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 .
Notice of Pre-AIA or AIA Status
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 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.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 12/19/2024 and 12/5/2024 comply with the provisions of 37 CFR 1.97. Accordingly, the examiner considered the information disclosure statement.
Election/Restriction
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I. Claims 1-10, drawn to an apparatus comprising: a substrate supporting a plurality of meta-atoms each of which has at least one respective outer sidewall, specifying in comprising: wherein an upper portion of the at least one sidewall of each of the meta-atoms is perpendicular to a surface of the substrate supporting the meta-atoms, and wherein a lower portion of the at least one sidewall of each of the meta-atoms slopes outwardly, the lower portion being adjacent an interface between the meta-atom and the surface of the substrate. (classified in USPC class 359, subclass 896)
Group II. Claims 11-21, drawn to a method comprising: each of the respective meta-atoms having at least one sidewall, specifying in comprising: providing a structure that includes a layer of a stratum material on a substrate, the structure further including a mask on the stratum material, the mask defining areas of the stratum material where meta-atoms are to be formed, each of the respective meta-atoms having at least one sidewall; and performing an etch process that includes: a first etch stage that removes portions of the stratum material such that trenches are etched into the stratum material to form an upper section of the at least one sidewall of each of the meta-atoms, the upper section being perpendicular to a surface of the substrate; and a second etch stage that removes further portions of the stratum material to form a lower portion of the at least one sidewall of each of the meta-atoms, the lower portion being adjacent an interface between the meta-atom and the surface of the substrate and sloping outwardly. (classified in USPC class 216, subclass 41)
The groups of inventions listed above 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:
Groups I and II lack unity of invention because even though the inventions of these groups require the technical feature of a substrate supporting a plurality of meta-atoms each of which has at least one respective outer sidewall.
However, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Jone, JR et al. (hereinafter called Jone) US20180052501 (of record, see IDS dated 12/5/2024).
Specifically, Jone teaches an apparatus (fig. 36L, paragraph [0625] “FIG. 36L is a simplified side view diagram illustrating a multi-layer variable index of refraction structure for a diffractive element”) comprising: a substrate (fig. 36L, substrate 3680) supporting a plurality of meta-atoms (see fig. 36L, the plurality of regions of diffractive structure 3686 has been referred to as a plurality of meta-atoms; paragraph [0625] “the plurality of regions of high index of refraction material 3682. Diffractive structure 3686 is imprinted in the additional layer of low index of refraction material”) each of which has at least one respective outer sidewall (see fig. 36L, each of the plurality of regions of diffractive structure 3686 which has at least one respective outer sidewall).
During a telephone conversation with Joseph Valentino, the representative of applicant, on 7/20/2026 a provisional election was made with traverse to prosecute the invention of Group 1, claims 1-10. Affirmation of this election must be made by applicant in replying to this Office action. Hence claims 11-21 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
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.
Claims 1-4 and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Einck et al., ("Scalable Nanoimprint Lithography Process for Manufacturing Visible Metasurfaces Composed of High Aspect Ratio TiO2 Meta-Atoms," ACS Photonics, August 9, 2021, 8(8):2400-2409, of record, see IDS dated 12/15/2024).
Regarding claim 1, Einck teaches an apparatus (Einck, figs. 1-4c, abstract, metalenses) comprising:
a substrate (see annotated image of Einck, the substrate) supporting a plurality of meta-atoms (see annotated image of Einck, having plurality of meta-atoms) each of which has at least one respective outer sidewall (see annotated image of Einck, the plurality of meta-atoms each of which has at least one respective outer sidewall),
wherein an upper portion (see annotated image of Einck, the upper portion) of the at least one sidewall of each of the meta-atoms (see annotated image of Einck, at least one sidewall of each of the meta-atoms) is perpendicular to a surface of the substrate (see annotated image of Einck, the surface of the substrate) supporting the meta-atoms (the meta-atoms), and wherein a lower portion (see annotated image of Einck, the lower portion) of the at least one sidewall of each of the meta-atoms slopes outwardly (see annotated image of Einck, the lower portion of the at least one sidewall of each of the meta-atoms slopes outwardly), the lower portion being adjacent an interface (see annotated image of Einck, the lower portion being adjacent an interface) between the meta-atom (see annotated image of Einck, the meta-atom) and the surface of the substrate (the surface of the substrate).
