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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 6/2/2026 has been entered.
Response to Amendment
This Office Action is in response to Applicant’s response of 6/2/2026. In that response, Applicant amended claims 1, 10, 12-14 and 17.
DETAILED ACTION
The instant application having Application No. 18/523,756 filed on 11/29/2023 is presented for examination by the Examiner.
Examiner cites particular columns and line numbers in the references as applied to the claims below for the convenience of the Applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested that, in preparing responses, the Applicant fully consider the references in entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the examiner.
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 1-16 are rejected under 35 U.S.C. 103 as being unpatentable over Carminati et al. (US 2022/0011567, hereinafter, “Carminati”) in view of Hussein et al. (US 2015/0015930, hereinafter, “Hussein”), as evidenced by Na et al. (US 2019/0137856, hereinafter, “Na”).
Regarding claim 1, Carminati discloses a device 20 comprising:
a testing device, including: a first structure 30 including:
a substrate 65 made of a first material, the substrate having a first surface opposite a second surface along a first direction (Fig. 17);
at least two first pillars 35 (e.g., the two pillars at the right end of substrate 65), made of a second material entirely crossing the substrate (Fig. 17), each of the at least two first pillars having a first surface coplanar with the first surface of the substrate and a second surface coplanar with the second surface of the substrate (Fig. 17), the first material having a first optical index, and the second material having a second optical index different from the first optical index (Fig. 3, 8, 10, 12, 17, [0024], [0066], [0087], [0095]. Here, the pillars are “embedded” in layer 65 and they cross the layer 65 entirely); and
a second pillar (e.g., the pillar at the left end of substrate 65) made of the second material entirely crossing the substrate (Fig. 17).
Carminati does not disclose the at least two first pillars and the second pillar having a random distribution in the substrate.
Hussein discloses a nanophotonic metamaterial (Abstract). In one embodiment, the metamaterial comprises a plurality of pillars embedded within a substrate. The position of the pillars in the substrate is random (Fig. 9C, 9D, [0069]-[0070]).
Both Carminati and Hussein disclose meta-structures.
It would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the present application to modify Carminati so that the pillars 35 are positioned randomly in the substrate 65, as taught by Hussein, for achieving a desired transmission intensity or phase pattern ([0084] in Na).
Regarding claim 2, Carminati/Hussein discloses the device according to claim 1, wherein
the at least two first pillars have cross-sections of different diameters from each other (Fig. 6, 8 in Carminati).
Regarding claim 3, Carminati/Hussein discloses the device according to claim 2.
Carminati/Hussein does not disclose the at least two first pillars have cross-sections with diameters in a range of 50 nm and 4 μm.
However, Carminati/Hussein discloses the pillars have cross sections in the range 10 to 200 nm ([0083] in Carminati).
Here, the claimed range for the diameter of the cross section of the pillars overlaps with the range for the diameter disclosed by Carminati/Hussein. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), MPEP 2144.05 (I).
Therefore, it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the present application to modify Carminati/Hussein so that diameter of the cross section of the pillars lies within the claimed range, for the purpose of operating in a desired optical wavelength (see [0083] in Carminati) and also achieving a desired optical effect, i.e., diffraction, refraction etc.
Regarding claim 4, Carminati/Hussein discloses the device according to claim 1, wherein
the at least two first pillars have cross-sections of different shapes from each other ([0080], [0092], [0093], [0124] in Carminati).
Regarding claim 5, Carminati/Hussein discloses the device according to claim 1, wherein
the at least two first pillars have a cross-section having a shape of one of the following: a disk, an oval, an ellipse, a polygon, a hexagon, a rectangle, a diamond, and a square (Fig. 12, 14, 15 in Carminati).
Regarding claim 6, Carminati/Hussein discloses the device according to claim 1, wherein
the first material is different from the second material ([0081], [0095] in Carminati).
