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 .
Response to Arguments
Applicant’s arguments filed December 30, 2025, have been considered but are moot in view of the amendments to the claims and the correspondingly necessitated new grounds of rejection set forth below.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 7 and 17–20 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication No. 2020/0192009 to Evans et al.
Regarding Claim 7, Evans discloses (e.g., focusing on Fig. 9 and its description starting in paragraph [0058]) a method of manufacturing an optical grating or a master for replicating optical gratings (Fig. 9), the method comprising: providing a resist layer 920 (where Evans does not explicitly disclose that mask 920 is a resist layer, but in another embodiment, the corresponding mask 420 is described as “may be a photoresist-type material,” paragraph [0047], reasonably suggesting to one of ordinary skill in the art that mask 920 is a resist layer) over a substrate 907 that has a surface on which is disposed a grating mask 910, wherein the resist layer is provided over the grating mask (Fig. 9);
processing the resist layer to have a contour that has a plurality of discrete, non-continuous steps in a surface of the resist, wherein a height of each step of the plurality of discrete, non-continuous steps is different, and wherein each step is associated with a different region of the substrate (Fig. 9; where the specific processing is not described, Evans simply stating that “the mask 920 is provided over” the substrate 907, paragraph [0058], but it would have been obvious that some form of processing takes place to achieve the claimed structure which is shown in Fig. 9, at step PP1, of Evans); and
subsequently performing at least one etch so as to etch the resist layer and the substrate (PP2–PP4), wherein etching the substrate forms a different respective plurality of trenches 914A/B in each region of the substrate, wherein depths of the trenches for each respective region correspond to the discrete, non-continuous steps in the surface of the resist layer associated with the respective region (Fig. 9),
wherein the trenches in each particular one of the regions have substantially the same depth as one another (Fig. 9), and wherein each particular one of the regions contains trenches having a depth that differs from a depth of the trenches in an adjacent region (Fig. 9; paragraph [0051]).
Regarding Claim 17, Evans would have rendered obvious wherein the substrate is composed of silicon (e.g., paragraph [0045], suggesting that the substrate may be “formed from a silicon-based material, such as silicon nitride or silicon oxide”).
Regarding Claim 18, Evans would have rendered obvious separating the substrate into individual optical gratings, each of which has a plurality of slanted trenches (e.g., where forming a plurality of components on a single substrate, and subsequently dividing the substrate into individual components, would have been obvious as a matter of design choice to simplify the manufacturing process and facilitate mass production).
Regarding Claim 19, Evans would have rendered obvious using the substrate having the trenches therein as a master in a replication process to form at least one sub-master or optical grating (e.g., paragraph [0032], suggesting that the formed grating “forms a master for fabricating optical gratings”).
Regarding Claim 20, Evans would have rendered obvious using the substrate having the trenches therein as a master in a replication process to form at least one sub-master or optical grating (e.g., paragraph [0032], suggesting that the formed grating “forms a master for fabricating optical gratings”).
Claims 8–16 are rejected under 35 U.S.C. 103 as being unpatentable over Evans in view of U.S. Patent Application Publication No. 2019/0324176 to Colburn et al.
Regarding Claims 8–16, these claims recite further details of the process of forming the optical grating. Evans teaches generally that the processing may include ion etching and laser ablation (e.g., paragraph [0047]), but appears largely silent regarding specific further details of the processing. Colburn discloses a process of making optical gratings (e.g., Figs. 3A–3C and their corresponding description in at least paragraphs [0047]–[0053]), including steps that would be suitable for the process of making optical gratings taught by Evans, such that looking to Colburn for additional details and suitable steps and configurations would have been obvious to one of ordinary skill in the art at the time of effective filing (e.g., MPEP §§ 2144.06–07).
Regarding Claim 8, the combination of Evans and Colburn would have rendered obvious (referring to Colburn) wherein the resist layer is composed of an e-beam resist, and wherein processing the resist layer includes exposing the resist using e-beam lithography (paragraph [0025]).
Regarding Claim 9, the combination of Evans and Colburn would have rendered obvious (referring to Colburn) wherein exposing the resist using e-beam lithography includes exposing different areas of the e-beam resist with different exposure doses (paragraphs [0023]–[0025], where duty cycles modulating the height/depth of the trenches reasonably suggests different exposure doses).
Regarding Claim 10, the combination of Evans and Colburn would have rendered obvious (referring to Colburn) wherein the at least one etch includes reactive ion beam etching (e.g., paragraphs [0028] and [0040]).
Regarding Claim 11, the combination of Evans and Colburn would have rendered obvious (referring to Colburn) wherein the resist layer is composed of a photoresist, and wherein processing the resist layer includes exposing the resist using a direct laser writer (e.g., paragraphs [0023]–[0025], [0051], and [0054]–[0056]).
Regarding Claim 12, the combination of Evans and Colburn would have rendered obvious (referring to Colburn) wherein exposing the resist using a direct laser writer includes exposing different areas of the photoresist to different exposure levels (paragraph [0056]).
Regarding Claim 13, the combination of Evans and Colburn would have rendered obvious (referring to Colburn) wherein the at least one etch includes reactive ion beam etching (e.g., paragraphs [0028] and [0040]).
Regarding Claim 14, the combination of Evans and Colburn would have rendered obvious (referring to Colburn) the method of claim 7 further including: prior to providing the resist layer over the substrate, depositing an intermediate layer on the grating mask and on exposed portions of the substrate surface, wherein the resist layer is deposited on the intermediate layer, and wherein the at least one etch includes a first etch and a different subsequent second etch (e.g., paragraph [0027]).
Regarding Claim 15, the combination of Evans and Colburn would have rendered obvious (referring to Colburn) wherein the intermediate layer is composed of SiO2, the second etch includes reactive ion beam etching (e.g., paragraph [0027], silicon dioxide).
Regarding Claim 16, the combination of Evans and Colburn would have rendered obvious (referring to Colburn) wherein the first etch includes a NF3-based etch (e.g., paragraph [0036]).
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RYAN CROCKETT whose telephone number is (571)270-3183. The examiner can normally be reached M-F 8am to 5pm.
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/RYAN CROCKETT/Primary Examiner, Art Unit 2871