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 .
Election/Restrictions
Applicant’s election without traverse of Group I (claims 1-16) in the reply filed on 18 May 2026 is acknowledged.
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.
Claims 1-6, 8, 11-15 are rejected under 35 U.S.C. 103 as being unpatentable over Burchard et al (US Publication 20250209360) in view of Colli et al (US Publication 20210381894).
Regarding claim 1, Burchard teaches an apparatus comprising:
a substrate having a first side and a second side positioned opposite the first side (Fig. 2, D and DEPI including, top and bottom);
a semiconductor device located on the second side of the substrate (Fig. 2, µC, para 64); and
a quantum sensor located on the second side of the substrate (Fig. 2, QUALU1), and wherein the quantum sensor further comprises a microwave field source, a light source, and a photodetector (Fig. 3, MW/RF-AWFG, LD, PD, para 18 and 56).
Burchard does not specifically teach wherein the quantum sensor comprises a layer of 2-D material.
Colli teaches wherein the quantum sensor comprises a layer of 2-D material (Fig. 1, 18, para 35 “layer of two-dimensional material”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the present application for Burchard to include a layer of 2-D material as taught by Colli in order to provide improved sensitivity to environmental changes, improved quantum confinement effects, and improved device miniaturization and performance capabilities.
Regarding claim 2, Burchard as modified teaches the limitations of claim 1 upon which claim 2 depends.
Burchard teaches wherein the quantum sensor is configured to measure one or more of a magnetic field, a temperature, or a strain field effect (para 283, “SENS” types).
Regarding claim 3, Burchard as modified teaches the limitations of claim 1 upon which claim 3 depends.
Burchard teaches wherein the quantum sensor further comprises a plurality of light pipes located between the light source and the layer of material and located between the photodetector and the layer of 2-D material (Fig. 2, LB and FL, para 56).
Regarding claim 4, Burchard as modified teaches the limitations of claim 1 upon which claim 4 depends.
Burchard teaches an electronics package, wherein the semiconductor device is contained within the electronics package, and
wherein the microwave field source, the light source, and the photodetector are incorporated into the electronics package (Fig. 8, para 1080, device package integrated in motor vehicle).
Regarding claim 5, Burchard as modified teaches the limitations of claim 1 upon which claim 5 depends.
Burchard teaches wherein the microwave field source, the light source, and the photodetector are incorporated into an electronics device positioned adjacent to the layer of 2-D material (Fig. 3, MW/RF-AQFG, LD, PD, para 18 and 56).
Regarding claim 6, Burchard as modified teaches the limitations of claim 1 upon which claim 6 depends.
Burchard teaches the semiconductor device comprises an active area and a non-active area (Fig. 2&3, non-active area of DEPI not occupied by NVs),
wherein the quantum sensor comprises a plurality of quantum sensors (Fig. 2, NVs), and
wherein the plurality of quantum sensors are located at one or more of one or more corner regions of the non-active area, one or more wire bond free regions of the non-active area, or one or more wire bond adjacent regions of the active area (Fig. 2&3, NVs).
Regarding claim 8, Burchard as modified teaches the limitations of claim 1 upon which claim 8 depends.
Burchard teaches further comprising a temperature sensor located on the second side of the substrate, wherein the temperature sensor comprises a temperature sensing diode (para 283 and 690, ST).
Regarding claim 11, Burchard as modified teaches the limitations of claim 1 upon which claim 11 depends.
Burchard does not specifically teach wherein the layer of 2-D material comprises a hexagonal boron nitride 2-D material layer.
Colli teaches wherein the layer of 2-D material comprises a hexagonal boron nitride 2-D material layer (Fig. 1, 18, where hBN is a well known alternative to graphene in the semiconductor industry also called white graphene).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the present application for Burchard to include a layer 2-D material comprising hBN as taught by Colli in order to improve the spatial resolution, integration and production cost of the device.
Regarding claim 12, Burchard as modified teaches the limitations of claim 11 upon which claim 12 depends.
Burchard does not specifically teach wherein the hexagonal boron nitride 2-D material layer is formed via a tape transfer deposit or a chemical vapor deposition.
Furthermore, the present claim is drawn to a device, thus the method of hBN deposition does not patentably distinguish the claimed invention from that of the invention of Burchard.
It should be noted that a "product by process claim" is directed to the product per se, no matter how actually made, In re Hirao, 190 USPQ 15 at 17 (footnote 3). See also In re Brown, 173 USPQ 685; In re Luck, 177 USPQ 523; In re Fessmann, 180 USPQ 324; In re Avery, 186 USPQ 161; In re Wertheim, 191 USPQ 90 (209 USPQ 554 does not deal with this issue); and In re Marosi et al., 218 USPQ 289, all of which make it clear that it is the patentability of the final product per se which must be determined in a "product by process" claim, and not the patentability of the process, and that an old or obvious product produced by a new method is not patentable as a product, whether claimed in " product by process" claims or not. Note that applicant has the burden of proof in such cases, as the above caselaw makes clear. See also MPEP 2113 [R-1].
