DETAILED ACTION
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 .
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.
Response to Arguments
Applicant's arguments filed 12/04/2025 have been fully considered but they are not persuasive.
Applicant has amended claims 1 and 9 to recite “a bottom plate portion side of the optical module is provided in contact with the electric substrate and is coplanar with all tip sides of the lead pins.” Applicant points to Fig. 3 to support this amendment. However, Fig. 3 is not sufficient to provide support for the amended language as interpreted by applicant and does not overcome the previously cited art if properly interpreted. Specifically, Fig. 3 shows element 10A on element 20. However, Fig. 3 does not provide sufficient detail, and applicant does not describe, “a bottom plate portion side of the optical module is provided in contact with the electric substrate and is coplanar with all tip sides of the lead pins.” The lead pins 1Ae are shown in more detail in Figs. 2A-2D and Fig. 2C shows that the ends of the lead tips extend beyond the “bottom plate portion side”. See the annotated Fig. 2C below. The Office notes that applicant points to Figs. 4A and 4B to support this amendment instead of discussing Figs. 2A-2D which show the element 10A in Fig. 3 in more detail. However, these figures do not show an electric substrate and do not provide enough detail that would allow a person of ordinary skill in the art to determine if (1) the bottom plate portion side is in contact with the electric substrate and (2) if the tip sides of the lead pins are coplanar with the bottom plate portion side. The Office further notes that Fig. 2A, 4A, and 4B appear to show the same relationship of line L to modules 10A, 10B, and 10C, which suggests to a person of ordinary skill in the art that the tips of the pins in 4A and 4B also extend below the bottom plate portion as shown in Fig. 2C. Again, the Office notes that applicant’s claims and specification differentiate between “tips” and “tip sides”. In each of Figs. 2A, 4A, and 4B the “tip sides” point “in the height direction” (Claim 1 ll. 13; Claim 9 ll. 13). The height direction is perpendicular to the plane of the bottom plate portion side. Accordingly, it is also unclear how the “tip sides” can point in “a height direction” that is perpendicular to “the bottom plate portion side” and be “coplanar with the bottom plate portion side”.
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While applicant describes Fig. 3 as the “second embodiment”, applicant also states “in the descriptions of the drawings, the same or corresponding elements are given the same reference numerals as appropriate” (pg. 5 ll. 19-21). Accordingly, a person of ordinary skill in the art would understand element 10A in Fig. 3 to correspond to element 10A in Fig. 2C. Since the ends of the lead pins are mounted to element 20, it is unclear how “a bottom plate portion side of the optical module is provided in contact with the electric substrate and is coplanar with all tip sides of the lead pins” can be shown in Fig. 3. The Office notes that applicant appears to be interpreting “contact” as “direct physical contact” and “tip sides” to mean “the end of the tip side”. See, e.g., applicant’s discussion of Kim and Matsuura on pg. 6 of the response. The Office notes that both Matsuura and Kim show the bottom plate portion in indirect contact with the electric substrate, because the bottom plate portion of both Kim and Matsuura contacts the electric substrate through by being connected to the sidewall that is connected to the lead pins. Additionally, there is a plane that goes through the tip side in both Matsuura and Kim that is coplanar with “a bottom plate portion.” Applicant has not redefined “contact” or “all tip sides of the lead pins” to mean “direct physical contact” or “an end of all tip sides of the lead pins”, so they Office cannot adopt these definitions as they are not the broadest reasonable interpretation of the term. The Office further notes that if these definitions are adopted the amendment contains new matter, because the end of the tip sides of the lead pins are not coplanar with the bottom plate portion side because they extend beyond the bottom plate portion side and there is no evidence that the bottom plate portion side is in direct physical contact with the electric substrate because the lead pins extend beyond the bottom plate portion side which should result in a gap between the bottom plate portion and the electric substrate. Finally, the Office notes prior art showing a configuration with a bottom plate portion in direct physical contact with an electrical substrate and coplanar with all tip sides of the lead pins has previously been cited. See, e.g., USD475981S Fig. 7.
Priority
This application is a continuation of PCT/JP2019/042037 filed on 10/25/2019 and further claims priority to JP2018201062 filed on 10/25/2018.