Regarding claim 7, Carminati/Hussein discloses the device according to claim 1, wherein
the first material is selected from one of the following: quartz, a compound comprising quartz, silicon, a compound comprising silicon, silicon oxide, silicon nitride, a compound of silicon and carbon, metal oxides of silicon, glass, a compound comprising glass, a compound of aluminum, and a compound of gallium ([0095] in Carminati).
Regarding claim 8, Carminati/Hussein discloses the device according to claim 1, wherein
the second material is selected from one of the following: quartz, a compound comprising quartz, silicon, a compound comprising silicon, silicon oxide, silicon nitride, a compound of silicon and carbon, metal oxides of silicon, glass, a compound comprising glass, a compound of aluminum, and a compound of gallium ([0081] in Carminati).
Regarding claim 9, Carminati/Hussein discloses the device according to claim 1, wherein
the first structure is an optical meta-structure ([0072] in Carminati).
Regarding claim 10, Carminati/Hussein discloses an optical system comprising:
a substrate 65 of a first material having a first optical index the substrate having a first surface opposite a second surface along a first direction; (Fig. 17 in Carminati);
a testing device (on the left side of Fig. 8 of Carminati) on the substrate, the testing device including a first optical meta-structure 40 (left side of Fig. 8) having a first plurality of pillars 50 extending entirely through the substrate 65 along the first direction, the first plurality of pillars being of a second material having a second optical index different from the first optical index, the first plurality of pillars each having a first surface coplanar with the first surface of the substrate and a second surface coplanar with the second surface of the substrate (Fig. 17, here, the pillars 35 are “embedded” in layer 65 and they extend entirely through the layer 65), the first plurality of pillars each having randomized diameters and a randomized distribution throughout the substrate ([0070]-[0071] in Hussein); and
an optical device 40 (on the right side of Fig. 8) on the substrate (Fig. 6, 7, 8, 9, 17, [0080], [0081], [0085], [0086] in Carminati).
Regarding claim 11, Carminati/Hussein discloses the optical system according to claim 10,
wherein the optical device includes a second optical meta-structure 40 (right side of Fig. 8 of Carminati) made of the first material and at least two second pillars made of the second material crossing the substrate (Fig. 8).
Regarding claim 12, Carminati/Hussein discloses the optical system according to claim 11.
Carminati/Hussein does not disclose wherein the first plurality of pillars each have a diameter between a minimum diameter of the at least two second pillars and a maximum diameter of the at least two second pillars.
However, Carminati/Hussein discloses that the diameter of the pillars 60 may vary along X (Fig. 12, [0080], [0090], [0091] in Carminati).
The parameter of the diameter of the pillars of the meta structure is a result-effective variable, i.e., it is recognized to achieve a recognized result, for example, achieving a desired optical effect, e.g., wavelength range operation, amount of light reflection ([0083], [0084], [0089] in Carminati).
Carminati/Hussein discloses the claimed invention except for the value of the diameter of the pillars of the meta structure of the testing device.
It would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the present application to modify Carminati/Hussein so that the diameters of the pillars of the meta structure of the testing device have the claimed value, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art, In re Aller, 105 USPQ 233 (C.C.P.A. 1955).
In the current instance, the diameter of the pillars of the meta structure of the testing device is an art recognized result-effective variable in that it affects the optical effect of the meta- structure.
Thus, one would have been motivated to optimize the diameter of the pillars of the meta structure of the testing device because it is an art-recognized result-effective variable and it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art, In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977). See MPEP §2144.05(II)(B) “after KSR, the presence of a known result-effective variable would be one, but not the only, motivation for a personal of ordinary skill in the art to experiment to reach another workable product or process”.
Regarding claim 13, Carminati/Hussein discloses the optical system according to claim 11.
Carminati/Hussein does not disclose wherein one of the first plurality of pillars has a diameter equal to an average diameter of the at least two second pillars.
However, Carminati/Hussein discloses that the diameter of the pillars 60 may vary along X (Fig. 12, [0080], [0090], [0091] in Carminati).
