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 .
Claim Objections
Claim 4 is objected to because of the following informalities: Claim 4 includes two (2) period symbols, one after “1nm/min.” and one at the end of the claim. Appropriate correction is required.
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.
Claim 2 is rejected under 35 U.S.C. 112(b) as being indefinite.
Claim 2 recites “wherein a ratio of CHF3 to H2 in the gas mixture is in range of 10:1 to 1:10.” However, it is unclear what the ratio is based upon. For example, the claim does not specify whether the ratio is based on volume ratio, mass ratio, molar ratio, or another basis. Therefore, one of ordinary skill in the art would not be reasonably apprised of the meets and bounds of the claim.
For purposes of examination, the ratio of CHF₃ to H₂ is interpreted broadly as encompassing at least a gas flow ratio or volume ratio.
Double Patenting
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 1-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,117,630. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of U.S. Patent No. 12,117,630 recites a method of fabricating a display device comprising providing a substrate comprising a lithium-based oxide, forming an etch mask pattern exposing regions of the substrate, and plasma etching the exposed regions using a gas mixture consisting essentially of H2, CHF3 and Ar to form a diffractive optical element comprising Li-based oxide features configured to diffract visible light incident thereon.
Instant claim 1 recites substantially the same fabrication steps and gas mixture, but more broadly recites forming a patterned Li-based oxide structure rather than forming a diffractive optical element comprising Li-based oxide features configured to diffract visible light. The diffractive optical element recited in claim 1 of U.S. Patent No. 12,117,630 is encompassed by the patterned Li-based oxide structure recited in instant claim 1. Therefore, instant claim 1 is not patentably distinct from claim 1 of U.S. Patent No. 12,117,630.
The limitations of instant claim 2 require substantially similar limitations as claim 4 of U.S. Patent No. 12,117,630.
The limitations of instant claim 3 require substantially similar limitations as claim 5 of U.S. Patent No. 12,117,630.
The limitations of instant claim 4 require substantially similar limitations as claim 6 of U.S. Patent No. 12,117,630.
The limitations of instant claim 5 require substantially similar limitations as claim 7 of U.S. Patent No. 12,117,630.
The limitations of instant claim 6 require substantially similar limitations as claim 8 of U.S. Patent No. 12,117,630.
The limitations of instant claim 7 require substantially similar limitations as claim 8 of U.S. Patent No. 12,117,630.
The limitations of instant claim 8 require substantially similar limitations as claim 9 of U.S. Patent No. 12,117,630.
The limitations of instant claim 9 require substantially similar limitations as claim 10 of U.S. Patent No. 12,117,630.
The limitations of instant claim 10 require substantially similar limitations as claims 2 and 3 of U.S. Patent No. 12,117,630.
The limitations of instant claim 11 require substantially similar limitations as claim 23 of U.S. Patent No. 12,117,630.
The limitations of instant claim 12 require substantially similar limitations as claim 24 of U.S. Patent No. 12,117,630.
The limitations of instant claim 13 require substantially similar limitations as claims 25 and 26 of U.S. Patent No. 12,117,630.
The limitations of instant claim 14 require substantially similar limitations as claim 27 of U.S. Patent No. 12,117,630.
The limitations of instant claim 15 require substantially similar limitations as claim 28 of U.S. Patent No. 12,117,630.
The additional limitations of instant claim 16 do not render the claim patentably distinct from at least claim 1 of U.S. Patent No. 12,117,630.
A timely filed terminal disclaimer in compliance with 37 CFR 1.321 may be used to overcome this nonstatutory double patenting rejection, provided the requirements for filing a terminal disclaimer are met.
Claim Rejections - 35 USC § 103
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.
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.
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.
Claims 1, 5-11, and 13-15 are rejected under 35 U.S.C. 103 as being unpatentable over Melli et al. (US 20180186689 A1).
