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 .
Election/Restrictions
Applicant’s election without traverse of Invention III and Species D drawn to Fig. 7 and Species H drawn to Fig. 4 in the reply filed on 10/30/2025 is acknowledged.
Claims 1-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 10/30/2025.
Response to Amendment
Claims 16-35 are currently pending. In response to the Office Action mailed 10/09/2025 Applicant newly added claims 21-35 and canceled claims 1-15.
Claim Objections
Claim 34 is objected to because of the following informalities: the claim refers to a “second substrate,” without designating or referencing a first substrate. Appropriate correction is required.
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 28 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 28 recites the following limitation: "the metalens has a focal length in the range from 1 pm to 5 pm." The specification originally filed on June 26, 2023 does not disclose the elements recited in claim 28. Information contained in any one of the specification, claims or drawings of the application as filed may be added to any other part of the application without introducing new matter. MPEP 2163.06; see also 35 U.S.C. 132 - No amendment shall introduce new matter into the disclosure of the invention.
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 (i.e., changing from AIA to pre-AIA ) 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, 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.
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 16-30 and 34-35 are rejected under 35 U.S.C. 103 as being unpatentable over US 20230215889 A1 to Yoshita et al. in view of US 12153233 B1 to Xin et al. further in view of US 20230314776 A1 to Yi et al.
Regarding Claim 16. Yoshita discloses a method comprising: providing a semiconductor body (Fig. 1 semiconductor substrate 10) having a first side and a second side (as shown in Fig. 1); forming a photodetecting region comprising a photosensitive structure in the semiconductor body (See Fig. 1 receiving section 11, para 51 “This light receiving section 11 is, for example, PIN (Positive Intrinsic Negative) type photodiode PD and has a pn junction in a predetermined region of the semiconductor substrate 10”).
Yoshita does not specifically disclose patterning the second side of the semiconductor body to form nanostructures comprising a metalens, wherein the nanostructures are configured so that the metalens focuses electromagnetic radiation having a wavelength in the infrared range on the photosensitive structure.
However, Xin discloses patterning the second side of the semiconductor body to form nanostructures comprising a metalens (See Fig. 11, Col 9 lines 54-55 “lenses 48 may be formed from nanostructures that are etched into the surface of a layer of semiconductor”), to help enhance metalens performance and potentially reduce fabrication complexity (See Col 9 lines 61-63).
Further, Yi discloses the nanostructures are configured so that the metalens focuses electromagnetic radiation having a wavelength in the infrared range on the photosensitive structure (See Fig. 1 and para 14 “metalens is configured to bend the light of thermal radiation of the target object and converge the light onto the surface of the infrared focal plane array detector”), as the substitution of one known element for another yields predictable results to one of ordinary skill in the art (MPEP2143(I)(B), KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007)).
Therefore, it would have been obvious to a person having ordinary skill in the art before Applicant’s effective filing date to include patterning the second side of the semiconductor body to form nanostructures comprising a metalens, wherein the nanostructures are configured so that the metalens focuses electromagnetic radiation having a wavelength in the infrared range on the photosensitive structure.
Regarding Claim 17. Xin further discloses forming the photodetecting region in the semiconductor body comprises etching a trench in the semiconductor body and filling the trench with a second semiconductor (See Col 9 lines 54-55 and Col 5, lines 49-51“Nanostructures 32 may be formed from dielectric, semiconductor, and/or other materials transparent to light at the operating wavelengths of interest for the metalens”).
Regarding Claim 18. Yi further discloses depositing an optical material over the nanostructures, wherein the optical material fills spaces between the nanostructures (See Fig. 2 microstructure array film coating 102).
Regarding Claim 19. The combination of Yoshita, Xin and Yi further discloses forming a microlens over the metalens (See at least Yoshita Fig. 1 lens 14).
Regarding Claim 20. Yi further discloses the photosensitive structure is germanium (para 22) and the metalens focuses the electromagnetic radiation having the wavelength in the infrared range on the photosensitive structure (para 14).
Regarding Claim 21. Xin further discloses the semiconductor body has a high index of refraction (e.g., 2.2-3.5) (See Col 9 lines 58-59). In addition, Yi further discloses the optical material is a germanium coating (See para 63, where it is noted that germanium has an index of refraction of at least 4.0).
