DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. 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
2. Applicant's election with traverse of Group I (claims 1-10) * (See Note below regarding typo in the election) in the reply filed on 06/29/2026 is acknowledged. The traversal is on the ground(s) that “In response to the grounds cited, Applicant respectfully submits that the restriction requirement is improper. In particular, the Patent Office fails to establish that examination of Group I claims (1-10) would impose serious burden as the subject matter of these claims is overlapping with Group II claims (11-20). By way of example, a search for Group II claims would require a search similar in scope to that of Group I claims. Reconsideration of the restriction requirement is respectfully requested.”
This is not found persuasive because searching both process claims (Group I) and apparatus claims certainly create serious burden on the examiner. Further, Group I and Group II do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Group I and Group Il lack unity of invention because even though the inventions of these groups require the technical feature of control a laser device relative to material to inscribe at least one resonator structure to the material; and control etching of the material to form the at least one resonator from the material; wherein the at least one resonator defined and released by wet etching of material inscribed by the laser device, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Najafi (US 2011/0012478 A1).
Najafi discloses of control a laser device relative to material to inscribe or pattern at
least one resonator structure to the material (paragraph 0055-0056; 0059, 0061, 0062); and
control etching of the material to form the at least one resonator from the material; wherein the at least one resonator defined and released by wet etching of material inscribed by the laser device (paragraph 0052-0053).
The requirement is still deemed proper and is therefore made FINAL.
*Note: In the response filed on 06/29/2026, the applicants wrote “Applicant elects Group II claims 1-10, with traverse.” However, there is no Group II (claims 1-10) in as stated by applicants. It is either Group I (claims 1-10) or Group II (claims 11-20). The examiner believes the phrase “Group II claims 1-10” is a typo. During the phone interview on 07/16/2026, Mr. John Teresinski confirmed that the phrase “Group II claims 1-10” in the response filed on 06/29/2026 is a typo for “Group I claims 1-10”. Specifically, the applicants elected Group I claims 1-10 with traverse in the response filed on 06/29/2026 (See attach Interview Summary).
3. Claims 11-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 06/29/2026.
Claim Rejections - 35 USC § 112
4. 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.
5. Claims 3, 5, 9-10 are 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.
In line 1-2 of claim 3, the phrase “ultra-fast-laser-induced modification” is subjective, vague and indefinite. It is unclear what specific pulse range of the laser that applicants considered as “ultra-fast-laser-induced modification”.
In line 2 of claim 3, the term “micro-scale” is subjective, vague and indefinite. It is unclear the specific range in micrometer that applicants considered as “microscale”. It is note that any dimension value can be converted to the unit of micrometer. For example 1 m = 1,000,000 micrometer; 1 mm = 1,000 micrometer.
In line 2 of claim 3, the term “nano-scale” is subjective, vague and indefinite. It is unclear the specific range in nanometer that applicants considered as “nanoscale”. It is note that any dimension value can be converted to the unit of nanometer. For example 1 m = 1,000,000,000 nanometer; 1 mm = 1,000,000 nanometer.
The term “high aperture magnification” in claim 5 is a relative term which renders the claim indefinite. The term “high aperture magnification” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear from the claim what specific range of aperture that applicants considered as “high aperture magnification”.
In claim 9, the phrase “hydrofluoric thing” (emphasis added) is indefinite. It is unclear from the claim what specific process or product that applicants considered as “thing”.
Claim 10 recites the limitation "the optically transparent material" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 102
6. 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.
7. 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.
8. Claims 1-2, 4 are rejected under 35 U.S.C. 102(a)(1) and or 102(a)(2) as being anticipated Najafi et al. (US 2011/0012478 A1).
As to claim 1, Najafi discloses a method for fabrication of a resonator by laser micromachining, the method comprising:
controlling, by a device, a laser device relative to material to inscribe at least one resonator structure to the material (paragraph 0055-0056; 0059, 0061, 0062); and
control, by the device, etching of the material to form the at least one resonator from the material; wherein the at least one resonator defined and released by wet etching of material inscribed by the laser device (paragraph 0052-0053).
As to claim 2, Najafi discloses the laser device and etching pattern and fabricate a micro-electromechanical system (MEMS) resonator from optically transparent material (i.e. glass; See paragraph 0033).
As to claim 4, Najafi discloses the material is at least one of optically transparent material (i.e. glass; See paragraph 0033).
9. Claims 1, 3, 5, 9 are rejected under 35 U.S.C. 102(a)(1) and or 102(a)(2) as being anticipated by Patil (US 2021/0139321 A1).
As to claim 1, Patil discloses a method for fabrication of a resonator by laser micromachining, the method comprising:
controlling, by a device, a laser device relative to material to inscribe at least one resonator structure to the material (abstract, paragraph 063-0078, 0097; 0124; Patil’s claim 1and
controlling, by the device, etching of the material to form the at least one resonator from the material, wherein the at least one resonator defined and released by wet etching of material inscribed by the laser device (paragraph 0088, 0100, 0168, 0190, Patil’s claims 1, 11).
