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 .
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.
Claims 1-4, 7-9, and 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over Tambo et al (WO 2019/225058 A1). Tambo is read from its English language equivalent US 2020/0003625 A1.
With regards to claim 1, Tambo discloses an infrared sensor comprising a beam layer 403 depicted as including a plurality of through holes 20 (i.e., a solid material comprising a three-dimensional structure including through holes, or recesses, and beam layer material, or a solid portion, formed between the recesses) (Tambo: para. [0077]-[0079] and [0121]-[0123]; Figs. 16A-16E). The infrared sensor of Tambo is considered to meet the limitation “solid material,” as it is made of layers of solid material, including silicon and silica (Tambo: para. [0121]-[0127]; Figs. 16A-16E). Tambo additionally discloses its beam layer 403 as providing a phononic band gap which provides a thermal conductivity reduction effect, and in particular, Tambo discloses its structure as allowing for phonons to flow in a plurality of directions, thereby enhancing the achieved reduction in thermal conductivity (i.e., the three-dimensional structure adjusts a thermal conductivity of the solid material by interaction with phonons) (Tambo: para. [0077], [0116]-[0117], and [0119]). With regards to the claimed minimum size of the solid portion between recesses adjacent to each other in plan view of the three-dimensional structure, Tambo further depicts the solid material between its through holes (i.e., recesses) as uniform in dimension, and Tambo discloses its through holes 20 as having both a periodicity P of 1 nm to 100 nm and a diameter D of, for example, D/P ≥ 0.5 (Tambo: para. [0119] and [0123]; Figs. 16A-16E). As best understood, the size of the solid material is equal to the through hole periodicity P minus the through hole diameter D, as the periodicity P is measured as the center-to-center distance between through holes (Tambo: para. [0119] and [0123]; Figs. 16A-16E). The size of the dimension of solid material has a lower bound which is infinitely close to 0 nm (i.e., as D/P ≥ 0.5 is unbounded above, and as best understood, some solid material must exist, otherwise the through holes would not exist), and the upper bound of solid material occurs when D/P = 0.5 and P is the highest value possible (i.e., 300 nm), the upper bound being 50 nm (i.e., D / 300 nm = 0.5 is equivalent to D = 50 nm) (Tambo: para. [0119] and [0123]; Figs. 16A-16E). This range (i.e., less than or equal to 50 nm) overlaps the claimed range of smaller than or equal to 100 nm, thereby establishing a prima facie case of obviousness, per MPEP 2144.05 (Tambo: para. [0119] and [0123]; Figs. 16A-16E). With regards to the claimed solid portion including a region with a Young’s modulus being smaller than or equal to 80% of a Young’s modulus of a reference sample that is fabricated by using a same type of material as a material of the solid portion without forming any recesses, it has been held that an article’s composition, structure, and method of making are inseparable from its properties, per MPEP 2112. The methods of Tambo and the present specification both require preparation of a silicon substrate which is then thermally oxidized to form an insulating layer comprising silicon oxide thereon, after which a beam layer of single crystal silicon is formed via chemical vapor deposition on the resulting insulating layer (Present Specification PGPub: para. [0060] and [0071]; Tambo: para. [0086] and [0122]). Afterward, a plurality of through holes are formed in the beam layer via electron beam lithography (Present Specification PGPub: para. [0071]; Tambo: para. [0123]). With the exception of beam layer thickness, periodicity, through hole diameter, and solid portion size, the materials and process steps of Tambo and the present specification are substantially identical (or in this case, explicitly identical) (see above discussion). Turning further to Applicant’s disclosure, Figure 5 of the present specification provides a plot comparing solid portion minimum size to the claimed elastic (i.e., Young’s) modulus property (Present Specification PGPub: Fig. 5). Paragraph [0081] of Applicant’s specification admits that “the elastic modulus having been so far regarded as a physical property value specific to a material can be controlled by adjusting the minimum size N of the solid portion” (Present Specification PGPub: para. [0081]). In other words, as best understood from Applicant’s specification, if the materials of Tambo are the same as Applicant’s (i.e., at least silicon crystal silicon for the beam layer formed by chemical vapor deposition on an oxidized silica layer) and the method of through hole formation is the same as Applicant’s (i.e., via electron beam lithography), then the relationship found in Figure 5 of Applicant’s specification should hold for the structure of Tambo and its associated solid portion size range (see above discussion). The solid portion size range of Tambo (i.e., 50 nm or less) overlaps entirely within the range of values in Applicant’s Figure 5 possessing the claimed Young’s modulus property (i.e., roughly those values below 100 nm) (see above discussion). It can be concluded, therefore, that since the solid portion size range of Tambo implies a matching overlapping range for Young’s modulus relative to a reference sample, and the values for solid portion size disclosed in Tambo are within the range of values exhibiting the claimed Young’s modulus relationship, the structure of Tambo must inherently possess a Young’s modulus relationship according to the present claims (i.e., the structure, composition, and method of making disclosed in Tambo is substantially identical to that of the claimed invention at least insofar the claimed Young’s modulus property is concerned) (see above discussion). In addition, since D/P ≥ 0.5 is unbounded above and P is a minimum of 1 nm, then the range for D (i.e., Diameter) of Tambo is greater than or equal to 0.5 (i.e., D / 1 nm ≥ 0.5 implies D ≥ 0.5 nm) (see above discussion). This range overlaps the claimed range of equal to or greater than 400 nm and equal to or less than 1600 nm, thereby establishing a prima facie case of obviousness, per MPEP 2144.05.
