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 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.
DETAILED ACTION
This is an AIA application filed September 16, 2021.
The earliest effective filing date of this AIA application is seen as September 16, 2021, the actual filing date, there being no earlier priority applications.
The claims filed May 19, 2025 are entered, currently outstanding, and subject to examination.
This action is in response to the Pre-Appeal Brief Conference Request of August 25, 2025 and the subsequent decision to reopen of September 5, 2025.
This is a final action made final under 37 C.F.R. § 1.113 and MPEP § 706.07(a). Examiner found no authority requiring a new non-final action after re-opening prosecution due to a request for a pre-appeal brief conference. If Applicant has authority for making this action non-final, it should inform examiner at its earliest convenience so that the finality of this action may be retracted. Without such authority, examiner believes that published procedure has been followed and that finality is proper.
The current status and history of the claims is summarized below:
Last Amendment/Response
Previously
Amended:
27
1, 5, 7, 11, 14, 18, 20, 23, & 25
Cancelled:
none
2, 3, 8, 9, 15, 16, 21, 22, 24, & 26
Withdrawn:
none
none
Added:
none
21-30
Claims 1, 4-7, 10-14, and 17-20, 23, 25, and 27-30 of the after-final amendment made May 19, 2025 are currently pending and outstanding.
Regarding the last reply:
Claim 27 was amended.
No claims were cancelled.
No claims were withdrawn.
No claims were added.
Claims 1, 4-7, 10-14, and 17-20, 23, 25, and 27-30 of the after-final amendment made May 19, 2025 are currently outstanding and subject to examination.
This is a final action and is the sixth action on the merits.
Allowable subject matter is not indicated below.
Often, in the substance of the action below, formal matters are addressed first, claim rejections second, and any response to arguments third.
Pre-Appeal Brief Conference Request and Decision Thereon
Applicant filed a pre-appeal brief conference request on August 25, 2025. A decision to reopen issued September 5, 2025.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o).
Applicant must provide the same terminology/vocabulary/phrasing in the specification that is present in the claims. At least one term or phrase is missing from the specification present in the claim(s).
Correction is required as the following amendment(s)/text in the claims find(s) no antecedent in the specification.
Claim(s)
Antecedent Missing For
7
first non-normal angle
second non-normal angle
Applicant’s remarks of May 19, 2025 states that [p. 7 bottom]:
Applicant submits antecedent basis for “first non-normal angle” and “second non-normal angle,” recited in claim 7, can be found at least in paragraphs [0046]-[0047] of the originally filed application. Accordingly, withdrawal of this objection is respectfully requested.
However, examiner sees no such language in the cited paragraphs.
Applicant is reminded that the antecedent basis requirement is distinct and separate from the description requirement.
As set forth in MPEP § 608.01(o):
The meaning of every term used in any of the claims should be apparent from the descriptive portion of the specification with clear disclosure as to its import; and in mechanical cases, it should be identified in the descriptive portion of the specification by reference to the drawing, designating the part or parts therein to which the term applies. A term used in the claims may be given a special meaning in the description. See MPEP § 2111.01 and § 2173.05(a).
Usually, the terminology of the original claims follows the nomenclature of the specification, but sometimes in amending the claims or in adding new claims, new terms are introduced that do not appear in the specification. The use of a confusing variety of terms for the same thing should not be permitted.
. . . While an applicant is not limited to the nomenclature used in the application as filed, he or she should make appropriate amendment of the specification whenever this nomenclature is departed from by amendment of the claims so as to have clear support or antecedent basis in the specification for the new terms appearing in the claims. This is necessary in order to insure [sic, ensure] certainty in construing the claims in the light of the specification, Ex parte Kotler, 1901 C.D. 62, 95 O.G. 2684 (Comm’r Pat. 1901). See 37 CFR 1.75 and MPEP §§ 608.01(i), § 1302.01.
Consequently, identity between terms and phrases in the specification and claims is preferred and is seen as mandatory to ensure “certainty in construing the claims in the light of the specification”.
Further, under 37 C.F.R. § 1.121(e) regarding disclosure consistency in making amendments:
The disclosure must be amended, when required by the Office, to correct inaccuracies of description and definition, and to secure substantial correspondence between the claims, the remainder of the specification, and the drawings.
Examiner considers direct correspondence between the specification and the claims to be important with respect to determining the scope of the claims.
Examiner strongly urges Applicant to review its claims with a fine-toothed comb and scrutinize them for any discrepancies between claim language and language that is used in the written description/specification as originally filed. Applicant is responsible for what it drafts. Discrepancies may be interpreted to Applicant’s detriment.
