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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 6/16/2026 has been entered.
Status Of Claims
This Office Action is in response to an amendment received 6/16/2026 in which Applicant lists claims 2-3, 5-12, 14-15, 17-21, 23-28 as being original, claims 4, 16, 22 as being previously presented, and claims 1, 13 as being currently amended. It is interpreted by the examiner that claims 1-28 are pending.
If applicant is aware of any relevant prior art, or other co-pending application not already of record, they are reminded of their duty under 37 CFR 1.56 to disclose the same.
Response to Arguments
Applicant's arguments filed 6-16/2026 have been fully considered but they are not persuasive.
Applicant’s arguments on pages 9-10 of the remarks regarding the objection to the line “The above identified application is hereby incorporated herein by reference in its entirety” in the specification being new matter are not persuasive and are respectfully traversed. The issue is not with the filing of a corrected ADS to include a claim of priority to 63/432504, but rather that MPEP 608.01(p)(I)(B) states that an incorporation by reference statement added after an application's filing date is not effective since no new matter can be added to an application after its filing date (See also 35 U.S.C. 132(a)). Therefore, the statement “The above identified application is hereby incorporated herein by reference in its entirety” should be removed.
Applicant’s arguments on pages 10-12 and 15-16 of the remarks that Hoose does not disclose the newly amended limitations of claim 1, or the dependent claims, are not persuasive and are respectfully traversed. As set forth in the rejections below, at least figure 14 of Hoose teaches the newly amended limitations.
Applicant’s arguments on pages 14-16 of the remarks that Smith (US 2006/0152809 A1) does not disclose the newly amended limitations of claim 13, or the dependent claims, are not persuasive and are respectfully traversed. As set forth in the rejections below, at least figure 3 and paragraphs [0067]-[0069] of Smith teaches the newly amended limitations.
Applicant’s arguments on page 10 of the remarks, regarding the previous 102(a)(1) rejection of claim 1 in view of Hoose, state that “Hoose does not teach all the limitations of claim 1”, but fails to specifically point out what limitations from claim 1 are not taught by the teachings of Hoose.
Applicant’s arguments on page 14 of the remarks, regarding the previous 103 rejection of claim 13 in view of Smith, state that “Smith does not teach or suggest all the limitations of claim 13, as pending when the Final Action was issued”, but fails to specifically point out what limitations from claim 13 are not taught by the teachings of Smith.
Applicant’s arguments on page 15 of the remarks, regarding the previous 103 rejection of claims 7 and 9 in view of Hoose, states “that claims 7 and 9, as pending when the Final Action was issued, are patentable over Hoose”, but fails to specifically point out what limitations from claims 7 and 9 are not taught by the teachings of Hoose.
Applicant’s arguments on page 16 of the remarks, regarding the previous 103 rejection of claims 14-28 in view of Smith and/or Smith in view of Hoose, states “that claims 14-28, as pending when the Final Action was issued, are patentable over the cited references and all combinations thereof”, but fails to specifically point out what limitations from claims 14-28 are not taught by the teachings of Smith and/or Hoose.
Therefore, applicant's arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the previously presented claims patentably distinguished them from the references.
Further, Counsel's assertion is merely an argument unaccompanied by evidentiary support, and, thus, is insufficient to rebut Examiner's finding of obviousness. Arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997) (“An assertion of what seems to follow from common experience is just attorney argument and not the kind of factual evidence that is required to rebut a prima facie case of obviousness.”). MPEP §§ 2145, 2129, 2144.03, 716.01(c).
Additionally, the limitations of the claims were identified and correlated with the references as indicated above and in the Final Office Action mailed 3/16/2026. Applicant has merely made the allegation that the limitations are not met, and thus has not provided any evidence or argument directed to how the identified elements in the Final Office Action failed to meet the claimed limitations or to how the identified elements are otherwise distinguishable from the claimed limitations as is required by 37 CFR §1.111(b).