Regarding claim 1, Melli teaches providing a substrate comprising a lithium-based oxide (Melli teaches a waveguide/high refractive index glass substrate that may include Li₂O and Nb₂O₅; paragraph [0007]). Melli teaches forming an etch mask pattern comprising exposed regions of the substrate (Melli teaches forming a patterned mask layer having openings that expose the underlying glass substrate; paragraphs [0101]-[0105]). Melli teaches plasma etching the exposed regions of the substrate using a gas mixture to form a patterned Li-based oxide structure (Melli teaches exposing the substrate and mask layer to plasma in a plasma reactor and transferring the mask pattern into the substrate to form diffractive grating structures; paragraphs [0106], [0108]-[0109], [0112]).
Melli further teaches that the source gas may comprise one or a plurality of gases, including an inert gas such as Ar and one or more chemically reactive gases selected from O₂, N₂, H₂, and halide gases including CHF₃ ([0108]). Melli also teaches example source gas compositions including CHF₃ and Ar, and CHF₃, CF₄, and Ar (paragraph [0109]). Therefore, the gas mixture of Melli consist essentially of at least one inert gas selected from a finite list and at least one reactive gas selected from a finite list.
Melli does not expressly disclose a specific embodiment in which the gas mixture consists essentially of CHF₃, H₂, and Ar. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select Ar as the inert gas and to select CHF₃ and H₂ as the chemically reactive gases from the finite list of gases taught by Melli because Melli expressly teaches that the source gas must include an inert gas and one or more chemically reactive gases, including Ar, CHF₃, and H₂, for plasma etching the exposed substrate. Selecting these disclosed gases would have amounted to choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success. See MPEP 2141 III(E).
Regarding claim 5, Melli teaches plasma etching comprising etching in an inductively coupled plasma reactor (paragraph [0106]).
Regarding claim 6, Melli teaches plasma etching comprising applying a plasma generated by an inductive RF power in a range of 50 W to 500 W (Melli teaches an inductively coupled plasma reactor and teaches that, where plasma is generated in an ICP reactor, ICP power may be applied to the source gas to generate a plasma, wherein the RF power may be in a range from about 10 W to about 500 W; paragraphs [0106], [0116]).
The claimed range of 50 W to 500 W overlaps the range taught by Melli for generating plasma. Therefore, selection of the claimed RF power range would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention because a prima facie case of obviousness exists where claimed ranges overlap ranges disclosed by the prior art. See MPEP 2144.05.
Regarding claim 7, Melli teaches applying a second RF power to the source gas and/or plasma in the reaction chamber to generate a directional electric field that directs etchant species toward the substrate, wherein the RF power may be from about 10 W to about 500 W (paragraphs [0116]-[0117]).
The claimed range of 50 W to 500 W overlaps the range taught by Melli for generating a directional electric field that directs etchant species toward the substrate. Therefore, selection of the claimed RF power range would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention because a prima facie case of obviousness exists where claimed ranges overlap ranges disclosed by the prior art. See MPEP §2144.05.
Regarding claim 8, Melli teaches plasma etching in a reaction chamber at a pressure of about 5 mTorr to about 20 mTorr, or about 20 mTorr to about 100 mTorr (paragraph [0118]).
The claimed pressure range of 10 mTorr to 50 mTorr overlaps the ranges taught by Melli. Therefore, selection of the claimed pressure range would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention because a prima facie case of obviousness exists where claimed ranges overlap ranges disclosed by the prior art. See MPEP 2144.05.
Regarding claim 9, Melli teaches plasma etching comprising etching the substrate selectively against the etch mask pattern at an etch rate selectivity ratio in a range of 1:0.1 to 0.1:1 (Melli teaches an etch selectivity ratio from about 0.1 to about 10, wherein the etch selectivity ratio refers to the ratio of the etch rate of the high refractive index glass substrate relative to the etch rate of the mask layer; the lower limit of 0.1 corresponds to 0.1:1 and the upper limit of 10 corresponds to 1:0.1; paragraph [0103]).
