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 .
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. GB1712639.2, filed on 08/07/2017.
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Status of the Claims
Claims 40-57 and 59 are amended. Claim 58 is cancelled. Therefore, claims 40-57 and 59 are currently pending and have been considered below.
Response to Amendment
The amendment filed on June 09, 2025 has been entered.
Response to Arguments
Applicant’s arguments, see Pages 5-8, filed 06/09/2025, with respect to the rejection(s) of claim(s) 40-57 and 59 under U.S.C. 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of applicant’s amendment and prior art applied differently regarding regions within a depth of more than 100 micrometers are fabricated by wavefront shaped by adaptive optics.
Examiner notes that due to the substantial change of independent claim 40 becoming dependent upon claim 59, the relationship between prior art references has been disrupted. Therefore, although the substance of the rejection of dependent claims remains similar to the Non-Final filed on 02/10/2025, claims and references have been shifted.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim 59, 41-43, 48-49, and 52-53 is rejected under 35 U.S.C. 103 as being unpatentable over Sohn et al. (US 20070091977 A1, hereinafter Sohn) and Park et al. (US 9281244 B1, hereinafter Park) and Booth et al. (WO 2017006092 A1, hereinafter Booth).
Regarding claim 59, Sohn discloses a sample comprising a plurality of spatially separated laser-modified regions, each spatially separated laser-modified region having a size of less than 1 micrometre in at least one dimension (Fig. 8, where a spacing of 1 micrometer is shown at the bottom, where the ablated region is shown to be less than the spacing shown, meaning that the region would need to be less than 1 micrometer; Para. 0044, “For example, as shown in FIG. 3, if the movement speed of the movable stage 50 is set to 1 mm/sec, 2 mm/sec and 3 mm/sec, the spot pattern S2 becomes to have pattern periods of 1 μm, 2 μm and 3 μm, respectively.”).
Sohn does not disclose:
each spatially separated region being fabricated by a wavefront shaped by adaptive optics such that aberration in the sample is cancelled;
wherein each of the plurality of laser-modified regions is more than 100 micrometers below the nearest surface of the transparent material.
However, Park discloses, in the similar field of laser ablating regions (Section 2, lines 56-58, “a laser process or assembly for controlling a laser scribing process with adaptive optics”), where an adaptive optics can be used to create a wavefront that cancels aberrations within a sample (Section 7, lines 30-39, “adaptive optics can be viewed as a technology for improving the performance of optical systems by reducing the effect of wave front distortions. The deformations of an incoming wave front can be corrected by deforming a mirror in order to compensate for the distortion. Adaptive optics can also be implemented to reduce optical aberrations. Adaptive optics works by measuring the distortions in a wave front and compensating for them with a device that corrects those errors such as a deformable mirror or a liquid crystal array.”). It would have been obvious for one of ordinary skill in the art before the effective filling date of the claimed invention to have modified the laser system in Sohn to include the adaptive optics as taught by Park.
One of ordinary skill in the art would have been motivated to make this modification in order to gain the advantage of being able to adjust for errors caused by a mirror array, which is used by Sohn, as stated by Park, Section 7, lines 35-38, “Adaptive optics can also be implemented to reduce optical aberrations. Adaptive optics works by measuring the distortions in a wave front and compensating for them with a device that corrects those errors such as a deformable mirror”.
