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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
`
`05/17/2024
`
`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 4/5/24.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`2a)() This action is FINAL. 2b)¥)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*
`1-6 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) 1-5 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 11/19/21.
`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 20240513
`
`

`

`Application/Control Number: 17/455,678
`Art Unit: 2815
`
`Page 2
`
`DETAILED ACTION
`
`This Office Action is in response to Application filed November 19, 2021.
`
`The present application, filed on or after March 16, 2013,
`
`is being examined
`
`underthefirst inventor to file provisions of the AIA.
`
`Election/Restrictions
`
`Applicants’ election without traverse of Species A and Subspecies a drawnto the
`
`embodiment shownin Fig. 3 of current application, claims 1-5, in the reply filed on April
`
`5, 2024 is acknowledged.
`
`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 1-5 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
`
`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 whether “a dividing region” recited onlines 3-
`
`4 refers to asingle, contiguous dividing region, which may imply that “a plurality of
`
`element regions’ recited on line 3 would be two element regions, because (a)
`
`Applicants do not show what “a dividing region” is in the drawings of current application,
`
`

`

`Application/Control Number: 17/455,678
`Art Unit: 2815
`
`Page 3
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`(ob) Applicants do not claim “a dividing region” per se, but rather also claim “an
`
`individualization process of forming a groove corresponding to the diving region” online
`
`9, and “a first process of forming a protective film at least on a bottom of the groove” on
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`line 13, and (c) therefore, depending on what “a dividing region” refers to, i.e. whetherit
`
`is a single, contiguous region or a plurality of discrete regions, the claimed element chip
`
`manufacturing method would be distinct in terms of how many element regions are
`
`obtained, and whether each ofall of the plurality of discrete regions is covered with the
`
`protective film, which may or may not be a contiguous protectivefilm.
`
`(2) Also regarding claim 1, it is not clear whatthe first and second process
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`recited on lines 13-16 would perform collectively, because (a) it appears that Applicants
`
`claim that the protective film can be formed on the bottom of the groove and then
`
`removed bythe first and second processcollectively, and (b) therefore, it appears that
`
`the first and second processcollectively may not do anything, and in this case, the
`
`claimed method may require only the third process recited on lines 17-20.
`
`(3) Further regarding claim 1, it is not clear what “the conductive semiconductor
`
`layer” recited on line 17 refers to, because (a) Applicants do not claim “a conductive
`
`semiconductor layer” before claiming “the conductive semiconductorlayer”, and (b)
`
`therefore, the limitation “the conductive semiconductorlayer” lacks the antecedent
`
`basis.
`
`(4) Still further regarding claim 1,
`
`it is not clear how thefirst, second andthird
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`processrecited on lines 13-20 can be “sequentially repeated” as recited online 21,
`
`because (a) when the reaction product recited on line 19 is accumulated on the upper
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`portion of the groove afterthefirst iteration, “the groove” recited on line 13 would not be
`
`

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`Application/Control Number: 17/455,678
`Art Unit: 2815
`
`Page 4
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`the structure that would undergo thefirst process from the seconditeration on, in which
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`case, the protective film recited on line 13 may not be formed “at least on a bottom of
`
`the groove” from the second iteration on, and rather the protective film recited on line 13
`
`would be formedin different arrangements and/or configurations from the second
`
`iteration on, and (b) in this case, the compound semiconductor layer may not be
`
`exposed contrary to the limitation recited on lines 15-16 from the seconditeration on.
`
`(5) Still further regarding claim 1,
`
`it is not clear what “the reaction product” recited
`
`on line 22 refers to, because (a) “the first process” recited on line 22 should refer to “a
`
`first process” recited on line 13 from thefirst iteration on, and (b) however, when “a first
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`process’is first performed, there is no “reaction product’, and therefore, the limitation
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`“the reaction product” lacks the antecedent basis.
`
`Claims 2-5 depend on claim 1, and therefore, claims 2-5 are also indefinite.
`
`(6) Regarding claim 5,itis not clear how the high-frequency power can be
`
`applied as recited in claim 5, because it is not clear whether the “continuously”
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`increased high-frequency power and “stepwise” increased high-frequency power each
`
`refers to a continuously and stepwise increased high-frequency power for eachiteration
`
`of the first through third process, or the high-frequency poweris increased from one
`
`iteration to the next.
`
`Claim Rejections - 35 USC § 103
`
`The following is a quotation of 35 U.S.C. 103 which forms the basis forall
`
`obviousness rejections set forth in this Office action:
`
`A patent for a claimed invention may not be obtained, notwithstanding that
`the claimed invention is not identically disclosed as set forth in section
`102, if the differences between the claimed invention and the prior art are
`
`

