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 .
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claim 11 is/are rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 24 of prior U.S. Patent No. 11,313,719 B2. This is a statutory double patenting rejection.
Claim 15 is/are rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 35 of prior U.S. Patent No. 11,313,719 B2. This is a statutory double patenting rejection.
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 2-10, 12-14 and 16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 and 35 of U.S. Patent No. 11,313,719 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because patented claims 1-12 anticipate instant claims 2-10, 12-13 and 16.
Claim 17 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,313,719 B2 in view of Larussi et al. (Patent No. US 10,305,193 B1).
Claim 1 of ‘719 patent discloses the photon detector of claim 2, but is silent that the superconducting wire is composed of a superconducting alloy. Larussi et al. discloses the superconducting wire is composed of a superconducting alloy (Col. 4, lines 35-43). It would have been obvious to one of ordinary skill in the art to provide a superconducting alloy of Larussi et al. as the superconducting wire on the device of the claim 1 of the ‘719 patent in order to easily draw into wires and/or provide a better balance of performance, cost, and manufacturability.
Claims 18-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 11-13 of U.S. Patent No. 11,629,995 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because patented claims 1 and 11-13 anticipate instant claims 18-21.
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)(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.
Claim(s) 2-10, 12, 14, 16, 18 and 20-21 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Tang et al. (Patent No. US 9,500,519 B2).
Regarding Claim 2, Tang discloses a photon detector (col. 2 Ins 50-51: The present invention includes a device for the detection of single photons in the visible and infrared spectrum.), comprising: a superconducting wire (col. 3 Ins 64-67 to col. 4 In 1: the superconducting nanowire comprises two longitudinal segments running along the length of the waveguide) having a plurality of alternating narrow (longitudinal portions of NbN-nanowire, as depicted in FIG. 10b) and wide portions (portions perpendicular to longitudinal portions of NbNnanowire, as depicted in FIG. 10b; plurality shown in Fig. 19 and 21; col 11, In 33-45); a current source electrically-coupled to the superconducting wire and configured to supply the superconducting wire with electrical current (col. 4 Ins 4-6: the system comprises an external current source for delivering a bias current to the superconducting nanowire); and an optical waveguide (layer 20 of FIG. 18) optically coupled to the plurality of narrow portions (segments 31 and 32 of FIG. 18) of the superconducting wire (as depicted in FIG. 18; col. 3 Ins 51-55: the at least one device comprising a waveguide layer on a substrate and a superconducting nanowire positioned atop of the waveguide layer, at least one optical fiber optically coupled to a waveguide of the at least one device).
Regarding Claim 3, Tang discloses the photon detector of claim 2. Tang further discloses, wherein each narrow portion of the plurality of narrow portions is straight (as depicted in FIGs. 10b and 18) to reduce current crowding effects within the narrow portion (col. 9 Ins 50-52: In one embodiment, connecting region 33 is a curved connecting region, and thus nanowire 30 is devoid of any sharp-angled bends. When current flows around a bend it will crowd at the inner edge, leaving the outer side of the bend with less current density).
Regarding Claim 4, Tang discloses the photon detector of claim 2. Tang further discloses, wherein at least one wide portion of the plurality of wide portions is bent (as depicted in FIGs. 10b and 18; col. 3 Ins 64-67 to col. 4 In 1: the superconducting nanowire comprises two longitudinal segments running along the length of the waveguide and wherein the longitudinal segments are attached to each other at one end by a curved region, thereby forming a U-shaped nanowire).
Regarding Claim 5, Tang discloses the photon detector of claim 2. Tang further discloses, wherein the narrow portions each have a first width (col. 2 Ins 64-66: In another embodiment, the nanowire has a thickness of about 0.5 nm to about 100 nm) and the wide portions each have a second width, the second width being greater than the first width (as depicted in FIGs. 10b; col 29, In 59-65).
Regarding Claim 6, Tang discloses the photon detector of claim 2. Tang further discloses, further comprising a readout circuit electrically coupled to the superconducting wire and configured to measure an electrical property of the superconducting wire (col. 12 Ins 15-21: readout of the SSPDs is realized by approaching a RF-probe to the electrode. In certain embodiments, the electrode is operably connected to one or more amplifiers, for example a low-noise high-bandwidth amplifier. The output may then be measured, recorded, and analyzed using a single photon counting system, oscilloscope, or the like.), wherein the electrical property is indicative of a number of photons incident to the superconducting wire (col. 16 Ins 32-42: Each circuit is composed of a pair of optical grating couplers, a 50:50 waveguide splitter, and the detector region which connects to a pair of electrode pads ... The 50:50 waveguide splitter ... routes half of the coupled light to the detector region and the other half to a reference port which allows for the precise determination of the number of photons arriving at the detector region.).