Further, Booth discloses, in the similar field of modifying regions with a laser (Abstract, “modifying the crystal lattice within the target by using a laser to generate a lattice vacancy”), where similar adaptive optics can be used to cancel wavefront aberrations (Page 18, lines 19-24, “However, in one embodiment of the present method, it is possible to cancel aberrations which are introduced when focussing beneath the surface of a transparent material by 'pre-aberrating' the laser beam. For full flexibility in the fabrication, an adaptive optical element (AOE) may be used to impose a phase distribution on the laser beam which is equal and opposite to the aberration introduced at the sample surface.”), where the laser ablated region is more than 100 micrometers below the nearest surface of the transparent material (Page 8, lines 29-end, “The step of modifying the crystal lattice may include modifying the crystal lattice selectively at a depth of greater than 5 microns. The method may include modifying the crystal lattice at a depth of greater than 10 microns, or a depth of greater than 100 microns from the target surface, and may include modifying the crystal lattice at a depth greater than 500 microns from the surface. Particularly, the effects of aberration caused by refraction of the light by the target's surface can be cancelled”, and Page 18, lines 1-2, “laser fabrication within transparent materials”). It would have been obvious for one of ordinary skill in the art before the effective filling date of the claimed invention to have modified the cancellation of aberrations using adaptive optics in modified Sohn to be used within a material as taught by Booth.
One of ordinary skill in the art would have been motivated to make this modification in order to gain the advantage being able to create laser ablated regions within a substrate for use in optical or other devices, as stated by Booth, Page 7, lines 29-31, “vacancy trapping elements in a central region of the target, in array positions, or in a pattern that when combined with a vacancy is beneficial for an optical or other device.”, and where greater depths can be achieved through using adaptive optics, Page 18, lines 16-22, “For accurate laser processing at the highest resolution (high NA), the aberrations would limit the fabrication depth to a few micrometres beneath the diamond surface. However, in one embodiment of the present method, it is possible to cancel aberrations which are introduced when focussing beneath the surface of a transparent material by 'pre-aberrating' the laser beam. For full flexibility in the fabrication, an adaptive optical element (AOE) may be used”.
Regarding claim 41, modified Sohn teaches the apparatus according to claim 59, as set forth above, discloses comprising a structure formed by the plurality of laser-modified regions, wherein the structure is two dimensional or three dimensional (Sohn, Para. 0064, “The formation of the periodic pattern may also be used to fabricate three-dimensional fine constructions, patterns, or configurations on a surface of or inside the sample depending on the focal depth.”).
Regarding claim 42, modified Sohn teaches the apparatus according to claim 59, as set forth above, discloses comprising an optical volume formed by the plurality of spatially separated laser-modified regions (Sohn, Para. 0004, “femtosecond lasing technique in which two- or three dimensional optical information storage are fabricated in a glass by way of making volume elements (voxels), each voxel ranging from several microns to several millimeters in
length and sub-micron to several microns in diameter.”, where having optical volume being formed in the three-dimensional ablated regions is known).
Regarding claim 43, modified Sohn teaches the apparatus according to claim 41, as set forth above, discloses comprising an optical volume formed by the plurality of spatially separated laser-modified regions (Sohn, Para. 0004, “femtosecond lasing technique in which two- or three dimensional optical information storage are fabricated in a glass by way of making volume elements (voxels), each voxel ranging from several microns to several millimeters in
length and sub-micron to several microns in diameter.”, where having optical volume being formed in the three-dimensional ablated regions is known).
Regarding claim 48, modified Sohn teaches the apparatus according to claim 59, as set forth above.
Modified Sohn does not disclose:
comprising a predetermined stress field generated by the plurality of spatially separated laser-modified regions.
However, Booth discloses, in the similar field of modifying regions within gemstones through lasers (Page 5, lines 18-20, “…modifying the crystal lattice at a controlled position in a target using a laser; and annealing the crystal lattice to form a desired feature in the crystal.”), where a predetermined strain field can be generated within laser modified regions (Page 12, liens 20-24, “…applying a controlled optical pulse to the region of the target to locally damage the crystal lattice; and annealing the target to obtain from the damaged region of the crystal lattice a modified crystalline or amorphous structure, the modified crystalline or amorphous structure inducing a desired strain field at the crystal defect.”, where Examines notes that strain and stress are related and if there is a strain field, there would also be a stress field created). It would have been obvious for one of ordinary skill in the art before the effective filling date of the claimed invention to have modified the creation of markings within modified regions of a gemstone in modified Sohn to have the creation of strain/stress fields as taught by Booth.