Regarding claim 10, Melli teaches wherein the etch mask pattern periodically exposes regions of the substrate, such that plasma etching forms a diffraction grating comprising Li-based oxide features that periodically repeat in a lateral direction (Melli teaches that the mask layer may comprise a plurality of substantially parallel lines formed on the surface of the high refractive index glass and further teaches that the mask layer pattern may comprise a pattern corresponding to an optical element, such as a diffraction grating or DOE; paragraphs [0104]-[0105]).
Regarding claim 11, Melli teaches the method of claim 10. Melli continues to teach that the waveguides may be a monolithic piece of material and that outcoupling optical elements may be formed on a surface and/or in the interior of that piece of material (paragraph [0059]).
Regarding claim 13, Melli teaches the method of claim 10. Melli also teaches that the optical elements may include outcoupling optical elements configured to extract light out of a waveguide (paragraph [0059]). Melli further teaches incoupling optical elements that deflect light into corresponding waveguides (paragraph [0081]).
Regarding claim 14, Melli teaches a diffraction grating formed on a substrate comprising a waveguide configured to guide visible light having wavelengths within the visible spectrum because Melli teaches waveguides configured to propagate light and output image information to the eye (paragraph [0059]). Melli further teaches light injected into the waveguide and exit beams output from the waveguide (paragraph [0067]).
Regarding claim 15, Melli teaches the method of claim 10. Melli continues to teach that the waveguides are configured to propagate light within each waveguide by total internal reflection (paragraph [0059]). Melli further teaches light rays deflected at angles that cause the light to propagate through the waveguide by total internal reflection (paragraph [0081]).
Claims 2 and 3 are rejected under 35 U.S.C. 103 as being unpatentable over Melli et al. as applied to claim 1 above, and further in view of Stone et al. (US 2017/0178894 A1).
Regarding claim 2, Melli does not explicitly teach wherein a ratio of CHF₃ to H₂ in the gas mixture is in a range of 10:1 to 1:10.
Stone teaches wherein a ratio of CHF₃ to H₂ in the gas mixture is in a range of 10:1 to 1:10 under the broad interpretation above (Stone teaches an etching process gas including a fluorine-containing precursor and a hydrogen-containing precursor, wherein the fluorine-containing precursor may be trifluoromethane (CHF₃), the hydrogen-containing precursor may be H₂, and a gas flow ratio of hydrogen-containing precursor to fluorine-containing precursor may be between 1:1 and 10:1 to achieve desired etch selectivity, which corresponds to a fluorine-containing precursor to hydrogen-containing precursor ratio of 1:1 to 1:10; paragraphs [0054]-[0056]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Melli to include the ratio of CHF₃ to H₂ in the gas mixture in the claimed range because Stone teaches controlling the ratio of hydrogen-containing precursor to fluorine-containing precursor to achieve desired etch selectivity. Selecting a gas ratio within the claimed range would have involved routine optimization of a result-effective variable to achieve desired etch selectivity. See MPEP § 2144.05.
Regarding claim 3, Melli does not explicitly teach wherein the Ar in the gas mixture is in a range of 10% to 90% of a total volume of the gas mixture.
Stone teaches that the flows of the fluorine-containing precursor and hydrogen-containing precursor may further include one or more inert gases, including argon (Ar), and that the inert gas improves plasma stability and process uniformity. Stone further teaches that flow rates and ratios of the different gases may be used to control etch rates and etch selectivity (paragraph [0045]). Stone also teaches that H₂ may be supplied at a flow rate of between about 25 sccm and 400 sccm, and Ar may be supplied at a flow rate of between about 0 slm and 3 slm (paragraph [0059]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Melli to include Ar in an amount within the claimed range because Stone teaches using Ar as an inert gas to improve plasma stability and process uniformity and teaches that gas flow rates and ratios may be adjusted to control etch rate and etch selectivity. Therefore, the amount of Ar is a result-effective variable that would have been optimized to achieve desired plasma stability, process uniformity, etch rate, and etch selectivity. See MPEP § 2144.05.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Melli et al. as applied to claim 1 above, and further in view of Hemming et al. (EP 0629592 A1).