Regarding Claim 7, Tang discloses the photon detector of claim 6. Tang further discloses, wherein the electrical property comprises a voltage (via oscilloscope) across the superconducting wire or an impedance of the superconducting wire (col. 12 Ins 15-21: readout of the SSPDs is realized by approaching a RF-probe to the electrode. In certain embodiments, the electrode is operably connected to one or more amplifiers, for example a low-noise high-bandwidth amplifier. The output may then be measured, recorded, and analyzed using a single photon counting system, oscilloscope, or the like).
Regarding Claim 8, Tang discloses the photon detector of claim 6. Tang further discloses wherein the readout circuit is configured to measure the voltage across a contact coupled in parallel with the superconducting wire (col. 12 Ins 6-21: In one embodiment, the nanowire of the device is operably connected to an electrode. In one embodiment, the nanowire is connected to the electrode via triangular strips of conductive material (e.g. NbTiN). In certain embodiments, the electrode is used to transmit the output from the nanowire, supply bias current to the nanowire, or both. In one embodiment, the electrode is an electrode pad. The electrode may be made of any suitable metallic material, including, but not limited to platinum, palladium, silver, copper, and gold. In certain embodiments, readout of the SSPDs is realized by approaching a RF-probe to the electrode. In certain embodiments, the electrode is operably connected to one or more amplifiers, for example a low-noise high-bandwidth amplifier. The output may then be measured, recorded, and analyzed using a single photon counting system, oscilloscope, or the like).
Regarding Claims 9 and 21, Tang discloses the photon detector of claim 2 and the method of claim 18. Tang further discloses, wherein the optical waveguide is tapered to improve coupling, such that a downstream portion of the optical waveguide is wider than an upstream portion of the optical waveguide (col. 11 Ins 56-67 to col. 12 Ins 1-5: The circular mode of the buried waveguide is then converted into a wider, low-loss oval mode, which evanescently couples with the surface waveguide. In certain embodiments, one or both of the buried waveguide and surface waveguide are tapered to adjust the mode of the waveguides).
Regarding Claim 10, Tang discloses the photon detector of claim 2. Tang further discloses, wherein the optical waveguide (optical waveguide of FIG. 18) is vertically stacked with the superconducting wire (wire 30 of FIG. 18) (as depicted in FIG. 18; col 29, In 59-65).
Regarding Claims 12 and 20, Tang discloses the photon detector of claim 2 and the method of claim 18. Tang further discloses further comprising a photon source coupled to the optical waveguide and configured to probabilistically generate photons (col 5, In 57 to col 6, In 3; col. 11 Ins 13-27: In one embodiment, device 100 comprises one or more couplers for coupling an incoming light source, for example an optical fiber or fiber array, to the device. In one embodiment, device 100 comprises one or more grating couplers. For example, in certain embodiments, the waveguide layer of the device comprises one or more grating couplers. The grating couplers may be patterned onto or into any surface of waveguide layer 20 (see FIG. 8A). Contact of a fiber or fiber array to the grating coupler provides for low-loss optical coupling of the source to the detector device ... The photon flux inside waveguide layer 20 is controlled precisely by carefully calibrating the grating coupler transmission and by using calibrated attenuators.).
Regarding Claim 14, Tang discloses the photon detector of claim 2. Tang further discloses, wherein the optical waveguide includes a plurality of coupling portions (col. 11 Ins 17-20: the waveguide layer of the device comprises one or more grating couplers. The grating couplers may be patterned onto or into any surface of waveguide layer 20); and wherein the optical waveguide is positioned so that a first coupling portion is separated from a first narrow portion of the superconducting wire by a first distance such that the first coupling portion is evanescently coupled to the first narrow portion (col. 11 Ins 50-64: the surface waveguide interfaces with superconducting nanowires for the detection of the single photons. The buried waveguide and surface waveguide are designed to be evanescently coupled with little to no loss).