As to claim 3, Patil discloses the laser device is controlled for ultra-fast-laser-induced modification to produce at least one of a micro-scale and nano-scale mechanical vibratory resonator from the material (See paragraph 0078, Table 2, 0084 Table 2, 0189, i.e. ultra-short pulse laser).
As to claim 5, Patil discloses controlling the laser device includes focusing the laser device with a high aperture magnification lens to inscribe the at least one resonator structure to include at least one of cavity (paragraph 0083, 0097, 0124, 0162-0163, 0182, Fig 3, Fig 4A-4B).
As to claim 9, Patil discloses performing at least one of hydrofluoric thing and hydrofluoric erosion after inscribing the material and prior to etching of the material (paragraph 0020; Patil’s claim 25-27).
Claim Rejections - 35 USC § 103
10. 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.
11. Claims 2, 4, 8, 10 are rejected under 35 U.S.C. 103 as being unpatentable over Patil (US 2021/0139321 A1) as applied to claim 1 above, and further in view of Manley et al. (US 2015/0165563 A1).
As to claim 2, Patil discloses the laser device and etching pattern and fabricate a micro-electromechanical (MEMS) resonator (abstract, paragraph 0097, 0124). Patil fails to disclose the laser device and etching pattern and fabricate a micro-electromechanical (MEMS) resonator from optically transparent material. Manley teaches to apply a laser beam on a transparent material to create micromachine structure (paragraph 0008-0012, 0082-0083). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify Patil in view of Manley by laser device and etching pattern and fabricate a micro-electromechanical (MEMS) resonator from optically transparent material because equivalent and substitution of one for the other would produce an expected result (See MPEP 2143(I)(B)).
As to claim 4, Patil fails to discloses the material is at least one of optically transparent material, fused silica, fused quartz, and quartz. Manley teaches to apply a laser beam on a transparent material to create micromachine structure (paragraph 0008-0012, 0082-0083). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify Patil in view of Manley by using optically transparent material because equivalent and substitution of one for the other would produce an expected result (See MPEP 2143(I)(B)).
As to claim 8, Patil discloses controlling etching of the material includes wet etching to selectively etch laser-modified material of the material (paragraph 0088, 0100, 0168, 0190, Patil’s claims 1, 11). As to claim 8, Patil fails to disclose mechanical agitation of the material. Manley discloses controlling etching of the material includes wet etching to selectively etch laser-modified material of the material and mechanical agitation of the material (i.e. manual agitation; See paragraph 0092). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify Patil in view of Manley by mechanical agitation of the material because it enhances the etching process by preventing standing wave pattern from the ultrasonic field from creating “hot spots” or cavitation related damage on the part (See paragraph 0092).
As to claim 10, Patil fails to disclose fabrication of two-dimensional planes in the optically transparent material by stacking and inscribing lines at a plurality of depths of material. However, Patil clearly discloses fabrication of two-dimensionally planes in the material by stacking and inscribing lines using laser beam (See Fig 6A-6B, Fig 9B, Fig 10A-10B, Fig 13, Fig 14A-Fig14B, Fig 15, Fig 18A-18B, 19A-19B). Manley discloses fabrication of two-dimensional planes in the optically transparent material by stacking and inscribing lines at a plurality of depths of material using laser beam (Fig 8, Fig 9, Fig 10-12; paragraph 0102-0115; 0138-0152). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify Patil in view of Manley by fabrication of two-dimensional planes in the optically transparent material by stacking and inscribing lines at a plurality of depths of material because it helps to create different pattern on the layer.
12. Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Patil (US 2021/0139321 A1) as applied to claim 1 above, and further in view of Srinivas (US 2014/0239552 A1).
As to claim 6, Patil fails to disclose controlling the laser device includes inscribing the material through raster motion layer-by-layer, wherein the material is inscribed from bottom to top. However, Patil clearly disclose controlling the laser device. Srinivas discloses controlling the laser device includes inscribing the material through raster motion layer-by-layer, wherein the material is inscribed from bottom to top (Fig 13-13A; paragraph 0121-0128). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify Patil in view of Srinivas by controlling the laser device includes inscribing the material through raster motion layer-by-layer, wherein the material is inscribed from bottom to top because it results in a smooth and constant chamber around the entire part (paragraph 0124).
13. Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Patil (US 2021/0139321 A1) as applied to claim 1 above, and further in view of Sun (US 2019/0299329 A1).
As to claim 7, Patil fails to disclose the laser device is linearly polarized during inscribing. However, Patil clearly teaches to use a laser device. Sun discloses laser device is linearly polarized during inscribing (paragraph 0067). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify Patil in view of Sun by having the laser device is linearly polarized during inscribing because it helps to process one or more layers without causing damage underlying layer (See paragraph 0068).
Conclusion
14. Any inquiry concerning this communication or earlier communications from the examiner should be directed to BINH X TRAN whose telephone number is (571)272-1469. The examiner can normally be reached Monday-Friday.
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, Joshua Allen can be reached at 571-270-3176. 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.
BINH X. TRAN
Examiner
Art Unit 1713
/BINH X TRAN/Primary Examiner, Art Unit 1713
Prosecution Insights