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Regarding claim 2 ,Einck discloses the invention as described in Claim 1 and further teaches wherein the lower portion of the at least one sidewall of each of the meta-atoms slants outwardly (see annotated image of Einck, the lower portion of the at least one sidewall of each of the meta-atoms slants outwardly).
Regarding claim 3, Einck discloses the invention as described in Claim 1 and further teaches wherein the lower portion of the at least one sidewall of each of the meta-atoms curves outwardly (see annotated image of Einck, the lower portion of the at least one sidewall of each of the meta-atoms curves outwardly).
Regarding claim 4, Einck discloses the invention as described in Claim 1 and further teaches wherein the lower portion of the at least one sidewall of each of the meta-atoms is concave-shaped (see annotated image of Einck, the concave-shaped).
Regarding claim 10, Einck discloses the invention as described in Claim 1 and further teaches wherein the substrate is composed of glass or fused silica (see Einck, page 8, paragraph 1, the fused silica substrate), and
the meta-atoms are composed of silicon, titanium oxide, zinc oxide, aluminum zinc oxide, or a niobium oxide (see Einck, abstract, titanium dioxide nanocrystal-based imprint material).
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.
Claims 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over Einck et al., ("Scalable Nanoimprint Lithography Process for Manufacturing Visible Metasurfaces Composed of High Aspect Ratio TiO2 Meta-Atoms," ACS Photonics, August 9, 2021, 8(8):2400-2409, of record, see IDS dated 12/15/2024).
Regarding claim 5, Einck discloses the invention as described in Claim 1 and further teaches wherein a diameter of each respective one of the meta-atoms at the lower portion (referring to the scale in the annotated image of Einck-2, the diameter of each respective one of the meta-atoms at the lower portion is approximately 0.12 in) is greater than a diameter of the meta-atom at the upper portion of the meta-atom (referring to the scale in the annotated image of Einck, diameter of the meta-atom at the upper portion of the meta-atom is approximately 0.09 in; it is a well-established proposition that where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), see MPEP 2114.04(IV).).
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Regarding claim 6, Einck discloses the invention as described in Claim 1 and further teaches wherein the lower portion of the at least one sidewall of each one of the meta-atoms extends less than fifty percent of the height of the meta-atom (referring to the scale in the annotated image of Einck, the lower portion of the at least one sidewall of each one of the meta-atoms extends, 0.05 in, less than fifty percent of the height of the meta-atom, 0.37 in, 0.05/0.37 is approximately 0.13 = 13%; it is a well-established proposition that where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), see MPEP 2114.04(IV).).
Regarding claim 7, Einck discloses the invention as described in Claim 6 and further teaches wherein the lower portion of the at least one sidewall of each one of the meta-atoms extends no more than five percent of the height of the meta-atom (referring to the scale in the annotated image of Einck-3, the lower portion of the at least one sidewall of each one of the meta-atoms, the height of lower portion is approximately 0.02 in, the height of the meta-atom is approximately 0.38 in, so the lower portion of the at least one sidewall of each one of the meta-atoms extends no more than five percent of the height of the meta-atom; it is a well-established proposition that where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), see MPEP 2114.04(IV).).
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Claims 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Einck et al., ("Scalable Nanoimprint Lithography Process for Manufacturing Visible Metasurfaces Composed of High Aspect Ratio TiO2 Meta-Atoms," ACS Photonics, August 9, 2021, 8(8):2400-2409, of record, see IDS dated 12/15/2024), and further in view of Lee et al. (US20230094482).