Regarding Claim 16, Tang discloses the photon detector of claim 2. Tang further discloses, wherein the optical waveguide is positioned on a same layer as the superconducting wire (col. 3 Ins 19-30: The present invention also includes a device for the detection of single photons in the visible and infrared spectrum, the device comprising a buried waveguide layer in a substrate and a superconducting nanowire. In one embodiment, the substrate comprises a cavity exposing at least a portion of the buried waveguide layer, and wherein the superconducting nanowire is positioned atop the exposed portion of the buried waveguide layer. In another embodiment, the device further comprises a surface waveguide layer evanescently coupled to the buried waveguide layer, and wherein the superconducting nanowire is positioned atop the surface waveguide layer.).
Regarding Claim 18, Tang discloses a method of resolving a number of co-incident photons (col. 2 Ins 50-51: The present invention includes a device for the detection of single photons in the visible and infrared spectrum; col. 6 Ins 19-25: FIG. 10, comprising FIG. 10a through FIG. 10d, is a set of SEM and AFM images depicting the surface morphology of a NbN-nanowire detector on top of a Siwaveguide. (FIG. 10a) a resist-covered NbN-nanowire of 85 nm width is visible on top of a 750-nm-wide silicon waveguide; (FIG. 10b) zoom-in of the detector region where photons are incident on the U-shaped nanowire), comprising: optically coupling a waveguide to a superconducting wire having a plurality of alternating narrow and wide portions (as depicted in FIG. 10b; col. 3 Ins 64-67 to col. 4 In 1: the superconducting nanowire comprises two longitudinal segments running along the length of the waveguide) having a plurality of alternating narrow (portions perpendicular to longitudinal portions of NbN-nanowire, as depicted in FIG. 10b; plurality shown in Fig. 19 and 21; col 11, In 33-45); electrically coupling the superconducting wire to a current source (col. 4 Ins 4-6: the system comprises an external current source for delivering a bias current to the superconducting nanowire); providing a first current from the current source to the superconducting wire (col. 4 Ins 4-6: the system comprises an external current source for delivering a bias current to the superconducting nanowire), the first current configured to maintain the superconducting wire in a superconducting state in the absence of incident photons (col. 21 Ins 30-36: The shape of the output pulse was empirically fitted with a bi-exponential function ... where the first part accounts for the initial voltage pulse rising sharply at 11 as the nanowire switches to the normal conducting state and the second part describes the exponential decay of the pulse at t2 as the nanowire relaxes back to the superconducting state; col 30, In 30-61); receiving one or more photons via the waveguide (col. 9 Ins 1-6: the device comprises an optical waveguide for transmission of the photons to be detected. In certain embodiments, the waveguide receives light from a coupled light source and transmits the light through the waveguide with low-loss. For example, in certain instances, waveguides guide a wave through total internal reflection.); measuring an electrical property of the superconducting wire, wherein the electrical property is proportional to a number of photons incident on the superconducting wire (col. 12 Ins 15-21: readout of the SSPDs is realized by approaching a RF-probe to the electrode. In certain embodiments, the electrode is operably connected to one or more amplifiers, for example a low-noise high-bandwidth amplifier. The output may then be measured, recorded, and analyzed using a single photon counting system, oscilloscope, or the like.); and determining the number of received photons based on the electrical property (col. 16 Ins 32-42: Each circuit is composed of a pair of optical grating couplers, a 50:50 waveguide splitter, and the detector region which connects to a pair of electrode pads ... The 50:50 waveguide splitter ... routes half of the coupled light to the detector region and the other half to a reference port which allows for the precise determination of the number of photons arriving at the detector region; col 2, In 2-3; col 7, In 4-7; col 12, In 17-24).
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, 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.
Claim 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tang et al. (Patent No. US 9,500,519 B2) in view of Larussi et al. (Patent No. US 10,305,193 B1).
Regarding Claim 17, Tang discloses the photon detector of claim 2, but is silent that the superconducting wire is composed of a superconducting alloy. Larussi et al. discloses the superconducting wire is composed of a superconducting alloy (Col. 4, lines 35-43). It would have been obvious to one of ordinary skill in the art to provide a superconducting alloy of Larussi et al. as the superconducting wire on the device of Tang in order to easily draw into wires and/or provide a better balance of performance, cost, and manufacturability.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SEUNG C SOHN whose telephone number is (571)272-4123. The examiner can normally be reached M - F 8 - 5.
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/SEUNG C SOHN/Primary Examiner, Art Unit 2878