`

`Application/Control Number: 17/455,678
`Art Unit: 2815
`
`Page5S
`
`such that the claimed invention as a whole would have been obvious
`before the effective filing date of the claimed invention to a person having
`ordinary skill
`in the art to which the claimed invention pertains.
`Patentability shall not be negated by the mannerin which the invention
`was made.
`
`Claims 1-4, as best understood, are rejected under 35 U.S.C. 103 as being
`
`unpatentable over Tabuchi (US 2018/0308755).
`
`Regarding claims 1 and 3, Tabuchi discloses an element chip manufacturing
`
`method, comprising: a preparation process of preparing a substrate (11 in Fig. 2B)
`
`([0025]) having a semiconductor layer and a mask (15, 17 or composite structure of 15
`
`and 17) ([0025]-[0026]), because (a) Applicants do not specifically claim what the mask
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`is formed of, and whatit does, and (b) the plurality of devices 15 and/or the passivation
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`film 17 function(s) as a mask for the subsequent manufacturing processes, the
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`semiconductorlayerincluding a plurality of element regions (regions under 15) and
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`a dividing region (one of crossing division lines 13) ([0025]) defining the element
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`regions, the mask covering the semiconductor layer in the element regions (regions
`
`under 15) and exposing the semiconductor layer (11) in the dividing region; a placement
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`process of placing the substrate on a stage (composite structure of 19 and 21 in Fig. 3B
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`or a structure in Fig. 4 on which substrate is placed) ([0030]-[0031]) provided in a
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`processing chamberof a plasma processing apparatus (apparatus shown in Fig. 4); and
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`an individualization process of forming a groove (11d in Fig. 5A) ([0041]) corresponding
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`to the dividing region in the semiconductor layer, with a plasma generated inside the
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`processing chamber ([0040]), and then dividing the substrate (11) into a plurality of
`
`element chips having the element regions, wherein in the individualization process, a
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`first process of forming a protective film at least on a bottom of the groove ([0041] and
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`

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`Application/Control Number: 17/455,678
`Art Unit: 2815
`
`Page 6
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`[0043]), with a first plasma (plasma formed by C4Fs) generated inside the processing
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`chamber, a second process of removing the protective film at the bottom ([0042]), with a
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`second plasma (plasma formed by SFs) generated inside the processing chamber,to
`
`expose the semiconductor layer, and a third process of removing the conductive
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`semiconductor layer ([0044]) exposed at the bottom of the groove, with a third plasma
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`(plasma formed by SFe) generated inside the processing chamber from a gas
`
`containing fluorine, while inherently allowing a reaction product between the
`
`semiconductor layer and the third plasma to accumulate on an upperportion of the
`
`groove, because (a) Applicants do not specifically claim what the reaction product refers
`
`to, and howlong the reaction product remains on the upper portion of the groove, and
`
`(o) therefore, a temporary accumulation of the reaction product would inherently occur
`
`on the upper portion of the groove; are sequentially repeated ([0041]), and in thefirst
`
`process, the reaction product inherently accumulated on the upperportion of the
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`groove is removed by applying a high-frequency powerto the stage (plasma etching or
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`cleaning process which requires RF power; [0042]-[0044]), because Applicants do not
`
`specifically claim how high the frequency should be to be referred to be “a high-
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`frequency power”.
`
`Tabuchi differs from the claimed invention by not showing that the substrate has
`
`a compound semiconductor layer, and the third plasma is generated inside the
`
`processing chamber from a gas containing at least one of chlorine and bromine (claim
`
`1), and the second plasma is generated fromagas containing at least one of chlorine
`
`and bromine (claim 3).
`
`

