DETAILED ACTION
This Office Action is in response to Amendment filed August 24, 2026.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Objections
Claim 6 is objected to because of the following informalities: claim 6 should be identified as a withdrawn claim rather than an original claim. 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.
Claims 1-5, 7-13, 18, 21 and 22 are 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 claims contain 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 inventors, at the time the application was filed, had possession of the claimed invention.
(1) Regarding claims 1 and 18, Applicants originally disclosed in paragraph [0106] of current application that “More generally, according to one aspect disclosed herein, there is provided a semiconductor-superconductor hybrid device, comprising: a semiconductor; a superconductor; and a barrier between the superconductor and the semiconductor; wherein the device is configured to enable energy level hybridisation between the semiconductor and the superconductor; and wherein the barrier is configured to increase a topological gap of the device (emphasis added)”, and in paragraph [0110] of current application that “As explained hereinabove, adjusting the degree of hybridisation allows for optimization of the topological gap of the device (emphasis added).” However, Applicants did not originally disclose that “a barrier thickness is configured to provide an optimized topological gap of the semiconductor-superconductor hybrid structure” as recited on lines 13-14 of claim 1, and “the barrier is configured to control hybridization of energy levels between the semiconductor material and the superconductor material to provide an optimized topological gap of the semiconductor-superconductor hybrid structure” as recited on lines 6-8 of claim 18, because (a) Applicants did not originally disclose an optimization of “topological gap of the semiconductor-superconductor hybrid structure” as recited on lines 13-14 of claim 1 and on lines 7-8 of claim 18, and (b) rather, Applicants originally disclosed an increase of a topological gap of “the device” and optimization of a topological gap of “the device”, which is not exactly the same with “A semiconductor-superconductor structure” recited in claims 1 and 18, which is directed to an intermediate device structure.
(2) Further regarding claims 1 and 18, Applicants originally disclosed in paragraph [0007] of current application that “As illustrated in FIG. 1, in order to create good quality devices in which the MZMs are long-lived, it is preferable to have a large topological gap Eg (emphasis added)”, and that “A material in the topological phase (whether a superconductor or a region of proximity-induced superconductivity in a semiconductor) exhibits distinct energy bands: a lower band 101 and an upper band 102 (emphasis added).” However, Applicants did not originally disclose that “a barrier thickness is configured to provide an optimized topological gap of the semiconductor-superconductor hybrid structure in a topological phase (emphasis added)” as recited on lines 13-14 of claim 1, and “the barrier is configured to control hybridization of energy levels between the semiconductor material and the superconductor material to provide an optimized topological gap of the semiconductor-superconductor hybrid structure in a topological phase (emphasis added)” as recited on lines 6-8 of claim 18, because (a) Applicants originally disclosed a maximization of a topological gap of a semiconductor-superconductor hybrid device in a topological phase rather than an optimization of a topological gap of a semiconductor-superconductor hybrid device in a topological phase, and (b) if arguendo Applicants had meant to claim the feature shown in Figs. 5a and 5b of current application, Applicants originally disclosed in paragraph [0018] of current application that “FIGS. 5a and 5b are heat maps showing maximum topological gap as a function of a (a measure of spin-orbit coupling strength) and x for two semiconductor-superconductor hybrid devices having different barrier thicknesses (emphases added)”, Figs. 5a and 5b of current application does not show any of “an optimized topological gap” of “the semiconductor-superconductor hybrid structure” “in a topological phase” recited on lines 13-14 of claim 1 and on lines 7-8 of claim 18 since Figs. 5a and 5b of current application shows (i) a maximized topological gap, (ii) a semiconductor-superconductor hybrid device, and (iii) heat maps.
Claims 2-5, 7-13, 21 and 22 depend on claim 1, and therefore, claims 2-5, 7-13, 21 and 22 also fail to comply with the written description requirement.
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.
Claim 18 is 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. It is not clear what the limitation “energy levels between the semiconductor material and the superconductor material” recited on lines 6-7 suggests, because (a) it is not clear what the preposition “between” in the limitation cited above suggests since it is not clear whether the preposition “between” suggests that there is an intervening material or intervening structural element “between the semiconductor material and the superconductor material”, and (b) if arguendo Applicants had meant to claim “energy levels of the semiconductor material and the superconductor material”, it is not clear whether the intended, but not claimed, limitation suggests (i) one energy level of the semiconductor material and one energy level of the superconductor material, or (ii) a plurality of energy levels of the semiconductor material and a plurality of energy levels of the superconductor material since Applicants did not originally disclose what “energy levels between the semiconductor material and the superconductor material” refer to in any specific manner.