One of ordinary skill in the art would have been motivated to make this modification in order to gain the advantage of being able to strain engineer the structures within the gemstone in order to achieve desired properties, as stated by Booth, Page 11, lines 15-18, “The method may include strain engineering of the trapped vacancy, for example, by the other aspect of the invention described below. The method may comprise modifying the lattice so as to engineer the strain field about at least one specific trapped vacancy in order to modify its properties.”.
Regarding claim 49, modified Sohn teaches the apparatus according to claim 48, as set forth above.
Modified Sohn does not disclose:
wherein each of the plurality of spatially separated laser-modified regions is configured to generate a respective stress load on the surrounding sample that is different from that of at least one other of the plurality of laser- modified regions.
However, Booth discloses where laser processing within gemstones can result in a stress load applied to the surrounding areas that would be different from undamaged areas (Page 21, lines 2-7, “Laser processing may provide a convenient means by which such strain engineering can be carried out. Laser induced damage may result in an average expansion or contraction of the processed volume, applying stress to the surrounding material and generating a strain field that can extend over long distances in the undamaged lattice.”), where strain/stress can be controlled (Page 21, lines 8-9, “…high precision in the control of local strain experienced by a colour centre nearby…”). It would have been obvious for one of ordinary skill in the art before the effective filling date of the claimed invention to have modified the laser marking system in modified Sohn to be able to apply stresses on modified regions to create the desired strain field as taught by Booth.
Regarding having areas where the stress/strain is different than other regions, it is the Examiner's position that one of ordinary skill in the art would have found it obvious to try as Booth discloses how stress/strain can be controlled. Thus, a user would have the ability to make design choices on structures within the gemstone by being able to control different areas to have different surrounding stress/strain fields.
One of ordinary skill in the art would have been motivated to make this modification in order to gain the advantage of being able to strain engineer the structures within the gemstone in order to achieve desired properties, as stated by Booth, Page 11, lines 15-18, “The method may include strain engineering of the trapped vacancy, for example, by the other aspect of the invention described below. The method may comprise modifying the lattice so as to engineer the strain field about at least one specific trapped vacancy in order to modify its properties.”.
Regarding claim 52, modified Sohn teaches the apparatus according to claim 59, as set forth above.
Modified Sohn does not disclose:
wherein the plurality of laser-modified regions form electrical conductors.
However, Booth discloses where there are laser modified regions that can also be electrical conductors (Page 18, lines 20-24, “With sufficient pulse energy, the result is the conversion of the diamond into a graphitic phase, which is confined to the focal volume of the laser. By translating the focus within the diamond, either through beam scanning or motion of the diamond sample, it is possible to generate continuous graphitic tracks or an array of point-like graphitic features in three dimensions.”, where graphitic tracks are stated by applicant in their specification Page 15 to be electrically conductive, “Tracing the diamond through the laser focus in Regime (ii) enables the writing of continuous tracks of sp2 bonded carbon which can be used as electrically conductive wires.”). It would have been obvious for one of ordinary skill in the art before the effective filling date of the claimed invention to have modified the laser modified marks in modified Sohn to be graphitic tracks as taught by Booth.
One of ordinary skill in the art would have been motivated to make this modification in order to gain the advantage of allowing for sensors to be created within diamonds, which a user would recognize to provide benefits in durability and hardness, as stated by Booth, Page 12, lines 11-13, “The method may be a production step in the fabrication of a sensor. Preferably, the sensor may be a magnetic field sensor, an electric field sensor, and/or a temperature sensor.”.
Regarding claim 53, modified Sohn teaches the apparatus according to claim 41, as set forth above.
Modified Sohn does not disclose:
wherein the plurality of laser-modified regions form electrical conductors.
