UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO.
17/358,921
FILING DATE
06/25/2021
FIRST NAMED INVENTOR
David Kohen
ATTORNEY DOCKET NO.
01.AD6069-US
CONFIRMATION NO.
2084
119829
7590
08/27/2026
Essential Patents Group, LLP.
5 Centerpointe Dr.
Suite 400
Lake Oswego, OR 97035
EXAMINER
LE, UYEN CHAU N
ART UNIT
2874
PAPER NUMBER
NOTIFICATION DATE
DELIVERY MODE
08/27/2026
ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketing@essentialpatents.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)
Office Action Summary
Application No.
17/358,921
Applicant(s)
Kohen et al.
Examiner
Art Unit
Uyen-Chau N Le
2874
AIA (First Inventor to
File) Status Yes
-- The MAILING DATE of this communication appears on the cover sheet with the correspondence address --
Period for Reply
A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 3 MONTHS FROM THE MAILING
DATE OF THIS COMMUNICATION.
Extensions of time may be available under the provisions of 37 CFR 1.136(a). In no event, however, may a reply be timely filed after SIX (6) MONTHS from the mailing
date of this communication.
If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any earned patent term
adjustment. See 37 CFR 1.704(b).
Status
1) Responsive to communication(s) filed on 05/12/2025.
2a)
A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
3)
This action is FINAL.
2b) This action is non-final.
An election was made by the applicant in response to a restriction requirement set forth during the interview
on; the restriction requirement and election have been incorporated into this action.
4) Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
closed in accordance with the practice under Ex parte Quayle, 1935 C.D. 11, 453 O.G. 213.
Disposition of Claims*
5) Claim(s) 1-7 and 21-30 is/are pending in the application.
5a) Of the above claim(s) 21-25 is/are withdrawn from consideration.
6)
Claim(s)
is/are allowed.
7)
Claim(s) 1-7 and 26-30 is/are rejected.
8)
Claim(s)
is/are objected to.
9)
Claim(s)
are subject to restriction and/or election requirement
* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway program at a
participating intellectual property office for the corresponding application. For more information, please see
http://www.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
Application Papers
10) The specification is objected to by the Examiner.
11) The drawing(s) filed on
is/are: a) accepted or b)☐ objected to by the Examiner.
Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121(d).
Priority under 35 U.S.C. § 119
12)
Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
Certified copies:
a) All b) Some** c) None of the:
Certified copies of the priority documents have been received.
1.
2.
Certified copies of the priority documents have been received in Application No.
3.
Copies of the certified copies of the priority documents have been received in this National Stage
application from the International Bureau (PCT Rule 17.2(a)).
** See the attached detailed Office action for a list of the certified copies not received.
Attachment(s)
1)
Notice of References Cited (PTO-892)
2)
Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
Paper No(s)/Mail Date
U.S. Patent and Trademark Office
PTOL-326 (Rev. 11-13)
Office Action Summary
3)
Interview Summary (PTO-413)
Paper No(s)/Mail Date
Other:
Part of Paper No./Mail Date 20260822
Application/Control Number: 17/358,921
Art Unit: 2874
Page 2
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.
Response to Arguments
Applicant's arguments filed 05/12/2025 have been fully considered but they are not
persuasive.
Applicant argued that Szelag's structure (fig. 2M) is distinct from the instant applicant in
that "the instant application (e.g., FIG. 2-7B) teaches removing a sacrificial material (e.g., 311 in
FIG. 3D) from adjacent to a sidewall of a first material (e.g., 330 in FIG. 3F) and subsequently
forming a second material (e.g., 345 in FIG. 6) in contact with the sidewall of the first material
(e.g., for superior passivation)." (Remarks, page 6). The examiner disagrees. First, "removing"
and "subsequently forming" are method steps, which belongs to the non-elected
invention/withdrawn claims. Second, second spacer 26 of Szelag, which is interpreted as the
claimed second material, is in direct contact with the sidewall of absorption portion/first material
27 (fig. 2M, where concave sidewall of absorption portion 27 is in direct contact with spacer 26,
that is, nothing between 26 and 27). Further, [0035] discloses "second spacer... extending
between and in contact with the first spacer and with the absorption portion."
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.
Application/Control Number: 17/358,921
Art Unit: 2874
Page 3
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.
Claims 6-7 and 29-30 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.
Claim 1 recites “the second material is a crystalline silicon layer or comprises Ge and at
least one of nitrogen or oxygen.” According, when "the second material is a crystalline silicon
layer," claims 6 and 29 are indefinite because crystalline silicon does not comprise Ge and
oxygen or nitrogen, and crystalline silicon is not GeOx, GeNx or GeOxNy; when “the second
material comprises Ge and at least one of nitrogen or oxygen," claims 7 and 30 are indefinite
because Ge and oxygen or nitrogen is not crystalline silicon.
For examination purpose, claim 1 is considered as having “the second material is a
crystalline silicon layer" with respect to prior art as set forth in the rejection below. As such,
claims 6 and 29 are unclear as discussed above and are not further considered with respect to
prior art (MPEP 2173.06 II, 2nd paragraph). This is not an indication of allowable subject
matter.
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
Application/Control Number: 17/358,921
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Page 4
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.
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) 1-5, 7, 26-28, and 30 is/are rejected under 35 U.S.C. 103 as being
unpatentable over Szelag et al. (US 2020/0313026 A1 - hereinafter Szelag) in view of Na et
al. (US 20180233521 A1 – hereinafter Na).
