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 .
DETAILED ACTION
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claim 7 is rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor at the time the application was filed, had possession of the claimed invention.
Claim 7 discloses a limitation: “wherein said at least one of the first photodetector and the second photodetector comprises at least two photodetectors mounted on a common substrate.”
This limitation can be properly interpreted as “wherein said first photodetector comprises two or more photodetectors mounted on a common substrate and wherein said second photodetector comprises two or photodetectors mounted on a common substrate.”
There is no support for this limitation in the specification, which clearly discloses that only the first photodetector 151 and the second photodetector 152 are mounted on a common substrate 150, there are no other photodetectors on the substrate 150.
In order to overcome this rejection, the claim should be amended to recite:
“wherein said first photodetector and said second photodetector are mounted on a common substrate.”
Claim 8 discloses a limitation: “wherein said at least two photodetectors are elements of a monolithic multi-element array.”
This limitation can be properly interpreted as “two or more photodetectors are elements of a monolithic multi-element array.”
There is no support for this limitation in the specification, which clearly discloses that only the first photodetector 151 and the second photodetector 152 together form a monolithic array 150, there are no other photodetectors on the substrate 150.
In order to overcome this rejection, the claim should be amended to recite:
“wherein said first and second photodetectors are elements of a monolithic multi-element array.”
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 8 is rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, regards as the invention.
Claim 8 discloses a limitation: “wherein said at least two photodetectors are elements of a monolithic multi-element array.” There is insufficient antecedent basis for this limitation since the dependence of the claim was changed by the current amendment. Claim 1 on which claim 8 depends does not disclose “at least two photodetectors”.
In order to overcome this rejection, the claim should be amended as suggested above.
For the purpose of examination, the limitations as presented have been searched and considered.
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 1, 3, 5 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Lewandowski et al. (2014/0098829) found in IDS, hereinafter ‘829, and further in view of Flanders et al. (2014/0176958) hereinafter ‘958.
Regarding claim 1, Fig 15 of ‘829 discloses a tunable laser assembly comprising:
1. “a tunable semiconductor laser [201] emitting tunable laser radiation that sweeps over a range of wavelengths;
a beam splitter [202];
at least one of a first photodetector and a second photodetector [206,207]; and
at least one optical isolator [231];
wherein the tunable semiconductor laser [201], the beam splitter [202], the at least one of a first photodetector and a second photodetector [206,207], and the at least one optical isolator [231] are mounted on a common baseplate [241]; and
wherein the tunable laser assembly is configured to provide a first optical monitoring path [201-202-204-206-207];
wherein the tunable laser assembly further comprises a wavelength filter [204],
wherein the first optical monitoring path [201-202-204-206-207] comprises the wavelength filter [204] and the first photodetector [206], and
wherein the wavelength filter [204] and the first photodetector [206] provide an electrical signal that enables control of the absolute wavelength of said tunable laser radiation by observing the timing in the first optical monitoring path as the tunable semiconductor laser sweeps across the wavelength range.” See paragraphs 0080, 0144-0149. Also, the limitation “enables control” is an intended use recitation, which has been considered, but not given a patentable weight in a device claim. The disclosed wavelength monitoring arrangement produces the required electrical signals that can be used for this purpose.
‘829 discloses a tunable laser assembly as described above, but does not disclose a semiconductor optical amplifier integrated on a common base plate with the other elements.
However, SOA 456 integrated on a common baseplate 420 inside laser package 400 is well known in the art for the purpose of amplifying the laser signal emitted by the swept tunable laser 100, as evidenced by Fig 9 of ‘958.
It would have been obvious to one of ordinary skill in the art to incorporate the teachings of ‘958 into the device of ‘829 by using an amplification stage SOA integrated with the tunable laser assembly, since the combination would yield the predictable result of amplifying the output signal from the laser to a desired power level.
Thus, the claimed invention would have been obvious before the effective filing date of the claimed invention because “all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art. KSR, 550 U.S. at 416, 82 USPQ2d at 1395.