Therefore, the Examiner has met all requirements establishing a prima facie case: all factual findings required by Graham were supplied in the previous and present Actions; the references are related art, and Applicant has supplied no evidence that there is no reasonable expectation of success; all claim limitations were met in the previous and present Actions, and Applicant has merely made the allegation that the limitations are not met, and thus has not provided any evidence or argument directed to how the identified elements in the previous Actions failed to meet the claimed limitations or to how the identified elements are otherwise distinguishable from the claimed limitations. Neither has Applicant supplied any evidence or argument addressing any failure of Examiner's application of the TSM test, pursuant to current governing law (see KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385 (U.S. 2007)).
It is further noted that “[a] person of ordinary skill in the art is also a person of ordinary creativity, not an automaton.” KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385 (U.S. 2007).
Specification
The amendment filed 12/7/2023 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: “The above identified application is hereby incorporated herein by reference in its entirety”.
Applicant is required to cancel the new matter in the reply to this Office Action.
The examiner suggests that the applicant remove the line “The above identified application is hereby incorporated herein by reference in its entirety”.
The attempt to incorporate subject matter into this application by reference to Provisional Patent Application 63/432,504 is ineffective because, as per MPEP 608.01(p)(I)(B), an incorporation by reference statement added after an application's filing date is not effective since no new matter can be added to an application after its filing date (See also 35 U.S.C. 132(a)).
The incorporation by reference will not be effective until correction is made to comply with 37 CFR 1.57(b), (c), or (d). If the incorporated material is relied upon to meet any outstanding objection, rejection, or other requirement imposed by the Office, the correction must be made within any time period set by the Office for responding to the objection, rejection, or other requirement for the incorporation to be effective. Compliance will not be held in abeyance with respect to responding to the objection, rejection, or other requirement for the incorporation to be effective. In no case may the correction be made later than the close of prosecution as defined in 37 CFR 1.114(b), or abandonment of the application, whichever occurs earlier.
Any correction inserting material by amendment that was previously incorporated by reference must be accompanied by a statement that the material being inserted is the material incorporated by reference and the amendment contains no new matter. 37 CFR 1.57(f).
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 3 and 15 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 3 fails to further limit the subject matter of claim 1, and claim 15 fails to further limit the subject matter of claim 13. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 3-7, 15-19, 21-25 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The intended scope of claim 3 is unclear since claim 3 only recites limitations already set forth in claim 1, and the intended scope of claim 15 is unclear since claim 15 only recites limitations already set forth in claim 13.
Claims 4-7 and 16-19 are rejected for inheriting the same indefiniteness of claim 3, or claim 15, from which they depend.
Claim 21 depends from claim 13, and recites another “a first refractive index (RI) material” and another “a second refractive index (RI) material”, but it is not clear if these first and second refractive index materials are the same as those already recited in claim 13.
Additionally, in claims 21, 22, 23, 24 and 25, it is not clear which “a first refractive index (RI) material” and “a second refractive index (RI) material” are being referred to by “the first refractive index (RI) material” and “the second refractive index (RI) material)”. Therefore, claims 21-23 are indefinite.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-3, 5, 8, 10-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hoose, U.S. Patent Application Publication Number 2009/0059375 A1, of record (hereafter Hoose).
Regarding claim 1, as best understood, Hoose discloses an immersion grating based morphology comprising:
a plurality of grating lines (see at least figure 1, 14 and/or 15, element 5);
an intermediate multi-layer structure (see at least figure 1, 14 and/or 15, elements 3, 33 and 4); and
a substrate bearing both of the plurality of grating lines and the intermediate multi-layer structure (see at least element 1 and/or element 32);
wherein the intermediate multi-layer structure comprises a plurality of intermediate layers (see at least figure 1, element 33, paras. [0043]-[0046]; and/or figure 14 and/or 15, elements 4 and 33);
wherein the plurality of intermediate layers comprises two intermediate layers comprising a first refractive index (RI) material (see at least elements 3, 4 and 33, including multiple intermediate layers of Al2O3, n=1.9) and a third intermediate layer comprising a second refractive index (RI) material (see at least elements 3, 4 and 33, including multiple intermediate layers of SiO2, n=1.56);
wherein the third intermediate layer comprising the second refractive index (RI) material is disposed between the two intermediate layers comprising the first refractive index (RI) material (see at least elements 3, 4 and 33, including intermediate layers of SiO2 between multiple intermediate layers of Al2O3, all having different thicknesses);
wherein the first refractive index (RI) material and the second refractive index (RI) material are different refractive index (RI) material (see at least figure 1, element 33, paras. [0043]-[0046]; and/or figure 14 and/or 15, elements 4 and 33, elements Al2O3 and SiO2 having refractive indices of 1.9 and 1.56 respectively);
wherein the two intermediate layers comprising the first refractive index (RI) material have different thicknesses (figure 14 and/or 15, elements 4 and 33, element Al2O3 having thicknesses 63nm, 29.4nm and 42nm); and
wherein the intermediate multi-layer structure is configured to meet predetermined performance criteria, wherein the performance criteria comprises one or more parameters or conditions relating to reflective losses of the immersion grating, and wherein the one or more parameters or conditions relating to the reflective losses comprise prohibiting at least some of transmitted orders for an input beam applied beyond critical angle of the substrate (see at least figure 1, 14 and/or 15, element 32, paras. [0043]-[0046], wherein metal layer 32 prevents transmission by reflecting light).