However, Booth discloses where there are laser modified regions that can also be electrical conductors (Page 18, lines 20-24, “With sufficient pulse energy, the result is the conversion of the diamond into a graphitic phase, which is confined to the focal volume of the laser. By translating the focus within the diamond, either through beam scanning or motion of the diamond sample, it is possible to generate continuous graphitic tracks or an array of point-like graphitic features in three dimensions.”, where graphitic tracks are stated by applicant in their specification Page 15 to be electrically conductive, “Tracing the diamond through the laser focus in Regime (ii) enables the writing of continuous tracks of sp2 bonded carbon which can be used as electrically conductive wires.”). It would have been obvious for one of ordinary skill in the art before the effective filling date of the claimed invention to have modified the laser modified marks in modified Sohn to be graphitic tracks as taught by Booth.
One of ordinary skill in the art would have been motivated to make this modification in order to gain the advantage of allowing for sensors to be created within diamonds, which a user would recognize to provide benefits in durability and hardness, as stated by Booth, Page 12, lines 11-13, “The method may be a production step in the fabrication of a sensor. Preferably, the sensor may be a magnetic field sensor, an electric field sensor, and/or a temperature sensor.”.
Claims 40 are rejected under 35 U.S.C. 103 as being unpatentable over Sohn et al. (US 20070091977 A1, hereinafter Sohn) and Park et al. (US 9281244 B1, hereinafter Park) and Booth et al. (WO 2017006092 A1, hereinafter Booth) in further view of Maltezos et al. (WO 2009073576 A2, hereinafter Maltezos).
Regarding claim 40, modified Sohn teaches the apparatus according to claim 59, as set forth above.
Modified Sohn does not disclose:
wherein each laser modified region comprises carbon converted from the sp3 phase to the sp2 phase.
However, Maltezos discloses, in the similar field of laser modifying regions (Para. 0097, “direct laser ablation of gemstone material with a high power pulsed laser.”), where spaced regions can be less than 1 micrometer in one dimension (Claim 3, “introducing roughness on one or more of the facets is performed by forming non-periodic nanometer and/or micrometer sized features on said one or more facets.”), where each of the laser modified regions has carbon being converted from the sp3 phase to the sp2 phase (Para. 0097, “These can include direct laser ablation of gemstone material with a high power pulsed laser. If this method is used on diamond, which has relatively poor absorption, it may be beneficial to use a layer of material substantially optically absorbing to the laser light to Increase the efficiency of the laser ablation process, In certain embodiments, graphite can be used, A layer of graphite can be formed on the diamond and a laser can be used to ablate the graptute layer, The heat from this process will convert a layer of the underlying diamond into graphite, which can then be ablated (e.g., to form the trenches or indentations)”). It would have been obvious for one of ordinary skill in the art before the effective filling date of the claimed invention to have modified the formation process of the internal laser modified regions in modified Sohn to include laser ablation of material that converts sp3 phase carbon (diamond) to sp2 phase carbon (graphite) as stated by Maltezos.
One of ordinary skill in the art would have been motivated to make this modification in order to gain the advantage of being able to increase the efficiency of the laser ablation process, where graphite can be added to diamond in order to allow diamond to better absorb laser energy and then convert that diamond into graphite that can be shaped, as stated by Maltezos, Para. 0097, “These can include direct laser ablation of gemstone material with a high power pulsed laser. If this method is used on diamond, which has relatively poor absorption, it may be beneficial to use a layer of material substantially optically absorbing to the laser light to Increase the efficiency of the laser ablation process”.
Claims 44-45, 50-51 and 54-56 are rejected under 35 U.S.C. 103 as being unpatentable over Sohn et al. (US 20070091977 A1, hereinafter Sohn) and Park et al. (US 9281244 B1, hereinafter Park) and Booth et al. (WO 2017006092 A1, hereinafter Booth) in further view of Gerke (GB 2527553 A).
Regarding claim 44, modified Sohn teaches the apparatus according to claim 42, as set forth above.
