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):
Office
Application
App. Date
Pub. #
Pub. Date
CN
202311370029
10/20/2023
CN 118192161 A
06/14/2024
The claims filed May 14, 2026 are entered, currently outstanding, and subject to examination.
This action is in response to the filing of the same date.
The current status and history of the claims is summarized below:
Last Amendment/Response
Previously
Amended:
1 & 15
N/A
Cancelled:
none
N/A
Withdrawn:
none
N/A
Added:
none
N/A
Claims 1-20 are currently pending and outstanding.
Regarding the last reply:
Claims 1 and 15 were amended.
No claims were cancelled.
No claims were withdrawn.
No claims were added.
Claims 1-20 are currently outstanding and subject to examination.
This is a final action and is the second action on the merits.
Allowable subject matter is indicated below.
As no substantial changes were made to the claims, the Response to Arguments section, below, primarily contains new portions to the examination of the instant application.
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 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).
To date, Applicant has provided no indication of special definitions.
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.”
Response to Arguments
Applicant's arguments filed May 14, 2026 have been fully considered but they are not persuasive and the claim rejections are not rebutted.
Applicant argues that:
On page 4 [sic, 5?], the Office alleges that Young discloses "pressing a working stamp...into an opposing second surface of a layer of soft waveguide material of the waveguide workpiece" by relying on Young's disclosure of placing a slanted fin grating stamp 300 into contact with an imprint substrate 306 coated with imprint resist 308. In particular, the Office cites Young at paragraph [0039] as describing that "the PDMS modified stamp 300 is placed in physical contact with the resist 308 and imprint substrate 306". The Applicant respectfully disagrees. Young's cited disclosure is expressly directed to imprinting into a layer of imprint resist, not into a layer of soft waveguide material of a waveguide workpiece. See Young at paragraph [0039], which consistently describes contact between the stamp and "imprint resist 308" on a "target imprint substrate 306". The Office has not identified any disclosure in Young that the contacted material constitutes a waveguide material, nor that the imprint substrate constitutes a waveguide workpiece having a layer of soft waveguide material as recited in claim 15. Accordingly, the Office's mapping is premised on an unsupported substitution of Young's resist layer for the claimed waveguide material.
Examiner response: Applicant makes a distinction between "a layer of soft waveguide material of a waveguide workpiece" of the specification as originally filed and "a layer of imprint resist" of cited reference Young. Examiner looks to the claim language for guidance.
Claim 15’s preamble is directed to "A method for fabricating slanted surface gratings in a waveguide workpiece" and not for fabricating gratings in or on a waveguide. It is the waveguide workpiece that is at issue and not a waveguide.
Inspection of the rejection indicates that the “layer of imprint resist” is there to form a positive for stamping a grating for "production of electrical/optical components" including "high refractive index grating fins on high refractive index waveguide combiner (WGC) substrates".
Examiner believes that the “imprint resist” forms a “layer of soft waveguide material” for the purposes of a “waveguide workpiece”. Per Young, the imprint resist is soft enough to imprint a shape (Fig. 3, steps 6 and 7) and as the imprint resist in Young is for the purposes of forming structures in a waveguide, examiner sees the imprint resist of Young (generally at 308) as “a layer of soft waveguide material”.
The rejection is not rebutted.
Accordingly, Young fails to disclose at least (i) pressing the working stamp into a layer of soft waveguide material of a waveguide workpiece, (ii) forming slanted surface gratings in that same layer of soft waveguide material, and (iii) curing that same layer of soft waveguide material, as required by claim 15, with all elements arranged as recited. Because the Office has not shown that each and every element of claim 15 is disclosed in Young, claim 15 is novel in view of Young.
Examiner response: Per above, Applicant’s asserted failure of Young to achieve i, ii, and iii, is not seen as correct and/or persuasive.
Claim 13 is expressly tied to claim 1, which has been indicated as allowable, and, thus, the claimed working stamp necessarily possesses the structural characteristics resulting from the fabrication process recited in claim 1. In particular, claim 1 requires forming slanted gratings through a sequence of photoresist deposition processes, grayscale lithography processes, and etching processes, including introducing a slope into a photoresist layer using grayscale lithography and transferring that slope into the substrate through etching such that the resulting slanted gratings have sidewalls that are not substantially orthogonal to the working surface. The working stamp of claim 13, therefore, has a structure defined by a slope that corresponds to a grayscale-defined profile and that results from slope transfer into the substrate.
