention.
`
`Claims 1-4 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AlA),
`
`second paragraph, as being indefinite for failing to particularly point out and distinctly
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`claim the subject matter which the inventor or a joint inventor (or for applications subject
`
`to pre-AlA 35 U.S.C. 112, the applicant), regards as the invention.
`
`(1) Regarding claim 1, it is not clear what “the dividing region” recited on lines 5-6
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`and 9 refers to, because (a) Applicants claim “at least one dividing region” onlines 3-4,
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`which can imply a plurality of diving regions, and (b) therefore, when the “at least one
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`dividing region” recited on lines 3-4 refers to a plurality of dividing regions,
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`it is not clear
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`whether “the dividing region” recited on lines 5-6 and 9 refers to a single dividing region
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`or each andevery dividing region; if it is the former, it is not clear which dividing region
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`out of the plurality of dividing regions “the dividing region” refersto.
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`(2) Also regarding claim 1, it is not clear how thefirst, second and third process
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`can be “sequentially repeated as one cycle’ in the claimed individualization process as
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`recited on lines 12-23, and then the protective film inhibits the compound semiconductor
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`

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`Application/Control Number: 17/455,678
`Art Unit: 2815
`
`Page 4
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`layer from reacting with the third plasma and being etched in the third process as
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`recited on liens 24-26, because (a)it is clear that Applicants claim that the protective
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`film would remain after the third process since otherwise the compound semiconductor
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`layer would not be protected by the protective film in the third process, (b) in this case,
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`from the second cycle on, the subsequently performed first process of forming the
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`protective film cannot be carried out due to the presence of the protectivefilm still
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`remaining from the first cycle, and (c) therefore, unless the protective film is removed
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`from each cycle of the first, second and third process, the next cycle cannot simply
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`begin.
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`(3) Further regarding claim 1, it is not clear what the limitation “the protective film
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`in the first process ... prevents the groove from being widened” recited on lines 24-26
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`refers to, because (a) for Applicants to claim the processlimitation cited above,
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`Applicants first need to claim when “the protective film in the first process ... prevents
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`the groove from being widened”, (b) asillustrated below, as the third process continues,
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`the unprotected portions of the altered/modified/patterned compound semiconductor
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`layer may be further etched bythe third process, widening the groove,
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`

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`Application/Control Number: 17/455,678
`Art Unit: 2815
`
`Page5S
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`
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`(c) this phenomenon mayalso have beenillustrated in Fig. 6A of current application,
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`see below illustration, where the groovesize increases from the area of the
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`altered/modified/patterned compound semiconductorlayer pointed at by the upper
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`arrow to the area of the altered/modified/patterned compound semiconductorlayer
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`pointed at by the lowerarrow,
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`

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`Application/Control Number: 17/455,678
`Art Unit: 2815
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`Page 6
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`MiG. GA
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`(d) also, Fig. 8B of Hsieh et al. (US 11,522,050) and multiple figures of Itou et al. (US
`
`2018/0240678), which Applicants filed with the IDS on June 12, 2024, show that an
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`etching process may result in an irregular shape of a groove, which may occur for the
`
`claimed method, and (e) therefore, it is not clear whetherthe limitation “the protective
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`film in the first process ... prevents the groove from being widened’ recited on lines 24-
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`26 implies Applicants’ intention rather than what actually happens during thethird
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`process, andif that is the case, claim 1 would be further indefinite since Applicants
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`claim a process that does not actually occur, and claim 1 may be directed to an abstract
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`idea or a concept rather thanareality.
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`(4) Still further regarding claim 1, itis not clear what the limitation “the reaction
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`product accumulated on the upper portion of the groovein the third process so as to
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`narrow an opening of the groove’ recited on lines 27-28 suggests, because(a)
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`Applicants claim that the reaction product is created between the compound
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`semiconductor layer and the third plasma on liens 20-21, (6) Applicants further claim
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`

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`Application/Control Number: 17/455,678
`Art Unit: 2815
`
`Page 7
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`that the protectivefilm is formed on the sidewall of the groove during the first process on
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`line 13, (c) furthermore, Applicants claim that “the protective film formedin thefirst
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`processinhibits the compound semiconductorlayer on the sidewall of the groove from
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`reacting with the third plasma’ on lines 24-25, (d) therefore, “the reaction product
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`accumulated on the upper portion of the groovein the third process so as to narrow an
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`opening of the groove’ recited on lines 27-28 requires a reaction between the sidewall
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`of the altered/modified/patterned compound semiconductor layer and the third plasma in
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`the third process, while such a reaction is inhibited by the protectivefilm, (e) in this
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`case,it is not clear how the opening of the groove can be narrowedby the reaction
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`product whenthe reaction between the altered/modified/patterned compound
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`semiconductor layer and the third plasma is inhibited, and when the only available area
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`that the reaction product may be accumulated on would be the top surface of the
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`altered/modified/patterned compound semiconductorlayerif the top surface has not yet
`
`been covered with the protective film, but this accumulation of the reaction product
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`would not narrow the opening of the groove, and (f) finally, if the top surface of the
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`altered/modified/patterned compound semiconductor layer is not covered with the
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`protective film, the altered/modified/patterned compound semiconductor layer would
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`continue to be etchedasillustrated below wherethe thicker horizontal
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`lines correspond
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`to the receding top surface of the altered/modified/patterned compound semiconductor
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`layer as the third process progresses,
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`leaving behind the protectivefilm with less lateral
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`support as the third process continues and eventually the protective film’s exfoliating
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`from the structure.
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`