Modified Sohn does not disclose:
wherein the optical volume comprises a visible feature.
However, Gerke discloses, in the similar field of laser ablating regions (Page 1, lines 4-5, “laser processing method to form a smooth material modification inside a transparent material”), wherein the optical volume comprises a visible feature (Page 10, last 3 lines, “In this way, the laser processing method forms a mark inside the transparent material, the mark being visible when illuminated in an illumination direction and viewed in a viewing direction.”). It would have been obvious for one of ordinary skill in the art before the effective filling date of the claimed invention to have modified the system in modified Sohn to include the feature as taught by Gerke.
One of ordinary skill in the art would have been motivated to make this modification in order to gain the advantage being able to use the laser ablation process to prevent counterfeiting in gemstones, as stated by Gerke, Page 16, lines 10-14, “This capability may be useful for example in the consumer electronics markets where a small laser, LED, or other suitable light source could be mounted under the mark and used to project a logo or other image in the far-field for the purpose of anticounterfeiting.”.
Regarding claim 45, modified Sohn teaches the apparatus according to claim 43, as set forth above.
Modified Sohn does not disclose:
wherein the optical volume comprises a visible feature.
However, Gerke discloses, in the similar field of laser ablating regions (Page 1, lines 4-5, “laser processing method to form a smooth material modification inside a transparent material”), wherein the optical volume comprises a visible feature (Page 10, last 3 lines, “In this way, the laser processing method forms a mark inside the transparent material, the mark being visible when illuminated in an illumination direction and viewed in a viewing direction.”). It would have been obvious for one of ordinary skill in the art before the effective filling date of the claimed invention to have modified the system in modified Sohn to include the feature as taught by Gerke.
One of ordinary skill in the art would have been motivated to make this modification in order to gain the advantage being able to use the laser ablation process to prevent counterfeiting in gemstones, as stated by Gerke, Page 16, lines 10-14, “This capability may be useful for example in the consumer electronics markets where a small laser, LED, or other suitable light source could be mounted under the mark and used to project a logo or other image in the far-field for the purpose of anticounterfeiting.”.
Regarding claim 50, modified Sohn teaches the apparatus according to claim 59, as set forth above.
Modified Sohn does not disclose:
wherein the sample is a crystal lattice.
However, Gerke discloses wherein the sample is a crystal lattice (Page 10, lines 26-28, “…good candidates for forming internal marks in non-glass transparent materials, including crystalline and amorphous transparent materials, e.g: gemstones such as sapphire and diamond (including synthetic diamond)…”, where diamond is a crystal lattice). It would have been obvious for one of ordinary skill in the art before the effective filling date of the claimed invention to have modified the system in modified Sohn to include the feature as taught by Gerke.
One of ordinary skill in the art would have been motivated to make this modification in order to gain the advantage being able to use the laser ablation process to prevent counterfeiting in gemstones, as stated by Gerke, Page 16, lines 10-14, “This capability may be useful for example in the consumer electronics markets where a small laser, LED, or other suitable light source could be mounted under the mark and used to project a logo or other image in the far-field for the purpose of anticounterfeiting.”.
Regarding claim 51, modified Sohn teaches the apparatus according to claim 59, as set forth above.
Modified Sohn does not disclose:
wherein the sample bulk is diamond.
However, Gerke discloses wherein the sample bulk is diamond (Gerke, Page 10, lines 26-28, “…good candidates for forming internal marks in non-glass transparent materials, including crystalline and amorphous transparent materials, e.g: gemstones such as sapphire and diamond (including synthetic diamond)…”). It would have been obvious for one of ordinary skill in the art before the effective filling date of the claimed invention to have modified the system in modified Sohn to include the feature as taught by Gerke.
One of ordinary skill in the art would have been motivated to make this modification in order to gain the advantage being able to use the laser ablation process to prevent counterfeiting in gemstones, as stated by Gerke, Page 16, lines 10-14, “This capability may be useful for example in the consumer electronics markets where a small laser, LED, or other suitable light source could be mounted under the mark and used to project a logo or other image in the far-field for the purpose of anticounterfeiting.”.