The recitation “immersion grating based morphology” has not been given significant patentable weight under MPEP Chapter 2111.02 [R-3] – Effect of Preamble because the recitation occurs in the preamble where it merely recites the intended use of a structure and fails to structurally limit the body of the claim.
MPEP 2112.02 (II) states that “statements in the preamble reciting the purpose of intended use of the claimed invention must be evaluated to determine whether the recited purpose or intended use results in a structural difference (or, in the case of process claims, manipulative difference) between the claimed invention and the prior art. If so, then the recitation serves to limit the claims.” Additionally, In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962), is a case where the “statement of intended use in an apparatus claim did not distinguish over the prior art apparatus”.
Regarding claim 2, as best understood, Hoose discloses the limitations of claim 1, and wherein the plurality of intermediate layers comprises a plurality of dielectric layers (see at least figure 1, element 33, paras. [0043]-[0046]; and/or figure 14 and/or 15, elements 4 and 33).
Regarding claim 3, as best understood, Hoose discloses the limitations of claim 1, and wherein the plurality of intermediate layers comprises one or more layers comprising a first refractive index (RI) material and one or more layers comprising a second refractive index (RI) material, and wherein the first refractive index (RI) material and the second refractive index (RI) material are different (see at least figure 1, element 33, paras. [0043]-[0046]; and/or figure 14 and/or 15, elements 4 and 33, elements Al2O3 and SiO2 having refractive indices of 1.9 and 1.56 respectively).
Regarding claim 5, as best understood, Hoose discloses the limitations of claim 3, and wherein the one or more layers comprising the first refractive index (RI) material and one or more layers comprising the second refractive index (RI) material are arranged in an alternating manner (see at least figure 1 and/or 14 and/or 15, element 33, paras. [0043]-[0046]).
Regarding claim 8, as best understood, Hoose discloses the limitations of claim 1, and wherein each of the plurality of grating lines comprises a single grating layer (see at least figure 1 and/or 15, element 5).
Regarding claim 10, as best understood, Hoose discloses the limitations of claim 1, and wherein the substrate comprises glass based material (see at least figure 1, element 1, paras. [0048], [0049]).
Regarding claim 11, as best understood, Hoose discloses the limitations of claim 1, and wherein one or more morphology parameters or characteristics of the immersion grating based morphology are set or adjusted to meet the predetermined performance criteria (see at least figure 1 and/or 14 and/or 15, elements 5, 32, 33, paras. [0043]-[0046]).
Regarding claim 12, as best understood, Hoose discloses the limitations of claim 11, and wherein the one or more morphology parameters or characteristics comprise one or more of: line height of the plurality of grating lines, line width of the plurality of grating lines, period of the plurality of grating lines, duty cycle of the plurality of grating lines, selection of material used in the plurality of grating lines, number of layers in the plurality of intermediate layers, thickness of each of the plurality of intermediate layers, and selection of material used in each of the plurality of intermediate layers (see at least figure 1 and/or 14 and/or 15, elements 5, 32, 33, paras. [0043]-[0046]).
