DETAILED ACTION
Election/Restrictions
Applicant’s election without traverse to the restriction requirement mailed on 11/24/25 of Group A, in the reply filed on 1/16/26 was acknowledged in a previous office action.
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) 29-30 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 3,285,836 (“Maissel”) in view of US 4,456,506 (“Stein”).
Maissel teaches, for example:
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Maissel teaches and/or would have suggested as obvious to one of ordinary skill in the art at the time of invention:
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).
Maissel does not teach wherein the titanium layer protects… “while the exposed portion of the aluminum layer is oxidized through its full thickness”.
Stein 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 titanium layer protects… “while the exposed portion of the aluminum layer is oxidized through its full thickness” (see e.g. col 7, lines 25-33, wherein anodizing “completely through the thickness of layer 308” is performed).
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 Stein to the invention of Maissel. The motivation to do so is that the combination produces the predictable results of completely patterning through the entire contact layer to leave a desired pattern (see e.g. col 1, lines 20-47, col 2, line 63 – col 3, line 7, col 7, lines 25-33, etc.).
Re claim 30, Maissel teaches and/or would have suggested as obvious to one of ordinary skill in the art at the time of invention wherein the titanium layer 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) 31 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2017/0116542 A1 (“Shim”) in view of US 3,285,836 (“Maissel”) in view of US 4,456,506 (“Stein”).
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).
Shin and Maissel do not teach wherein the titanium layer protects… “while the exposed portion of the aluminum layer is oxidized through its full thickness”.
Stein 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 titanium layer protects… “while the exposed portion of the aluminum layer is oxidized through its full thickness” (see e.g. col 7, lines 25-33, wherein anodizing “completely through the thickness of layer 308” is performed).
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 Stein to the invention of Shin and Maissel. The motivation to do so is that the combination produces the predictable results of completely patterning through the entire contact layer to leave a desired pattern (see e.g. col 1, lines 20-47, col 2, line 63 – col 3, line 7, col 7, lines 25-33, etc.).
Claim(s) 39 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 3,285,836 (“Maissel”) in view of US 4,456,506 (“Stein”) and US 2017/0116542 A1 (“Shim”).
Maissel and Stein teach claim 29, as discussed above, but do not explicitly teach fabricating a chip comprising the titanium layer and the aluminum layer.
Shim 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 and Stein fabricating a chip comprising the titanium layer and the aluminum layer (see e.g. para 90).
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 Shim to the invention of Maissel and Stein. The motivation to do so is that the combination produces the predictable results of using the patterned superconductors in a chip usable in various types of computers (see e.g. para 90; para 3-8).
Allowable Subject Matter
Claim(s) 16-25, 27-28, and 36-38 is/are allowed. The following is an examiner’s statement of reasons for allowance: 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 16, including:
thinning the layer of superconductor material by partial oxidation, wherein, after the thinning, the layer of superconductor material has a thickness of less than or equal to 1 nm;
subsequent to the thinning, 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;
performing anodic oxidation, whereby the layer of anodizable metal protects the portion of the layer of the superconductor material from the anodic oxidation;
wherein the superconductor material is aluminium.
The other allowed claims each depend from one of these claims, and each is 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.”
Claim(s) 40 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 40, including:
applying a titanium layer to an aluminum layer; and
performing anodic oxidation of the exposed portion of the aluminum layer,
wherein the titanium layer protects the unexposed portion of the aluminum layer from the anodic oxidation, while the exposed portion of the aluminum layer is oxidized through its full thickness,
further comprising, prior to applying the titanium layer: thinning the aluminum layer by partial oxidation to the full thickness which is 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.”
Response to Arguments
Applicant's arguments with respect to the pending claims have been considered but are moot in view of the new ground(s) of rejection.
Conclusion
Conclusion / Finality
Applicant's amendment changed the scope of the claims and 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 extension fee 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 date of this final action.
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
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