DETAILED ACTION
Election/Restrictions
A restriction requirement was mailed on 11/24/25.
Applicant’s election without traverse of Group A (claims 16-28, 29-31) in the reply filed on 1/16/26 is acknowledged. Applicant has canceled the nonelected claims 32-35.
Claim Objections
Claim 21 is objected to because the limitation “protective metal” lacks proper antecedent basis. The following changes should be made: “… selectively removing the layer of anodizable metal...”
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102, some of which 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.
Claim(s) 16, 17, 19, 28, and 29 is/are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by US 3,285,836 (“Maissel”).
Maissel teaches, for example:
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Maissel teaches:
16. A method of patterning a layer of superconductor material (“the metal to be selectively anodized”, see col 1 lines 60-62, which is “base metal 10… such as… aluminum”, see col 2 lines 13-14 and 49; see other materials in e.g. col 2 lines 57-66), comprising:
forming a mask (“masks, stencils, patterns or the like may be used to restrict the deposit of the masking metal”, see col 3 lines 1-6; not explicitly shown in Fig. 2) over the layer of superconductor material, the mask having at least 21one opening (this is clear from the use of a “mask, stencil, or pattern” that “restrict[s] the deposition” into the shape of 14, as shown in Fig. 2A);
depositing a layer of an anodizable metal (“different metal 14”, see col 2 line 49) in the at least one opening, over a portion of the layer of superconductor material (“different metal 14 in the areas where no anodization is desired”, see col 2 lines 49-50);
removing the mask (it is not present in Fig. 2A; thus it is clear that the mask, stencil, or pattern used to restrict the deposition of the masking material must be removed by the point shown in Fig. 2A); and
performing anodic oxidation, whereby the layer of anodizable metal protects the portion of the layer of the superconductor material from the anodic oxidation (see Fig. 2B, see e.g. col 3 lines 8-15; see also e.g. col 1 lines 60-62 and col 2 line 20-25 and 32-39);
wherein the superconductor material is aluminium (see e.g. col 2 lines 57-60).
17. The method according to claim 16, wherein the anodizable metal is titanium (see e.g. col 2 lines 57-62).
19. The method according to claim 17, further comprising, after performing the anodic oxidation, selectively removing the layer of the anodizable metal (see e.g. Fig. 2C).
28. The method according to claim 16, wherein:
the mask is formed by electron beam lithography, and/or
the layer of the anodizable metal is formed by evaporation (see e.g. col 3 lines 1-3), and/or
removing the mask comprises a lift-off process.
29. A method, comprising:
applying a titanium layer (see e.g. “different metal 14 in the areas where no anodization is desired”, see col 2 lines 49-50) to an aluminum layer (see e.g. “the metal to be selectively anodized”, see col 1 lines 60-62, which is “base metal 10… such as… aluminum”, see col 2 lines 13-14 and 49; see other materials in e.g. col 2 lines 57-66; col 2 lines 57-60) to define an exposed portion of the aluminum layer and an unexposed portion of the aluminum layer (see e.g. Fig. 2A); and
performing anodic oxidation (see e.g. Fig. 2B; see e.g. col 3 lines 8-15; see also e.g. col 1 lines 60-62 and col 2 line 20-25 and 32-39) of the exposed portion of the aluminum layer,
wherein the titanium layer protects the unexposed portion of the aluminum layer from the anodic oxidation (see e.g. col 3 lines 8-15; see also e.g. col 1 lines 60-62 and col 2 line 20-25 and 32-39; see e.g. Figs. 2B-2C).
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 of this title, 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) 18 and 30 is/are rejected under 35 U.S.C. 103 as being unpatentable over Maissel.
Re claims 18 and 30, Maissel teaches claims 17 and 29, as discussed above, and further would have suggested as obvious to one of ordinary skill in the art at the time of invention wherein the [layer of the anodizable metal, as per claim 18 / titanium as per claim 30] has a thickness of at least 5 nm (see col 3, lines 70-74).
One of ordinary skill in the art would have found it obvious to use the thicknesses disclosed in Maissel’s example with the broader disclosed embodiment wherein the materials are deposited onto Aluminum. It has been established that “the [obviousness] analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim” because the Office or “a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int’ Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). It is also well settled that a reference stands for all of the specific teachings thereof as well as the inferences one of ordinary skill in the art would have reasonably been expected to draw therefrom. See In re Fritch, 972 F.2d 1260, 1264-65 (Fed. Cir. 1992).
