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 Amendment
Claims 1-20 are currently pending in the present application. Claims 1-4 and 6-20 are original; and claim 5 is currently amended. The amendment dated October 29, 2025 has been entered into the record.
Response to Arguments
Applicant has provided the auxiliary experimental data of the present invention to prove that germanium oxide, germanium nitride or germanium hydroxide has a high refractive index, and the high refractive index is in a range from 3.98 to 4.42 at a spectral range of 1200 nm to 2200 nm (Remarks, Pages 8-11).
Applicant's arguments with respect to objections to the specification and 35 U.S.C. 112(a) have been fully considered, but are not persuasive by the following reasons:
Rebuttal evidence and arguments can be presented in the specification, In re Soni, 54 F.3d 746, 750, 34 USPQ2d 1684, 1687 (Fed. Cir. 1995), by way of an affidavit or declaration under 37 CFR 1.132, e.g., Soni, 54 F.3d at 750, 34 USPQ2d at 1687; In re Piasecki, 745 F.2d 1468, 1474, 223 USPQ 785, 789-90 (Fed. Cir. 1984), or otherwise presented during prosecution. See, e.g., MPEP §§ 714 to 716 et seq. However, arguments presented by applicant cannot take the place of factually supported objective evidence. See, e.g., In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984) [see MPEP 2145].
Specification
35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, requires the specification to be written in “full, clear, concise, and exact terms.” The specification is replete with terms which are not clear, concise and exact. The specification should be revised carefully in order to comply with 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112. Examples of some unclear, inexact or verbose terms used in the specification are:
The specification and claims recite “a plurality of second material layers comprising germanium oxide, germanium nitride or germanium hydroxide with a second refractive index” (see at least Paragraphs [0014], [0031] and [0035]) AND “the second refractive index and the third refractive index are in a range from 3.98 to 4.42 at a spectral range of 1200 nm to 2200 nm” (Paragraphs [0006], [0035], [0046] and [0058] and claim 5). However, germanium oxide, germanium nitride or germanium hydroxide are known to have a low refractive index from about 1.54 and about 2.60. The specification appears to include inexact terms and/or numbers.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 1 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter, which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
The standard for determining whether the specification meets the enablement requirement was cast in the Supreme Court decision of Minerals Separation Ltd. v. Hyde, 242 U.S. 261, 270 (1916) which postured the question: is the experimentation needed to practice the invention undue or unreasonable? That standard is still the one to be applied. In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988). Accordingly, even though the statute does not use the term "undue experimentation," it has been interpreted to require that the claimed invention be enabled so that any person skilled in the art can make and use the invention without undue experimentation. In re Wands, 858 F.2d at 737, 8 USPQ2d at 1404 (Fed. Cir. 1988). See also United States v. Telectronics, Inc., 857 F.2d 778, 785, 8 USPQ2d 1217, 1223 (Fed. Cir. 1988) ("The test of enablement is whether one reasonably skilled in the art could make or use the invention from the disclosures in the patent coupled with information known in the art without undue experimentation.") (see MPEP 2164.01).
Claim 1 recites “a plurality of second material layers comprising germanium oxide, germanium nitride or germanium hydroxide with a second refractive index” and “the second refractive index is greater than the first refractive index”, wherein the second refractive index is the high refractive index or “the second refractive index in a range from 3.98 to 4.42 at a spectral range of 1200 nm to 2200 nm” based on Paragraphs [0006], [0035], [0046] and [0058] and claim 5.
The specification does not meet the enablement requirement, because “a plurality of second material layers comprising germanium oxide, germanium nitride or germanium hydroxide with a second refractive index” as recited in claim 1 does not have “the second refractive index greater than the first refractive index” or “the second refractive index in a range from 3.98 to 4.42 at a spectral range of 1200 nm to 2200 nm”, because germanium oxide, germanium nitride or germanium hydroxide is known to have a low refractive index in a range from 1.54 and 2.60.
Regarding the undue experimentation factors, the examiner considers
(1) the nature of the invention;
(2) the amount of direction provided by the inventor;
(3) the level of one of ordinary skill; and
(4) the state of the prior art.
First, regarding the nature of the invention, the examiner considers the optical structure, in which a plurality of second material layers comprises germanium oxide, germanium nitride or germanium hydroxide with a second refractive index and the second refractive index greater than the first refractive index wherein the first refractive index is in a range from 1.47 to 1.60 as described in the specification and claims.
Regarding the amount of direction provided by the inventor, the examiner considers the applicant claims using germanium oxide, germanium nitride or germanium hydroxide to obtain the refractive index in a range from 3.98 to 4.42 at a spectral range of 1200 nm to 2200 nm as materials to obtain the second refractive index greater than the first refractive index.
Regarding the level of one of ordinary skill, the examiner considers one of ordinary skill in the art knows that germanium oxide, germanium nitride or germanium hydroxide has a low refractive index, in a range from 1.54 and 2.60. For example, see the graph below, plotting the optical constants of germanium oxide at 1200 nm and 2200 nm.
< https://refractiveindex.info/?shelf=main&book=GeO2&page=Fleming>
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694
958
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Germanium oxide has the refractive index of 1.5909 at 1200 nm. It does not have the high refractive index in a range from 3.98 to 4.42 at a spectral range of 1200 nm to 2200nm.
