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 of Group I: claims 1-2, 6-13, 16 -24 and 33 in the reply filed on 5/27/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Applicant failed to distinctly and specifically point out any errors in the suspicion requirement. The remarks merely recite generalized Office policy and are devoid of substance regarding the actual technical distinctness of the claimed inventions. Accordingly, the restriction requirement is maintained and made FINAL.
Prior Art of Record
The applicant's attention is directed to additional pertinent prior art cited in the accompanying PTO-892 Notice of References Cited, which, however, may not be currently applied as a basis for the following rejections. While these references were considered during the examination of this application and are deemed relevant to the claimed subject matter, they are not presently being applied as a basis for rejection in this Office action. The pertinence of these documents, however, may be revisited, and they may be applied in subsequent Office actions, particularly in light of any amendments or further clarification of the claimed invention.
Allowable Subject Matter
Claim 10, 11, 23 and 24 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is an examiner’s statement of reasons for allowance: The primary reason for the allowance of the claims is the inclusion of the limitation “wherein the recess is countersunk with a second recess in an opposite second surface of the substrate, such that the recess is a countersunk through-hole” in all of the claims which is not found in the prior art references.
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.
Claim(s) 1-2, 6-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Smith (US 5824186 A).
PNG
media_image1.png
464
528
media_image1.png
Greyscale
CLAIM 1. (Previously Presented) A composite substrate 10 for micro and nanofabrication, comprising a substrate having a recess in a surface thereof, wherein the recess comprises embedded material 19 and filling material, wherein the filling material 75 at least in part fills the volume between the diamond and the inner surface of the recess.
Smith expressly teaches that the embedded material can be GaAs, but further discloses in paragraph 20 that the material may alternatively be diamond. It would have been obvious to one having ordinary skill in the art at the time the invention was made to select one of the described material devices/structures, since it has been held to be within the general skill of a worker in the art to select a known material on the base of its suitability, for its intended use involves only ordinary skill in the art. In re Leshin, 125 USPQ 416.
Furthermore regarding “at least in part fills”, under the Broadest Reasonable Interpretation (BRI) the specific surfaces, relative location, and exact amount of any "filling" material are not explicitly defined. Because the prior art boundaries are open to BRI, it would be an obvious design choice for a PHOSITA to embed a diamond material in a substrate and employ a finite amount of "fill" material between the diamond and the inner surface of the recess to achieve the claimed structure.
CLAIM 2. Smith teaches a composite substrate of claim 1, wherein a height difference between an exposed surface of the embedded material and the surface of the substrate is 50 pm or less (Smith (Fig. 8) teaches a coplanar relationship, making a value of “or less” a obvious expectation to a PHOSITA.
It would have been obvious to a PHOSITA to determine the workable or optimal values for the [insert first variable] through routine experimentation. The [insert second variable] is a result-effective variable. Discovering the optimum or workable ranges of a result-effective variable within given prior art conditions is not inventive. See MPEP § 2144.05; see also In re Aller, 220 F.2d 454, 456 (CCPA 1955) (“[I]n the absence of evidence of unexpected results, the mere discovery of an optimum value or range... is not patentable.”). Given these teachings, optimizing the thickness, temperature, and delivery conditions of the layers represents nothing more than routine optimization.
Furthermore, the specification fails to disclose that the claimed ranges are critical or produce any unexpected results. Where patentability is predicated on a variable or chosen dimension, the Applicant bears the burden to show that the claimed range is critical. In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990). While differences between the claimed invention and the prior art may yield different properties, the Applicant must demonstrate that these properties differ to an unexpected extent. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The Applicant maintains the burden of explaining any declaration data proffered to prove non-obviousness. Ex parte Ishizaka, 24 USPQ2d 1621, 1624 (Bd. Pat. App. & Inter. 1992).)
CLAIM 6. Smith teaches a composite substrate of claim 1, wherein an exposed surface of the embedded material and the surface of the substrate are in plane (Smith Fig. 8).
CLAIM 7. Smith teaches a composite substrate of claim 1, wherein an exposed surface of the embedded material and the surface of the substrate form a common surface (Smith Fig. 8).
Claim(s) 8-9, 112-13, 16 -22 and 33 is/are rejected under 35 U.S.C. 103 as being unpatentable over (US 5824186 A) in view of Liu et al. (US 20040026754 A1).
CLAIM 8. Smith teaches a composite substrate of claim 7, however is is silent upon wherein the common surface is free of gaps.
While Smith does not explicitly teach completely filling the gaps, at the time of the invention, complete gap filling was a known option not necessarily required for generic reasons (e.g., increased adhesion, stability, or protection).
Furthermore, Liu et al. (¶ 87) teach inserting a suitable sealant or filler material into gaps to avoid the potential short-circuiting of microstructure elements.
It would have been obvious to a person of ordinary skill in the art to modify Smith by completely filling the gaps with the filler material of Liu et al. in order to achieve the predictable result of sealing and protecting the embedded device. Such a modification relies on known methods and yields predictable results, falling squarely within the framework of KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
CLAIM 9. Smith teaches a composite substrate of claim 1, wherein the recess reaches through from one surface of the substrate to another surface of the substrate, such that the recess is a through-hole(Smith Fig. 8 - Under the BRI, a "recess" reads onto any depression, cavity, or channel. The fact that prior art penetrates only partially and does not form a complete through-hole does not distinguish it from the claim language, as the term "recess" broadly encompasses partial penetrations, notches, or grooves on a single surface of the composite substrate “to another surface of the substrate”.).
CLAIM 12. Smith teaches a composite substrate of claim 1, wherein the embedded material comprises one or more diamond particles Smith expressly teaches that the embedded material can be GaAs, but further discloses in paragraph 20 that the material may alternatively be diamond. It would have been obvious to one having ordinary skill in the art at the time the invention was made to select one of the described material devices/structures, since it has been held to be within the general skill of a worker in the art to select a known material on the base of its suitability, for its intended use involves only ordinary skill in the art. In re Leshin, 125 USPQ 416.
