DETAILED ACTION
After preliminary amendment and after the response to the restriction requirement filed on June 23, 2026, claims 1 – 20 are pending. Claims 3, 4, 5, 6, 7, 8, 9 have been amended. Claims 16 – 20 have been added. Claim 20 has been withdrawn from consideration.
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 without traverse of Group I, claims 1 – 19 in the reply filed on June 23, 2026 is acknowledged.
Specification
The specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 9:
Claim 9 recites “… wherein the method further comprises, before forming the patterned layer, fabricating the semiconductor component in the sealed apparatus …”. Additionally, claim 10 recites “… wherein the semiconductor component comprises one or more nanowires …”
However, parent claim 1 requires “… forming a patterned layer of a material on a surface of a substrate by depositing the material onto the surface through a stencil mask …”.
Reading the claims in vaccum, the patterned layer of material is required to be deposited directly onto a substrate. However, such an interpretation is inconsistent with the instant specification, rendering unclear the scope of what a substrate is in the context of claim 9 and claims dependent on claim 9. Can an intermediate product be the substrate? Initial wafer? Ect.
The instant specification discloses effectively Majorana zero mode, semiconductor-superconductor, SE-SU, hybrid devices ([0002] – [0006], [0019]). It is evident that patterned material must be deposited on nanowires as described in the instant specification, contrary to the scope of “substrate”.
For the purposes of art rejections, the Examiner interprets the limitations of claim 9 and 10 to refer to forming a patterned layer of a material on a surface of semiconductor component, consistent with the specification.
Claim Rejections - 35 USC § 102
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.
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.
Claim(s) 1, 2, 3, 4, 5, 8, 9, 10, 13, 14, 16, 18 is/are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Schueffelgen et al. US 2020/0044137 A1 (hereinafter “Schueffelgen”).
Regarding claims 1, 2, 3, 4, 5, 8, 9, 10, 18:
Schueffelgen is directed to a method of producing a hybrid structure. Schueffelgen discloses that their method comprises:
providing a cleaned substrate such as a silicon wafer with structures thereon, including nanobridges and placing the sample with trenches into a vacuum chamber for molecular beam epitaxy ([0056], [0061] – [0062]; [0070] – [0071], [0082]);
depositing, under ultrahigh vacuum and an inert atmosphere of N2, a stencil mask onto the substrate, wherein the stencil mask comprises nanobridges ([0075] – [0082]);
selectively depositing a first functional layer comprising Majorana materials [patterned layer], wherein the first functional layer’s pattern is defined by the nanobridges [stencil, may also be considered nanowires, meeting claims 9 and 10] ([0084] – [0085]), wherein the selective deposition is under vacuum and by molecular beam epitaxy;
optionally depositing a second functional layer comprising a superconductive material of aluminum or niobium [also a patterned layer] using the first functional layer as a shadow mask [meeting claim 8] ([0100], [0156]); and
depositing a thin film of either aluminum oxide or aluminum ([0091], [0116]), wherein the aluminum oxide acts as a passivating layer or wherein the aluminum oxidizes into aluminum oxide passivating layer upon exposure to air [meeting claim 2].
Schueffelgen discloses that vacuum is not broken between the stencil forming stage, forming the patterned layer, and forming the passivation layer – whether in a same chamber or after transfer between stations with a vacuum box between [meeting claim 5] ([0155] – [0156]).
Regarding claims 13, 14:
Schueffelgen discloses that the substrate with the first functional layer [which may be considered the substrate in the interpretation where the superconductive layer is the patterned layer] are Majorana materials such as BixSb1-x (TeySe1-y)3, wherein 0 <= x <= 1 and 0<=y<=1 ([0084] – [0085]).
Regarding claim 16:
Schueffelgen discloses that the aluminum layer may have a thickness of at most 3 nm, e.g. 2nm ([0091], [0116]).
Claim Rejections - 35 USC § 103
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.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 6, 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schueffelgen as applied to claims 1, 2, 3, 4, 5, 8, 9, 10, 13, 14, 16, 18 above.
Regarding claim 6:
Schueffelgen does not expressly teach a step of rotating and/or tilting the substrate during formation of the passivation layer.
However, Schueffelgen discloses that aluminum may be deposited under substrate rotation when forming functional layers ([0089]) and that rotation is used to ensure all intended surfaces are exposed to the molecular beam ([0127]).
Therefore, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have modified the method of Schueffelgen by also rotating the substrate during the formation of the aluminum layer intended to become the passivation layer in order to ensure all intended surfaces are coated by the aluminum.