Special Definitions for Claim Language - MPEP § 2111.01(IV)
No special definitions are seen as present in the specification regarding the language used in the claims. Consequently, the words and phrases of the claims are given their plain meaning. MPEP §§ 2173.01, 2173.05(a), and 2111.01.
If special definitions are present, Applicant should bring those to the attention of the examiner and the prosecution history with its next response in a manner both specific and particular. In doing so, there will be no mistake, confusion, and/or ambiguity as to what constitutes the special definition(s).
To date, Applicant has provided no indication of special definitions.
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 of this title, 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.
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.
Claims 1, 5, 7, 11, 14, 18, 23, 25, and 27-30 are rejected under 35 U.S.C. § 103 as being unpatentable over U.S. Patent Application Publication No. 2020/0119828 of Sahni (Sahni) in view of U.S. Patent Application Publication No. 2007/0013017 of Badehi et al. (Badehi) and U.S. Patent Application Publication No. 2014/0153881 of Liff et al. (Liff).
With respect to claim 1, Sahni discloses a system (Fig. 3, ¶ 40 et seq.), comprising:
a prism (307A/B) configured to reflect, via a reflecting surface (mirror 311 and adjacent TFF 309A), a plurality of optical signals between a first surface of the prism (lower surface) and a second surface of the prism (upper surface) at a non-normal angle of incidence (per the figure, the angles of incidence within the mirror prism 307B are not normal to the reflective surface),
a photonic interposer (photonic die 321) including a plurality of grating couplers (305A/B/C) that are arranged in a two-dimensional array (per Fig. 3) and that are optically connected directly to the first surface of the prism (lower surface), such that the plurality of optical signals travel directly from the plurality of grating couplers (such as those at 305A) to the surface of the prism (lower surface) without passing through a first one or more intermediary lenses (no such lenses are present).
Sahni as set forth above does not disclose:
[a prism configured to reflect] via a lensed reflecting surface;
wherein the lensed reflecting surface of the prism includes a plurality of lenses matched to the plurality of optical signals, the plurality of lenses are [sic] spaced from one another by planar surfaces of the lensed reflecting surface, and each of the plurality of lenses is located at an optical center of a corresponding beam path for a respective one of the plurality of optical signals;
such that the plurality of optical signals travel [sic] directly from the plurality of grating couplers to the plurality of lenses of the lensed reflecting surface of the prism without passing through a first one or more intermediary lenses; and
and a plurality of optical fibers that are arranged in the two-dimensional array and that are optically connected directly to the second surface of the prism.
Sahni Fig. 6 shows a single prism (505) performing similarly for optical purposes as the two prisms (307A/B) of Fig. 3.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to a single prism along the lines of Sahni Fig. 6 in a system according to Sahni Fig. 3 in order to consolidate optics and reduce interface reflection. This provides one rationale to combine the references.
Another completely independent and separately sufficient rationale arises as follows. In making the combination (above), prior art elements (listed above) are combined according to known methods (per the reference) to yield predictable results (an optical coupling system) would occur as each element merely performs the same function in combination as it does separately. MPEP § 2141(III). This additional rationale is a sufficient, a complete, and an explicitly-recognized rationale to combine the references and conclude that the claim is obvious both under the controlling KSR Supreme Court case and MPEP § 2141(III)(A).
In Sahni Fig. 6, the reflecting surface is the surface with the HR coating 509, the first surface of the prism becomes the left surface of prism 505 and the second surface of the prism becomes the lower surface of prism 505, such lower surface is deemed to be absent of any lenses.
Badehi discloses an electro-optical circuitry having integrated connector and methods for the production thereof that includes (¶¶ 155, 156; Figs. 9C-11, 12A-C, 22C/D, 23A-25C):
a prism (glass substrate 3334) configured to reflect, via a lensed reflecting surface ("first curved portion 3335, to a curved reflective surface 3352 of layer 3336").
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use a prism having a lensed reflective surface along the lines of Badehi in a system according to Sahni as set forth above (Fig. 3, per above) in order to provide collimation, focusing, and/or alignment for the optical signal. This provides one rationale to combine the references.
Another completely independent and separately sufficient rationale arises as follows. In making the combination (above), prior art elements (listed above) are combined according to known methods (per the references) to yield predictable results (an optical coupling system) would occur as each element merely performs the same function in combination as it does separately. MPEP § 2141(III). This additional rationale is a sufficient, a complete, and an explicitly-recognized rationale to combine the references and conclude that the claim is obvious both under the controlling KSR Supreme Court case and MPEP § 2141(III)(A). Current Office policy regarding the determination of obviousness is set forth in the Federal Register notice at 89 Fed. Reg. 14449 (Feb. 27, 2024).