Regarding claim 13, Burchard as modified teaches the limitations of claim 1 upon which claim 13 depends.
Burchard teaches further comprising a dielectric layer positioned between the quantum sensor and the semiconductor device (Fig. 2&3, DEPI between QUALU1 and µC).
Regarding claim 14, Burchard teaches a system comprising:
a vehicle (Fig. 8, motor vehicle); and
an electronics package coupled to the vehicle (Fig. 8, QUSYS coupled to motor vehicle),
the electronics package comprising:
a substrate having a first side and a second side positioned opposite the first side (Fig. 2, D and DEPI including, top and bottom);
a semiconductor device located on the second side of the substrate (Fig. 2, µC, para 64); and
a quantum sensor located on the second side of the substrate (Fig. 2, QUALU1), and wherein the quantum sensor further comprises a microwave field source, a light source, and a photodetector (Fig. 3, MW/RF-AWFG, LD, PD, para 18 and 56) ; and
a case containing the substrate, semiconductor device, and quantum sensor (Fig. 17, housing GH, para 56).
Burchard does not specifically teach wherein the quantum sensor comprises a layer of 2-D material.
Colli teaches wherein the quantum sensor comprises a layer of 2-D material (Fig. 1, 18, para 35 “layer of two-dimensional material”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the present application for Burchard to include a layer of 2-D material as taught by Colli in order to provide improved sensitivity to environmental changes, improved quantum confinement effects, and improved device miniaturization and performance capabilities.
Regarding claim 15, Burchard as modified teaches the limitations of claim 14 upon which claim 15 depends.
Burchard teaches wherein the quantum sensor further comprises a plurality of light pipes located between the light source and the layer of 2-D material and located between the photodetector and the layer of 2-D material (Fig. 17, LB and FL), and wherein the microwave field source, the light source, and the photodetector are incorporated into the case the electronics package (Fig. 17, MW/RF-AWFG, LD, and PD within housing GH).
Claims 7 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Burchard et al (US Publication 20250209360) in view of Colli et al (US Publication 20210381894) and Choi et al (US Publication 20220285244).
Regarding claims 7 and 16, Burchard as modified teaches the limitations of claims 1 and 14 upon which claims 7 and 16 depend.
Burchard does not specifically teach:
[claim 7] wherein the layer of 2-D material has a design, wherein the design is one of a single unitary patch, an array of a plurality of patches, or a discontinuous patch having a geometric pattern.
[claim 16] wherein the layer of 2-D material has a design, wherein the design is one of a single unitary patch, an array of a plurality of patches, or a discontinuous patch having a geometric pattern.
Choi teaches:
[claim 7] wherein the layer of 2-D material has a design, wherein the design is one of a single unitary patch, an array of a plurality of patches, or a discontinuous patch having a geometric pattern (Fig. 1-6, para 33, 101 unitary, 201 plurality of patches).
[claim 16] wherein the layer of 2-D material has a design, wherein the design is one of a single unitary patch, an array of a plurality of patches, or a discontinuous patch having a geometric pattern (Fig. 1-6, para 33, 101 unitary, 201 plurality of patches).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the present application for Burchard to include the layer of 2-D material design as taught by Colli in order to improve the reliability and operability of the device.
Claims 9 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Burchard et al (US Publication 20250209360) in view of Colli et al (US Publication 20210381894) and Dragicevic et al (WO 2022248532).
Regarding claim 9, Burchard as modified teaches the limitations of claim 1 upon which claim 9 depends.
Burchard does not specifically teach wherein the substrate is a direct bond copper substrate, copper substrate, or composite substrate.
Dragicevic teaches wherein the substrate is a direct bond copper substrate, copper substrate, or composite substrate (Fig. 2, DBC).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the present application for Burchard to include a DBC substrate as taught by Dragicevic in order to Improve the thermal management properties of the device.
Regarding claim 10, Burchard as modified teaches the limitations of claim 1 upon which claim 10 depends.
Burchard does not specifically teach wherein the semiconductor device is a power semiconductor device.
Dragicevic teaches wherein the semiconductor device is a power semiconductor device (Fig. 2, IGBT).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the present application for Burchard to include the semiconductor device is a power semiconductor as taught by Dragicevic in order to improve the range of use case and end use environments of the device.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Mazed (US Patent 11320588) – Super system on chip.
Hahn et al (US Publication 20170343621) – Magneto-optical defect center magnetometer.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICHOLAS HUTSON whose telephone number is (571)270-1750. The examiner can normally be reached Mon-Fri 8am-5pm.
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, Jeff Natalini can be reached at 571 272 2266. 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.
/NICHOLAS LELAND HUTSON/ Examiner, Art Unit 2818
/JEFF W NATALINI/ Supervisory Patent Examiner, Art Unit 2818
Prosecution Insights