Applicant has not disclosed that the claimed size is for a particular unobvious purpose, produces an unexpected result, or is otherwise critical. It has been found that mere changes in the size of an object, lacking any convincing proof of criticality or unobviousness thereof, is not sufficient for patentability. See e.g. MPEP 2144.04; in re Rose, F.3d 459, 105 USPQ 237 (CCPA 1955); in re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976); Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984);
To overcome a prima facie case of obviousness, Applicant must show factual evidence that the particular range is critical or achieves unexpected results relative to the prior art range. See e.g. MPEP 716.02(b); In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Claim(s) 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Maissel in view of US 2017/0029958 A1 (“An”).
Maissel teaches claim 19, as discussed above, but not wherein the layer of the anodizable metal is removed by a fluorine dry etch. An teaches and/or would have suggested as obvious to one of ordinary skill in the art at the time of invention, in combination with Maissel wherein the layer of the anodizable metal is removed by a fluorine dry etch (see e.g. para 31-32).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add the invention of An to the invention of Maissel. The motivation to do so is that the combination produces the predictable results of using a known etchant to remove a known material (titanium) disclosed by Maissel, wherein the known etchant is disclosed with specific materials and amounts to be able to etch the material and its byproducts (see e.g. para 31-32).
Applicant has not disclosed that the claimed material is for a particular unobvious purpose, produces an unexpected result, or is otherwise critical, which are criteria that have been held to be necessary for material limitations to be prima facie unobvious. The claimed material is considered to be a "preferred" or "optimum" material out of a plurality of well known materials that a person of ordinary skill in the art at the time the invention was made would have found obvious to provide to the invention of the cited prior art reference, using routine experimentation and optimization of the invention. In re Leshin, 125 USPQ 416 (CCPA 1960).
Furthermore, the claimed material is an etchant for another (unclaimed) material, and it is well known in the art that etchants are chosen in order to be selective for the (unclaimed) material (see e.g. Maissel col 3 lines 19-25). Because the specific to-be-etched material has not been claimed, the fluorine dry etch is not unobvious.
Claim(s) 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Maissel in view of US 2016/0148818 A1 (“Dobashi”).
Maissel teaches claim 19, as discussed above, but not after selectively removing the layer of anodizable metal, cleaning a resulting workpiece by a wet hydrogen fluoride dip. Dobashi teaches and/or would have suggested as obvious to one of ordinary skill in the art at the time of invention, in combination with Maissel after selectively removing the layer of anodizable metal, cleaning a resulting workpiece by a wet hydrogen fluoride dip (see e.g. para 5).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add the invention of Dobashi to the invention of Maissel. The motivation to do so is that the combination produces the predictable results of fully removing the anodizable metal such and any oxide thereof (e.g. if titanium is used as the oxidizable metal, HF is known to remove titanium oxide, see e.g. para 5).
Claim(s) 22-24 is/are rejected under 35 U.S.C. 103 as being unpatentable US 2017/0116542 A1 (“Shim”) in view of Maissel.
Re claims 22-24, Shim teaches a layer of superconductor material (e.g. aluminum) is arranged on a semiconductor component (e.g. InAs nanowire bridge 256, perhaps combined with superconductors 252 and 254) (claim 22), wherein the semiconductor component comprises a material of formula 1: InAsxSb1-x (Formula 1) wherein x is in a range 0 to 1 (InAs meets the formula with x = 0, see para 47) (claim 23), or wherein the semiconductor component comprises indium arsenide (see para 47) (claim 24).
Shim does not teach a method of patterning the layer of superconductor material, comprising: forming a mask over the layer of superconductor material, the mask having at least one opening; depositing a layer of an anodizable metal in the at least one opening, over a portion of the layer of superconductor material; removing the mask; and performing anodic oxidation, whereby the layer of anodizable metal protects the portion of the layer of the superconductor material from the anodic oxidation.
Maissel teaches and/or would have suggested as obvious to one of ordinary skill in the art at the time of invention, in combination with Shim a method of patterning the layer of superconductor material (“the metal to be selectively anodized”, see col 1 lines 60-62, which is “base metal 10… such as… aluminum”, see col 2 lines 13-14 and 49; see other materials in e.g. col 2 lines 57-66), comprising: forming a mask (“masks, stencils, patterns or the like may be used to restrict the deposit of the masking metal”, see col 3 lines 1-6; not explicitly shown in Fig. 2) over the layer of superconductor material, the mask having at least one opening (this is clear from the use of a “mask, stencil, or pattern” that “restrict[s] the deposition” into the shape of 14, as shown in Fig. 2A); depositing a layer of an anodizable metal (“different metal 14”, see col 2 line 49) in the at least one opening, over a portion of the layer of superconductor material (“different metal 14 in the areas where no anodization is desired”, see col 2 lines 49-50); removing the mask (it is not present in Fig. 2A; thus it is clear that the mask, stencil, or pattern used to restrict the deposition of the masking material must be removed by the point shown in Fig. 2A); and performing anodic oxidation, whereby the layer of anodizable metal protects the portion of the layer of the superconductor material from the anodic oxidation (see Fig. 2B, see e.g. col 3 lines 8-15; see also e.g. col 1 lines 60-62 and col 2 line 20-25 and 32-39), wherein the superconductor material is aluminium (see e.g. col 2 lines 57-60).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add the invention of Maissel to the invention of Shim. The motivation to do so is that the combination produces the predictable results of etching away aluminum by Maissel’s method, which results in selective removal of the aluminum without any creep thereof (see e.g. col 1 line 66 – col 2 line 6) in a process that has great precision in the desired resultant structure (see e.g. col 1 lines 11-13).
