DETAILED ACTION
Notice of Pre-AIA 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 .
Information Disclosure Statement
Information disclosure statements (IDS) were submitted on 8/5/25 and 2/4/26. Accordingly, the information disclosure statements are being considered by the examiner and initialed copies of the forms are attached to this correspondence.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 4-7, 11, and 17 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding Claim 1, the presentation of “a first material” with no limitation on the material is not disclosed in the application as filed and thus the claim contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art.
Claims 4-7, 11, and 17 do not resolve the issue of the disclosure of the parent claim, Claim 1.
Claims 1, 4-7, 11, and 17 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for certain combinations of elements, does not reasonably provide enablement for all combinations possible under the present claim language. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the invention commensurate in scope with these claims.
Regarding Claims 1, 4-7, 11, and 17, the Examiner notes the claims fail the Wands factor evaluation for undue experimentation required – it does not appear all combinations of listed materials for first, second and third layers arrive at a structure capable of performing the functions required by the claim (for at least one specific example, it is unknown how a first and second dielectric layer separated by air are capable of emitting light). The Examiner notes due to the undue experimentation required, the entire scope of the claims is not enabled and the Examiner recommends amending the claims to require specific structures which are in definitively supported by the specification and drawings as filed. The Examiner notes Applicant has indicated the most recent amended addresses these issues, however the Examiner notes the breadth of the current claim still allows for the choice of multiple combinations of materials for the first, second and third layers which do not appear to be able to function as required by the claim (first layer = dielectric, second layer = dielectric, third layer = air – how can this device emit light when a power supply generates a bias voltage across those specific materials?).
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification 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-AIA ), 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, 4-7, 11, and 17 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 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-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding Claims 1, 4-7, 11, and 17, the language “a power supply generating a bias voltage, said power supply coupled to said first layer and said second layer to provide the voltage to said first layer and said second layer, wherein said bias voltage triggers charge carrier tunneling across said junction to induce light creation, whereas such light can be a photon, a light package comprising surface plasmon polariton or a combination thereof including single or plurality of light packages, whereas in the single light package case a quantum source is created” is functional language; however it is unclear what specific structure accomplishes the stated function. The Examiner notes a vice of functional claiming occurs "when the inventor is painstaking when he recites what has already been seen, and then uses conveniently functional language at the exact point of novelty") (quoting General Elec. Co. v. Wabash Appliance Corp., 304 U.S. 364, 371 (1938)); see also United Carbon Co. v. Binney & Smith Co., 317 U.S. 228, 234 (1942). In the present case, any specific structure required to make the stated function happen outside of that already claimed is not specifically identified by the Applicant, therefore the use of functional language in the claims fails "to provide a clear-cut indication of the scope of the subject matter embraced by the claim" and is thus indefinite. In re Swinehart, 439 F.2d 210, 213 (CCPA 1971). See MPEP §2173.05(g). The Examiner further notes it is unclear whether all combinations of different claim elements are capable of performing the function (ie two dielectric layers with an air gap between). For purposes of compact prosecution, the Examiner will interpret the language as being met if all previously established structural features are present in the prior art. The amended language of the claims does not provide any additional structure as to what the “power supply” physically is – instead it further limits the function of the element which still lacks the physical structure as identified in the rejection above.
Regarding Claims 1 and 17, the terms “high concentration” in Claim 1 and “constant thickness” on Claim 17 are relative terms which render the claim indefinite. The terms “high concentration” and “constant thickness” are not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Regarding Claim 5, the limitation "said dielectric layer" in line 1 of the claim has insufficient antecedent basis in the claim. For purposes of compact prosecution, the language “said dielectric layer” will be interpreted to be any of the first, second, or third layer.
Regarding Claim 6, the limitation "said dielectric layer" and “said metal layer” in line 1 of the claim has insufficient antecedent basis in the claim. For purposes of compact prosecution, the language will be interpreted to be any of the first, second, or third layer.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 4-7, 11, and 17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Niroui et al. (US Patent Application Publication No. 2018/0323335) (“Niroui”).