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 4, 6, 7 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Hoose, U.S. Patent Application Publication Number 2009/0059375 A1, of record (hereafter Hoose) in view of Perry et al., U.S. Patent Number 5,907,436 (hereafter Perry).
Regarding claims 4 and 6, Hoose does not specifically disclose that the SiO2 layers of repeating reflecting pair layer 33 may have different thicknesses, or that the first refractive index (RI) material comprises a low refractive index (RI) material and the second refractive index (RI) material comprises a high refractive index (RI) material, wherein the low refractive index (RI) material and the high refractive index (RI) material differ based on, at least, the high refractive index (RI) material having a higher refractive index (RI) relative to the low refractive index (RI) material.
However, Hoose refers to Perry as describing typical alternating high and low layers (see at least paragraph [0020] of Hoose), and states that the multilayer reflection stack of figures 14 and 15 are as described in Perry (see at least paragraph [0060] of Hoose).
Perry describes alternating high-low dielectric stacks with may include dielectric materials such as SiO2, Ta2O4 and TiO2 (see at least column 4, lines 43-56 of Perry). Perry additionally describes that multilayer mirrors with controllable properties may be produced by proper selection of materials and design of the optical thickness of the layers (see at least column 2, lines 24-30 of Perry), and that in a multilayer dielectric diffraction grating, specular reflection, diffraction and transmission is determined by adjusting the number of layers, the thickness of the layers and the depth and shape of the grooves (see at least claim 19 of Perry).
Therefore, it would have been obvious to an ordinarily skilled artisan before the effective filing date of the claimed invention to design/optimize the thicknesses of the dielectric material layers in layer 33 to achieve desired optical properties, resulting in the SiO2 layers having different thicknesses such that the two intermediate layers having a first refractive index (RI) material may be the SiO2 layers and the third intermediate layer having a second refractive index (RI) material may be the interposed Al2O3 layer, such that the first refractive index (RI) material comprises a low refractive index (RI) material and the second refractive index (RI) material comprises a high refractive index (RI) material, wherein the low refractive index (RI) material and the high refractive index (RI) material differ based on, at least, the high refractive index (RI) material having a higher refractive index (RI) relative to the low refractive index (RI) material, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art, and since it has been held to be within the ordinary skill of workers in the art to select a known material on the basis of its suitability for the intended use. One would have been motivated to have the first refractive index (RI) material comprise a low refractive index (RI) material and the second refractive index (RI) material comprise a high refractive index (RI) material, wherein the low refractive index (RI) material and the high refractive index (RI) material differ based on, at least, the high refractive index (RI) material having a higher refractive index (RI) relative to the low refractive index (RI) material so that the apparatus has appropriate thicknesses and differences between the refractive indices of the materials used to achieve desired diffraction, transmission, reflection and interference properties. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235. Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945).
Regarding claim 7, as best understood, Hoose further discloses that the materials listed for use in the grating structure, adjusting layer and reflecting layer are just examples, and other materials may be used (para. [0043]).
Hoose does not specifically disclose that the second refractive index (RI) material comprises tantalum pentoxide (Ta205).
However, Hoose refers to Perry as describing typical alternating high and low layers (see at least paragraph [0020] of Hoose), and states that the multilayer reflection stack of figures 14 and 15 are as described in Perry (see at least paragraph [0060] of Hoose).
Perry describes alternating high-low dielectric stacks with may include dielectric materials such as SiO2, Ta2O4 and TiO2 (see at least column 4, lines 43-56 of Perry). Perry additionally describes that multilayer mirrors with controllable properties may be produced by proper selection of materials and design of the optical thickness of the layers (see at least column 2, lines 24-30 of Perry), and that in a multilayer dielectric diffraction grating, specular reflection, diffraction and transmission is determined by adjusting the number of layers, the thickness of the layers and the depth and shape of the grooves (see at least claim 19 of Perry).
Therefore, it would have been obvious to an ordinarily skilled artisan before the effective filing date of the claimed invention to select appropriate materials for the second refractive index material, such as tantalum pentoxide, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art, and since it has been held to be within the ordinary skill of workers in the art to select a known material on the basis of its suitability for the intended use. One would have been motivated to have tantalum pentoxide for the second refractive index material, for the purpose of choosing appropriate materials for the first and second refractive index materials so that the apparatus has appropriate differences between the refractive indices of the materials used to achieve desired diffraction, transmission, reflection and interference properties. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235. Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945).