Regarding claim 8, Einck discloses the invention as described in Claim 1, Einck does not explicitly disclose wherein the plurality of meta-atoms includes a first grouping of meta-atoms whose respective upper portions have a first diameter and a second grouping of meta-atoms whose respective upper portions have a second diameter that differs from the first diameter.
However, Lee teaches the analogous meta-optical system (Lee, abstract, the meta-optical device includes a substrate and a nanostructure), and further teaches wherein the plurality of meta-atoms (Lee, fig. 3A, the nanostructure 100A and 100B has been referred to as the plurality of meta-atoms) includes a first grouping (Lee, fig. 3A, the nanostructure 100A) of meta-atoms (Lee, fig. 3A, the 100A) whose respective upper portions (the 110A) have a first diameter (Lee, fig. 3b, paragraph [0073] “The pillar array in the nanostructure 10 may include a first portion 100A in which a plurality of first pillars 110A having a first diameter) and a second grouping of meta-atoms (fig. 3A, the 110B) whose respective upper portions (fig. 3A, 110B) have a second diameter (paragraph [0073] “a plurality of second pillars 110B having a second diameter”) that differs from the first diameter (paragraph [0073] “the first diameter and the second diameter may be different from each other”).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to modify the apparatus of Einck to have the differs diameter of the plurality of meta-atoms as taught by Lee for the purpose to provide each having a nanostructure in which an etch depth is substantially uniform regardless of an etch area and/or a difference in an etch depth according to an etch area is small (Lee, paragraph [0006]).
Regarding claim 9, Einck discloses the invention as described in Claim 1, Einck does not explicitly disclose wherein the plurality of meta-atoms includes a first grouping of meta-atoms arranged in a first density and a second grouping of meta-atoms arranged in a second density that differs from the However, Lee teaches the analogous meta-optical system (Lee, abstract, The meta-optical device includes a substrate and a nanostructure), and further teaches wherein the plurality of meta-atoms includes a first grouping of meta-atoms arranged in a first density (see Lee, fig. 3A, the plurality of meta-atoms 110A includes a first grouping 100A of meta-atoms 110A arranged in a first density) and a second grouping of meta-atoms arranged in a second density (see Lee, fig. 3A, a second grouping 100B of meta-atoms 110B arranged in a second density) that differs from the first density (see paragraph [0070] “A first trench 120A may be formed between a plurality of first pillars 110A, and may include a first trench bottom surface 121A. Similarly, a second trench 120B may be formed between a plurality of second pillars 110B, and may include a second trench bottom surface 121B”; see Fig. 3A, A second trench bottom surface 121B differs the first trench bottom surface 121; thus, the plurality of meta-atoms includes a first grouping of meta-atoms arranged in a first density and a second grouping of meta-atoms arranged in a second density that differs from the first density ).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to modify the apparatus of Einck to have the differs density of the plurality of meta-atoms as taught by Lee for the purpose to provide each having a nanostructure in which an etch depth is substantially uniform regardless of an etch area and/or a difference in an etch depth according to an etch area is small (Lee, paragraph [0006]).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Miller US 20090268295 teaches features of instant invention (see Figs.2, 4, 6 and their descriptions), and Zhang et al. US20210208312 teaches features of instant invention (see Figs.1A-1F and their descriptions), Wolk et al. US 20220404525 teaches features of instant invention (see Figs.1-14 and their descriptions).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KUEI-JEN LEE EDENFIELD whose telephone number is (571) 272-3005. The examiner can normally be reached Mon. -Thurs 8:00 am - 5:30 pm.
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, Sun, Pinping can be reached on (571) 270-1284. The fax phone number for the organization where this application or proceeding is assigned is 571-273- 8300.
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/KUEI-JEN L EDENFIELD/
Examiner, Art Unit 2872
Prosecution Insights