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of "about 1-5%" while the claim was limited to "more than 5%." The court held that "about 1-5%" allowed for concentrations slightly above 5% thus the ranges overlapped.); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) (Claim reciting thickness of a protective layer as falling within a range of "50 to 100 Angstroms" considered prima facie obvious in view of prior art reference teaching that "for suitable protection, the thickness of the protective layer should be not less than about 10 nm [i.e., 100 Angstroms]." The court stated that "by stating that ‘suitable protection’ is provided if the protective layer is ‘about’ 100 Angstroms thick, [the prior art reference] directly teaches the use of a thickness within [applicant’s] claimed range."). (See MPEP 2144.05).
Therefore, it would have been obvious to a person having ordinary skill in the art before Applicant’s effective filing date to include the optical material and the semiconductor body have a difference in refractive index of at least 1.0.
Regarding Claim 22. Yi further discloses the nanostructures are spaced apart from one another with spacings that vary in relation to distance from a center of the metalens (See para 78).
Regarding Claim 23. Yi further discloses the nanostructures are spaced apart from one another with spacings that vary in a periodic pattern in relation to distance from the center of the metalens (See Fig. 2 and para 78).
Regarding Claim 24. Yi further discloses the nanostructures are spaced apart from one another with spacings that monotonically increase or decrease in relation to distance from the center of the metalens in a sequence that repeats (See Fig. 2 and para 78).
Regarding Claim 25. Yi further discloses the sequence comprises three or more distinct spacings (See Fig. 2, Fig. 8 and para 78).
Regarding Claim 26. Yi further discloses the nanostructures have sizes that vary in a periodic pattern in relation to distance from a center of the metalens (See Fig. 2 and para 78).
Regarding Claim 27. The combination of Yoshita, Xin and Yi further discloses the metalens is square (See at least Yoshita Fig. 4B). Further, it would have been obvious to include the metalens is square because the substitution of one known shape for another yields predictable results to one of ordinary skill in the art (MPEP2143(I)(B), KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007)).
Regarding Claim 28. Yoshita, Xin and Yi do not specifically disclose that the metalens has a focal length in the range from 1 pm to 5 pm.
However, Xin discloses patterning the metalens to produce the desired focal length (Col 5 lines 62-65).
The focal length of the meta lens is a result effective variable in that it is dependent of the desired application of the metalens and patterned to produce the desired focal length.
Therefore, it would have been obvious to a person having ordinary skill in the art before applicant’s effective filing date to include the metalens has a focal length in the range from 1 pm to 5 pm for a particular application is based on a result effective variable and would require routine skill in the art. Furthermore, it has been held that that determining the optimum value of a result effective variable involves only routine skill in the art (see MPEP 2144.05 (II (A) and (B)).
Regarding Claim 29. Yoshita, Xin and Yi do not specifically disclose that the nanostructures have widths in the range from 10 nm to 500 nm.
However, Xin discloses patterning the metalens to produce the desired phase changes for light passing through (Col 5 lines 62-65).
The focal length of the meta lens is a result effective variable in that it is dependent of the desired application of the metalens and patterned to produce the desired focal length.
Therefore, it would have been obvious to a person having ordinary skill in the art before applicant’s effective filing date to include the nanostructures have widths in the range from 10 nm to 500 nm for a particular application is based on a result effective variable and would require routine skill in the art. Furthermore, it has been held that that determining the optimum value of a result effective variable involves only routine skill in the art (see MPEP 2144.05 (II (A) and (B)).
Regarding Claim 30. Xin further discloses the nanostructures comprise pillars of the semiconductor body formed by the patterning process (See Fig. 11).
Regarding Claim 34. Yoshita discloses a method comprising: providing a semiconductor body (Fig. 1 semiconductor substrate 10) having a first side and a second side (as shown in Fig. 1); forming an infrared-absorbing structure in or on the first side (See Fig. 1 receiving section 11, para 51 “This light receiving section 11 is, for example, PIN (Positive Intrinsic Negative) type photodiode PD and has a pn junction in a predetermined region of the semiconductor substrate 10”); forming a back-end-of-line metal interconnect structure over the first side (See at least Fig. 1 wiring layer 22); bonding the semiconductor body to a second substrate (See at least Fig. 1 layer 27).
Yoshita does not specifically disclose thinning the semiconductor body from the second side; and etching the second side to define nanostructures, wherein the nanostructures provide a metalens operative to focus infrared radiation on the infrared-absorbing structure.
However, Xin discloses thinning the semiconductor body from the second side; and etching the second side to define nanostructures (See Fig. 11, Col 9 lines 54-55 “lenses 48 may be formed from nanostructures that are etched into the surface of a layer of semiconductor”), to help enhance metalens performance and potentially reduce fabrication complexity (See Col 9 lines 61-63).
