DETAILED ACTION
Election/Restrictions
Applicant's election with traverse of Species 1 in the reply filed on July 16, 2026 is acknowledged. The traversal is on the grounds that “the identified species are not mutually exclusive and do not constitute independent or distinct inventions within the meaning of 35 U.S.C. § 121. See, e.g., MPEP § 806.04(f)”.
This is not found persuasive because the applicant appears to be arguing non mutually exclusivity by merely pointing to the same differences between the embodiments that the examiner had outlined in the restriction requirement (e.g. “describe nested embodiments that differ only in whether the self-assembled monolayer is formed on the qubit, on both the qubit and the substrate, or on at least one of the qubit or the substrate. Likewise, the superconducting-component species (Species 4, 5, and 6) describe nested embodiments that differ only in the recited location of the self-assembled monolayer”).
The requirement is still deemed proper and is therefore made FINAL.
Information Disclosure Statement
The references cited within the IDS documents have been considered.
IDS document dates: March 13, 2024; March 28, 2024; October 7, 2024; March 11, 2026; and August 3, 2026.
Drawings
The drawings are objected to because of informalities:
37 CFR 1.84(m) states, in part: “Shading - Solid black shading areas are not permitted, except when used to represent bar graphs or color.”
See figures 1B, 1C, 2, 3A, 3B, and 4.
37 CFR 1.84(p)(3) states, in part: “Numbers, letters, and reference characters… should not be placed in the drawing so as to interfere with its comprehension. Therefore, they should not cross or mingle with the lines. They should not be placed upon hatched or shaded surfaces. When necessary, such as indicating a surface or cross section, a reference character may be underlined and a blank space may be left in the hatching or shading where the character occurs so that it appears distinct.”
See figures 1B, 1C, 2, 3A, 3B, and 4.
37 CFR 1.84(u)(1) states, in part: “The different views must be numbered in consecutive Arabic numerals, starting with 1, independent of the numbering of the sheets and, if possible, in the order in which they appear on the drawing sheet(s). Partial views intended to form one complete view, on one or several sheets, must be identified by the same number followed by a capital letter.”
Figures 1A and 1B appear to be repeated.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
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 1, 3-5, 7-8, 16, and 18-20 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.
Independent claims 1 and 16 recite a device which comprises a qubit formed on a substrate and a self-assembled monolayer (SAM) formed on the qubit. Independent claim 16 further species “a substrate of a bump bonded device”.
However, the claims do not provide any details as to what the applicant intends the qubit to be, in terms of structure. The specification also does not provide much detail as to what specific structure the applicant intends the qubit to be. The only example provided appears to be a Josephson junction of a stack of Aluminum/Aluminum Oxide/Aluminum (paragraph 0031). However, this stack structure is not recited within the claims, nor shown in the drawings.
As is well known by those of ordinary skill in the art, a qubit can be inter alia a photon, a coherent state of light, electrons, a neutral atom, and a trapped ion. These are not entities in which a self-assembled monolayer may be formed upon.
The lack of clarity or specificity within independent claims 1 and 16 thus renders these claims to be indefinite.
Claims 3, 4, 5, 7, 8, 18, 19, and 20 are also all rejected as they are all dependent upon the independent claims and thus inherit the deficiencies of the independent claims.
For purposes of examination, “a qubit formed on a substrate” will be interpreted as any metal portion formed on a substrate.
Claim Rejections - 35 USC § 102
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, 4, 5, 7, and 8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lee et al. (US 2020/0020580 A1, hereinafter referred to as ‘Lee’).
As to claim 1, Lee teaches a device, comprising:
a qubit formed on a substrate (see figure 1C, numerals 110 and 100 respectively); and
a self-assembled monolayer (140) formed on the qubit.
As to claim 3, Lee teaches the self-assembled monolayer comprises an organic self-assembled monolayer. See e.g. paragraphs 0018 and 0025
As to claim 4, Lee teaches the self-assembled monolayer is selected from a group consisting of an alkyne, an alkene, an alcohol, and a thiol. See paragraph 0018.
As to claim 5, Lee teaches the self-assembled monolayer is formed on at least one of the qubit or the substrate (see figure 1C). The limitations of claim 5, lines 2-4 (“to prevent oxidation of at least one of the qubit or the substrate, thereby facilitating at least one of improved coherence time of the qubit or improved lifespan of the qubit”) are merely result/intended use language and do not add additional patentable weight to the claim.
As to claim 7, Lee teaches the substrate is a silicon substrate. See paragraph 0022.
As to claim 8, Lee teaches the self-assembled monolayer is formed on the surface of the qubit. See figure 1C.
Cited Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: see the attached form PTO-892 for pertinent cited art.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Scott B. Geyer (telephone: 571-272-1958). The examiner can normally be reached on Monday to Friday, 10AM - 4PM (ET). 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, Christine S. Kim (telephone: 571-272-8458). The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only.
For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (in U.S.A. or Canada) or 571-272-1000.
/SCOTT B GEYER/ Primary Examiner, Art Unit 2812
Prosecution Insights