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 .
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 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.
DETAILED ACTION
This is an AIA application filed October 18, 2023.
The earliest effective filing date of this AIA application is seen as October 20, 2022, the date of the earliest priority application (United States provisional patent application serial number 63/417,720) for any claims which are fully supported under 35 U.S.C. 112(a) by the provisional application.
The effective filing date of this AIA application is seen as October 18, 2023, the actual filing date, for any claims that are not fully supported by the foregoing provisional or non-provisional application(s).
The present application is also related to the applications giving rise to the following patent publication(s):
None are seen.
The claims originally filed October 18, 2023 are entered, currently outstanding, and subject to examination.
This action is in response to the updated application data sheet/ADS filing of September 15, 2025.
Claims 1-20 are currently pending and outstanding.
No claims have been amended, cancelled, withdrawn, or added.
Claims 1-20 are currently outstanding and subject to examination.
This is a non-final action and is the first action on the merits.
Allowable subject matter is indicated below. Claims 1-12 are allowed as indicated in the section after the claim rejections.
Often, in the substance of the action below, formal matters are addressed first, claim rejections second, and any response to arguments third.
Special Definitions for Claim Language - MPEP § 2111.01(IV)
No special definitions as defined by MPEP § 2111.01(IV) are seen as present in the specification regarding the language used in the claims. Consequently, the words and phrases of the claims are given their plain meaning. MPEP §§ 2173.01, 2173.05(a), and 2111.01.
If special definitions are present, Applicant should bring those to the attention of the examiner and the prosecution history with its next response in a manner both specific and particular. In doing so, there will be no mistake, confusion, and/or ambiguity as to what constitutes the special definition(s). Per above, such special definitions must conform to the requirements of MPEP § 2111.01(IV).
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 13-15 and 20 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by U.S. Patent Application Publication No. 20200278605 of Young et al. (Young).
With respect to claim 13, Young (Figs. 3, 5, 7; ¶¶ 39, ) discloses a working stamp (a slanted fin grating stamp 300) for forming slanted gratings in a waveguide workpiece fabricated in accordance with the method of claim 1.
Under MPEP § 2113, product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps.
“[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted). MPEP § 2113.
Consequently, as the same structure is maintained, claim 13 is anticipated in light of Young.
Below, this analysis is referred to as “product-by-process”.
With respect to claim 14, Young as set forth above discloses a waveguide workpiece having slanted gratings formed therein using the working stamp of claim 1.
Target imprint substrate 306.
With respect to claim 15, Young as set forth above discloses (¶ 39) a method for fabricating slanted surface gratings in a waveguide workpiece (¶ 33, "for example, high refractive index grating fins on high refractive index waveguide combiner (WGC) substrates"), comprising:
pressing a working stamp (slanted fin grating stamp 300) having a pattern of slanted protrusions extending from a first surface (it’s a slanted fin grating stamp 300) into an opposing second surface of a layer of soft waveguide material of the waveguide workpiece so that the slanted protrusions extend into the layer of soft waveguide material ("the PDMS modified stamp 300 is placed in physical contact with the resist 308 and imprint substrate 306");
withdrawing the working stamp from the layer of soft waveguide material so that a pattern of slanted surface gratings are formed in the layer of soft waveguide material at the second surface "the PDMS stamp 300 is released and separated from the imprint substrate 306"; and
curing at least an area of the layer of soft waveguide material surrounding the pattern of slanted gratings ("curing with ultra violet radiation").
Selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results. In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946), MPEP § 2144.04(IV)(C).
Consequently, curing the soft waveguide material either before or after imprinting by the stamp would be obvious.
Below, this is referred to as “step selection”.
Further, per ¶ 43, "Additional curing may occur after step 10. A similar process for slanted fin gratings in illustrated in FIG. 10."
With respect to claim 20, Young as set forth above discloses a waveguide workpiece having slanted gratings formed therein using the working stamp of claim 15.
Product by process per above.
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 of this title, 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.
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 and 17 are rejected under 35 U.S.C. § 103 as being unpatentable over Young as set forth above.
With respect to claim 16, Young as set forth above discloses the method of claim 15, further comprising:
forming the working stamp from an imprint replication master having a plurality of slanted protrusions by:
performing a spin-coating process to coat a working surface of a substrate of the imprint replication master with a conformal layer of soft stamp material; and
curing the conformal layer of soft stamp material to form the working stamp.
However, the stamping procedure for creating gratings is the same as that for forming a template or master for such stamping. Fig. 3, ¶ 39 et seq. Such a stamping process includes spin-coating resist on a substrate per ¶ 45, Fig. 11.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use the grating-forming process using spin-coating along the lines of Young as set forth above in a system according to Young as set forth above in order to the actual stamp as the processes are generally identical. This provides one rationale to combine the references.
Another completely independent and separately sufficient rationale arises as follows. In making the combination (above), prior art elements (listed above) are combined according to known methods (per the references) to yield predictable results (a method for creating gratings by stamping) would occur as each element merely performs the same function in combination as it does separately. MPEP § 2141(III). This additional rationale is a sufficient, a complete, and an explicitly-recognized rationale to combine the references and conclude that the claim is obvious both under the controlling KSR Supreme Court case and MPEP § 2141(III)(A). Current Office policy regarding the determination of obviousness is set forth in the Federal Register notice at 89 Fed. Reg. 14449 (Feb. 27, 2024).