CLAIM 13. Smith teaches a composite substrate of claim 12, may be silent upon the particular range of wherein the diamond particles have an average particle diameter or longest dimension of 5 mm or less.
It would have been obvious to one of ordinary skill in the art of making semiconductor devices to determine the workable or optimal value for the dimensions through routine experimentation and optimization to obtain optimal or desired device performance because the dimensions is a result-effective variable and there is no evidence indicating that it is critical or produces any unexpected results and it has been held that it is not inventive to discover the optimum or workable ranges of a result-effective variable within given prior art conditions by routine experimentation. See MPEP § 2144.05
Given the teaching of the references, it would have been obvious to determine the optimum thickness, temperature as well as condition of delivery of the layers involved. See In re Aller, Lacey and Hall (10 USPQ 233-237) “It is not inventive to discover optimum or workable ranges by routine experimentation.” Note that the specification contains no disclosure of either the critical nature of the claimed ranges or any unexpected results arising therefrom. Where patentability is said to be based upon particular chosen dimensions or upon another variable recited in a claim, the Applicant must show that the chosen dimensions are critical. In re Woodruff, 919 f.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990).
Any differences in the claimed invention and the prior art may be expected to result in some differences in properties. The issue is whether the properties differ to such an extent that the difference is really unexpected. In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicants have the burden of explaining the data in any declaration they proffer as evidence of non-obviousness. Ex parte Ishizaka, 24 USPQ2d 1621, 1624 (Bd. Pat. App. & Inter. 1992).
An Affidavit or declaration under 37 CFR 1.132 must compare the claimed subject matter with the closest prior art to be effective to rebut a prima facie case of obviousness. In re Burckel, 592 F.2d 1175, 201 USPQ 67 (CCPA 1979).
CLAIM 16. Smith teaches a composite substrate of claim 1, wherein the substrate comprises one or more semiconductor materials Si (Smith Fig. 8).
CLAIM 17. Smith teaches a composite substrate of claim 1, wherein the substrate comprises one or more insulating materials (Smith Fig. 8 & ¶46- a Si substrate is understood to comprise one or more insulation materials, such as its “native oxide layer”)..
CLAIM 18. Smith teaches a composite substrate of claim 16, wherein the one or more semiconductor materials are selected from the group consisting of IV semiconductors, III-V semiconductors and IV-IV semiconductors (Smith Fig. 8).
CLAIM 19. Smith teaches a composite substrate of claim 17, wherein the one or more insulating materials are selected from the group consisting of oxides, composite polymer materials, ceramics, glass, quartz and silica (Smith Fig. 8 & ¶46- a Si substrate is understood to comprise one or more insulation materials, such as its “native oxide layer”)..
CLAIM 20. Smith teaches a composite substrate of claim 1, wherein the embedded material comprises one or more of single crystal diamond and polycrystalline diamond (Smith Fig. 8 & ¶20)
CLAIM 21. Smith teaches a composite substrate of claim 1, wherein the filling material comprises one or more materials selected from the group consisting of resist materials, film formers and adhesives (Smith Fig. 8 & adhesive 75).
CLAIM 22. Smith teaches a composite substrate of claim 1, may be silent upon the specific range of wherein the embedded material comprises one or more of - 70 - 99.9 % by total weight of the embedded material of diamond, and - 0.1 - 30 % by total weight of the embedded material of filling material.
would have been obvious to one of ordinary skill in the art of making semiconductor devices to determine the workable or optimal value for the diamond-to-filling material weight ratio through routine experimentation and optimization to obtain optimal or desired device performance. This is because the weight ratio of the components is a result-effective variable, and there is no evidence indicating that it is critical or produces any unexpected results. Furthermore, it has been held that it is not inventive to discover the optimum or workable ranges of a result-effective variable within given prior art conditions by routine experimentation. See MPEP § 2144.05.
Given the teaching of the references, it would have been obvious to determine the optimum thickness, temperature as well as condition of delivery of the layers involved. See In re Aller, Lacey and Hall (10 USPQ 233-237) “It is not inventive to discover optimum or workable ranges by routine experimentation.” Note that the specification contains no disclosure of either the critical nature of the claimed ranges or any unexpected results arising therefrom. Where patentability is said to be based upon particular chosen dimensions or upon another variable recited in a claim, the Applicant must show that the chosen dimensions are critical. In re Woodruff, 919 f.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990).
Any differences in the claimed invention and the prior art may be expected to result in some differences in properties. The issue is whether the properties differ to such an extent that the difference is really unexpected. In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicants have the burden of explaining the data in any declaration they proffer as evidence of non-obviousness. Ex parte Ishizaka, 24 USPQ2d 1621, 1624 (Bd. Pat. App. & Inter. 1992).
An Affidavit or declaration under 37 CFR 1.132 must compare the claimed subject matter with the closest prior art to be effective to rebut a prima facie case of obviousness. In re Burckel, 592 F.2d 1175, 201 USPQ 67 (CCPA 1979).
CLAIM 33. Smith teaches a device, comprising the composite substrate of claim 1 (See regarding Claim 1. The device of claim 1 is a device comprising the substrate. This limitation does not provide any further distinction over the prior art.).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JARRETT J STARK whose telephone number is (571)272-6005. The examiner can normally be reached 8-4 M-F.
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, Jessica Manno can be reached at 571-272-2339. 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.
JARRETT J. STARK
Primary Examiner
Art Unit 2822
6/11/2026
/JARRETT J STARK/ Primary Examiner, Art Unit 2898
Prosecution Insights