With regards to claim 2, Tambo discloses the beam layer as having a phononic crystal structure (i.e., the beam layer is a phononic crystal) (Tambo: para. [0020]).
With regards to claim 3, Tambo depicts its through holes (i.e., recesses) as forming an array at a particular period in plan view, wherein the period ranges from 1 to 100 nm (Tambo: para. [0118]; Figs. 16A-16E). The period of Tambo overlaps the claimed period of smaller than or equal to 300 nm, thereby establishing a prima facie case of obviousness (Tambo: para. [0118]; Figs. 16A-16E). See MPEP 2144.05.
With regards to claim 4, Tambo discloses its through holes (i.e., recesses) as circular in plan view (Tambo: para. [0119]).
With regards to claim 7, Tambo discloses its region as comprising silicon (see above discussion). Paragraph [0057] admits that the elastic modulus of silicon is equal to 100 GPa (Present Specification: para. [0057]). A composition and its properties are inseparable, per MPEP 2112. Given that the material in the region of Tambo is that same as that of the present specification (i.e., silicon), and the present specification further admits that silicon has an elastic modulus (i.e., Young’s modulus) of 100 GPa, the region of Tambo is considered to have a Young’s modulus meeting the present claim (i.e., specifically, 100 GPa) (see above discussion).
With regards to claim 8, as best understood, the infrared sensor beam layer of Tambo is formed by a method which is substantially identical to that of the claimed invention (see above discussion). A composition and its properties are inseparable, per MPEP 2112 (see above discussion). The present specification further admits that the claimed elastic modulus difference was “easy to increase” by its method, and as best understood from viewing Figures 1 and 7A-7D of the present drawings in view of the remainder of the specification, the claimed property appears to be due to the inclusion of through holes (i.e., for a solid material with through holes formed by the method of the present specification, Young’s modulus intrinsically varies across the solid material by distance from a nearest through hole) (Present Specification PGPub: para. [0058]-[0060], [0071], and [0075]-[0077]; Figs. 1 and 7A-7D). Therefore, the claimed Young’s modulus property is expected of the infrared sensor beam layer of Tambo (see above discussion).
With regards to claim 9, Tambo discloses an infrared sensor comprising a beam layer 403 depicted as including a plurality of through holes 20 (i.e., a solid material comprising a three-dimensional structure including through holes, or recesses, and beam layer material, or a solid portion, formed between the recesses) (Tambo: para. [0077]-[0079] and [0121]-[0123]; Figs. 16A-16E). The infrared sensor of Tambo is considered to meet the limitation “solid material,” as it is made of layers of solid material, including silicon and silica (Tambo: para. [0121]-[0127]; Figs. 16A-16E). Tambo additionally discloses its beam layer 403 as a phononic crystal ((Tambo: para. [0020]).). With regards to the claimed minimum size of the solid portion between recesses adjacent to each other in plan view of the three-dimensional structure, Tambo further depicts the solid material between its through holes (i.e., recesses) as uniform in dimension, and Tambo discloses its through holes 20 as having both a periodicity P of 1 nm to 100 nm and a diameter D of, for example, D/P ≥ 0.5 (Tambo: para. [0119] and [0123]; Figs. 16A-16E). As best understood, the size of the solid material is equal to the through hole periodicity P minus the through hole diameter D, as the periodicity P is measured as the center-to-center distance between through holes (Tambo: para. [0119] and [0123]; Figs. 16A-16E). The size of the dimension of solid material has a lower bound which is infinitely close to 0 nm (i.e., as D/P ≥ 0.5 is unbounded above, and as best understood, some solid material must exist, otherwise the through holes would not exist), and the upper bound of solid material occurs when D/P = 0.5 and P is the highest value possible (i.e., 300 nm), the upper bound being 50 nm (i.e., D / 300 nm = 0.5 is equivalent to D = 50 nm) (Tambo: para. [0119] and [0123]; Figs. 16A-16E). This range (i.e., less than or equal to 50 nm) overlaps the claimed range of smaller than or equal to 100 nm, thereby establishing a prima facie case of obviousness, per MPEP 2144.05 (Tambo: para. [0119] and [0123]; Figs. 16A-16E). With regards to the claimed solid portion including a region with a Young’s modulus being smaller than or equal to 80% of a Young’s modulus of a reference sample that