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 .
Response to Arguments
Applicant's arguments filed 05/05/2026 have been fully considered but they are not persuasive.
Applicant argues that Grinolds et al. discloses a “topside collection” or “topside readout” arrangement and therefore teaches away from the claimed respective pair of input and output optical waveguides coupled to each diamond pillar. Applicant relies on paragraphs [0092]–[0094] of Grinolds et al., which describe collection of fluorescence from an NV center through the diamond nanopillar and out through the proximal end of the diamond nanopillar. Applicant further argues that Grinolds et al. emphasizes improved collection efficiency through the nanopillar and therefore would discourage adding separate input and output optical waveguides.
This argument is not persuasive because the rejection does not rely on Grinolds et al. alone for the full optical waveguide arrangement. The rejection properly relies on Grinolds et al. for the diamond-based NV sensing structure, including a diamond nanopillar having an NV center and optical fluorescence associated with the NV center, and relies on Bernabe et al. for the additional optical coupling structure. A reference need not disclose all claimed features when applied in an obviousness rejection. Rather, the issue is whether the combined teachings would have rendered the claimed subject matter obvious to one of ordinary skill in the art.
Applicant’s teaching-away argument is also not persuasive. Grinolds et al. describes advantages of topside readout, including that fluorescence from the NV center is guided through the nanopillar and exits from the proximal end of the nanopillar, thereby improving photon collection efficiency and allowing non-transparent samples to be studied (Grinolds et al., paragraphs [0092]–[0094]). These disclosures teach an optical readout direction and collection path, but they do not criticize, discredit, or otherwise discourage optical coupling structures at or near the proximal end of the nanopillar. The fact that Grinolds et al. describes one beneficial optical collection arrangement does not amount to a teaching away from coupling optical input/output structures to the nanopillar, particularly where the purpose of the modification is to improve optical routing, coupling, and integration.
Applicant further argues that the Examiner improperly treats the same structure in Grinolds et al., namely the diamond pillar, as both the diamond pillar and the optical waveguide. This argument is not persuasive because the rejection, as properly understood, does not require the diamond nanopillar of Grinolds et al. to alone satisfy both the claimed diamond pillar and the claimed input/output optical waveguides. Grinolds et al. teaches that the nanopillar itself optically guides fluorescence from the NV center through the nanopillar and out through the proximal end (Grinolds et al., paragraphs [0092]–[0094]). Bernabe et al. is relied upon for optical input/output port structures used for optical coupling to a photonic circuit (Bernabe et al., paragraph [0008]). Thus, the combined rejection is based on using known optical coupling structures to route optical signals to and from a diamond NV pillar structure, not on double-counting a single structure in Grinolds et al.
Applicant also argues that Bernabe et al. is directed to a photonic test device and is therefore not properly combinable with the nanoscale NV scanning sensor of Grinolds et al. This argument is not persuasive because Bernabe et al. is reasonably pertinent to the optical coupling problem addressed by the claimed invention. The claims broadly recite optical waveguides coupled to diamond pillars. Bernabe et al. discloses a photonic test chip having micropillars and first optical input/output ports intended to be optically coupled to corresponding optical input/output ports of a photonic circuit (Bernabe et al., paragraph [0008]). Although Bernabe et al. is not directed to the identical sensing environment as Grinolds et al., it teaches optical input/output coupling architecture for microscale photonic structures. A person of ordinary skill in the art seeking to improve optical coupling, optical routing, and integration of the optical readout path of Grinolds et al. would have had reason to consider known optical input/output coupling structures such as those disclosed by Bernabe et al.
In addition, to the extent Applicant argues that Grinolds et al. is not combinable with Bernabe et al. because Grinolds et al. is directed to a nanoscale NV scanning sensor with specific cantilever geometry, AFM mounting, mass distribution, micrometer-thin single-crystal diamond membranes, two-sided e-beam lithography, reactive ion etching, and a monolithic diamond platform, such arguments are not commensurate in scope with the rejected claims. Claims 1 and 10 do not recite an AFM cantilever configuration, a required cantilever mass distribution, a micrometer-thin diamond membrane, two-sided e-beam lithography, reactive ion etching, a monolithic diamond platform, a particular core/cladding stack, a particular refractive-index contrast, or a specific alignment process. Claim 16 broadly recites forming a plurality of diamond pillars on a sensor substrate in an irregular arrangement and coupling a respective pair of input and output optical waveguides to each diamond pillar. 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). Arguments based on features not recited in the claims are not persuasive because they do not distinguish the claimed invention from the applied prior art.