The parameter of the diameter of the pillars of the meta structure is a result-effective variable, i.e., it is recognized to achieve a recognized result, for example, achieving a desired optical effect, e.g., wavelength range operation, amount of light reflection ([0083], [0084], [0089] in Carminati).
Carminati discloses the claimed invention except for the value of the diameter of the pillars of the meta structure of the testing device.
It would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the present application to modify Carminati/Hussein so that the diameters of the pillars of the meta structure of the testing device have the claimed value, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art, In re Aller, 105 USPQ 233 (C.C.P.A. 1955).
In the current instance, the diameter of the pillars of the meta structure of the testing device is an art recognized result-effective variable in that it affects the optical effect of the meta structure.
Thus, one would have been motivated to optimize the diameter of the pillars of the meta structure of the testing device because it is an art-recognized result-effective variable and it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art, In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977). See MPEP §2144.05(II)(B) “after KSR, the presence of a known result-effective variable would be one, but not the only, motivation for a personal of ordinary skill in the art to experiment to reach another workable product or process”.
Regarding claim 14, Carminati/Hussein discloses the optical system according to claim 11,
wherein the at least two first pillars have a cross-section of a same shape as the cross-section of the at least two second pillars (Fig. 8 in Carminati).
Regarding claim 15, Carminati/Hussein discloses the optical system according to claim 10.
Carminati/Hussein does not disclose wherein the testing device is positioned at a level of a cutting line of the optical device.
However, Carminati/Hussein discloses that the columns 51 of pillars 50 are arranged along X (Fig. 6 in Carminati).
It would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the present application to modify Carminati/Hussein so that a column 51 of the testing device (at the left) is at a cutting line of the optical devices (at the right) for achieving a desired final product, i.e., preserving (or not) the testing device.
Regarding claim 16, Carminati/Hussein discloses the optical system according to claim 10,
wherein the testing device is positioned outside of a cutting line of the optical device (Fig. 8 of Carminati).
Claims 17 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Shahrestani et al. (US 2025/0216590, hereinafter, “Shahrestani”) in view of Carminati and Lee et al. (US 2021/0088694, hereinafter, Lee).
Regarding claim 17, Shahrestani discloses a method, comprising:
manufacturing a testing device 430B having first dimensions (e.g., spacing between
pillars); and
manufacturing a plurality of optical devices 430A, 430C having second dimensions (e.g., spacing between pillars), the first dimensions being less than or substantially equal to the second dimensions, each optical device of the plurality of optical devices having a meta-structure, the testing device having at least one meta-structure of the optical device (Fig. 4, [0135]. Here, under the broadest reasonable interpretation principle, 430B may be a testing device and 430A, 430C are optical devices, for example, color filters).
Shahrestani does not disclose each meta- structure including a plurality of pillars extending through a substrate wafer, each pillar having a first surface coplanar with a first surface of the substrate wafer and a second surface coplanar with a second surface of the substrate wafer.
Carminati discloses a meta-structure including:
a substrate wafer 65 made of a first material, the substrate wafer having a first surface opposite a second surface along a first direction (Fig. 17); and
at least two first pillars 35, made of a second material entirely crossing the substrate wafer (Fig. 17), each of the at least two first pillars having a first surface coplanar with the first surface of the substrate wafer and a second surface coplanar with the second surface of the substrate wafer (Fig. 10, 17, [0024], [0087], [0095]. Here, the pillars are “embedded” in layer 65 and they extend through the layer 65 entirely).
Both Shahrestani and Carminati disclose meta-structures.
It would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the present application to modify Shahrestani so that the each optical device 430A, 430C is a meta-structure comprising pillars embedded entirely in the substrate wafer, as taught by Carminati, for selecting desired wavelengths for the color filters ([0009] in Shahrestani).
Shahrestani/Carminati does not disclose the first and second surfaces of each pillar of the plurality of pillars being ellipse-shaped.
Lee discloses an optical element comprising a meta-structure (Abstract, [0092]). In one embodiment, Lee discloses that the pillars may have elliptical cross section (Fig. 6, [0094]).