Regarding claim 54, modified Sohn teaches the apparatus according to claim 59, as set forth above.
Modified Sohn does not disclose:
wherein the plurality of laser-modified regions comprises a security code.
However, Gerke discloses wherein the plurality of laser-modified regions comprises a security code (Gerke, Page 20, lines 15-18, “The desired level of visibility can be tailored for the application: for cosmetic marks high visibility is often desirable, whereas for security watermarks and anti-counterfeiting low and virtually invisible marks are often desirable.”). It would have been obvious for one of ordinary skill in the art before the effective filling date of the claimed invention to have modified the system in modified Sohn to include the feature as taught by Gerke.
One of ordinary skill in the art would have been motivated to make this modification in order to gain the advantage being able to use the laser ablation process to prevent counterfeiting in gemstones, as stated by Gerke, Page 16, lines 10-14, “This capability may be useful for example in the consumer electronics markets where a small laser, LED, or other suitable light source could be mounted under the mark and used to project a logo or other image in the far-field for the purpose of anticounterfeiting.”.
Regarding claim 55, modified Sohn teaches the apparatus according to claim 59, as set forth above.
Modified Sohn does not disclose:
wherein the plurality of laser-modified regions comprises a diffraction grating.
However, Gerke discloses wherein the plurality of laser-modified regions comprises a diffraction grating (Gerke, Page 23, lines 29-39, “Instead of or in addition to redirection of light by specular reflection, redirection of light may occur due to diffraction or due to smooth phase changes caused by the refractive index modification. For example, each region 10 may comprise a diffracting region, or a region of phase modification that distorts incoming illumination, thereby to redirect light. In the case of redirection by diffraction, the spacing between regions 10 may be small enough so that the marks act as diffractive bodies similar to volumetric gratings…”). It would have been obvious for one of ordinary skill in the art before the effective filling date of the claimed invention to have modified the system in modified Sohn to include the feature as taught by Gerke.
One of ordinary skill in the art would have been motivated to make this modification in order to gain the advantage being able to have markings that appear differently when viewed at different angles, as stated by Gerke, Page 16, liens 3-6, “The mark could be a 2D or 3D diffractive mark that when illuminated with a source a specified pattern is projected in the near-field or in the far-field. The projected pattern can be multiplexed such that when the mark is illuminated at different angles or with different wavelengths, different patterns are projected if the mark is 3D.”.
Regarding claim 56, modified Sohn teaches the apparatus according to claim 59, as set forth above.
Modified Sohn does not disclose:
wherein the plurality of laser-modified regions from one of an alphanumeric character, a barcode, a quick response (QR) code, an image, a diffractive element, or a hologram.
However, Gerke discloses wherein the plurality of laser-modified regions from one of an alphanumeric character, a barcode, a quick response (QR) code, an image, a diffractive element, or a hologram (Gerke, Page 18, lines 11-17, “…laser processing apparatus is capable of producing focused spot sizes in the range from about 2 μm to about 100 μm and of linear beam positioning speeds in the range from 1 mm/s to >3000 mm/sand capable of being programmed to produce alphanumeric, bar code, raster and vector scanned marks and having fine focus control capable of positioning the focused laser beam waist position at any z-position (depth) within the workpiece.”). It would have been obvious for one of ordinary skill in the art before the effective filling date of the claimed invention to have modified the system in modified Sohn to include the feature as taught by Gerke.
One of ordinary skill in the art would have been motivated to make this modification in order to gain the advantage being able to use the laser ablation process to prevent counterfeiting in gemstones, as stated by Gerke, Page 16, lines 10-14, “This capability may be useful for example in the consumer electronics markets where a small laser, LED, or other suitable light source could be mounted under the mark and used to project a logo or other image in the far-field for the purpose of anticounterfeiting.”.