Further, the combination would then provide:
[a prism configured to reflect] via a lensed reflecting surface
wherein the lensed reflecting surface of the prism includes a plurality of lenses matched to the plurality of optical signals, the plurality of lenses are [sic] spaced from one another by planar surfaces of the lensed reflecting surface, and each of the plurality of lenses is located at an optical center of a corresponding beam path for a respective one of the plurality of optical signals;
such that the plurality of optical signals travel [sic] directly from the plurality of grating couplers to the plurality of lenses of the lensed reflecting surface of the prism without passing through a first one or more intermediary lenses
Liff discloses a two-dimensional, high-density optical connector that includes (Figs. 1-6C):
a plurality of optical fibers (160) that are arranged in the two-dimensional array (per the figures) and that are optically connected directly to the second surface (near lens array 130) of the prism (coupler 110).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use a two-dimensional optical fiber array along the lines of Liff in a system according to Sahni in view of Badehi as set forth above in order to enable multiple optical signals simultaneously. This provides one rationale to combine the references.
Another completely independent and separately sufficient rationale arises as follows. In making the combination (above), prior art elements (listed above) are combined according to known methods (per the references) to yield predictable results (an optical coupling system) would occur as each element merely performs the same function in combination as it does separately. MPEP § 2141(III). This additional rationale is a sufficient, a complete, and an explicitly-recognized rationale to combine the references and conclude that the claim is obvious both under the controlling KSR Supreme Court case and MPEP § 2141(III)(A). Current Office policy regarding the determination of obviousness is set forth in the Federal Register notice at 89 Fed. Reg. 14449 (Feb. 27, 2024).
Further, the combination would then provide:
a plurality of optical fibers that are arranged in the two-dimensional array and that are optically connected directly to the second surface of the prism.
Applicant should note well, N.B., that duplication and/or rearrangement of parts are covered by the MPEP §§ 2144.04(VI)(B) and 2144.04(VI)(C), respectively.
With respect to claim 5, Sahni in view of Badehi and Liff as set forth above discloses the system of claim 1, but not one wherein
the plurality of optical fibers are [sic] secured to the second surface of the prism via a fiber interface made of silicon.
Badehi (¶¶ 175, 192; Figs. 21C, 26D) teaches fixing optical fibers with adhesive.
The selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination.
Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (Claims to a printing ink comprising a solvent having the vapor pressure characteristics of butyl carbitol so that the ink would not dry at room temperature but would dry quickly upon heating were held invalid over a reference teaching a printing ink made with a different solvent that was nonvolatile at room temperature but highly volatile when heated in view of an article which taught the desired boiling point and vapor pressure characteristics of a solvent for printing inks and a catalog teaching the boiling point and vapor pressure characteristics of butyl carbitol. “Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” 325 U.S. at 335, 65 USPQ at 301.).
See also In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious); Ryco, Inc. v. Ag-Bag Corp., 857 F.2d 1418, 8 USPQ2d 1323 (Fed. Cir. 1988) (Claimed agricultural bagging machine, which differed from a prior art machine only in that the brake means were hydraulically operated rather than mechanically operated, was held to be obvious over the prior art machine in view of references which disclosed hydraulic brakes for performing the same function, albeit in a different environment.). MPEP § 2144.07.
Consequently, the recitation of specific materials is seen as obvious.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to fix optical fibers along the lines of Badehi in a system according to Sahni in view of Badehi, and Liff, as set forth above in order to maintain the optical signal in a reliable manner. This provides one rationale to combine the references.
Another completely independent and separately sufficient rationale arises as follows. In making the combination (above), prior art elements (listed above) are combined according to known methods (per the references) to yield predictable results (an optical coupling system) as each element merely performs the same function in combination as it does separately. MPEP § 2141(III). This additional rationale is a sufficient, a complete, and an explicitly-recognized rationale to combine the references and conclude that the claim is obvious both under the controlling KSR Supreme Court case and MPEP § 2141(III)(A).
Per above, the use of silicon in a silicon photonics system such as for Sahni is seen as an obvious recitation of specific materials.
Further, the combination would then provide:
the plurality of optical fibers are [sic] secured to the second surface of the prism via a fiber interface made of silicon.
