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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 9 July 2026 has been entered.
Response to Arguments
Applicant’s addition of claim 36 and cancelation of claim 33 is acknowledged.
Applicant’s arguments filed 9 July 2026 have been fully considered by they are not persuasive.
Applicant has amended independent claim 17 to recite that the diamond substrate comprises one or more color centers positioned adjacent to the face that is structured and that the structures comprise structures having a height of at least 200 nm and of not more than 500 nm, or of not more than 10,000 nm. The second limitation added to claim 17 is indefinite, as explained below. Applicant argues that the previously cited prior art (Grote and Gaathon) fails to disclose or suggest the claimed invention as amended. In particular, Applicant argues that the rejection should be withdrawn because Grote and Gaathon fail to render obvious color centers adjacent to the face that is structured, the proposed combination of Grote and Gaathon requires modifications contrary to the teachings of Grote, and the technical problem addressed by the claimed invention is not recognized by the cited prior art. The Examiner will address the Applicant’s arguments individually in the following paragraphs.
Applicant’s first primary argument is that Grote and Gaathon fail to render obvious color centers adjacent to the face that is structured. Applicant supports this argument by pointing to the instant application’s specification that shows that shallowly implanted (10-15 nm deep) color centers produce advantageous effects (refer to paragraph 0070 of the instant application’s specification). The Examiner acknowledges this distinction in the specification. However, the Applicant does not define the term “adjacent” in the instant application’s specification. The specification only uses the word “adjacent” one time, in paragraph 0017. There is a lack of any further definition of adjacent, and thus for examination purposes the term “adjacent” must be given its plain meaning. Refer to MPEP 2111.01 I. The plain meaning of adjacent would refer to two objects positioned next to each other. It is the Examiner’s opinion that a distance of 20 μm, which is the depth of the NV center disclosed by Grote, with no intervening structure between the NV center and the surface is sufficiently proximate to each other to satisfy the plain meaning of “adjacent”. The Examiner does not contest the other aspects of the Applicant’s argument, such as the argument that shifting the location of the NV centers closer to the surface is taught away from by Grote and/or would ruin the intended function of Grote’s invention. However, as claim 17 (per the most recent amendment) does not specify a particular definition of “adjacent” to mean a particular distance from the surface, Applicant’s argument that Grote and Gaathon does not render this feature obvious is not found to be persuasive.
Applicant’s second argument is that the proposed combination of Grote and Gaathon requires modifications that are contrary to the teaching of the art. Particularly, Applicant argues that to arrive at the claimed invention, modifications such as moving the NV center of Grote closer to the surface, ensuring the NV is within the etched structures rather than below them, and redesigning the metalens photo-collection system such that the effect is not dependent on the focal point of the resulting structure must be performed. In regards in instant claim 17, the Examiner does not agree that the NV center of Grote would need to be moved, as explained above. The other two aspects argued by the Applicant are thus moot, because the NV center does not need to be moved to meet the limitations of claim 17, as currently presented. Applicant further argues that even if a person having ordinary skill in the art (PHOSITA) were to combine Grote and Gaathon as proposed, the resulting combination would not arrive at the claimed invention. However, the combination proposed (in regards to claim 17) is forming a structured surface with structures that form a plurality of shapes and having one or more color centers (refer to paragraph 10 of the office action filed 10 March 2026). The proposed combination does not require the NV center depths taught by Gaathon, but rather just the technique applied by Gaathon. Thus, the combination would not prevent Grote’s metalens from functioning as intended. Therefore, this argument is not considered persuasive.
Applicant’s third argument is that the technical problems addressed by the claimed invention are not recognized by the cited art. The rationale used to make an obviousness rejection under 35 U.S.C. 103 may be different from the Applicant’s rationale. Refer to MPEP 2144 IV. The cited art provides teaching and motivation to combine the elements of Grote and Gaathon, as previously outlined in prior office actions, thus yielding the claimed invention. The fact that the same rationale and/or benefits of the claimed invention are not disclosed by the prior art is immaterial to the legitimacy of the rejection, as different purposes or solutions to a different problem may yield the same invention. In other words, discovering additional advantages or latent properties not recognized in the prior art does not rebut prima facie obviousness (MPEP 2145 II.). The question of a shared technical problem is relevant for the purposes of determining analogous art. However, the cited art in this case is analogous because both previously cited prior art references pertain to processing and structuring of diamond substrates. Thus, the fact that the cited art does not recognize the technical problems addressed by the claim invention is not a persuasive argument to overcome the previous rejection under 35 U.S.C. 103. Therefore, this argument is not considered persuasive.
With the above considered, Applicant’s arguments against the cited art is not considered persuasive. Therefore, the previous rejection is not withdrawn at this time.