< https://refractiveindex.info/?shelf=main&book=GeO2&page=Fleming>
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688
956
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Germanium oxide has the refractive index of 1.5828 at 2000 nm. It does not have the high refractive index in a range from 3.98 to 4.42 at a spectral range of 1200 nm to 2200nm.
Various optical constants described in the specification and the claims AND the relative terms, such as low-refractive-index material layers and high-refractive-index material layers, are inexact or incorrect, and the method of obtaining such claimed properties is not described in the specification.
The below data shown by the applicant appear to describe pure crystalline Germanium (Ge) at a spectral range of 1200 nm to 2200nm, not Germanium Hydroxide. For example, the value n = 4.2287 at 1246 nm aligns with the known dispersion of bulk Germanium.
<The data claimed by the applicant>
[AltContent: textbox (The chemical formula for Germanium Hydroxide is Ge(OH)4, not GeO2H10.)][AltContent: textbox (The data shown by the applicant align with the known dispersion of bulk Germanium (see Amotchikina et al., 2020), but not Germanium Hydroxide.)][AltContent: arrow][AltContent: arrow]
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308
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Furthermore, the chemical formula provided, GeO2H10, is not a standard stable chemical compound. The chemical formula for Germanium Hydroxide is Ge(OH)4.
Germanium oxide, germanium nitride or germanium hydroxide is known to have low refractive indices between 1.3 and 2.2 at a spectral range of 1200 nm to 2200 nm.
The specification does not meet the enablement requirement because one of ordinary skill in the art wouldn’t be able to modify the inherent optical properties of the materials.
Regarding the state of the prior art, see Hart et al. (US 2025/0020842, hereinafter “Hart”). Hart teaches an optical structure (Figures 3-4; Paragraphs [0016]-[0018]), comprising: a plurality of second material layers (42) comprising germanium oxide, germanium nitride or germanium hydroxide with a second refractive index (Paragraph [0068] “the one or more low refractive index layers 42 include GeO2”) and the second refractive index is from about 1.3 and 1.7 (Paragraph [0065]).
Since the applicant is completely silent on the method of modifying or obtaining the claimed optical properties of materials in the specification, where the claim(s) contains the subject matter of the low- and/or high-refractive material layers, which were not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention, claim 1 fails to comply with the enablement requirement.
Allowable Subject Matter
Claims 1-20 are allowable over prior art, and if they overcome 35 U.S.C. 112(a) rejections set forth above.
However, the examiner also notes that claim 1 would be rejected under the applicant’s own disclosure if the evidence is accepted because the applicant claims germanium oxide, germanium nitride or germanium hydroxide has a higher refractive index than the first refractive index and the fourth refractive index.
Regarding claim 1, Hart et al. (US 2025/0020842, hereinafter “Hart”) disclose an optical structure (Figures 3-4; Paragraphs [0016]-[0018]), comprising:
a substrate (30); and
multiple films (36) disposed on the substrate, wherein the multiple films comprise:
a first set of multiple films (films comprising 40 and 42 disposed between 30 and 52; see Paragraph [0078] “the quantity of alternating layers within the outer layered film 36 and/or the inner layered film 38 is 9 or more, 17 or more, 19 or more”) comprising a plurality of first material layers (40) with a first refractive index (Paragraph [0078] “high refractive index layers 40”) and a plurality of second material layers (42) comprising germanium oxide, germanium nitride or germanium hydroxide with a second refractive index (Paragraph [0068] “the one or more low refractive index layers 42 include GeO2”), wherein the first material layers and the second material layers are arranged in an alternating manner (see Figure 4A); and
a second set of multiple films (the other films comprising 40 and 42 disposed on 52) disposed on the first set of multiple films, the second set of multiple films comprising a plurality of third material layers (42) comprising germanium oxide, germanium nitride or germanium hydroxide (Paragraph [0068]) with a third refractive index (Paragraph [0078] “low refractive index”) and a plurality of fourth material layers (40) with a fourth refractive index (Paragraph [0078] “high refractive index” ), wherein the third material layers and the fourth material layers are arranged in an alternating manner (Figure 4A), and Hart further teaches the fourth material layer has a thickness that ranges from 25 nm to 750 nm (Paragraph [0067] “each of the high refractive index layers 40 has a physical thickness that ranges from 25 nm to 750 nm”) and the first material layer has a thickness that ranges from 25 nm to 750 nm ([0067] “each of the high refractive index layers 40 has a physical thickness that ranges from 25 nm to 750 nm, 40 nm to 600 nm, 50 nm to 500 nm”).
However, Hart fails to disclose, in light of the specification, “the second refractive index is greater than the first refractive index; and the third refractive-index is greater than the fourth refractive index”. The examiner further considered Chen et al. (US 2022/0120950 A1, hereinafter “Chen”), Rowlands et al. (US 2020/0209448 A1, hereinafter “Rowlands”) and Chan et al. (US 2019/0187334 A1, hereinafter “Chan”). However, Hart, Chen, Rowlands and Chan, applied alone or in combination fails to teach or suggest the combination and arrangement of elements recited in Applicant's claim 1.
Dependent claims 2-20 are allowable by virtue of their dependence on claim 1.
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 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JONATHAN Y JUNG whose telephone number is (469)295-9076. The examiner can normally be reached on Monday - Friday, 9:00 am - 5:00 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael H Caley can be reached on (571)272-2286. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JONATHAN Y JUNG/Primary Examiner, Art Unit 2871