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 .
Response to Arguments
Applicant's arguments filed 7 November 2025 have been fully considered but they are not persuasive.
The claims of the instant application have not been further amended in response to the non-final rejection filed 13 August 2025. Applicant argues that the combination of Grote and Gaathon (as applied to instant claim 17) and the combination of Grote, Gaathon, and Mehta (as applied to instant claim 30) fails to teach or suggest each of the features recited by instant claims 17 and 30, respectively. Particularly, Applicant argues that Gaathon, which is relied upon for the teaching of step (d) in claim 17 (etching of the diamond substrate to produce structures having a plurality of shapes, wherein at least one of the shapes comprises one or more color centres) fails to teach the formation of color centres in the shapes etched into the diamond substrate. The Applicant notes that Gaathon teaches etching nanoposts in a diamond substrate (Gaathon, paragraph 0037), and then harvests them in the form of nanostructures and transfers them to a different substrate. The Applicant further notes that color centres can be implanted into the diamond structure or the harvested nanostructures before or after the harvesting. The Applicant argues that the initial diamond substrate is thus merely a source of the nanostructures, and the substrate which includes the color centres in its structures is not the same substrate that underwent structuring. However, this argument is not found to be persuasive. Whilst the Applicant is correct that, in Gaathon, the produced nanostructures are eventually transferred to a separate substrate, the broadest interpretation of the Applicant’s claim 17 require that the adhesion layer and the diamond substrate be etched through a structuring mask produced from the patterned resist layer, thereby structuring the diamond substrate by providing a structured surface with structures forming a plurality of shapes. The method of Gaathon provides a structuring mask, giving masked regions (111 in Fig. 1, refer to Gaathon paragraph 0036), and the exposed portion of the diamond substrate is vertically etched (Gaathon, paragraph 0037). Following the etching, the mask is removed and a plurality of nanoposts are formed on the original diamond substrate (Gaathon, paragraph 0039). The resulting nanoposts can be harvested to obtain nanostructures (Gaathon, paragraph 0040). However, Gaathon nonetheless teaches the method step of etching the diamond substrate to form a structured surface with structures forming a plurality of shapes. Gaathon further teaches that the nitrogen vacancy (NV) centers can be formed in the diamond substrate prior to the formation of the nanoposts (Gaathon, paragraph 0045). Thus, Gaathon teaches the method step (d) as recited by instant claim 17. Therefore, the combination of Grote and Gaathon renders obvious the full method recited by instant claim 17, even if Gaathon proceeds to perform further processing beyond step (d). Accordingly, Applicant’s argument in this regard is not found to be persuasive.
Applicant further argues that Grote and Gaathon are not analogous art. The Applicant specifically argues that both references relate broadly to the fabrication of diamond nanostructures, but concern distinct and non-overlapping technical fields (Grote relates to metalenses, Gaathon relates to probes). In response to applicant's argument that Grote and Gaathon are nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, the claimed invention is related to the structuring and/or processing of a diamond substrate (e.g. claim 17). The instant application does not provide much detail on the intended use of the diamond substrate outside of photonic applications (see paragraph 0005 of the instant application’s specification). The Applicant seemingly was concerned with the problem of controlling the shape of the geometric shape of the nanostructures and improving the micro- and nano-structuring of diamond substrates (see paragraphs 0005 and 0011 of the instant application’s specification). Grote and Gaathon are not from the same field of endeavor as the claimed invention, as noted above. However, Grote is pertinent to the problem the Applicant was concerned with, as Grote teaches structuring of a diamond substrate utilizing electron beam lithography (see Grote, last paragraph on page 2 and “Fabrication” section on page 5). Likewise, Gaathon is pertinent to the problem the Applicant was concerned with, as Gaathon teaches the use of electron-beam lithography to pattern the mask structure (Gaathon, paragraph 0033) and further proceeds to structure a diamond substrate through etching (Gaathon, paragraph 0037). Thus, Grote and Gaathon both provide teachings of structuring a diamond substrate, and thus one having ordinary skill in the art would have consulted these prior art references and applied their teachings when faced with the problem that the inventor was trying to solve. Refer to MPEP 2141.01(a) I. Therefore, this argument is not found to be persuasive.
Applicant’s arguments in regards to Mehta relate to Mehta not remedying the deficiencies of Grote and Gaathon. However, the Examiner rebuts the Applicant’s arguments in regards to Grote and Gaathon. Therefore, Applicant’s arguments with regards to Mehta are not considered to be persuasive, as Mehta is not relied upon for the alleged deficiencies raised by the Applicant.
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 33-35 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.
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.
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).
Regarding Claim 33, Grote discloses that 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.
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).
Conclusion
THIS ACTION IS MADE FINAL. 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.
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/JAYSON D COSGROVE/Examiner, Art Unit 1737
/JONATHAN JOHNSON/Supervisory Patent Examiner, Art Unit 1734