Regarding claim 9, as best understood, Hoose further discloses that the materials listed for use in the grating structure, adjusting layer and reflecting layer are just examples, and other materials may be used, including silicon (para. [0043]).
Hoose does not specifically disclose that each of the plurality of grating lines comprises silicon (Si).
However, Hoose refers to Perry as describing typical alternating high and low layers (see at least paragraph [0020] of Hoose), and states that the multilayer reflection stack of figures 14 and 15 are as described in Perry (see at least paragraph [0060] of Hoose).
Perry describes alternating high-low dielectric stacks with may include dielectric materials such as SiO2, Ta2O4 and TiO2 (see at least column 4, lines 43-56 of Perry). Perry additionally describes that multilayer mirrors with controllable properties may be produced by proper selection of materials and design of the optical thickness of the layers (see at least column 2, lines 24-30 of Perry), and that in a multilayer dielectric diffraction grating, specular reflection, diffraction and transmission is determined by adjusting the number of layers, the thickness of the layers and the depth and shape of the grooves (see at least claim 19 of Perry).
Therefore, it would have been obvious to an ordinarily skilled artisan before the effective filing date of the claimed invention to select appropriate materials for the grating lines, such as silicon (Si), since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art, and since it has been held to be within the ordinary skill of workers in the art to select a known material on the basis of its suitability for the intended use. One would have been motivated to have grating lines comprise silicon (Si), for the purpose of choosing appropriate materials for the grating lines to achieve desired diffraction, transmission and reflection properties. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235. Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945).
Claims 13-23, 25-28 are rejected under 35 U.S.C. 103 as being unpatentable over Smith, U.S. Patent Application Publication Number 2006/0152809 A1, of record (hereafter Smith).
Regarding claim 13, as best understood, Smith discloses a transmission grating based morphology comprising:
a plurality of grating lines (see at least elements 125, 110, 110b, and/or 510a’ and 510b’);
an intermediate multi-layer structure (see at least elements 120 and 110a and/or 520); and
a substrate bearing both of the plurality of grating lines and the intermediate multi- layer structure (see at least element 130 and/or 530);
wherein the intermediate multi-layer structure comprises a plurality of intermediate layers (see at least elements 120 and 110a, paras. [0047], [0067]-[0069], [0074]);
wherein the plurality of intermediate layers comprises two intermediate layers comprising a first refractive index (RI) material (see at least elements 120 and 110a, paras. [0067]-[0069], [0074], wherein the bottom phase grating material (110a) is SiO2 with a thickness of 0.294µm and the alternating layers of the dielectric stack (120) includes SiO2 with a thickness of 0.2975µm) and a third intermediate layer comprising a second refractive index (RI) material (see at least elements 120 and 110a, paras. [0067]-[0069], [0074], wherein the dielectric stack (120) includes TiO2 with a thickness of 0.198µm);
wherein the third intermediate layer comprising the second refractive index (RI) material is disposed between the two intermediate layers comprising the first refractive index (RI) material (see at least elements 120 and 110a, paras. [0067]-[0069], [0074], wherein SiO2 (layer 110a), TiO2 (layer 120) and layer SiO2 (layer 120) are alternately formed);
wherein the first refractive index (RI) material and the second refractive index (RI) material are different refractive index (RI) material (see at least elements 120 and 110a, paras. [0067]-[0069], [0074], wherein SiO2 has an n=1.444 and TiO2 has an n=2.17);
wherein the two intermediate layers comprising the first refractive index (RI) material have different thicknesses (wherein the bottom phase grating material (110a) is SiO2 with a thickness of 0.294µm and the alternating layers of the dielectric stack (120) includes SiO2 with a thickness of 0.2975µm); and
wherein the intermediate multi-layer structure is configured to meet predetermined performance criteria, wherein the performance criteria comprise one or more parameters or conditions relating to reflective losses of the transmission grating, and wherein the one or more parameters or conditions relating to the reflective losses (see at least paras. [0059]-[0060]) (see at least paras. [0059]-[0060]).