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`Application/Control Number: 17/455,678
`Art Unit: 2815
`
`Page 7
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`It would have been obvious to oneof ordinary skill in the art before the effective
`
`filing date of the claimed invention that the substrate can have a compound
`
`semiconductor layer, and the second and third plasma can be generated inside the
`
`processing chamberfrom a gas containing at least one of chlorine and bromine,
`
`because (a) the element chip manufacturing method disclosed by Tabuchi can be
`
`employed for forming GaAs- or GaN-based semiconductor element chips, which have
`
`been commonly formed on a compound semiconductor layer such as GaAs,InP, GaN,
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`AIN, InGaN and/or InAIN, (b) a chlorine or bromine gas has been commonly and
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`interchangeably employed with a fluorine-based gas disclosed by Tabuchi in a plasma
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`ashing, etching and/or cleaning process due to its well-known ashing, etching and
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`cleaning rates and chemical characteristics, and ease of controlling the chlorine or
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`bromine gas, and (c) it has been held to be within the general skill of a worker in the art
`
`fo select a known material on the basis of its sullability for the intencied use, In re
`
`Leshin, 125 USPQ 416.
`
`Regarding claims 2 and 4, Tabuchi further discloses that the first plasma (plasma
`
`formed by C4Fs) is generated froma gas containing fluorine and carbon (claim 2), and
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`the first process includes a first step and a second step following thefirst step, and the
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`high-frequency power (process including RF power) applied to the stagein thefirst step
`
`is larger than the high-frequency power applied to the stage in the second step, which is
`
`inherent because (a) Applicants do not specifically claim whatthe first and second step
`
`each refers to in terms of, for example, their durations, and whatthe differenceis
`
`between the high-frequency powerin the first step and the high-frequency powerin the
`
`second step, and (b) therefore, even a slight variation or fluctuation of the high-
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`

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`Application/Control Number: 17/455,678
`Art Unit: 2815
`
`Page 8
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`frequency power during the operation of the plasma apparatus would meetthe claim
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`limitation since the RF powerapplied to the plasma apparatus would inherently vary,
`
`albeit slightly, during the application of the first plasma since no electrical power can be
`
`perfectly constant all the time (claim 4).
`
`Conclusion
`
`The prior art made of record and notrelied upon is considered pertinent to
`
`applicant's disclosure.
`
`Okita et al. (US 2019/0221479)
`
`Arita et al. (US 11,289,428)
`
`Okita et al. (US 11,189,480)
`
`Okita et al. (US 2018/0012802)
`
`Okita et al. (US 10,497,622)
`
`Okita et al. (US 10,892,190)
`
`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 Automated Interview Request
`
`(AIR) at http:/Avwww.uspto.gov/interviewpractice.
`
`

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`Application/Control Number: 17/455,678
`Art Unit: 2815
`
`Page 9
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`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:/Awww.uspto.gov/patents/apply/patent-
`
`center for more information about Patent Center and
`
`https://www.uspto.gov/patents/docx for information aboutfiling in DOCX format. For
`
`additional questions, contact the Electronic Business Center (EBC) at 866-217-9197
`
`(toll-free).
`
`If you would like assistance from a USPTO Customer Service
`
`Representative, call 800-786-9199 (IN USA OR CANADA)or 571-272-1000.
`
`/JAY C KIM/
`Primary Examiner, Art Unit 2815
`
`/J.K./
`Primary Examiner, Art Unit 2815
`May 14, 2024
`
`