Regarding claim 19:
Schueffelgen does not expressly teach that the topological insulator is a material wherein y is in the range of 0.6 to 0.9.
However, as noted above, Schueffelgen does teach an overlapping range of possible topological insulators species of the same formula, and Schueffelgen also teaches a specific topological insulator of (Bi0.06Sb0.94)2Te3 ([0149]), which is close to the specified species range.
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, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66(Fed. Cir. 1997). See MPEP 2144.05. In the case where the claimed ranges exists where the claimed ranges or amounts do not overlap with the prior art but are merely close, a prima facie case of obviousness exists. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985).
Claims 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schueffelgen as applied to claims 1, 2, 3, 4, 5, 8, 9, 10, 18 above, and further in view of Chuffelgen p et al: "Selective area growth and stencil lithography for in situ fabricated quantum devices", NATURE NANOTECHNOLOGY, vol. 14, no. 9, 29 July 2019, pages 825-831 (XP036878964) (of record, hereinafter “Chuffelgen-Nature”) and Mazur et al. WO2021170252A1 (of record, hereinafter “Mazur”).
Regarding claim 12:
Schueffelgen does not expressly teach that the semiconductor component comprises a material with the claimed material.
Chuffelgen-Nature is directed to the production of the same structures disclosed by Schueffelgen by the same methods (see page 826 “In situ fabricated Josephson devices”, page 830 “Conclusion”, fig. 2a ). Chuffelgen-Nature suggests the use of InSb or InAs materials as part of selectively grown horizontal NWs (“Conclusion”).
Mazur is directed to semiconductor-superconductor hybrid devices and methods of making such devices. Mazur discloses that InSb, InAs and alloys thereof are suitable materials for making structures in semiconductor superconductor hybrid devices ([0025] – [0043], [0067] – [0078], [0107] – [0108]; Fig. 2.
In view of the prior art as a whole, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have modified the method of Schueffelgen by using the recited InAsSb materials because such materials are routinely used and would be expected to have a reasonable expectation of success in forming such devices.
Claims 7, 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schueffelgen as applied to claims 1, 2, 3, 4, 5, 8, 9, 10, 13, 14, 16, 18 above, and further in view of Otani et al. US 2023/0422633 A1 (hereinafter “Otani”).
The applied reference has a common assignee with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2).
Regarding claims 7 and 17:
Schueffelgen does not expressly teach that the deposition occurs at temperatures less than 273K (0°C), e.g. 50 to 100 K.
Otani is directed to methods of forming thin films on substrates, particularly semiconductor substrates and semiconductor-superconductor hybrid structure (Abstract). Otani discloses that thin films are deposited by molecular beam epitaxy at temperatures below 260 K, e.g. 77 to 150K (Abstract; [0043] – [0050]). Otani discloses that operating at such temperatures allows for the deposition of ultra smooth films, controlled crystallinity and precise thicknesses ([0004], [0050]).
Therefore, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have modified the method of Schueffelgen by maintaining substrate temperatures within the claimed ranges in order to improve the flatness and crystallinity of the formed film.
This rejection under 35 U.S.C. 103 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C.102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02.
Claims 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schueffelgen as applied to claims 1, 2, 3, 4, 5, 8, 9, 10, 13, 14, 16, 18 above, and further in view of Marcus et al. US 20170133576 A1 (hereinafter “Marcus”).
Regarding claim 15:
Schueffelgen does not expressly teach that the material of the patterned layer may be palladium.
Marcus is directed to semiconductor based Josephson junctions and their applications within the field of quantum computing (Abstract). Otani discloses that epitaxial interfaces may use materials that may be superconductive below a critical temperature; those materials include aluminum, niobium and palladium ([0046] – [0050]). The materials may be deposited by molecular beam epitaxy ([0084]).
Therefore, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have modified the method of Schueffelgen by substituting aluminum or niobium with palladium because as taught by Marcus, the use of palladium is known to be suitable for the purpose of an epitaxial interface layer between semiconductors for Josephson junctions. The courts have held that the selection of a known material/device/product based for its intended use supports a prima facie case of obviousness. Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), Ryco, Inc. v. Ag-Bag Corp., 857 F.2d 1418, 8 USPQ2d 1323 (Fed. Cir. 1988).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSE I HERNANDEZ-KENNEY whose telephone number is (571)270-5979. The examiner can normally be reached M-F 6:30-3:30.
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/JOSE I HERNANDEZ-KENNEY/
Primary Examiner
Art Unit 1717
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