Regarding claim 3, ‘829 further discloses the tunable laser assembly:
3. “wherein said beam splitter [202] is configured to direct a portion of said tunable laser radiation to the wavelength filter [204] without introducing reflection artifacts in the tunable laser assembly output spectrum.” The reference does not disclose that reflection artifacts are present in the device, paragraph 0160 also discloses that it is advantageous to prevent unwanted reflections so as to protect the laser source.
Regarding claim 5, ‘829 further discloses the tunable laser assembly, wherein the wavelength filter 204 is a bandpass filter, but does not disclose:
5. “wherein said wavelength filter [204] comprises a notch filter.”
However, applicant indicated that a “bandpass filter is the equivalent of the notch filter – both are wavelength filters” on the bottom of page 12 of the Remarks filed on 4/29/25.
It would have been an obvious matter of design choice to one of ordinary skill in the art to use a notch filter instead of a bandpass filter, since the applicant stated on the record that they are equivalent for their use in the laser art and the selection of any of these known equivalents to filter wavelength would be within the level of one of ordinary skill in the art.
Regarding claim 18, ‘829 discloses a tunable laser assembly as described above, in addition a TEC attached to the baseplate is also disclosed in Fig 2, but does not disclose a thermistor:
18. “wherein the temperature of said common baseplate [241,113] is maintained through a feedback loop comprising a thermo-electric cooler (TEC) [114] and a temperature sensor attached to said common baseplate.”
However, controlling operation of the laser device by means of a feedback loop through a TEC and a thermistor is well known in the art, as evidenced by APA, for the purpose of controlling the temperature of the opto-electronic devices attached to the TEC. It is common knowledge that semiconductor devices are very sensitive to temperature, and that the output of the device changes based on ambient temperature. Therefore, a temperature feedback loop is necessary for proper operation and to maintain a stable output.
It would have been obvious to one of ordinary skill in the art to modify the device of ‘829 and ‘958 by adding a thermistor integrated with the tunable laser assembly in a feedback temperature control loop with the TEC, since the combination would yield the predictable result of controlling the temperature of the tunable laser assembly to achieve stable output.
Thus, the claimed invention would have been obvious before the effective filing date of the claimed invention because “all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art. KSR, 550 U.S. at 416, 82 USPQ2d at 1395.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over ‘829 and ‘958, as applied to claims 1 and 3 above, and further in view of Kasatani et al. (JP 2015-007667) found in IDS, hereinafter ‘667.
Regarding claim 4, ‘829 discloses the tunable laser assembly as described above, but does not disclose:
4. “wherein said beam splitter has a thickness greater than or equal to 0.75 mm.”
However, paragraph 0091 of ‘667 discloses that the beam splitter thickness can be set to 0.8 mm or greater as determined by the disclosed formulas. The reference teaches that the thickness of the beam splitter is a result effective variable.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to set the thickness of the beam splitter to be 0.8 mm or greater, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or working ranges or the optimum value for a result effective variable involves only routine skill in the art. In re Aller, 105 USPQ 233, In re Boesch, 617 F.2d 272,205 USPQ 215(CCPA 1980).
Admitted Prior Art
The rejection of claim 18 (using a thermistor in a temperature control loop) based on the well-known in the art statement is taken to be admitted prior art (hereinafter APA) because applicant either failed to traverse the examiner’s assertion of official notice or that the traverse was inadequate, see MPEP 2144.03.
Response to Arguments
Applicant’s arguments filed on 10/31/25 have been considered but they are moot in view of the new grounds of rejection.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Applicant’s attention is drawn to the references cited on form PTO-892 in the previous office action, which lists other references with similar features as the invention.
Contact Info
Any inquiry concerning this communication or earlier communications from the examiner should be directed to M. A. GOLUB-MILLER whose telephone number is (571)272-8602. The examiner can normally be reached on M-F 9-5.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, MinSun Harvey can be reached on (571) 272-1835. 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. 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. For more information about the PAIR system, see https://ppair-my.uspto.gov/pair/PrivatePair. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
/M. A. Golub-Miller/Primary Examiner, Art Unit 2828