Examiner response: Applicant’s assertions here are seen as entirely consistent with examiner’s product by process analysis. Applicant is stating that the processes used form a unique product. Examiner’s viewpoint is that Young provides the product and the means by which it is achieved are irrelevant.
Claim 13 requires "A working stamp for forming slanted gratings in a waveguide workpiece". Young provides that. Claim 1 provides no structure or composition that must be used to achieve the “working stamp” and so, as such, Young meets the criteria of claim 13 and reads upon it. Claim 13 is not seen as setting forth subject matter that escapes a product by process analysis.
Young does not disclose such a structure. Rather, Young describes forming slanted fin grating stamps using techniques that involve coating portions of a stamp with ultraviolet- blocking material and performing imprinting processes. See Young at paragraph [0039], which describes coating exterior bottom edges of a stamp with UV-blocking material and subsequently contacting the stamp with an imprint resist. Young does not disclose grayscale lithography, does not disclose introducing a slope into a photoresist layer based on spatially varying exposure, and does not disclose transferring such a slope into a substrate through etching. The Office has not identified any disclosure in Young demonstrating that the slanted fin grating stamp 300 possesses structural characteristics corresponding to a grayscale-defined slope profile or slope transfer process as required by claim 1.
Examiner response: Claim 1 is not seen to provide any structural characteristics. That is why claim 13 is not seen as setting forth subject matter that escapes a product by process analysis.
Claim 14 requires a waveguide workpiece having slanted gratings formed therein using the specific working stamp of claim 1. Because, as discussed above, Young does not disclose a working stamp having the structural characteristics defined by claim 1, Young necessarily cannot disclose a waveguide workpiece formed using such a stamp. The Office's rejection improperly assumes that any slanted grating stamp corresponds to the claimed working stamp and that any imprinted substrate corresponds to the claimed waveguide workpiece. However, Young's disclosure is limited to forming patterns in an imprint resist layer, which is a patterning medium, and does not disclose forming slanted gratings in a waveguide material or producing a waveguide workpiece having such gratings. See Young at paragraphs [0034] and [0039].
Examiner response: Claim 1 does not provide any structural characteristics that are not also disclosed by Young. The "imprint resist layer" versus “waveguide material” is seen as a distinction without a difference per the first examiner response, above.
Accordingly, Young fails to disclose (i) a working stamp having the structural characteristics resulting from the fabrication process of claim 1, and (ii) a waveguide workpiece having slanted gratings formed therein using such a working stamp. Because the Office has not shown that each and every element of claims 13 and 14 is disclosed in Young claims 13 and 14 are novel in view of Young.
Examiner response: No structural characteristics resulting from the fabrication process of claim 1 are seen by examiner. The rejections are not rebutted.
Referring now to claim 20, on page 6 of the Office Action, the Office states that Young discloses a waveguide workpiece having slanted gratings formed therein using the working stamp of claim 15, and relies on the same "product-by-process" reasoning set forth above. The Applicant respectfully disagrees. Claim 20 depends from claim 15 and requires a waveguide workpiece having slanted gratings formed therein using the method of claim 15, which expressly requires pressing a working stamp into a layer of soft waveguide material of a waveguide workpiece, forming slanted surface gratings in that layer of soft waveguide material, and curing that same layer of soft waveguide material. As discussed above with respect to claim 15, Young does not disclose imprinting into a layer of soft waveguide material, but instead discloses contacting a stamp with an imprint resist layer on a substrate and curing that resist. See Young at paragraph [0039]. Young does not disclose that the imprint resist constitutes a waveguide material or that the resulting structure is a waveguide workpiece having slanted gratings formed therein.
Examiner response: The process steps of claim 15 have not been shown to provide any structural characteristics and Applicant is seen as repeating the same arguments. For the same reasons as given above, the rejection is not rebutted.
Applicant's arguments with regards to the remaining claims all rely upon the arguments set forth above. Consequently, these remaining arguments as seen as being addressed by the examiner's corresponding remarks.
Applicant’s remaining 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 claims patentably distinguishes them from the references. As such, the examiner makes no remarks regarding them.
Conclusion
Applicant’s publication US 20240168207 A1 published May 23, 2024 was previously 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 grayscale lithography for grating stamps and the like.
THIS ACTION IS MADE FINAL. Applicant is 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 extension fee 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 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.
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/Andrew Jordan/
Primary Examiner, Art Unit 2874
V: (571) 270-1571 (Pacific time)
F: (571) 270-2571
July 23, 2026
Prosecution Insights