Further, Yi discloses the nanostructures provide a metalens operative to focus infrared radiation on the infrared-absorbing structure (See Fig. 1 and para 14 “metalens is configured to bend the light of thermal radiation of the target object and converge the light onto the surface of the infrared focal plane array detector”), as the substitution of one known element for another yields predictable results to one of ordinary skill in the art (MPEP2143(I)(B), KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007)).
Therefore, it would have been obvious to a person having ordinary skill in the art before Applicant’s effective filing date to include patterning the second side of the semiconductor body to form nanostructures comprising a metalens, wherein the nanostructures are configured so that the metalens focuses electromagnetic radiation having a wavelength in the infrared range on the photosensitive structure.
Regarding Claim 35. Yi further discloses the nanostructures vary in one or more of width, shape, spacing, and height in a pattern organized around a center of the metalens (See Fig. 2, Fig. 8 and para 78).
Claims 31-33 are rejected under 35 U.S.C. 103 as being unpatentable over US 20230215889 A1 to Yoshita et al. in view of US 20220399393 A1 to Kang et al. further in view of US 12153233 B1 to Xin et al. further in view of US 20230314776 A1 to Yi et al.
Regarding Claim 31. Yoshita discloses A method comprising: providing a semiconductor body (Fig. 1 semiconductor substrate 10) having a first side and a second side (as shown in Fig. 1);
Yoshita does not specifically disclose etching a trench in the first side; depositing a second semiconductor in the trench, wherein the second semiconductor comprises germanium and forms an infrared-absorbing structure within the trench; thinning the semiconductor body from the second side; forming a mask over the second side and etching through openings in the mask to form a pattern of protrusions or indentations on or in the second side; and depositing an optical material over and between the protrusions, wherein the pattern of protrusions and the optical material form a metalens operative to focus infrared radiation on the infrared-absorbing structure.
However, Kang discloses etching a trench in the first side; depositing a second semiconductor in the trench (See at least Fig. 9A-9F SiGe material 300, para 45 “to form a plurality of openings (or trenches). In different embodiments, forming the openings may include different manufacturing steps, for example, mask deposition, optically exposing the mask, etching”) the second semiconductor comprises germanium and forms an infrared-absorbing structure within the trench (See para 46 “SiGe material 300”), as applying a known technique to a known device (method, or product) ready for improvement to yield predictable results to one of ordinary skill in the art (MPEP2143(I)(D), KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007)).
Xin also discloses thinning the semiconductor body from the second side; to form a pattern of protrusions or indentations on or in the second side (See Fig. 11, Col 9 lines 54-55 “lenses 48 may be formed from nanostructures that are etched into the surface of a layer of semiconductor”), to help enhance metalens performance and potentially reduce fabrication complexity (See Col 9 lines 61-63).
Further, Yi discloses forming a mask over the second side and etching through openings in the mask to form a pattern of protrusions or indentations (para 79 “ICP etching adopts the Bosch process, and the photoresist pattern generated by stepping photolithography is used as an etching mask to obtain the metasurface microstructure array 101”) depositing an optical material over and between the protrusions (See Fig. 2 microstructure array film coating 102), wherein the pattern of protrusions and the optical material form a metalens operative to focus infrared radiation on the infrared-absorbing structure (See Fig. 1 and para 14 “metalens is configured to bend the light of thermal radiation of the target object and converge the light onto the surface of the infrared focal plane array detector”), as the substitution of one known element for another yields predictable results to one of ordinary skill in the art (MPEP2143(I)(B), KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007)).
Therefore, it would have been obvious to a person having ordinary skill in the art before Applicant’s effective filing date to include etching a trench in the first side; depositing a second semiconductor in the trench, wherein the second semiconductor comprises germanium and forms an infrared-absorbing structure within the trench; thinning the semiconductor body from the second side; forming a mask over the second side and etching through openings in the mask to form a pattern of protrusions or indentations on or in the second side; and depositing an optical material over and between the protrusions, wherein the pattern of protrusions and the optical material form a metalens operative to focus infrared radiation on the infrared-absorbing structure.
Regarding Claim 32. Yi further discloses the protrusions have an orderly variation in width that contributes a lensing effect to the metalens (See Fig. 2, Fig. 8 and para 78).
Regarding Claim 33. Yi further discloses the protrusions have an orderly variation in spacing that contributes a lensing effect to the metalens (See Fig. 2, Fig. 8 and para 78).
Conclusion
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/EDMOND C LAU/ Primary Examiner, Art Unit 2871