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`Application/Control Number: 17/455,678
`Art Unit: 2815
`
`Page 8
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`
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`(5) Still further regarding claim 1,
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`it is not clear how the reaction product can be
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`“removed by applying a high-frequency powerto the stagein the first process of a next
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`cycle” recited on lines 27-29, because (a) Applicants claim that the first, second and
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`third process “are sequentially repeated as one cycle’ in the claimed individualization
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`process on lines 12-23, (b) in this case, the step of “applying a high-frequency powerto
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`the stage in the first process” recited on lines 27-29 would make sense only when the
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`first process recited on lines 13-14 also includes a step of “applying a high-frequency
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`powerto the stage” since otherwisethefirst, second and third process are not
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`“sequentially repeated as one cycle’in the claimed individualization process
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`contradictory to the limitation recited on lines 12-23, (c) however, Applicants do not
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`claim that the first process recited on lines 13-14 also includes a step of “applying a
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`high-frequency powerto the stage”, and (d) in this case,
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`it appears that the step of
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`“applying a high-frequency powerto the stage” is not a part of the repeatedly performed
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`first process contradictory to the limitation cited above.
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`(6) Still further regarding claim 1,
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`it is not clear how the high-frequency power
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`applied to the stage in the first process can be increased as recited on lines 30-32 while
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`the first, second and third process “are sequentially repeated as one cycle’in the
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`claimedindividualization process as recited on lines 12-23, because when the high-
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`

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`Application/Control Number: 17/455,678
`Art Unit: 2815
`
`Page 9
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`frequency power applied to the stage increases overtime, there is no repetition of the
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`first, second and third process contradictory to the limitation recited on lines 12-23.
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`(7) Still further regarding claim 1,
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`it is not clear how the high-frequency power
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`applied to the stage in the first process can be increased as recited on lines 30-32 while
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`the groove can be prevented from being widened asrecited on lines 24-26, because as
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`the high-frequency power applied to the stage in the first process increases,it is likely
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`that the groove would be widened over time.
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`Claims 2-4 depend on claim 1, and therefore, claims 2-4 are also indefinite.
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`Response to Arguments
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`Applicants’ arguments with respect to claim 1 have been considered but are
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`moot because the new ground of rejection does not rely on any reference applied in the
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`prior rejection of record for any teaching or matter specifically challenged in the
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`argument.
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`Conclusion
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`Applicants’ amendment necessitated the new groundsof rejection presented in
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`this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP
`
`§ 706.07(a). Applicants are 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.
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`In the event a first reply is filed within
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`TWO MONTHS of the mailing date of this final action and the advisory action is not
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`mailed until after the end of the THREE-MONTHshortened statutory period, then the
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`

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`Application/Control Number: 17/455,678
`Art Unit: 2815
`
`Page 10
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`shortened statutory period will expire on the date the advisory action is mailed, and any
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`extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of
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`the advisory action.
`
`In no event, however, will the statutory period for reply expire later
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`than SIX MONTHS from the date of this final action.
`
`Anyinquiry concerning this communication or earlier communications from the
`
`examiner should be directed to JAY C KIM whosetelephone numberis (571) 270-1620.
`
`The examiner can normally be reached 8:00 AM - 6:00 PM EST.
`
`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:/Avwww.uspto.gov/interviewpractice.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
`
`supervisor, Joshua Benitez can be reached on (571) 270-1435. The fax phone number
`
`for the organization where this application or proceeding is assigned is 571-273-8300.
`
`Information regarding the status of published or unpublished applications may be
`
`obtained from Patent Center. Unpublished application information in Patent Centeris
`
`available to registered users. To file and manage patent submissions in Patent Center,
`
`visit: https://patentcenter.uspto.gov. Visit https:/Avww.uspto.gov/patents/apply/patent-
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`
`

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`Application/Control Number: 17/455,678
`Art Unit: 2815
`
`Page 11
`
`/JAY C KIM/
`Primary Examiner, Art Unit 2815
`
`/J.K./
`Primary Examiner, Art Unit 2815
`October 8, 2024
`
`