DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The Applicant's amendment filed on March 18, 2026 was received. Claim 6 was amended. Claims 13 and 19 were canceled. No claim was added. Claims 1-5, 7-12, 14-18 and 20-30 were withdrawn.
The text of those sections of Title 35. U.S.C. code not included in this action can be found in the prior Office Action Issued December 19, 2025.
Claim Rejections - 35 USC § 112
The claim rejection under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, on claim 6 was withdrawn, because the claim has been amended.
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)(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.
Claim 6 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Haruyama (Triple nitrogen-vacancy centre fabrication by C5N4Hn ion implantation).
Regarding claim 6, Haruyama teaches a method of implanting C5N4Hn from adenine ion source to create nitrogen vacancy center in diamond (abstract, page 2 left column first paragraph, page 2 right column second paragraph) (a method of implanting atoms into a substrate). Hirayama teaches the ionized C5N4Hn (molecule) are implanted into the diamond (substrate) (implanting the atoms into the substrate) (abstract, page 2 left column first paragraph, page 2 right column second paragraph, page 8 Methods), wherein the nitrogen atoms (the atoms are at least some of the constituent atoms of a molecule) in the molecule reads on the limitation of color center atoms as such atoms are not specifically defined in the claim (wherein the atom are at least some of the constituent atoms of a molecule and where int the molecule comprises one or more color center atoms). In addition, the instant specification disclosed the color center is the nitrogen vacancy center in diamond (see instant US patent application publication 0017), thus, indicates that the implanted nitrogen is the color center atoms in diamond. The claim does not specifically define what is satellite atoms and “satellite atoms” is not an art recognized term, thus, any atom in the ionized C5N4Hn (molecule), including hydrogen atoms are considered to read on the claimed limitations, especially Haruyama teaches the hydrogen atoms, like carbon atoms, provide vacancies in the implanted diamond (page 2 right column third paragraph, page 8 Methods). Hydrogen atoms read on the limitation of satellite atoms other than 13C. In addition, Haruyama teaches to use 13C-enriched adenine powder as the ion source (page 7 right column third paragraph), which indicate an amount of carbon-12 (12C, natural form of carbon) is reasonably expected in the molecules; 12C also reads on the limitation of one or more satellite atoms other than 13C.
Response to Arguments
Applicant's arguments filed on March 18, 2026 have been fully considered but they are not persuasive.
Applicant’s principal arguments are:
Haruyama does not disclose a “satellite atom” as set forth in the claim. “satellite atom” is defined in the specification as one that can fit a single lattice site of the substrate, which is not the same as the hydrogen in Haruyama.
Haruyama teaches away from deliberately implanting and retaining non-color-center atoms as lattice site resources.
In response to Applicant’s arguments, please consider the following comments:
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., satellite atom fits a single lattice site of the substrate, and does so without forcing another vacancy, thereby acting as a controlled nuclear-spin resource for the color center-based quantum register) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). As discussed above, the claim does not specifically define what is satellite atoms and “satellite atoms” is not an art recognized term, thus, any atom in the ionized C5N4Hn (molecule), including hydrogen atoms are considered to read on the claimed limitations, especially Haruyama teaches the hydrogen atoms, like carbon atoms, provide vacancies in the implanted diamond (page 2 right column third paragraph, page 8 Methods). Hydrogen atoms read on the limitation of satellite atoms other than 13C. In addition, Haruyama teaches to use 13C-enriched adenine powder as the ion source (page 7 right column third paragraph), which indicate an amount of carbon-12 (12C, natural form of carbon) is reasonably expected in the molecules; 12C also reads on the limitation of one or more satellite atoms other than 13C. The claim does not require the satellite atom to fit a single lattice site of the substrate as claimed.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., deliberately implanting and retaining non-color-center atoms as lattice site resources) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
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.
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/N.V.L/Examiner, Art Unit 1717
/Dah-Wei D. Yuan/Supervisory Patent Examiner, Art Unit 1717
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