Melli does not explicitly teach wherein plasma etching comprises etching at a rate of 1 nm/min. to 30 nm/min.
Hemming teaches wherein plasma etching comprises etching at a rate of 1 nm/min. to 30 nm/min (Hemming teaches producing inorganic diffractive elements by etching a masked substrate and teaches a typical etching rate of 5 nm/min for commonly used substrate glasses, which falls within the claimed range; and reactive ion etching 15 nm / min using fluorine-containing paragraphs [0009]-[0010] and [0040]-[0052]). Therefore, Hemming teaches that the etch rates claimed are within well known operating ranges for the art of forming a diffractive pattern.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Melli to use an etch rate within the claimed range of etching at a rate of 1 nm/min. to 30 nm/min because Hemming teaches that the etch rate corresponding to the glass used is determined to enable accurate adjustment of etch depth over the duration of ion bombardment or reactive ion etching, and further teaches that a typical etching rate for substrate glasses is 5 nm/min and 15 nm/ min, and in the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists, see MPEP 2144.05.
.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Melli et al. as applied to claim 10 above, and further in view of Oh et al. (US 2018/0275350 A1).
Melli teaches a diffraction grating formed on a waveguide because Melli teaches outcoupling optical elements and incoupling optical elements formed on waveguides (paragraphs [0059] and [0081]) and further teaches that the mask layer pattern may correspond to a diffraction grating or DOE (paragraph [0105]).
However, Melli does not explicitly teach that the waveguide comprises a material different from the Li-based oxide.
Oh teaches a diffraction grating formed on a waveguide, wherein the diffraction grating is formed of a material having a refractive index n1 higher than a refractive index n2 of the waveguide, and wherein examples of materials for forming the waveguide include silica glass, silicon oxynitride, transition metal oxides including lithium niobate, plastic, and polymer materials (paragraph [0088]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Melli to form the diffraction grating on a waveguide comprising a material different from the Li-based oxide because Oh teaches forming diffraction gratings and waveguides from different materials to provide refractive-index relationships useful for increasing the field of view of a display. Combining the grating/waveguide material arrangement of Oh with the display waveguide fabrication method of Melli would have amounted to combining prior art elements according to known methods to yield predictable results. See MPEP 2141 III(A).
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Melli et al. as applied to claim 10 above, and further in view of Kondo (US 5,991,489 A).
Melli does not explicitly teach wherein the patterned Li-based oxide structure comprises one or more of fiducial markers, edge features, adhesion coating and spacers.
Kondo teaches forming an alignment mark in a LiNbO₃ substrate. In particular, Kondo teaches defining openings in a photoresist film in areas where optical waveguides and an alignment mark will be formed, leaving Ti film only in areas where optical waveguides and an alignment mark will be formed, and thermally diffusing Ti into the LiNbO₃ substrate to form optical waveguides and a Ti-diffused area serving as an alignment mark (col. 5, lines 40-59). Kondo further teaches that the alignment mark can be optically detected (col. 8, lines 59-67).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Melli to include a patterned Li-based oxide structure comprising an alignment marker (fiducial marker), as taught by Kondo, because Kondo teaches forming alignment marks in LiNbO₃ optical waveguide structures to allow optical detection/alignment. Incorporating such an alignment marker into Melli’s patterned Li-based oxide optical structure would have amounted to applying a known technique to a similar optical waveguide structure to yield predictable results. See MPEP 2141 III(C).
Conclusion
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/JONATHAN L CARTER/Examiner, Art Unit 1713
/ERIN F BERGNER/Primary Examiner, Art Unit 1713
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