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 07/29/2024 was filed before the filing date of an RCE on 08/07/2024. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claims 1-4, 9, 10, and 12 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, 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, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 1 and 9 have been amended to recite “a bottom plate portion side of the optical module is provided in contact with the electric substrate and is coplanar with all tip sides of the lead pins”. Using the interpretation of “contact” and “tip sides” presented by applicant in the response filed 12/04/2025, this language is not supported by the specification as originally filed. Specifically, Fig. 2C shows that the tips “of the lead pins” extend beyond the “bottom plate portion”. Accordingly, the tips cannot be “coplanar” with the bottom plate portion. Additionally, if the tips are bonded to the electric substrate, the bottom plate portion cannot be in direct physical contact with the electric substrate because the tips extend below the bottom plate portion (i.e. the bottom plate portion will be above the electric substrate by the distance the tip sides extend past the bottom plate portion).
For the purpose of this Office Action, “contact” will be interpreted as any type of contact, such as physical, electrical, thermal, or optical either directly (i.e. no intervening elements) or indirectly (i.e. with intervening elements) and “a bottom plate portion side…is coplanar with all tip sides of the lead pins” will be interpreted to mean any portion of “all tip sides of the lead pins” in the same plane as “a bottom plate portion side” (e.g. so long as the tip side passes through a plane of the bottom plate portion side the “tip side” will be considered “coplanar”). “A bottom plate portion side of the optical module is provided in contact with the electric substrate and is coplanar with all tip sides of the lead pins” will be interpreted consistent with the above definitions.
Claims 2-4, 10, and 12 contain new matter at least based on their dependence from claim 1 or 9.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 1-4, 9, 10, and 12 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 1 and 9 recite “a bottom plate portion side of the optical module…is coplanar with all tip sides of the lead pins” and “tip sides of the lead pins point in a height direction of the single housing main body”. The claims are indefinite, because it is unclear how the tip sides can point in a height direction which is perpendicular to a plane of the bottom plate portion side and also be coplanar to a plane of the bottom plate portion side. A person of ordinary skill in the art understands “coplanar” to mean, in the same plane.
For the purpose of this Office Action, “a bottom plate portion side…is coplanar with all tip sides of the lead pins” will be interpreted to mean any portion of “all tip sides of the lead pins” in the same plane as “a bottom plate portion side” (e.g. if the tip side passes through a plane of the bottom plate portion side the “tip side” will be considered “coplanar” because the section that passes through the plane is “in the same plane”).
Claims 2-4, 10, and 12 are indefinite at least based on their dependence from claim 1 or 9.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 2, 4, 9, 10, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Shibayama et al. (US20150195935A1), hereafter Shibayama, in view of Kim et al. (KR20080007867A)1, hereafter Kim
Regarding claims 1 and 92, Shibayama discloses an optical module (Title; Figs. 1-4D; [0066]) implemented substrate ([0064]) comprising: an optical module (Title; Figs. 1-4D; [0066]) including: one optical element ([0066]); only a single housing main body of only one stage that houses therein the one optical element (Figs. 4C and 4D elements 2b); and a plurality of lead pins that are provided to a side wall of the single housing main body (Figs. 4C and 4D elements 4a; [0037]), an electric substrate on which the optical module is implemented ([0064]), wherein at least one of the lead pins is electrically connected to the at least one optical element ([0037]), and the plurality of lead pins are extending from the sidewall of the single housing main body ([0037]) and lined up in two rows along a height direction of the side wall (Figs. 4C and 4D elements 4a show two rows of terminals in a height direction), and are arranged in such a manner that adjacent lead pins do not overlap each other in a top view (Figs. 4C and 4D elements 4a show two rows of terminals that do not overlap; [0047]), and the tips of the lead pins arranged on the only one housing main body in a staggered configuration (Figs. 4C and 4D show staggered connections 4a; [0046]), and the lead pins do not interfere with each other ([0046]). Shibayama does not explicitly disclose tip sides of the lead pins point in a height direction of the housing main body, all tips are arranged substantially linearly, and the tips of the lead pins arrand on the only one housing main body are bent toward the bottom surface of the only one housing main body such that the lead pins do not interfere with each other, and a bottom plate portion side of the optical module is provided in contact with the electric substrate and is coplanar with all tip sides of the lead pins. However, Kim discloses tip sides of the lead pins point in a height direction of the housing main body (Figs. 3 and 4 elements 130; Fig. 5 elements 230), tips are arranged substantially linearly (Figs. 3 and 4 elements 130; Fig. 5 elements 230), and the tips of the lead pins arrand on the only one housing main body are bent toward the bottom surface of the only one housing main body such that the lead pins do not interfere with each other (Figs. 3 and 4 elements 130; Fig. 5 elements 230), and a bottom plate portion side of the module is provided in contact (Fig. 5 elements 120 and 150 are in at least indirect physical and thermal contact and direct optical contact) with the electric substrate (Fig. 5 elements 120 and 150 are in at least indirect physical and thermal contact and direct optical contact) and is coplanar with all tip sides of the lead pins (Fig. 5 elements 130 and 150; See also the rejection of claims 1 and 9 under 35 U.S.C. 112 above). An advantage, as is understood in the art, is to make electrical connection to the housing while the housing is in the desired configuration relative to what it is mounted on. Accordingly, it would have been obvious to a person of ordinary skill in the art prior to the effective filing date of the claimed invention to modify Shibayama with tip sides of the lead pins point in a height direction of the housing main body, tips are arranged substantially linearly, and the tips of the lead pins arrand on the only one housing main body are bent toward the bottom surface of the only one housing main body such that the lead pins do not interfere with each other; and a bottom plate portion side of the optical module is provided in contact with the electric substrate and is coplanar with all tip sides of the lead pins as disclosed by Kim in order to make electrical connection to the housing while the housing is in the desired configuration relative to what it is mounted on.
