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Application No.: 17/026,849
`
`Docket No.: P200896US00
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`REMARKS
`
`By this Amendment, claims 1-8 are pending. Applicant acknowledges with appreciation
`
`the indication of allowability of claim 7 at page 8 of the Office Action. A new dependent claim
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`8 is added. Support is detailed below.
`
`Applicant’s Response to the Claim Rejections under 35 U.S.C.§103
`
`Claims 1-3 are rejected under 35 U.S.C. § 103 as being unpatentable over U.S.
`
`Patent Application Publication Number 2016/0079410 Al to Yasumotoet al., “Yasumoto”,
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`in view of U.S. Patent Application Publication Number 2018/0026099 Al to Miyamotoetal.,
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`“Miyamoto”.
`
`Claims 1 and 5 are rejected under 35 U.S.C. § 103 as being unpatentable over U.S.
`
`Patent Application Publication Number 2016/0079410 Al to Yasumotoet al., “Yasumoto”,
`
`in view of U.S. Patent Application Publication Number 2017/0250274 Al to Nakayamaet
`
`al., “Nakayama”.
`
`Since applicant’s remarks below similarly apply to both of the above rejections, they are
`
`addressed concurrently for the sake of clarity and brevity.
`
`In response thereto, applicant respectfully submits that the claims as now presented are
`
`not obvious over Yasumoto in view of Miyamoto for at least the reason that the combination
`
`does not provide for all the aspects of the claims, nor is there any rationale prompting a skilled
`
`artisan to modify the combination so as to derive the current invention. Likewise, applicant
`
`respectfully submits that the claims as now presented are not obvious over Yasumoto in view of
`
`Nakayamaforat least the reason that the combination does not provide forall the aspects of the
`
`claims, nor is there any rationale prompting a skilled artisan to modify the combination so as to
`
`

`

`Application No.: 17/026,849
`
`Docket No.: P200896US00
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`derive the current invention.
`
`Specifically, both Yasumoto in view of Miyamoto and Yasumoto in view of Nakayamaat
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`least fail to provide for the aspects of parent claim 1 as to “a third opening at an outermost edge
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`part in a plan view of the substrate, the third opening penetrating through the electron supply
`
`layer and the electron transport layer to the second nitride semiconductor layer; and a potential
`
`fixing electrode provided in the third opening, the potential fixing electrode being connected to
`
`the second nitride semiconductor layer and in contact with neither the electron transport layer nor
`
`the electron supply layer.”
`
`Per page 2 bridging page 4 and per page 5 bridging page 6 of the Office Action, the
`
`rejections regarding base claim 1 primarily rely on Yasumoto. The rejections acknowledge that
`
`Yasumotofails to teach “a third opening at an outermost edge part in a plan view ofthe substrate,
`
`the third opening penetrating through the electron supply layer and the electron transport layer to
`
`the second nitride semiconductor layer; and a potential fixing electrode provided in the third
`
`opening, the potential fixing electrode being connected to the second nitride semiconductor layer
`
`and in contact with neither the electron transport layer nor the electron supply layer” required by
`
`instant claim 1. The secondary references, Miyamoto and Nakayama, are cited as individually
`
`fulfilling these missing aspects.
`
`In response, applicant respectfully submits that a skilled artisan would not have been
`
`motivated to combine Yasumoto with Miyamoto/Nakayama due to a fundamental structural
`
`difference between the primary and secondary references.
`
`Specifically, related to the third opening the potential fixing electrode of instant claim 1
`
`which are missing in Yasumoto, the current rejection cites to Miyamoto as disclosing “a third
`
`opening (VIA)” and “a potential fixing electrode (voltage clamp 4E, ¥ [0082],[0083]),” and to
`
`

`

`Application No.: 17/026,849
`
`Docket No.: P200896US00
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`Nakayamaas disclosing “a third opening (filled with ISO and VIA)” and “a potential fixing
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`electrode (VIA, 4 [0080],[0081]).”
`
`Miyamoto per FIG.
`
`1
`
`thereof discloses a horizontal FET structure—as opposed to a
`
`vertical FET structure disclosed in primary reference Yasumoto—wherein the via hole VIA and
`
`the fourth electrode 4E are provided to the outermost edge part, with the fourth electrode 4E
`
`connected to the voltage clamp layer 2S. Miyamoto per paragraph [0114] thereof teaches
`
`operation of its semiconductor device, in which “[w]hen a DC voltage is externally applied to the
`
`fourth electrode 4E,
`
`the second nitride semiconductor layer (voltage clamp layer) 2S has a
`
`voltage equal to that of the fourth electrode 4E, and thus serves as a back gate,” allowing for
`
`control of the threshold of the transistor. As such, the voltage clamp layer 2S and the fourth
`
`electrode 4E of Miyamoto are provided to serve as a back gate to control the horizontal FET’s
`
`threshold value.
`
`Furthermore, since Miyamoto’s horizontal FET structure requires voltage
`
`application horizontally rather than vertically, the reference device does not involve concerns
`
`regarding a leakage current flowing vertically at the end part, the specific problem identified in
`
`the present application.
`
`Nakayamarelates to a horizontal FET structure analogous to that of Miyamoto. Per
`
`paragraph [0080] of Nakayama, “[by] providing the n-type semiconductor region CDn and the
`
`coupling portion VIA and fixing the n-type semiconductor region CDn to a predetermined
`
`potential (e.g., 0 V or a negative potential), it is possible to reduce variations in properties such
`
`as threshold potential and ON resistance.” As such, although Nakayama does disclose a coupling
`
`portion VIA, said coupling portion VIA is not for preventing leakage current.
`
`In addition, the
`
`coupling portion VIA is connected to n-type semiconductor region CDn, whichis different from
`
`the structure of the present application.
`
`