Applicant’s argument that adding optical waveguides would complicate the cantilever geometry, mass distribution, and AFM mounting of Grinolds et al. is likewise not persuasive because the rejected claims do not require the specific cantilever implementation emphasized by Applicant. The claims broadly recite a sensing system having a sensor substrate, diamond pillars in an irregular arrangement, and respective input and output optical waveguides coupled to each diamond pillar. The claims do not require that the optical waveguides be integrated in a manner that preserves the precise cantilever geometry, mass distribution, or AFM mounting arrangement disclosed in Grinolds et al. Accordingly, arguments based on preserving every structural detail of Grinolds et al.’s preferred embodiment are not commensurate in scope with the pending claims. See In re Self, 671 F.2d 1344, 213 USPQ 1 (CCPA 1982).
Applicant’s fabrication argument is also not persuasive. Applicant asserts that Grinolds et al. uses micrometer-thin single-crystal diamond membranes, two-sided e-beam lithography, and reactive ion etching, and that incorporating distinct waveguides per pillar would require a fundamentally different stack. However, the rejected claims do not recite those fabrication restrictions. Claims 1 and 10 do not require micrometer-thin membranes, two-sided e-beam lithography, reactive ion etching, a particular refractive-index contrast, a specific core/cladding stack, or a particular alignment process. Claim 16 broadly recites forming diamond pillars and coupling a respective pair of input and output optical waveguides to each diamond pillar. Applicant’s arguments are therefore directed to unclaimed implementation details rather than the actual limitations of the rejected claims. Although such details may appear in the specification or in Applicant’s description of the invention, they cannot be imported into the claims to avoid the prior art. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant also argues that Grinolds et al. teaches away because it touts a collection efficiency improvement of about 5 using topside readout (Grinolds et al., paragraphs [0093]–[0094]). This is not sufficient to establish teaching away. A disclosure that one embodiment provides an advantage does not teach away from another arrangement unless the reference criticizes, discredits, or otherwise discourages the claimed approach. Here, Grinolds et al. teaches that optical fluorescence can be guided through the nanopillar and collected at the proximal side of the nanopillar. That disclosure is compatible with optical coupling at the proximal side, including coupling through additional optical structures, rather than inconsistent with it.
With respect to new claim 23, the newly added limitation recites that each input optical waveguide comprises an input optical fiber and an input photonic wire bond coupling the input optical fiber to the corresponding diamond pillar, and each output optical waveguide comprises an output optical fiber and an output photonic wire bond coupling the output optical fiber to the corresponding diamond pillar. This limitation is narrower than the limitations of original claims 1 and 10. However, Applicant’s remarks do not establish patentability of claims 1, 10, and 16 because those claims do not include the photonic wire bond limitation. The patentability of claim 23 depends on whether the prior art of record, or other prior art, teaches or suggests optical fibers and photonic wire bonds coupled to corresponding diamond pillars in the claimed manner.
Accordingly, Applicant’s arguments are not persuasive as to claims 1, 10, and 16 because the arguments rely on unclaimed limitations, preferred embodiments, and fabrication constraints not recited in the claims. The rejection of claims 1, 10, and 16 is therefore maintained.
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.
Claim(s) 1-2, 4-8, 10-11, 13-17 & 19-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Grinolds et al. (U.S. 2015/0253355 A1) in view of Bernabe et al. (U.S. 2020/0174067 A1).
Regarding claim 1, Grinolds et al. disclose a sensing system comprising a sensor substrate (see [0078], diamond membrane or slab used as the basis for nanopillar formation, also [0082]), and a plurality of diamond pillars on the sensor substrate in an irregular arrangement (see [0125] diamond nanopillar used as a scanning probe, also see [0086]; under the broadest reasonable interpretation (BRI), a diamond nanopillar corresponds to a micro pillar, probe, or probe tip used in semiconductor testing and scanning probe applications); each diamond pillar comprises at least one nitrogen vacancy center located within the pillar proximate a distal end (see [0126], single NV center formed by implantation, irradiation, or growth); and optical waveguides coupled to each diamond pillar (see optical excitation and optical collection paths for the NV center, wherein fluorescence emitted by the NV center is optically guided through the diamond pillar acting as an optical waveguide (optical waveguiding through the diamond nanopillar, paragraphs [0136] & [0161]),
Grinolds et al. are not understood to explicitly disclose a respective pair of distinct input and output optical waveguides coupled to each diamond pillar.