Regarding Claim 1, Niroui teaches a Light Emitting Tunnel Junction (LETJ) comprising: a first layer (Figure 1, item 110); a second layer (Figure 1, item 120); a third layer (Figure 1, item 130) disposed between said first layer and said second layer to form a junction between said first layer and said second layers (see Figure 1, junctions 112 and 122); wherein said first layer is comprised of any one of the following materials and/or heterojunctions: metal, semiconductor, oxide, dielectric, semi-metal, topological insulator, Weyl fermion material, or any heterojunction thereof (¶0064); wherein said second layer is comprised of any one of the following materials and/or heterojunctions: metal, semiconductor, oxide, dielectric, semi-metal, topological insulator, Weyl fermion material, or any heterojunction thereof (¶0064), whereas said third layer comprises any one of the following materials: semiconductor, oxide, dielectric, air, free-space, gap (¶0069); and a power supply generating a bias voltage, said power supply coupled to to said first layer and said second layer to provide the voltage to said first layer and said second layer, wherein said bias voltage triggers charge carrier tunneling across said junction to induce light creation, whereas such light can be a photon, a light package comprising surface plasmon polariton or a combination thereof including single or plurality of light packages, whereas in the single light package case a quantum source is created (¶0044).
Regarding Claim 4, Niroui further teaches said first layer has a first layer top surface and a first layer bottom surface and said second layer has a second layer top surface and a second layer bottom surface, and said bias voltage is applied to the first layer top surface and the second layer bottom surface (see Figure 1).
Regarding Claim 5, Niroui further teaches said dielectric layer of the first, second, or third layer has a dielectric top surface directly contacting the first layer bottom surface, and said dielectric layer has a dielectric bottom surface directly contacting the second layer top surface (see Figure 1 and ¶0079).
Regarding Claim 6, Niroui further teaches said dielectric layer of the first, second, or third layer forms an electrically biased barrier between said first metal or semiconductor layer and said second metal or semiconductor layer, whereby an electron tunneling from said first layer to said second layer releases said light creation (see Figure 1 and ¶0044).
Regarding Claim 7, Niroui further teaches a material cladding layer or layers, whereas said cladding layer or layers comprises material having a single layer or multi-material layers (¶0069).
Regarding Claim 11, Niroui further teaches a fourth metal or semiconductor layer having a fourth layer top surface and a fourth layer bottom surface; a fifth dielectric layer having a fifth layer top surface directly in contact with the fourth layer bottom surface, and a fifth layer bottom surface; and a sixth metal or semiconductor layer having a sixth layer top surface directly in contact with the fifth layer bottom surface, and a sixth layer bottom surface, whereby an added bias voltage is selectively applied to induce a photon or phonon emission from the fourth layer (see Figure 10, note multiple different layers depicted in different formations – see also ¶0086+).
Regarding Claim 17, Niroui further teaches the junction has a constant thickness (Figure 1, item 130).
Response to Arguments
Applicant's arguments filed 1/12/26 have been fully considered but they are not persuasive.
Regarding Applicant’s arguments directed to the 35 USC 112(a) rejections above, the Examiner notes the claims fail the Wands factor evaluation for undue experimentation required – it does not appear all combinations of listed materials for first, second and third layers arrive at a structure capable of performing the functions required by the claim (for at least one specific example, it is unknown how a first and second dielectric layer separated by air are capable of emitting light – a combination choice encompassed by the current language). The Examiner notes due to the undue experimentation required, the entire scope of the claims is not enabled and the Examiner recommends amending the claims to require specific structures which are in definitively supported by the specification and drawings as filed. The Examiner notes Applicant has indicated the most recent amended addresses these issues, however the Examiner notes the breadth of the current claim still allows for the choice of multiple combinations of materials for the first, second and third layers which do not appear to be able to function as required by the claim (first layer = dielectric, second layer = dielectric, third layer = air – how can this device emit light when a power supply generates a bias voltage across those specific materials?) The Examiner recommends claiming combinations of materials which can provide the function required by the functional language of the claim. The Examiner notes broadening the claim language to now provide no limitation at all on the “first material” of the layers does not resolve this issue and instead creates a written description issue as there is no disclosure of the first material being present in the device with no limitation as to the material. Additionally, this language suffers from the same problems as previous attempts – only specific materials are disclosed to perform in the device and the claims must be limited to that scope of disclosure.
Conclusion
Applicant's amendment 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 event a 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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARK W TORNOW whose telephone number is (571)270-7534. The examiner can normally be reached M-Th 6:30-4:30 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Matthew Landau can be reached on 571-272-1731. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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MARK W. TORNOW
Primary Examiner
Art Unit 2891
/MARK W TORNOW/Primary Examiner, Art Unit 2891