`

`Application No.: 17/026,849
`
`Docket No.: P200896US00
`
`Accordingly, given the intended purpose of the alleged potential fixing electrode, 1.¢.,
`
`serving as a back gate to control the horizontal FET’s threshold value, a skilled artisan would not
`
`have been motivated to apply the arrangement of Miyamoto/Nakayama to improve Yasumoto’s
`
`vertical FET device. Further, the art of record is silent as to beneficial effects of the potential
`
`fixing electrode, such as, e.g., the capability to prevent leakage current flowing vertically, as
`
`disclosed in the present application. As such, there would have been norationale prompting a
`
`skilled artisan to modify Yasumoto’s device by incorporating the alleged third opening and
`
`potential fixing electrode as taught in Miyamoto/Nakayama, and there would have been no
`
`reasonable expectation of success in performing the suggested modification where so doing
`
`would contradict the operational principle whereby the reference device is designed to function.
`
`Wherefore, applicant respectfully submits that claim 1 as now presented, as well as its
`
`respective dependent claims are not obvious over Yasumoto in view of Miyamoto. Also,
`
`applicant respectfully submits that claim 1 as now presented, as well as its respective dependent
`
`claims are not obvious over Yasumoto in view of Nakayama.
`
`Claim 4 is rejected under 35 U.S.C. § 103 as being unpatentable over U.S. Patent
`
`Application Publication Number 2016/0079410 Al to Yasumotoet al., “Yasumoto”, in view
`
`of U.S. Patent Application Publication Number 2018/0026099 Al
`
`to Miyamoto et al.,
`
`“Miyamoto”, further in view of U.S. Patent Number 5,977,609 to Soderbarg et al.,
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`“Soderbarg”.
`
`Claim 6 is rejected under 35 U.S.C. § 103 as being unpatentable over U.S. Patent
`
`Application Publication Number 2016/0079410 Al to Yasumotoet al., “Yasumoto”, in view
`
`of U.S. Patent Application Publication Number 2018/0026099 Al
`
`to Miyamoto et al.,
`
`

`

`Application No.: 17/026,849
`
`Docket No.: P200896US00
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`“Miyamoto”, as applied to claim 1 above, and further in view of U.S. Patent Application
`
`Publication Number 2012/0153300 A1 to Lidowet al., “Lidow”.
`
`Applicant respectfully submits that by addressing the rejection of parent claim 1 as
`
`detailed above, likewise the current rejections of claims 4 and 6 are addressed by nature of their
`
`dependency.
`
`New Claim 8
`
`New dependentclaim 8 recites that “a bottom part of the second opening and a bottom
`
`part of the third opening are at a same height.” Support may be foundin the original disclosure,
`
`for example, at FIGs. 2, 4 and10-12 and accompanying text. Aside from its dependency from
`
`instant claim 1, applicant respectfully submits that new claim 8 is on its own merit distinguished
`
`from the art of record.
`
`In view of the foregoing amendments and accompanying remarks, it is submitted that all
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`pending claims are in condition for allowance. A prompt and favorable reconsideration of the
`
`rejection and an indication of allowability of all pending claims are earnestly solicited.
`
`If the Examiner believes that there are issues remaining to be resolved in this application,
`
`the Examineris invited to contact the undersigned attorney at the telephone number indicated
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`below to arrange for an interview to expedite and complete prosecution ofthis case.
`
`

`

`Application No.: 17/026,849
`
`Docket No.: P200896US00
`
`If this paper is not timely filed, Applicants respectfully petition for an appropriate
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`extension of time. The fees for such an extension or any other fees that may be due with respect
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`to this paper may be charged to Deposit Account No. 50-2866.
`
`Respectfully submitted,
`
`WHDA, LLP
`
`/Michael J. Caridi/
`
`MichaelJ. Caridi
`Attorney for Applicants
`Registration No. 56,171
`Telephone: 703-827-3800
`Facsimile: 571-395-8753
`
`MJC/fo
`
`10
`
`

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