Claim Rejections - 35 USC § 112
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 17-32 and 34-36 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 17 recites the broad recitation “…the structures comprises structures with a height…of not more than 10,000 nm”, and the claim also recites “…the structures comprises structures with a height of at least 200 nm and of not more than 500 nm…” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
In regards to claim 17, there are two issues of indefiniteness. First, there are two upper limits of the height of the structures (500 nm and 10,000 nm). Second, the language used is unclear. For instance, one embodiment of the claim is clear (that is, the height of the structure is at least 200 nm and at most 500 nm), but the other embodiment is unclear (the height is at most 10,000 nm, but it is unclear if there is a minimum height, or if the minimum height is only relevant to the embodiment wherein the maximum height is 500 nm). Therefore, the claim is indefinite both because it recites a broad range and a narrower range within the same claim, as well as because the way the claim is worded is unclear. Claims 18-32 and 34-36 are rejected under 35 U.S.C. 112(b) due to these claims depending from claim 17, thus making these claims indefinite as well.
For the purposes of examining the claim, the Examiner will interpret the claim to mean that the height of the structures must be between 200 nm and 10,000 nm.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all 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 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 manner in which the invention was made.
Claim(s) 17-29 and 34-35 are rejected under 35 U.S.C. 103 as being unpatentable over Grote, Richard R., et al. "Imaging a nitrogen-vacancy center with a diamond immersion metalens." (hereby referred to as Grote) in view of US 20160052789 A1 (hereby referred to as Gaathon).
Regarding Claims 17 and 34, Grote discloses the imaging of a nitrogen-vacancy center with a diamond metalens. The metalens was fabricated using a high-pressure/high-temperature (HPHT) single-crystal diamond substrate (see page 5, Fabrication section). The diamond substrate had a silicon oxide (SiO2) adhesion layer deposited upon it, followed by the application of a resist layer via spin-coating (page 5, Fabrication section). The adhesion layer is thus substantially non-metallic. The resist layer is exposed to produce a pattern, which was subsequently developed to remove portions of the resist layer (page 5, Fabrication section). Following development, reactive ion etching is performed to transfer the resist pattern into the diamond substrate (page 5, Fabrication section). The metalens disclosed by Grote possesses a nitrogen-vacancy (NV) center in the diamond substrate, present about 20 μm below the metalens (which is fabricated on the surface of the diamond substrate) (see the last paragraph in the first column of page 2). The NV center corresponds to the color center claimed by instant claim 1. The structures formed have a height of approximately 1 μm, which is equivalent to 1,000 nm. See the pillar structure shown in Fig. 1b shown on page 2 of Grote.
However, Grote is silent in regards to the etching providing a structured surface with structures forming a plurality of shapes, wherein at least one of the plurality of shapes comprises one or more color centers. Gaathon teaches techniques for fabricating diamond nanostructures. The method taught by Gaathon involves applying a hard mask to a surface of a diamond substrate (Gaathon, paragraph 0028), and subjecting the exposed regions of the diamond substrate to an etching process that forms a plurality of nanoposts (Gaathon, paragraph 0037). The nanoposts are removed via mechanical shaving, which forms a diamond substrate having a structured surface having a plurality of shapes (Gaathon, paragraph 0040; see also Fig. 1 and 3 of Gaathon). Gaathon further teaches that atomic defects, including color centers, can be created in the diamond nanostructures (Gaathon, paragraph 0042). The atomic defects may be nitrogen-vacancy (NV) centers (Gaathon, paragraph 0003 and 0044). Thus, at least one of the plurality of shapes comprises one or more color centers. The structures formed have a height of 150 ± 75 nm (in other words, 75 to 225 nm) (Gaathon, paragraph 0054).
Grote and Gaathon are analogous art because both references pertain to the processing and structuring of diamond substrates. It would have been obvious to one having ordinary skill in the art before the filing date of the instant application to provide a structured surface with structures forming a plurality of shapes, wherein at least one of the plurality of shapes comprises one or more color centers, as taught by Gaathon, in the method disclosed by Grote because the formation of NV centers in a structured diamond can yield improvements in the performance of the structured material, particularly in sensing applications (Gaathon, paragraph 0050).
Regarding Claims 18-20 and 35, Grote discloses that the adhesion layer comprises silicon oxide (SiO-2), which is a non-metallic compound (page 5, Fabrication section). Grote discloses that the adhesion layer is deposited by electron beam evaporation (page 5, Fabrication section), which is known in the art as a physical vapor deposition (PVD) technique. Grote discloses that the adhesion layer is applied over the surface of the substrate (page 5, Fabrication section). It is implied, due to the lack of further disclosure in regards to the adhesion layer’s application process, that the adhesion layer uniformly covers the surface of the substrate.
Regarding Claim 21, Grote discloses that the adhesion layer is 7 nm thick (page 5, Fabrication section), thus satisfying a thickness of at least 1 nm and not more than 200 nm.
Regarding Claims 22-24, Grote discloses that following development of the resist layer, the adhesion layer is etched with CF4 reactive ion etching, followed by an O2 reactive ion etch to transfer the resist pattern to the diamond substrate (page 5, Fabrication section).