Both Shahrestani and Lee disclose meta-structures.
It would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the present application to modify Shahrestani/Carminati so that the each optical device 430A, 430C is a meta-structure comprising pillars having elliptical cross sections, as taught by Lee, for affecting the optical effect of the meta- structure.
Regarding claim 20, Shahrestani/Carminati/Lee discloses the method of claim 17.
Shahrestani/Carminati/Lee does not disclose wherein the manufacturing the testing device occurs before the manufacturing the plurality of optical devices.
However, Shahrestani/Carminati/Lee discloses the testing device 430B and the plurality of optical devices 430A, 430C having being manufactured (Fig. 4, [0135] in Shahrestani).
It would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the present application to modify Shahrestani/ Carminati/Lee so that the manufacturing the testing device 430B occurs before the manufacturing the plurality of optical devices 430A, 430C, since it has been held that changes in a sequence of adding ingredients (i.e., here, the manufacturing of the components 430A-430C) is obvious (“Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959) (Prior art reference disclosing a process of making a laminated sheet wherein a base sheet is first coated with a metallic film and thereafter impregnated with a thermosetting material was held to render prima facie obvious claims directed to a process of making a laminated sheet by reversing the order of the prior art process steps.). See also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results); In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930) (Selection of any order of mixing ingredients is prima facie obvious.)”), MPEP 2144.04 (IV)(C).
Claims 18 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Shahrestani/Carminati/Lee in view of Venkatesan et al. (US 2021/0333473, hereinafter, “Venkatesan”).
Regarding claim 18, Shahrestani/Carminati/Lee discloses the method of claim 17.
Shahrestani/Carminati/Lee does not disclose singulating the plurality of optical devices via cutting on a cutting line, the cutting line arranged between rows and columns of the plurality of optical devices.
Venkatasan discloses a wafer 100 comprising a plurality of photonic integrated circuits
(PIC) 102 (Abstract, [0034], Fig. 1). In one embodiment, Venkatasan discloses that the various PIC 102, which are separated by scribe lines 104 may be singulated/diced into individual die (by cutting along the scribe lines) ([0034], [0121]).
Both Shahrestani and Venkatasan disclose photonic optical devices.
It would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the present application to modify Shahrestani/Carminati/Lee so that the plurality of optical devices 430A, 430C are singulated by cutting on a cutting line, the cutting line arranged between rows and columns of the plurality of optical devices, as taught by Venkatasan, for forming individual optical devices ([0121] in Venkatasan).
Regarding claim 19, Shahrestani/Carminati/Lee/Venkatasan discloses the method of claim 18, wherein
singulating the plurality of optical devices includes positioning the testing device on the cutting line (Fig. 4 in Shahrestani, device 430B is on the cutting lines used to separate devices 430A, 430C).
Response to Applicant’s Arguments
Regarding independent claims 1, 10 and 17, Applicant stated that “Carminati does not teach or suggest the at least two first pillars and the second pillar having a random distribution in the substrate”; “claim 10 recites, among other things, "the first plurality of pillars each having randomized diameters." Carminati does not teach at least this feature of amended claim 10”; and “Amended independent claim 17 recites, among other things, "the first and second surfaces of each pillar of the plurality of pillars being ellipse-shaped." At a minimum, it is respectfully submitted that no combination of the cited references teaches at least these features of amended claim 17”, see p. 6 of the Remarks.
Applicant’s above arguments have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Hussein (re claims 1 and 10) and Lee (re claim 17).
Applicant's arguments have been fully considered but they are not persuasive, thus, the rejection of independent claims 1, 10 and 17 (and their dependents) is maintained.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LEONIDAS BOUTSIKARIS whose telephone number is (703)756-4529. The Examiner can normally be reached Mon. - Fr. 9.00-5.00.
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/L.B./
Patent Examiner, AU 2872
/STEPHONE B ALLEN/Supervisory Patent Examiner, Art Unit 2872
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