Claim 57 is rejected under 35 U.S.C. 103 as being unpatentable over Sohn et al. (US 20070091977 A1, hereinafter Sohn) and Park et al. (US 9281244 B1, hereinafter Park) and Booth et al. (WO 2017006092 A1, hereinafter Booth) in further view of Maltezos et al. (WO 2009073576 A2, hereinafter Maltezos) and Shirk et al. (US 20060102601 A1, hereinafter Shirk).
Regarding claim 57, modified Sohn teaches the apparatus according to claim 59, as set forth above.
Modified Sohn does not disclose:
wherein each of the plurality of laser-modified regions is less than 1 micrometre in all dimensions.
However, Maltezos discloses where spaced regions can be less than 1 micrometer in one dimension and where dimensions can be within the nanometer scale (Claim 3, “introducing roughness on one or more of the facets is performed by forming non-periodic nanometer and/or micrometer sized features on said one or more facets.”), and where the creation of these regions can be done through using a layer of graphite (Para. 0097, “These can include direct laser ablation of gemstone material with a high power pulsed laser. If this method is used on diamond, which has relatively poor absorption, it may be beneficial to use a layer of material substantially optically absorbing to the laser light to Increase the efficiency of the laser ablation process, In certain embodiments, graphite can be used, A layer of graphite can be formed on the diamond and a laser can be used to ablate the graptute layer, The heat from this process will convert a layer of the underlying diamond into graphite, which can then be ablated (e.g., to form the trenches or indentations)”). It would have been obvious for one of ordinary skill in the art before the effective filling date of the claimed invention to have modified the formation process of the internal laser modified regions in modified Sohn to include nanometer scale features as stated by Maltezos.
One of ordinary skill in the art would have been motivated to make this modification in order to gain the advantage of being able to increase the efficiency of the laser ablation process, where graphite can be added to diamond in order to allow diamond to better absorb laser energy and then convert that diamond into graphite that can be shaped, as stated by Maltezos, Para. 0097, “These can include direct laser ablation of gemstone material with a high power pulsed laser. If this method is used on diamond, which has relatively poor absorption, it may be beneficial to use a layer of material substantially optically absorbing to the laser light to Increase the efficiency of the laser ablation process”.
Further, Shirk discloses, in the similar field of creating laser modified regions within a sample (Claim 8, “…machining a workpiece to desired finished workpiece specifications, comprising: means for producing a laser beam…”), where lasers are capable of removing nanometers of material at a time (Para. 0061, “This system used ultrashort pulses (l0's of picoseconds to l0's of femtoseconds) to remove material. These laser pulses have been shown to remove as little as a few nanometers of material per pulse while leaving a clean, smooth surface.”). It would have been obvious for one of ordinary skill in the art before the effective filling date of the claimed invention to have modified the nanometer width of the channel of modified Sohn to include the depth being nanometers removed at a time as taught by Shirk, this would make all the dimensions of the channel within Maltezos to be on the nanometer scale.
One of ordinary skill in the art would have been motivated to make this modification in order to gain the advantage of being able to use similar lasers as with Maltezos to remove nanometers of material to obtain a better surface finish, as stated by Shirk, Para. 0061, “This system used ultrashort pulses (l0's of picoseconds to l0's of femtoseconds) to remove material. These laser pulses have been shown to remove as little as a few nanometers of material per pulse while leaving a clean, smooth surface.”.
Claims 46-47 are rejected under 35 U.S.C. 103 as being unpatentable over Sohn et al. (US 20070091977 A1, hereinafter Sohn) and Park et al. (US 9281244 B1, hereinafter Park) and Booth et al. (WO 2017006092 A1, hereinafter Booth) in further view of Dzhejms et al. (RU 2161093 C2, hereinafter Dzhejms) and Gerke (GB 2527553 A).
Regarding claim 46, modified Sohn teaches the apparatus according to claim 42, as set forth above.