Regarding claim 2, Shibayama further discloses the one optical element is a semiconductor light emitting device ([0066]). Shibayama does not explicitly disclose a semiconductor laser device, a semiconductor optical amplifier, an optical modulator, and a light-receiving element. However, the Office takes Official Notice that a semiconductor laser device, a semiconductor optical amplifier, an optical modulator, and a light-receiving element are all well-known types of optical devices. The advantage of using these devices, such as a semiconductor laser device, is to allow a coherent beam of light for use in the desired application, such as optical communication. Accordingly, it would have been obvious to a person of ordinary skill in the art prior to the effective filing date of the claimed invention to further modify Shibayama in view of Kim with a semiconductor laser device, a semiconductor optical amplifier, an optical modulator, and a light-receiving element as is known in the art in order to allow the desired function based on the intended application of the device (e.g. a semiconductor laser, semiconductor optical amplifier, optical modulator, and/or a light receiving element may be desired to create an optical communication device).
Regarding claim 4, Shibayama further discloses the lead pins are provided to only one surface of the side wall (Figs. 4C and 4D; [0043] discloses the purpose of the rows is so that the leads do not have to be disposed circumferentially).
Regarding claims 10 and 12, Kim further discloses all tip sides of the lead pins are aligned with one another along a line L that is substantially parallel with the side wall where the lead pins are provided (See annotated Fig. 3 below).
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Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Shibayama in view of Kim, as applied to claim 1, in further view of Matsuura et al. (US 20030174481 A1), hereafter Matsuura.
Regarding claim 3, Shibayama in view of Kim does not explicitly disclose the lead pins are arranged at a pitch equal to or smaller than 0.7 mm in a top view. However, Matsuura discloses a row of top lead pins (Fig. 3 elements 3h) with a pitch of 0.8 mm ([0043]) and a row of lower lead pins (Fig. 3 elements 3f) with a pitch of 0.8 mm ([0043]) being offset by 0.4 mm from each other so as to not overlap (Fig. 3 elements 3f and 3h) which will result in a pitch between adjacent lead pins in the lower row and the upper row (Fig. 3 element 3f and 3h) of 0.4 mm ([0043]; Fig. 3). The advantage is to allow for a denser configuration of lead pins allowing more connections in a limited area ([0012]). Accordingly, it would have been obvious to a person of ordinary skill in the art prior to the effective filing date of the claimed invention to further modify Shibayama in view of Kim with the lead pins are arranged at a pitch equal to or smaller than 0.7 mm in a top view as disclosed by Matsuura in order to allow for a denser configuration of lead pins allowing more connections in a limited area and since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See attached Notice of References Cited.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 JOSHUA KING whose telephone number is (571)270-1441. The examiner can normally be reached Monday to Friday 10am-5pm MT.
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, Min Sun 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.
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/Joshua King/ Primary Examiner, Art Unit 2828
03/11/2026
1 Cite No. 15 in the IDS filed 07/29/2024
2 Applicant has amended claims 1 and 9 to be nearly identical. While there are small differences in scope, the rejection of claim 1 as amended applies equally to claim 9. Accordingly, they have been rejected together.