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.
Claim 18, as best understood, is rejected under 35 U.S.C. 103 as being unpatentable over Johnson (US 7,212,433) in view of Kuroda et al. (US 4,961,194)
Johnson et al. disclose a (semiconductor-superconductor) structure (Fig. 2), comprising: a semiconductor material (180; InGaAs); a Schottky gate electrode (174); and a barrier (178; InAlAs) between and separating the Schottky gate electrode and the semiconductor material.
Johnson differs from the claimed invention by not showing that the Schottky gate electrode is a superconductor material that exhibits superconducting behavior when cooled to a temperature that induces superconducting behavior, wherein the barrier is configured to control hybridization of energy levels between the semiconductor material and the superconductor material to provide an optimized topological gap of the semiconductor-superconductor hybrid structure in a topological phase with the superconductor material in a superconducting state.
Kuroda et al. disclose a semiconductor-superconductor structure (Fig. 5) where an Al gate electrode (19G) is employed (col. 5, lines 2-5 and 10-11).
Since both Johnson and Kuroda et al. teach a device, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the Schottky gate electrode 174 disclosed by Johnson can be formed of Al as disclosed by Kuroda et al., because (a) Al has been one of the commonly employed gate electrode materials in combination with GaAs-based or GaAs-related semiconductor materials, (b) Al is one of the metal elements that are not expensive, whiling being easy to use in a semiconductor manufacturing process and having a high conductivity, and (c) it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use, In re Leshin, 125 USPQ 416.
In this case, the combined structure of Johnson in view of Kuroda et al. is a semiconductor-superconductor structure since the combined device comprises all the claimed structural and material limitations; also, the barrier should inherently be configured to control hybridization of energy levels between the semiconductor material and the superconductor material to provide an optimized topological gap of the semiconductor-superconductor hybrid structure in a topological phase with the superconductor material in a superconducting state, because (a) Johnson in view of Kuroda et al. disclose all the claim limitations, and (b) if Johnson in view of Kuroda et al. do not teach the limitation “the barrier is configured to control hybridization of energy levels between the semiconductor material and the superconductor material to provide an optimized topological gap of the semiconductor-superconductor hybrid structure in a topological phase with the superconductor material in a superconducting state”, then claim 18 would further be indefinite for not claiming an essential or critical feature to the practice of the claimed invention.
Response to Arguments
Applicants' arguments filed August 24, 2026 have been fully considered but they are not persuasive.
Applicants’ traversal of the claim objection of claim 6 is not persuasive, because Applicants have filed an Election on February 7, 2025 electing one of the inventions, one of the species and one of the subspecies rather than only one of the inventions as Applicants allege in the REMARKS filed August 24, 2026.
Applicants appear to have attempted to attack the teachings on Datta and Das device mentioned by Johnson or may have attempted to equate the device disclosed by Johnson with the Datta and Das device, while Kuroda et al. does not disclose the Datta and Das device. Therefore, Applicants’ arguments traversing the 35 USC 103 rejection of claim 18 in the REMARKS appear to be directed to a prior art rejection that the Examiner did not make.
While the Examiner simply cited the secondary reference of Kuroda et al. to show that aluminum has been well-known to one of ordinary skill in the art as a Schottky gate electrode material in semiconductor industry, and thus the Schottky gate electrode disclosed by Johnson can be formed of aluminum, it appears that Applicants may have attempted to argue that the entire teachings of Kuroda et al. should be incorporated into the device disclosed by Johnson, or the teachings of Kuroda et al. should be considered with the mentioning of some devices of the prior art references of Johnson even though they are not necessarily devices identical to the invention of Johnson.
In response to these Applicants' arguments, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). Furthermore, if Applicants have attempted to attack the teachings of Johnson and Kuroda et al. individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Moodera et al. (US 11,100,419)
Winkler et al. (US 2021/0126180)
Stanescu et al., “Building topological quantum circuits: Majorana nanowire junctions,” PHYSICAL REVIEW B97 (2018) 045410.
Karzig et al., “Scalable designs for quasiparticle-poisoning-protected topological quantum computation with Majorana zero modes,” PHYSICAL REVIEW B 95 (2017) 235305.
Applicants' amendment necessitated the new grounds of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicants are 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAY C KIM whose telephone number is (571) 270-1620. The examiner can normally be reached 8:00 AM - 6:00 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joshua Benitez can be reached on (571) 270-1435. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JAY C KIM/Primary Examiner, Art Unit 2815
/J. K./Primary Examiner, Art Unit 2815 September 23, 2026