Further, the combination would then provide:
forming the working stamp from an imprint replication master having a plurality of slanted protrusions by:
performing a spin-coating process to coat a working surface of a substrate of the imprint replication master with a conformal layer of soft stamp material; and
curing the conformal layer of soft stamp material to form the working stamp.
With respect to claim 17, Young as set forth above discloses the method of claim 15, but not one further comprising forming the working stamp from an imprint replication master having a plurality of slanted protrusions by:
pressing a working surface of a substrate of the imprint replication master into a layer of soft stamp material to form a conformal layer of soft stamp material; and
curing the conformal layer of soft stamp material to form the working stamp.
However, the stamping procedure for creating gratings is the same as that for forming a template or master for such stamping.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use the grating-forming process along the lines of Young as set forth above in a system according to Young as set forth above in order to the actual stamp as the processes are generally identical. This provides one rationale to combine the references.
Another completely independent and separately sufficient rationale arises as follows. In making the combination (above), prior art elements (listed above) are combined according to known methods (per the references) to yield predictable results (a method for creating gratings by stamping) would occur as each element merely performs the same function in combination as it does separately. MPEP § 2141(III). This additional rationale is a sufficient, a complete, and an explicitly-recognized rationale to combine the references and conclude that the claim is obvious both under the controlling KSR Supreme Court case and MPEP § 2141(III)(A). Current Office policy regarding the determination of obviousness is set forth in the Federal Register notice at 89 Fed. Reg. 14449 (Feb. 27, 2024).
Further, the combination would then provide:
pressing a working surface of a substrate of the imprint replication master into a layer of soft stamp material to form a conformal layer of soft stamp material; and
curing the conformal layer of soft stamp material to form the working stamp.
Claims 18 and 19 are rejected under 35 U.S.C. § 103 as being unpatentable over Young as set forth above in view of U.S. Patent No. 6212312 of Grann et al. (Grann).
With respect to claim 18, Young as set forth above discloses the method of claim 15, but not one further comprising:
forming an imprint replication master using a grayscale lithography process to introduce a slope into a surface of a photoresist layer of a master workpiece,
the slope based on a slant of the slanted gratings; and
forming the working stamp from the imprint replication master.
Per above, an imprint replication master can be formed according to the grating stamping process.
Grann discloses an optical multiplexer/demultiplexer using resonant grating filters that includes (col. 5, ll. 29 and adjacent):
"FIGS. 8A, 8B and 8C show a method of producing a master using thin film techniques, and then using the master to make a plurality of the sinusoidal type filters of the type shown in FIG. 2 above. There a number of fabrication technologies available such as direct-write, e-beam lithography; direct-write, focused-ion beam lithography; interferometry and gray-scale mask lithography."
Further, any substrate slope and any gratings slant can be considered to be based on one another. The claim sets forth no criteria for such coordination or “basing”. Intent is not seen to provide any patentable distinction of the prior art.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use grayscale lithography along the lines of Grann in a system according to Young as set forth above in order to a gratings master stamp as one of many equivalent processes. This provides one rationale to combine the references.
Another completely independent and separately sufficient rationale arises as follows. In making the combination (above), prior art elements (listed above) are combined according to known methods (per the references) to yield predictable results (a method for creating gratings by stamping) would occur as each element merely performs the same function in combination as it does separately. MPEP § 2141(III). This additional rationale is a sufficient, a complete, and an explicitly-recognized rationale to combine the references and conclude that the claim is obvious both under the controlling KSR Supreme Court case and MPEP § 2141(III)(A). Current Office policy regarding the determination of obviousness is set forth in the Federal Register notice at 89 Fed. Reg. 14449 (Feb. 27, 2024).
Further, the combination would then provide:
forming an imprint replication master using a grayscale lithography process to introduce a slope into a surface of a photoresist layer of a master workpiece,
the slope based on a slant of the slanted gratings; and
forming the working stamp from the imprint replication master.
With respect to claim 19, Young in view of Grann as set forth above discloses a waveguide workpiece having slanted gratings formed therein using the working stamp of claim 18.
Product by process.
Claims Allowed
Claims 1-12 are allowed.
Allowable Subject Matter
The following is an examiner’s statement of reasons for allowance:
The prior art does not teach or suggest
using photoresist deposition processes, grayscale lithography processes, and etching processes on the master workpiece so as to form an imprint replication master having a pattern of slanted gratings in a working surface of the substrate
as set forth in the claimed combination of independent claim(s) 1.
No references were found that supported these features in such combination.
The cited references are seen as providing the closest related art.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
Applicant’s publication US 20240168207 A1 published May 23, 2024 is cited.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The cited references have elements related to Applicant’s disclosure and/or claims or are otherwise associated with the other cited references, particularly with respect to creation of stamps for gratings and related fabrication techniques.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW JORDAN whose telephone number is (571) 270-1571. The examiner can normally be reached most days 1000-1800 PACIFIC TIME ZONE (messages are returned).
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. While examiner does not examine over the phone (see 37 C.F.R. § 1.2), examiner is glad to clarify or discuss issues so long as it forwards prosecution.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Thomas (Tom) HOLLWEG can be reached at (571) 270-1739. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Andrew Jordan/
Primary Examiner, Art Unit 2874
V: (571) 270-1571 (Pacific time)
F: (571) 270-2571
December 19, 2025