Regarding Claims 25-27, Grote discloses that the resist layer is written using an electron beam lithography tool and that the resist layer is made of hydrogen silsesquioxane (HSQ) (page 5, Fabrication section).
Regarding Claims 28-29, Grote further discloses that the pattern resist layer, which acts as a structuring hardmask, is removed using buffered oxide etch (page 5, Fabrication section), which is known in the art to be a wet etchant. The final metalens structure disclosed by Grote has the resist layer and the adhesion layer removed (page 5, Fabrication section).
Claim(s) 30-32 are rejected under 35 U.S.C. 103 as being unpatentable over Grote, Richard R., et al. "Imaging a nitrogen-vacancy center with a diamond immersion metalens." (hereby referred to as Grote) in view of US 20160052789 A1 (hereby referred to as Gaathon) as applied to claim 17 above, and further in view of US 2014/0235055 A1 (hereby referred to as Mehta).
Regarding Claims 30-32, the combination of Grote and Gaathon renders obvious a process of structuring a diamond substrate according to instant claim 17, as discussed above. Grote further discloses that the pattern resist layer, which acts as a structuring hardmask, is removed using buffered oxide etch (page 5, Fabrication section), which is known in the art to be a wet etchant.
However, neither Grote nor Gaathon does not disclose that the adhesion layer remains on the substrate, nor do these references teach or disclose an additional processing step in which further structures are provided on the diamond substrate. Mehta teaches a method for fabricating a semiconductor integrated circuit with a lithographic etching process. The method taught by Mehta includes steps of applying photosensitive layers (i.e. photoresist layers) over a processing layer (such as a substrate) to be etched (Mehta, paragraph 0012). Mehta acknowledges the presence of adhesion layers, but omits them from the processing explanation for the sake of simplicity (Mehta, paragraph 0012). The process taught by Mehta applies a first photoresist over the process layer, patterns the first photoresist layer via radiation exposure, and then develops the patterned photoresist layer (Mehta, paragraph 0016). Following development, the patterned resist layer is used as an etch mask to etch the process layer to transfer the pattern (Mehta, paragraph 0016). Following pattern transfer, the first photoresist layer is removed and a second photoresist layer is applied over the process layer (Mehta, paragraph 0016). The patterning and etching processes performed on the first photoresist layer are then replicated on the second photoresist layer to pattern the process layer with a second pattern (Mehta, paragraph 0016).
Grote, Gaathon, and Mehta are analogous art because each reference pertains to methods of processing a substrate. It would have been obvious to one having ordinary skill in the art before the filing date of the instant application to apply a second resist layer, pattern the second resist layer, and transfer the pattern of the second resist layer onto the substrate, as taught by Mehta, in the substrate processing method obtained by combining the teachings of Grote and Gaathon because additional patterning steps allow for more intricate structures to be produced on the substrate, allowing for the substrate to be used in complicated applications such as integrated circuits (IC) (Mehta, paragraph 0012). Furthermore, the additional processing may allow for good image contrast to be achieved (Mehta, paragraph 0016) and patterns that cannot be reliably produced with conventional lithographic techniques may be obtained (Mehta, paragraph 0017).
Allowable Subject Matter
Claim 36 is presently rejected under 35 U.S.C. 112(b) due to depending from an indefinite claim. Should the Applicant amend independent claim 17 to remove the indefiniteness of the claim (and thus overcome the rejection of claims 17-32 and 34-36 under 35 U.S.C. 112(b)), claim 36 would be objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. Independent claim 17 requires the deposition of an adhesion layer on a diamond substrate, coating a resist layer on the adhesion layer, removing parts of the resist layer to expose parts of the adhesion layer and forming a structuring mask, etching the adhesion layer and diamond substrate through the structuring mask to structure the diamond substrate, such that structures comprise one or more color centers and have a specified height. The current rejection of claim 17 is made under 35 U.S.C. 103 as being unpatentable over Grote in view of Gaathon. However, the depth of the nitrogen vacancy (NV) center (i.e. a color center) in the prior art is 20 μm below the surface. The cited art provides no teaching or motivation to position the NV center at a depth of 10 to 15 nm below the surface. In fact, positioning the NV center at such a depth is discouraged by Grote’s disclosure, due to this positioning changing the focal length of Grote’s metalens (and thereby impairing the function of Grote’s invention). Furthermore, Grote notes several disadvantages of this positioning of the NV center. Thus, one having ordinary skill in the art would not find it obvious to modify Grote’s invention to obtain the invention according to instant claim 36. The prior art as a whole fails to make the invention according to instant claim 36 prima facie obvious.
Conclusion
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/JAYSON D COSGROVE/Examiner, Art Unit 1737
/JONATHAN JOHNSON/Supervisory Patent Examiner, Art Unit 1734
