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 .
Response to Amendment
This Office Action is in response to Applicant’s response of 2/10/2026. In that response, Applicant amended claims 1, 3, 7-8, 10, 13-14, 17-18 and 20.
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 § 112
The rejections under 35 USC § 112 have been overcome.
Claim Rejections - 35 USC § 102
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-2, 4-11, 14 and 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Carminati et al. (US 2022/0011567, hereinafter, “Carminati”).
Regarding claim 1, Carminati discloses a device 20 comprising:
a testing device 30, including:
a first structure 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); and
at least two first pillars 35, 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], [0087], [0095]. Here, the pillars are “embedded” in layer 65 and they cross the layer 65 entirely).
Regarding claim 2, Carminati 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).
Regarding claim 4, Carminati 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]).
Regarding claim 5, Carminati 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).
Regarding claim 6, Carminati discloses the device according to claim 1, wherein
the first material is different from the second material ([0081], [0095]).
Regarding claim 7, Carminati 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]).
Regarding claim 8, Carminati 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]).
Regarding claim 9, Carminati discloses the device according to claim 1, wherein
the first structure is an optical meta-structure ([0072]).
Regarding claim 10, Carminati 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]);
a testing device 40 (on the left side of Fig. 8) on the substrate, the testing device including a first optical meta-structure 50 having at least two first pillars 35 extending entirely through the substrate 65 along the first direction, the at least two first pillars being of a second material having a second optical index different from the first optical index, the at least two first 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); 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]).
Regarding claim 11, Carminati discloses the optical system according to claim 10,
wherein the optical device includes a second optical meta-structure 50 made of the first material and at least two second pillars made of the second material crossing the substrate (Fig. 8).
Regarding claim 14, Carminati 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).
Regarding claim 16, Carminati 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).
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 3, 12-13 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Carminati.
Regarding claim 3, Carminati discloses the device according to claim 2.
Carminati 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 discloses the pillars have cross sections in the range 10 to 200 nm ([0083]).
Here, the claimed range for the diameter of the cross section of the pillars overlaps with the range for the diameter disclosed by Carminati. 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 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 12, Carminati discloses the optical system according to claim 11.
Carminati does not disclose wherein the at least two first pillars 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 discloses that the diameter of the pillars 60 may vary along X (Fig. 12, [0080], [0090], [0091]).
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 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 discloses the optical system according to claim 11.
Carminati does not disclose wherein one of the at least two first pillars has a diameter equal to an average diameter of the at least two second pillars.
However, Carminati discloses that the diameter of the pillars 60 may vary along X (Fig. 12, [0080], [0090], [0091]).
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 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 15, Carminati discloses the optical system according to claim 10.
Carminati does not disclose wherein the testing device is positioned at a level of a cutting line of the optical device.
However, Carminati discloses that the columns 51 of pillars 50 are arranged along X (Fig. 6).
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 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.
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.
Regarding claim 17, Shahrestani discloses a method, comprising:
manufacturing a testing device 430B having first dimensions (e.g., spacing between pillars) (Fig. 4); 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).
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).
Regarding claim 20, Shahrestani/Carminati discloses the method of claim 17.
Shahrestani/Carminati does not disclose wherein the manufacturing the testing device occurs before the manufacturing the plurality of optical devices.
However, Shahrestani/Carminati 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 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 in view of Venkatesan et al. (US 2021/0333473, hereinafter, “Venkatesan”).
Regarding claim 18, Shahrestani/Carminati discloses the method of claim 17.
Shahrestani/Carminati 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]).
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 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/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 claim 1 (similarly for independent claims 10 and 17), Applicant stated that “The Office Action points to Carminati as teaching a substrate and at least two first pillars of a second material crossing the substrate. However, Carminati does not teach 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”, see p. 7 of the Remarks.
Applicant's arguments have been fully considered but they are not persuasive.
As seen in Fig. 17 of Carminati, pillars 35 are entirely embedded within the substrate 65 so that their top and bottom surfaces are coplanar with the top and bottom surface of the layer 65, respectively.
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
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 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 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