As best understood, Smith does not appear to disclose that the one or more parameters or conditions relating to the reflective losses comprises prohibiting for an input beam applied onto the transmission grating, all outputs beyond first order transmitted orders and first order reflective orders.
However, Smith further discloses that in some embodiments the grating may be designed/optimized such that only minus-first and zero order light is transmitted while only minus-first and zero order light is reflected (see at least para. [0059]), that the grating may be designed/optimized such that transmitted and reflected zero order light may be minimized (see at least para. [0059]), and that the design of the grating may be achieved with the assistance of a design program providing grating efficiency computations, such as “gsolver” (see at least para. [0060]).
Therefore, it would have been obvious to an ordinarily skilled artisan before the effective filing date of the claimed invention to design the apparatus such that the one or more parameters or conditions relating to the reflective losses comprises prohibiting for an input beam applied onto the transmission grating, all outputs beyond first order transmitted orders and first order reflective orders, for the purpose of achieving the desired transmission and reflection characteristics for the grating apparatus.
The recitation “transmission grating based morphology” has not been given significant patentable weight under MPEP Chapter 2111.02 [R-3] – Effect of Preamble because the recitation occurs in the preamble where it merely recites the intended use of a structure and fails to structurally limit the body of the claim.
MPEP 2112.02 (II) states that “statements in the preamble reciting the purpose of intended use of the claimed invention must be evaluated to determine whether the recited purpose or intended use results in a structural difference (or, in the case of process claims, manipulative difference) between the claimed invention and the prior art. If so, then the recitation serves to limit the claims.” Additionally, In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962), is a case where the “statement of intended use in an apparatus claim did not distinguish over the prior art apparatus”.
Regarding claim 14, as best understood, Smith discloses the limitations of claim 13, and wherein the plurality of intermediate layers comprises a plurality of dielectric layers (see at least paras. [0047], [0067]-[0069], [0074]).
Regarding claim 15, as best understood, Smith discloses the limitations of claim 13, and wherein the plurality of intermediate layers comprises one or more layers comprising a first refractive index (RI) material and one or more layers comprising a second refractive index (RI) material, and wherein the first refractive index (RI) material and the second refractive index (RI) material are different (see at least paras. [0047], [0067]-[0069], [0074]).
Regarding claim 16, as best understood, Smith discloses the limitations of claim 15, and wherein the first refractive index (RI) material comprises a low refractive index (RI) material and the second refractive index (RI) material comprises a high refractive index (RI) material, wherein the low refractive index (RI) material and the high refractive index (RI) material differ based on, at least, the high refractive index (RI) material having a higher refractive index (RI) relative to the low refractive index (RI) material (see at least elements 120 and 110a, paras. [0067]-[0069], [0074], wherein SiO2 has an n=1.444 and TiO2 has an n=2.17).
Regarding claim 17, as best understood, Smith discloses the limitations of claim 15, and wherein the one or more layers comprising the first refractive index (RI) material and one or more layers comprising the second refractive index (RI) material are arranged in alternating manner (see at least elements 120 and 110a, paras. [0067]-[0069], [0074], wherein SiO2 (layer 110a), TiO2 (layer 120) and layer SiO2 (layer 120) are alternately formed).
Regarding claim 18, as best understood, Smith discloses the limitations of claim 15, and wherein the first refractive index (RI) material comprises silicon dioxide (SiO2) (see at least elements 120 and 110a, paras. [0067]-[0069], [0074], SiO2 (layer 110a) and SiO2 (layer 120)).
Regarding claim 19, as best understood, Smith discloses the limitations of claim 15, and wherein the second refractive index (RI) material comprises titanium dioxide (TiO2) (see at least elements 120 and 110a, paras. [0067]-[0069], [0074], TiO2 (layer 120)).
Regarding claim 20, as best understood, Smith discloses the limitations of claim 13, and wherein one or more of the plurality of grating lines comprise a plurality of grating layers (see at least elements 110a, 110b, and/or 510a’ and 510b’).
