DETAILED ACTION
Election/Restrictions
Applicant’s election without traverse of Group I claims 1-11 in the reply filed on 5/11/2026 is acknowledged.
Response to Amendment
The amendment filed 5/11/2026 is entered.
Withdrawn claims 12-22 are cancelled.
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.
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.
Claim(s) 1, 2, 4, 5, 10 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over DYCK et al. “Placing single atoms in graphene with scanning transmission electron microscope” (2017) in view of PHAM et al. “Formation and Dynamics of Electron-Irradiation-Induced Defects in Hexagonal Boron Nitride at Elevated Temperatures” (2016) and SU et al. “Engineering single-atom dynamics with electron irradiation” (2019).
Regarding claim 1,
DYCK teaches using a scanning transmission electron microscope to place single silicon atoms in graphene abstract. The method provides a growth substrate of graphene and directs the electron beam at a desired lattice site page 2 and Fig. 1. The source material (silicon) is sputtered using the electron beam and the graphene self heals by filling the vacancy in the lattice with silicon (chemical bonding) page 2 and Fig. 1. The electron beam sputtering ejects source material via “thermal” energy because the localized beam energizes particles to the point of evaporation/sublimation. This interpretation is consistent with applicant’s depending claim which notes that laser ablation is a “thermal evaporation” process.
DYCK does not teach heating the growth substrate to a predetermined temperature. However, PHAM teaches that when forming atomic-scale point defects the characteristics of the defect depend on the temperature abstract. At the time of filing the invention it would have been prima facie obvious to control the temperature (heat to a predetermined temperature) as a result effective variable for atomic defects generated by electron beam.
The references do not expressly teach the pressure used when operating the electron microscope. However, SU similarly teaches the use of electron beam to form vacancies for dopant abstract and teaches spot irradiation occurs in a vacuum less than 3x10-9 mbar page 8. At the time of filing the invention it would have been prima facie obvious to one of ordinary skill in the art to consult other processes of electron beam formation of atomic vacancies to determine an operable pressure for the electron microscope.
Regarding claim 2,
DYCK teaches doping silicon into the graphene structure. Silicon is a semi-metal and considered a “metal” using the broadest reasonable interpretation.
Regarding claims 4 and 5,
The graphene used in DYCK is crystalline.
Regarding claim 10,
DYCK teaches the source material can be silicon and carbon Fig. 1. The scope of the claim does not preclude the source material being carbon even though a carbon atom was ejected. Alternatively, the first and second material could be the same.
Regarding claim 11,
The references are directed to generating single atom vacancies and doping with another atom. The atoms ejected from the source material must therefore at least be equal to the vacancies filled (conservation of mass) over the time of the process (i.e. a rate that is controlled such that doping completes).
Claim(s) 2, 3 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over DYCK et al. “Placing single atoms in graphene with scanning transmission electron microscope” (2017) in view of PHAM et al. “Formation and Dynamics of Electron-Irradiation-Induced Defects in Hexagonal Boron Nitride at Elevated Temperatures” (2016) and SU et al. “Engineering single-atom dynamics with electron irradiation” (2019) further in view of XU et al. “Precisely monitoring and tailoring 2D nanostructures at the atomic scale”.
Regarding claims 2 and 3,
DYCK teaches doping silicon into a point defect generated by electron beam. The reference does not expressly teach doping a metallic source material other than silicon. However, XU teaches that both aluminum and silicon can be used as dopant material when generating atomic defects by electron beam abstract and Fig. 3. At the time of filing the invention it would have been prima facie obvious to one of ordinary skill in the art to use an aluminum dopant instead of a silicon dopant as a simple substitution of known dopants for graphene vacancies.
Regarding claim 9,
DYCK teaches creating single atomic vacancies but does not teach moving the electron beam to create multiple attachment points. However, XU teaches that instead of a single point a one dimensional line of defects can be formed Fig. 4. At the time of filing the invention it would have been prima facie obvious to one of ordinary skill in the art to generate a line of vacancies instead of a point vacancy if required by their application.
Regarding claim 10,
XU teaches doping different materials into the graphene structure. The reference does not teach using two different materials. However, the different materials are equivalents for the purposes of filling graphene vacancies. It is considered prima facie obvious to use the equivalent materials together in the same growth substrate, MPEP 2144.06.I.
Allowable Subject Matter
Claims 6-8 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 a statement of reasons for the indication of allowable subject matter: Claims 6-8 require the dissociation of atoms from the source material to be driven by heating element and laser ablation. The prior art teaches using the electron beam to sputter. The examiner notes that a number of processes are known for thermally evaporating source material (i.e. physical vapor deposition processes). However, the claims require the atoms to chemically bond adjacent to the atomic vacancies. It is not clear that using a different evaporation process would provide the evaporated atoms with a suitable energy/speed to cause the chemical bonding at the required site.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
DYCK et al. “Atom-by-atom fabrication with electron beams” (2019).
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/AUSTIN MURATA/Primary Examiner, Art Unit 1712
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