Bernabe et al. disclose a respective pair of distinct input and output optical waveguides coupled to each diamond pillar (see [0156] photonic integrated structures comprising optical input and output end, including diamond-based NV systems, wherein separate optical waveguides are used for excitation and readout and are integrated on a photonic integrated circuit platform, see [0166 & claim 1).
It would have been obvious to one of ordinary skill in the art, prior to the effective filing date, to modify the sensing system of Srinolds et al. to include a respective pair of input and output optical waveguides coupled to each diamond pillar as taught by Bernabe et al., as doing so would provide improved optical routing, isolation of excitation and readout paths, and scalable photonic integration for NV-based sensing systems, consistent with established photonic integrated circuit design principles emphasized by Bernabe et al. in paragraphs [0015-0018].
Regarding claim 2, Srinolds et al. & Bernabe et al. disclose the sensing system of claim 1, wherein Grinolds et al. further disclose at least some of the diamond pillars have different heights (see [0095], wherein diamond nanopillars fabricated by reactive ion etching with pillar height determined by etch depth and process parameters, resulting in nanopillars having varying lengths, see paragraph [0113]).
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Regarding claim 4, Srinolds et al. & Bernabe et al. disclose the sensing system of claim 1, wherein Grinolds et al. further disclose the plurality of input and output optical waveguides are arranged in parallel rows (see [0099]; wherein lithographically fabricated arrays of diamond nanopillars formed on a common substrate in regular geometric layouts, see paragraph [0114]; BRI, such arrays inherently define parallel rows).
Regarding claim 5, Srinolds et al. & Bernabe et al. disclose the sensing system of claim 1, wherein Grinolds et al. further disclose the sensor substrate comprises a diamond substrate (see [0085], a sensing system fabricated from single-crystalline diamond material forming the substrate for diamond nanopillars, also see paragraph [0091]).
Regarding claim 6, Srinolds et al. & Bernabe et al. disclose the sensing system of claim 1, wherein Grinolds et al. further disclose the diamond substrate comprises a bulk diamond substrate; and wherein the plurality of diamond pillars is integrally formed with the bulk diamond substrate (see [0110], wherein etching diamond nanopillars directly from a bulk single-crystalline diamond membrane, thereby integrally forming the pillars with the substrate, [0116]).
Regarding claim 7, Srinolds et al. & Bernabe et al. disclose the sensing system of claim 1, wherein Grinolds et al. further disclose a sensing circuit coupled to the plurality of input and output optical waveguides (see [0140]], wherein a processing system coupled to optical excitation and fluorescence detection paths for sensing NV center responses, also see paragraph [0100]).
Regarding claim 8, Srinolds et al. & Bernabe et al. disclose the sensing system of claim 1, wherein Grinolds et al. further disclose Photonic Integrated Circuit (PIC) substrate supporting the sensor substrate (see [0093], wherein an integrated optical platform supporting diamond sensing structures for optical excitation and readout, see paragraph [0154]; under BRI, an integrated photonic support corresponds to a PIC substrate).
Regarding claim 10, Srinolds et al. disclose a diamond substrate (see [0149]), wherein diamond substrate used to fabricate diamond nanopillars, via single-crystalline diamond membrane or slab, see paragraph [0078]), and a plurality of diamond pillars on the diamond substrate in an irregular arrangement (see [0125] diamond nanopillar used as a scanning probe, also see [0086]; under the broadest reasonable interpretation (BRI), a diamond nanopillar corresponds to a micro pillar, probe, or probe tip used in semiconductor testing and scanning probe applications); each diamond pillar comprising at least one nitrogen vacancy center (see [0126], single NV center formed by implantation, irradiation, or growth); optical excitation and optical collection via waveguiding through the diamond pillars (see optical excitation and optical collection paths for the NV center, wherein fluorescence emitted by the NV center is optically guided through the diamond pillar acting as an optical waveguide (optical waveguiding through the diamond nanopillar, paragraphs [0136] & [0161]),
Grinolds et al. are not understood to explicitly disclose a respective pair of distinct input and output optical waveguides coupled to each diamond pillar.
Bernabe et al. disclose a respective pair of distinct input and output optical waveguides coupled to each diamond pillar (see [0156] photonic integrated structures comprising optical input and output end, including diamond-based NV systems, wherein separate optical waveguides are used for excitation and readout and are integrated on a photonic integrated circuit platform, see [0166 & claim 1).