is fabricated by using a same type of material as a material of the solid portion without forming any recesses, it has been held that an article’s composition, structure, and method of making are inseparable from its properties, per MPEP 2112. The methods of Tambo and the present specification both require preparation of a silicon substrate which is then thermally oxidized to form an insulating layer comprising silicon oxide thereon, after which a beam layer of single crystal silicon is formed via chemical vapor deposition on the resulting insulating layer (Present Specification PGPub: para. [0060] and [0071]; Tambo: para. [0086] and [0122]). Afterward, a plurality of through holes are formed in the beam layer via electron beam lithography (Present Specification PGPub: para. [0071]; Tambo: para. [0123]). With the exception of beam layer thickness, periodicity, through hole diameter, and solid portion size, the materials and process steps of Tambo and the present specification are substantially identical (or in this case, explicitly identical) (see above discussion). Turning further to Applicant’s disclosure, Figure 5 of the present specification provides a plot comparing solid portion minimum size to the claimed elastic (i.e, Young’s) modulus property (Present Specification PGPub: Fig. 5). Paragraph [0081] of Applicant’s specification admits that “the elastic modulus having been so far regarded as a physical property value specific to a material can be controlled by adjusting the minimum size N of the solid portion” (Present Specification PGPub: para. [0081]). In other words, as best understood from Applicant’s specification, if the materials of Tambo are the same as Applicant’s (i.e., at least silicon crystal silicon for the beam layer formed by chemical vapor deposition on an oxidized silica layer) and the method of through hole formation is the same as Applicant’s (i.e., via electron beam lithography), then the relationship found in Figure 5 of Applicant’s specification should hold for the structure of Tambo and its associated solid portion size range (see above discussion). The solid portion size range of Tambo (i.e., 50 nm or less) overlaps entirely within the range of values in Applicant’s Figure 5 possessing the claimed Young’s modulus property (i.e., roughly those values below 100 nm) (see above discussion). It can be concluded, therefore, that since the solid portion size range of Tambo implies a matching overlapping range for Young’s modulus relative to a reference sample, and the values for solid portion size disclosed in Tambo are within the range of values exhibiting the claimed Young’s modulus relationship, the structure of Tambo must inherently possess a Young’s modulus relationship according to the present claims (i.e., the structure, composition, and method of making disclosed in Tambo is substantially identical to that of the claimed invention at least insofar the claimed Young’s modulus property is concerned) (see above discussion). In addition, since D/P ≥ 0.5 is unbounded above and P is a minimum of 1 nm, then the range for D (i.e., Diameter) of Tambo is greater than or equal to 0.5 (i.e., D / 1 nm ≥ 0.5 implies D ≥ 0.5 nm) (see above discussion). This range overlaps the claimed range of equal to or greater than 400 nm and equal to or less than 1600 nm, thereby establishing a prima facie case of obviousness, per MPEP 2144.05.
With regards to claim 10, Tambo discloses a thickness for beam layer 403 (i.e., which is identical to through hole depth) of not less than 10 nm to nor more than 500 nm (Tambo: para. [0140]). Since the opening diameter is greater than or equal to 0.5 nm, it is clear that the ratio of depth to opening size must be less than 1000 (i.e., 500 nm / 0.5 nm = 1000) (see above discussion). This range overlaps the claimed range of greater than or equal to 1 and smaller than or equal to 10, thereby establishing a prima facie case of obviousness.
With regards to claim 11, Tambo discloses a thickness for beam layer 403 (i.e., which is identical to through hole depth) of not less than 10 nm to nor more than 500 nm (Tambo: para. [0140]). Since the opening diameter is greater than or equal to 0.5 nm, it is clear that the ratio of depth to opening size must be less than 1000 (i.e., 500 nm / 0.5 nm = 1000) (see above discussion). This range overlaps the claimed range of greater than or equal to 1 and smaller than or equal to 10, thereby establishing a prima facie case of obviousness.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Tambo et al as applied to claim 1 above, and in further view of Mitrovic et al (US 2017/0069818 A1).