Re claim 31, Shim teaches fabricating a semiconductor- superconductor hybrid device on an aluminum layer (see e.g. para 47, wherein a physical qubit comprises a InAs bridge nanowire 256 formed on Al superconductors 252 and 254, wherein the InAs is coated with Al that is etched away).
Shim does not teach a method of patterning the layer of superconductor material, comprising: forming a mask over the layer of superconductor material, the mask having at least one opening; depositing a layer of an anodizable metal in the at least one opening, over a portion of the layer of superconductor material; removing the mask; and performing anodic oxidation, whereby the layer of anodizable metal protects the portion of the layer of the superconductor material from the anodic oxidation.
Maissel teaches and/or would have suggested as obvious to one of ordinary skill in the art at the time of invention, in combination with Shim a method of patterning the layer of superconductor material (“the metal to be selectively anodized”, see col 1 lines 60-62, which is “base metal 10… such as… aluminum”, see col 2 lines 13-14 and 49; see other materials in e.g. col 2 lines 57-66), comprising: forming a mask (“masks, stencils, patterns or the like may be used to restrict the deposit of the masking metal”, see col 3 lines 1-6; not explicitly shown in Fig. 2) over the layer of superconductor material, the mask having at least one opening (this is clear from the use of a “mask, stencil, or pattern” that “restrict[s] the deposition” into the shape of 14, as shown in Fig. 2A); depositing a layer of an anodizable metal (“different metal 14”, see col 2 line 49) in the at least one opening, over a portion of the layer of superconductor material (“different metal 14 in the areas where no anodization is desired”, see col 2 lines 49-50); removing the mask (it is not present in Fig. 2A; thus it is clear that the mask, stencil, or pattern used to restrict the deposition of the masking material must be removed by the point shown in Fig. 2A); and performing anodic oxidation, whereby the layer of anodizable metal protects the portion of the layer of the superconductor material from the anodic oxidation (see Fig. 2B, see e.g. col 3 lines 8-15; see also e.g. col 1 lines 60-62 and col 2 line 20-25 and 32-39), wherein the superconductor material is aluminium (see e.g. col 2 lines 57-60).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add the invention of Maissel to the invention of Shim. The motivation to do so is that the combination produces the predictable results of etching away aluminum by Maissel’s method, which results in selective removal of the aluminum without any creep thereof (see e.g. col 1 line 66 – col 2 line 6) in a process that has great precision in the desired resultant structure (see e.g. col 1 lines 11-13).
Claim(s) 25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Maissel in view of US 2018/0002825 A1 (“Balaraju”).
Maissel teaches claim 16, as discussed above, but not wherein tartaric acid is used as an oxidant for the anodic oxidation.
Balaraju teaches and/or would have suggested as obvious to one of ordinary skill in the art at the time of invention, in combination with Maissel wherein tartaric acid is used as an oxidant for the anodic oxidation (see e.g. para 6).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add the invention of Balaraju to the invention of Maissel. The motivation to do so is that the combination produces the predictable results of using tartaric acid in the anodization bath in order to improve the fatigue property of the anodized oxide layer (see e.g. para 6).
Allowable Subject Matter
Claim(s) 26-27 is/are 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.
The following is a statement of reasons for the indication of allowable subject matter: the prior art does not explicitly teach, or reasonably suggest as obvious to one of ordinary skill in the art, an invention having all of the limitations of claim 26, including: before forming the mask, thinning the layer of superconductor material by partial oxidation, and wherein, after the thinning, the layer of superconductor material has a thickness of less than or equal to 1 nm.
The other claims each depend from one of these claims, and each would be allowable for the same reasons as the claim from which it depends.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
Conclusion / Prior Art
The prior art made of record, because it is considered pertinent to applicant's disclosure, but which is not relied upon specifically in the rejections above, is listed on the Notice of References Cited.
Conclusion / Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kevin Parendo who can be contacted by phone at (571) 270-5030 or by direct fax at (571) 270-6030. The examiner can normally be reached Monday-Friday from 9 am to 4 pm ET.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Billy Kraig, can be reached at (571) 272-8660. The fax number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Kevin Parendo/Primary Examiner, Art Unit 2896