Modified Sohn does not disclose:
wherein the optical volume is configured for detection by phase contrast microscopy or dark field microscopy.
However, Dzhejms discloses, in the similar field of modifying regions of a gemstone through lasers (Abstract, “…an identification stamp is applied onto the facet of the diamond
precious stone, the stamp is invisible by a naked eye, it is applied by irradiation by ultraviolet laser…”), where the optical mark is detectable through dark field microscopy (Page 4, Para. 4, “The invention also allows the application of very shallow hallmarks in a controlled manner. The
absence of significant dimming and smallness makes the stigmas invisible to the eye, and they are practically invisible to the naked eye, equipped with a 10-fold magnifier. However, stigmas can be easily observed using a microscopic technique that highlights the edges of the stigma like illuminating a dark field. As such a technique, a metallurgical microscope can be used.”). It would have been obvious for one of ordinary skill in the art before the effective filling date of the claimed invention to have modified the optical markings in modified Sohn to be detectable through dark field microscopy as taught by Dzhejms.
One of ordinary skill in the art would have been motivated to make this modification in order to gain the advantage of having marks are that invisible to the naked eye but still detectable, as stated by Dzhejms, Page 4, Para. 4, “…practically invisible to the naked eye, equipped with a 10-fold magnifier. However, stigmas can be easily observed using a microscopic technique that highlights the edges of the stigma like illuminating a dark field.”.
From another reference, Gerke also discloses where marks invisible to the naked eye are possible for security purposes, Page 20, lines 15-19, “The desired level of visibility can be tailored for the application: for cosmetic marks high visibility is often desirable, whereas for security watermarks and anti-counterfeiting low and virtually invisible marks are often desirable.”, and a user would recognize the need to be able to detect those marks through machinery, such as a dark field microscope as taught by Dzhejms.
Regarding claim 47, modified Sohn teaches the apparatus according to claim 43, as set forth above.
Modified Sohn does not disclose:
wherein the optical volume is configured for detection by phase contrast microscopy or dark field microscopy.
However, Dzhejms discloses, in the similar field of modifying regions of a gemstone through lasers (Abstract, “…an identification stamp is applied onto the facet of the diamond
precious stone, the stamp is invisible by a naked eye, it is applied by irradiation by ultraviolet laser…”), where the optical mark is detectable through dark field microscopy (Page 4, Para. 4, “The invention also allows the application of very shallow hallmarks in a controlled manner. The
absence of significant dimming and smallness makes the stigmas invisible to the eye, and they are practically invisible to the naked eye, equipped with a 10-fold magnifier. However, stigmas can be easily observed using a microscopic technique that highlights the edges of the stigma like illuminating a dark field. As such a technique, a metallurgical microscope can be used.”). It would have been obvious for one of ordinary skill in the art before the effective filling date of the claimed invention to have modified the optical markings in modified Sohn to be detectable through dark field microscopy as taught by Dzhejms.
One of ordinary skill in the art would have been motivated to make this modification in order to gain the advantage of having marks are that invisible to the naked eye but still detectable, as stated by Dzhejms, Page 4, Para. 4, “…practically invisible to the naked eye, equipped with a 10-fold magnifier. However, stigmas can be easily observed using a microscopic technique that highlights the edges of the stigma like illuminating a dark field.”.
From another reference, Gerke also discloses where marks invisible to the naked eye are possible for security purposes, Page 20, lines 15-19, “The desired level of visibility can be tailored for the application: for cosmetic marks high visibility is often desirable, whereas for security watermarks and anti-counterfeiting low and virtually invisible marks are often desirable.”, and a user would recognize the need to be able to detect those marks through machinery, such as a dark field microscope as taught by Dzhejms.
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.
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/KEVIN GUANHUA WEN/Examiner, Art Unit 3761
08/18/2025
/IBRAHIME A ABRAHAM/Supervisory Patent Examiner, Art Unit 3761