It would have been obvious to one of ordinary skill in the art, prior to the effective filing date, to modify the sensing system of Srinolds et al. to include a respective pair of input and output optical waveguides coupled to each diamond pillar as taught by Bernabe et al., as doing so would provide improved optical routing, isolation of excitation and readout paths, and scalable photonic integration for NV-based sensing systems, consistent with established photonic integrated circuit design principles emphasized by Bernabe et al. in paragraphs [0015-0018].
Regarding claim 11, Srinolds et al. & Bernabe et al. disclose the sensing system of claim 10, wherein Grinolds et al. further disclose at least some of the diamond pillars have different heights (see [0095], wherein diamond nanopillars fabricated by reactive ion etching with pillar height determined by etch depth and process parameters, resulting in nanopillars having varying lengths, see paragraph [0113]).
Regarding claim 13, Srinolds et al. & Bernabe et al. disclose the sensing system of claim 10, wherein Grinolds et al. further disclose the diamond substrate comprises a bulk diamond substrate; and wherein the plurality of diamond pillars is integrally formed with the bulk diamond substrate (see [0110], wherein etching diamond nanopillars directly from a bulk single-crystalline diamond membrane, thereby integrally forming the pillars with the substrate, [0116]).
Regarding claim 14, Srinolds et al. & Bernabe et al. disclose the sensing system of claim 10, wherein Grinolds et al. further disclose a sensing circuit coupled to the plurality of input and output optical waveguides (see [0140]], wherein a processing system coupled to optical excitation and fluorescence detection paths for sensing NV center responses, also see paragraph [0100]).
Regarding claim 15, Srinolds et al. & Bernabe et al. disclose the sensing system of claim 10, wherein Grinolds et al. further disclose Photonic Integrated Circuit (PIC) substrate supporting the diamond substrate (see [0085], a sensing system fabricated from single-crystalline diamond material forming the substrate for diamond nanopillars, also see paragraph [0091]).
Regarding claim 16, Srinolds et al. disclose a method of forming a plurality of diamond pillars on a sensor substrate (see [0078]) in an irregular arrangement (see [0125] diamond nanopillar used as a scanning probe, also see [0086]; under the broadest reasonable interpretation (BRI), a diamond nanopillar corresponds to a micro pillar, probe, or probe tip used in semiconductor testing and scanning probe applications), each diamond pillar comprising at least one nitrogen vacancy center (NVC) (see [0126], single NV center formed by implantation, irradiation, or growth); and output optical waveguides to each diamond pillar (see optical excitation and optical collection paths for the NV center, wherein fluorescence emitted by the NV center is optically guided through the diamond pillar acting as an optical waveguide, optical waveguiding through the diamond nanopillar and Srinolds et al. further disclose optical coupling of the diamond pillar to excitation and readout optics via optical waveguiding through the pillar itself, paragraphs [0156] & [0161]).
Srinolds et al. are not understood to explicitly disclose coupling a respective pair of distinct input and output optical waveguides to each diamond pillar.
Bernabe et al. disclose a respective pair of distinct input and output optical waveguides coupled to each diamond pillar (see [0156] photonic integrated structures comprising optical input and output end, including diamond-based NV systems, wherein separate optical waveguides are used for excitation and readout and are integrated on a photonic integrated circuit platform, see [0166 & claim 1).
It would have been obvious to one of ordinary skill in the art, prior to the effective filing date, to modify the sensing system of Srinolds et al. to include a respective pair of input and output optical waveguides coupled to each diamond pillar as taught by Bernabe et al., as doing so would provide improved optical routing, isolation of excitation and readout paths, and scalable photonic integration for NV-based sensing systems, consistent with established photonic integrated circuit design principles emphasized by Bernabe et al. in paragraphs [0015-0018].
Regarding claim 17, Srinolds et al. & Bernabe et al. disclose the sensing system of claim 11, wherein Grinolds et al. further disclose identifying locations of the NVCs (see [0125]).
Regarding claim 19, Srinolds et al. & Bernabe et al. disclose the sensing system of claim 11, wherein Grinolds et al. further disclose forming at least some of the diamond pillars to have different heights (see [0095], wherein diamond nanopillars fabricated by reactive ion etching with pillar height determined by etch depth and process parameters, resulting in nanopillars having varying lengths, see paragraph [0113]).