Regarding claims 1, 7, and 30, Szelag discloses a photonic integrated circuit (PIC) (10,
Fig. 1A, 1B, and 1C), comprising:
a photonic waveguide (40, Fig. 1B and 1C) over a substrate (11, Fig. 1A, 1B, and 1C),
wherein the waveguide comprises crystalline Si (Par. 51);
an optical cladding material (12, Fig. 1A) adjacent to a sidewall of the waveguide and
over a first length of the waveguide (41, Fig. 1B and 1C); and
a photodetector structure (20, Fig. 1A, 1B, and 1C) over a second length of the
waveguide (21.1, Fig. 1A and 1B), wherein:
the second length of the waveguide (21.1) comprises impurities of a first conductivity
type (Par. 60) and the photodetector structure (20) comprises:
a first material (27, Fig. 1A) comprising Ge (Par. 51) over at least a portion of the second
length of the waveguide (21.1); and
Application/Control Number: 17/358,921
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Page 5
a second material (26, Fig. 1A) between a sidewall of the first material (27) and a
sidewall of the cladding material (12), wherein the second material (26) is in direct contact with
the sidewall of the first material (27) (second material depicted in contact with the first material,
see Fig. 1A).
Szelag further discloses the second material (26) is made of a silicon oxide (e.g.
SiO.sub.2) (Par. 67), but fails to teach the second material is a crystalline silicon layer and is
epitaxial to the first material.
Na teaches a photodetector structure (900/1010; Figs. 9A-C and 10C-D) comprises a first
material (906 is an intrinsic germanium layer; [0139]) and a second material (912) is in direct
contact with the sidewall of the first material (906), wherein the second material (912) is a layer
crystalline silicon ([0148] and [0152]). Since the second material (912) is a layer of crystalline
silicon and is structurally arranged substantially identical to that of the claim, its epitaxial
direction would be in the same direction as claimed, that is, to the first material (906).
It would have been obvious to one of ordinary skill in the art before the effective filing
date of the claimed invention to have the second spacer of Szelag made of crystalline silicon as
taught by Na since such modification would have been an obvious design variation, well within
the ordinary skill in the art, to protect photodiode surface from harsh dry etching, reduce surface
defect states, and lower dark current leakage to improve overall signal clarity. Further, since it
has been held that the selection of a known material based on its suitability for its intended use
supported a prima facie obviousness determination. In re Leshin, 125 USPQ 146.
Regarding claim 2, Szelag/Na discloses the PIC of claim 1, the second material (26) has a
first lateral width adjacent to the sidewall of the first material (27) that is less than a second
lateral width of a space between the sidewall of the first material (27) and the sidewall of the
Application/Control Number: 17/358,921
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Page 6
cladding material (12) (second material depicted with a first lateral width adjacent to the sidewall
of the first material that is less than a second lateral width of a space between the sidewall of the
first material and the sidewall of the cladding material, see Fig. 1A).
Regarding claim 3, Szelag/Na discloses the PIC of claim 2, a dielectric material (24, Fig.
1A) between the second material (26) and the cladding material (12), wherein the dielectric
material (24) has a different chemical composition than both the second material (26) and the
cladding material (12) (Par. 66).
Regarding claim 4, Szelag/Na discloses the PIC of claim 2, the first lateral width of the
second material (26) varies from a greater width proximal to the second length of the waveguide
(21) to a smaller width distal from the second length of the waveguide (21) (the second material
is depicted having a first width that is greater proximal to the waveguide and smaller distal from
the waveguide, see Fig. 1A).
Regarding claim 5, Szelag/Na discloses the PIC of claim 1, the cladding material (12)
comprises silicon and oxygen (Par. 60);
the first material (27) is monocrystalline Ge (Par. 52);
and the photodetector structure (20) further comprises a layer comprising Si over the first
material, the layer comprising Si having a second conductivity type (the photodetector structure
(20) is depicted encased in the cladding material (12) which comprises Si and has a different
conductivity from the second length of the waveguide (21) which is comprised of doped Si, see
Fig. 1A).
Application/Control Number: 17/358,921
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Regarding claims 26-27, Szelag/Na discloses the PIC of claim 1, but fails to teach the
second material is a layer having a thickness of no more than 2 nm from the sidewall of the first
material, wherein the layer comprises a foot having the thickness of no more than 2nm and
extending beyond the sidewall of the first material by more than 2nm. However, it would have
been obvious to one of ordinary skill in the art before the effective filing date of the claimed
invention to have Szelag's second spacer's thickness more than 2nm since such modification
would have involved a mere change in the size of a component, and it has been held that a
change in size is generally recognized as being within the level of ordinary skill in the art. In re
Rose, 105 USPQ 237 (CCPA 1955).
Regarding claim 28, Szelag/Na discloses the PIC of claim 27, further comprising a
dielectric material between the second material and the cladding material and on the foot of layer
(24 is made of a silicon nitride), wherein the dielectric material has a different chemical
composition than both the second material (crystalline Si as modified by Na) and the cladding
material (silicon oxide, [0079]).
Conclusion
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
Application/Control Number: 17/358,921
Art Unit: 2874
Page 8
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 Uyen-Chau N. Le whose telephone number is (571)272-2397.
The examiner can normally be reached Monday-Friday, 9:00am-5:30pm.
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, Kiesha R. Bryant can be reached at (571) 272-3606. The fax phone number for the
organization where this application or proceeding is assigned is 571-273-8300.
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Application/Control Number: 17/358,921
Art Unit: 2874
Page 9
at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service
Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/UYEN CHAU N LE/
Supervisory Patent Examiner, Art Unit 2874
Prosecution Insights