With regards to claim 5, Tambo discloses a solid material as applied to claim 1 above (see above discussion). Tambo does not appear to explicitly disclose its recesses as rectangular in the plan view of its three-dimensional structure. However, Tambo notes that its constituent elements are not restricted in shape, and specifically, its through holes need not be circular (Tambo: para. [0078] and [0119]).
Mitrovic is directed to a phononic structure comprising a plurality of rectangular holes (Mitrovic: para. [0002], [0016]-[0017], [0047], and [0064]; Fig. 6). Mitrovic teaches that different groups of thermal phonons can provide different contributions to thermal conductivity, as each group is associated with a mean free path, and such paths are dependent on phononic feature size (Mitrovic: para. [0040]-[0041]) In particular, Mitrovic teaches that producing a phononic structure having multiple different regions with different mean free paths enables the formation of interfaces of dissimilar phonon energy band structure, the presence of which enhances a reduction in thermal conductivity (Mitrovic: para. [0055]-[0057]). It is noted that due to the presence of two separate sizes (i.e., a length dimension and a width dimension), rectangular through holes result in the formation of multiple different mean free paths (Mitrovic: para. [0032]; Figs. 5 and 6). Tambo and Mitrovic are analogous art in that they are related to the same field of endeavor of phononic structures comprising phononic features in the form of holes (Tambo: para. [0074]-[0075]; Mitrovic: para. [0032]). A person of ordinary skill in the art would have found it obvious to have substituted the rectangular hole shape of Mitrovic for the circular hole shape of Tambo in order to form a phononic structure having multiple mean free paths, thereby improving the thermal conductivity reduction of the phononic structure of Tambo (Mitrovic: para. [0032], [0040]-[0041], [0055]-[0057]; Figs. 5 and 6).
Response to Arguments
Applicant’s arguments with respect to the claim objection and rejection under 35 U.S.C. 112(b) have been fully considered and they are found persuasive. Applicant has added an “a” to claim 1, and therefore, the objection to claim 1 has been withdrawn. In addition, Applicant has deleted the language previously indicated as indefinite, and therefore, the rejection under 35 U.S.C. 112(b) has been withdrawn.
The remainder of Applicant’s arguments have been fully considered, but they are not found persuasive.
Applicant argues that paragraph [0119] of Tambo discloses a ratio D/P of less than or equal to 0.9, which implies an upper limit diameter for the through holes of Tambo of 270 nm. Applicant concludes that Tambo fails to teach the claimed through hole diameter range of greater than or equal to 400 nm and less than or equal to 1600 nm. This argument is not found persuasive as Tambo does not explicitly require its ratio D/P to have an upper bound of 0.9. Tambo states that the ratio D/P may have an upper bound of, for example, 0.9. That Tambo discloses an example having an upper bound of 0.9 does not mean that Tambo requires an upper bound of 0.9, and therefore, Tambo is not found to teach away from the presently claimed range for through hole diameter.
Applicant argues that Tambo fails to teach the claimed through hole size opening, and therefore, Tambo fails to teach the claimed Young’s modulus. This argument is not found persuasive as Tambo does not fail to teach the claimed through hole size opening. Applicant’s argument is predicated on Tambo’s disclosure of an upper bound for the ratio D/P of 0.9. However, Tambo does not actually require its ratio D/P to have an upper bound of 0.9, and rather, Tambo only discloses 0.9 as a particular example of a possible upper bound.
Applicant argues that there is no motivation to modify the size of the through holes of Tambo to arrive at the claimed range, as Tambo discloses a periodicity of not less than 1 nm and not more than 300 nm, and Tambo notes that a D/P of less than 0.9 leads to prevented contact between through holes. Applicant’s arguments are not found persuasive as periodicity is not the same as diameter. That Tambo discloses a periodicity of not less than 1 nm and not more than 300 nm does not mean that the diameter of Tambo is limited to this range. In addition, despite the teaching of prevented contact between through holes, again, Applicant is referring to an example of an upper bound. Tambo does not actually state that a ratio of 0.9 or below is necessary from the viewpoint of preventing contact.
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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/E.W./
Examiner, Art Unit 1783
/MARIA V EWALD/Supervisory Patent Examiner, Art Unit 1783