Regarding claim 20, Srinolds et al. & Bernabe et al. disclose the sensing system of claim 11, wherein Grinolds et al. further disclose coupling respective different height shims between the sensor substrate (see [0087])and adjacent portions of the corresponding input and output optical waveguides (see [0133]).
Regarding claim 21, Srinolds et al. & Bernabe et al. disclose the sensing system of claim 11, wherein Grinolds et al. further disclose coupling a sensing circuit to the plurality of input and output optical waveguides (see [0086], controlling optical coupling distance between diamond nanopillars and optical components through physical spacing and mounting configuration, see paragraph [0015]; BRI, structures providing controlled vertical offset function as shims).
Regarding claim 22, Srinolds et al. & Bernabe et al. disclose the sensing system of claim 11, wherein Grinolds et al. further disclose supporting the sensor substrate on a Photonic Integrated Circuit (PIC) substrate (see [0085], a sensing system fabricated from single-crystalline diamond material forming the substrate for diamond nanopillars, also see paragraph [0091]).
Allowable Subject Matter
Claims 23-28 are allowed.
Claims 3, 12 & 18 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:
In terms of claim 23, claim 9 previously objected to as being dependent upon a rejected base claim but otherwise containing allowable subject matter, has been rewritten in independent form as new independent claim 23 in the response filed 05/05/2026.
In terms of claim 3, the prior art of record does not teach alone or in combination of “respective different height shims coupled between the sensor substrate and adjacent portions of the corresponding input and output optical waveguides” in combination with all other elements in claims 1-2.
In terms of claim 12, the prior art of record does not teach alone or in combination of “respective different height shims coupled between the sensor substrate and adjacent portions of the corresponding input and output optical waveguides” in combination with all other elements in claims 10-11.
In terms of claim 18, the prior art of record does not teach alone or in combination of “the sensor substrate comprises a bulk diamond substrate; and comprising etching the bulk diamond substrate to form the plurality of diamond pillars aligned with the locations of the identified NVCs” in combination with all other elements in claims 16-17.
Claims 24-28 variously depending from claim 23 are allowable for the same above reasons.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled "Comments on Statement of Reasons for Allowance."
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
U.S. 10,119,201 B2 to Piracha et al. discloses a method of fabricating a diamond membrane. The method comprises providing a substrate and a support structure. The substrate comprises a diamond material having a first surface and the substrate further comprises a sub-surface layer that is positioned below the first surface and has a crystallographic structure that is different to that of the diamond material. The sub-surface layer is positioned to divide the diamond material into first and second regions wherein the first region is positioned between the first surface and the sub-surface layer. The support structure also comprises a diamond material and is connected to, and covers a portion of, the first surface of the substrate. The method further comprises selectively removing the second region of the diamond material from the substrate by etching away at least a portion of the sub-surface layer of the substrate.
U.S. 2018/0203080 A1 to Acosta et al. disclose a magnetic resonance spectrometer are disclosed. The magnetic resonance spectrometer may include a doped nanostructured crystal. By nanostructuring the surface of the crystal, the sensor-sample contact area of the crystal can be increased. As a result of the increased sensor-sample contact area, the output fluorescence signal emitted from the crystal is also increased, with corresponding reductions in measurement acquisition time and requisite sample volumes.
U.S. 2016/0334474 A1 to Hatano et al. disclose a diamond crystal according to the present invention has an NV region containing a complex (NV center) of nitrogen substituted with a carbon atom and a vacancy located adjacent to the nitrogen, on a surface or in the vicinity of the surface, wherein the NV region has a donor concentration equal to or higher than the concentration of the NV centers, or a crystal of the NV region is a {111} face or a face having an off-angle that is ±10 degrees or less against the {111} face, and a principal axis of the NV center is a <111> axis that is perpendicular to the {111} face. Such a diamond crystal enables almost 100% of the NV center to be a state (NV.sup.−) of having a negative electric charge, and spin states of the NV.sup.− centers to be aligned in one direction.
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TRUNG NGUYEN whose telephone number is (571)272-1966. The examiner can normally be reached on Mon- Friday 8AM - 4:00PM Eastern Time. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Huy Phan can be reached on 571-272-7924. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
Examiner: /Trung Q. Nguyen/- Art 2858
May 29, 2026
/GIOVANNI ASTACIO-OQUENDO/Primary Examiner, Art Unit 2858 5/29/2026
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