Regarding claim 21, as best understood, Smith discloses the limitations of claim 20, and wherein the plurality of grating layers comprises one or more layers comprising a first refractive index (RI) material and one or more layers comprising a second refractive index (RI) material, and wherein the first refractive index (RI) material and the second refractive index (RI) material are different (see at least paras. [0042]-[0044], [0067]).
Regarding claim 22, as best understood, Smith discloses the limitations of claim 21, and wherein the first refractive index (RI) material comprises a high refractive index (RI) material and the second refractive index (RI) material comprises a low refractive index (RI) material, wherein the low refractive index (RI) material and the high refractive index (RI) material differ based on, at least, the high refractive index (RI) material having a higher refractive index (RI) relative to the low refractive index (RI) material (see at least paras. [0042]-[0044], [0067]).
Regarding claim 23, as best understood, Smith discloses the limitations of claim 21, and wherein the one or more layers comprising the first refractive index (RI) material and one or more layers comprising the second refractive index (RI) material are arranged in alternating manner (see at least paras. [0042]-[0044], [0067], [0069]).
Regarding claim 25, as best understood, Smith discloses the limitations of claim 21, and wherein the second refractive index (RI) material comprises silicon dioxide (SiO2) (see at least paras. [0042]-[0044], [0067], [0069]).
Regarding claim 26, as best understood, Smith discloses the limitations of claim 13, and wherein the substrate comprises fused silica based material (see at least para. [0067]).
Regarding claim 27, as best understood, Smith discloses the limitations of claim 13, and wherein one or more morphology parameters or characteristics of the transmission grating based morphology are set or adjusted to meet the predetermined performance criteria (see at least paras. [0019], [0034], [0037], [0041]-[0045], [0050]-[0053], [0059]-[0060], [0064]-[0069], [0074]).
Regarding claim 28, as best understood, Smith discloses the limitations of claim 27, and wherein the one or more morphology parameters or characteristics comprise one or more of: line height of the plurality of grating lines, line width of the plurality of grating lines, period of the plurality of grating lines, duty cycle of the plurality of grating lines, selection of material used in the plurality of grating lines, number of layers in a plurality of grating layers used in one or more grating lines, thickness of each of the plurality of grating layers, selection of material used in each of the plurality of grating layers, number of layers in the plurality of intermediate layers, thickness of each of the plurality of intermediate layers, and selection of material used in each of the plurality of intermediate layers (see at least paras. [0019], [0034], [0037], [0041]-[0045], [0050]-[0053], [0059]-[0060], [0064]-[0069], [0074]).
Claim 24 is rejected under 35 U.S.C. 103 as being unpatentable over Smith, U.S. Patent Application Publication Number 2006/0152809 A1, of record (hereafter Smith) as applied to claims 13, 20 and 21 above, and further in view of Hoose, U.S. Patent Application Publication Number 2009/0059375 A1, of record (hereafter Hoose).
Regarding claim 24, as best understood, Smith does not disclose that the first refractive index (RI) material comprises silicon (Si).
However, Hoose is related to Smith in that both Hoose and Smith are drawn to optical grating apparatuses (see at least the titles and abstracts of Smith and Hoose), wherein Hoose teaches that the grating lines may be formed of a plurality of grating layers which may be formed of various materials, including a first refractive index of silicon and a second refractive index of silicon dioxide (see at least figures 3, 10, 11, elements 7 and 8, paras. [0043], [0048]).
Therefore, it would have been obvious to an ordinarily skilled artisan before the effective filing date of the claimed invention to select appropriate materials for the first refractive index and the second refractive index, such that the first refractive index (RI) material comprises silicon (Si), since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art, and since it has been held to be within the ordinary skill of workers in the art to select a known material on the basis of its suitability for the intended use. One would have been motivated to have the first refractive index (RI) material comprise silicon (Si), for the purpose of choosing materials for the grating layers so that the grating apparatus has appropriate differences between the refractive indices of the materials used to achieve desired interference and diffraction properties. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235. Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945).
Conclusion
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/Derek S. Chapel/Primary Examiner, Art Unit 2872 6/23/2026
Derek S. CHAPEL
Primary Examiner
Art Unit 2872
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