With respect to claim 7, Sahni in view of Badehi and Liff as set forth above discloses an optical device (Sahni, Figs. 3 and 6 per above claim 1), comprising:
a photonic interposer (photonic die 321/205/513) including a plurality of grating couplers (305A/B/C) arranged according to a two-dimensional array (per Fig. 3) and configured to transmit a plurality of optical signals at a first non-normal angle (Sahni Fig. 2 shows photonics die 205 receiving signals at a non-normal/near-normal incidence and the same photonics die 205 transmits optical signals to a second fiber. The optical operation of reception and that of transmission are seen as interchangeable);
a prism (307A/B and 505) including a reflecting surface (Fig. 6 adjacent HR coating 509) configured to reflect the plurality of optical signals between a first surface of the prism (left surface of prism 505) and a second surface of the prism (lower surface of prism 505) at a second non-normal angle (per Fig. 6, the angle at HR coating 509 is non-normal) associated with the first non-normal angle (near-normal per Sahni Fig. 2),
wherein the reflecting surface of the prism comprises a plurality of lenses matched to the plurality of optical signals (per the combination with Badehi, ¶¶ 155, 156; Figs. 9C-11, 12A-C, 22C/D, 23A-25C, "first curved portion 3335, to a curved reflective surface 3352 of layer 3336"), wherein the first surface of the prism is optically connected directly to the photonic interposer (per the combination of Sahni in view of Badehi as set forth above), and wherein the plurality of optical signals travel directly from the plurality of grating couplers to the plurality of lenses of the reflecting surface of the prism without passing through one or more intermediary lenses (per the combination of Sahni in view of Badehi as set forth above, see claim 1, above);
a fiber interface including a plurality of optical fibers arranged according to the two-dimensional array (per Liff as above); and
a fiber lens array (Liff, Fig. 1, lens array 170, lenses 112, 116),
connected between the fiber interface (fiber 160) and the prism (coupler 110),
including a plurality of fiber lenses (112/116) corresponding to the plurality of optical fibers (per Fig. 1),
wherein a respective optical center for each optical signal of the plurality of optical signals is located between a corresponding pair of one of the plurality of lenses and one of the plurality of fiber lenses (per claim 1 above and the provision and maintenance of signal integrity).
The combination of Sahni in view of Badehi and Liff as set forth above per claim 1 and as indicated above is seen to provide the indicated elements, all within the knowledge of the person of ordinary skill in the art before the effective filing date of the claimed invention.
With respect to claim 11, Sahni in view of Badehi and Liff as set forth above discloses the optical device of claim 7, including one wherein
the fiber interface is made of silicon.
Per claim 5, above, Badehi (¶¶ 175, 192; Figs. 21C, 26D) teaches fixing optical fibers with adhesive.
The selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination.
With respect to claim 14, Sahni in view of Badehi and Liff as set forth above discloses an optical device (Sahni, Figs. 3, 2, and 6), including one comprising:
a photonic interposer (photonic die 321) including a plurality of grating couplers (305A/B/C) arranged according to a two-dimensional array (per Fig. 3) and configured to transmit a plurality of optical signals at a first non-normal angle (Sahni Fig. 2 shows photonics die 205 receiving signals at a non-normal/near-normal incidence and the same photonics die 205 transmits optical signals to a second fiber. The optical operation of reception and that of transmission are seen as interchangeable);
a prism (307A/B and 505) including a reflecting surface (Fig. 6 adjacent HR coating 509) configured to reflect the plurality of optical signals between a first surface of the prism (left surface of prism 505) and a second surface of the prism (lower surface of prism 505) at a second non-normal angle associated with the first non-normal angle (per Fig. 6, the angle at HR coating 509 is non-normal),
wherein the reflecting surface of the prism comprises a plurality of lenses matched to the plurality of optical signals (per the combination with Badehi, ¶¶ 155, 156; Figs. 9C-11, 12A-C, 22C/D, 23A-25C, "first curved portion 3335, to a curved reflective surface 3352 of layer 3336") and wherein the plurality of optical signals pass through the prism (Fig. 10C);
a fiber interface including a plurality of optical fibers arranged according to the two-dimensional array (per Liff as above),
wherein the fiber interface is optically connected directly to the second surface of the prism (per the combination of Sahni in view of Badehi and Liff as set forth above ), and wherein the plurality of optical signals that are reflected by the plurality of lenses (Badehi Figs. 10B-12A) of the reflecting surface of the prism travel directly from the plurality of lenses to the plurality of optical fibers without passing through one or more intermediary lenses (per the combination of Sahni in view of Badehi and Liff as set forth above, see claim 1, above); and
an interface lens array (Sahni Figs. 8 and 9, lens array 811), connected between the prism (805) and the photonic interposer (813), including a plurality of interface lenses corresponding to the plurality of grating couplers (seen as present to handle optical signals),
wherein a respective optical center for each optical signal of the plurality of optical signals is located between a corresponding pair of one of the plurality of lenses and one of the plurality of interface lenses (per claim 1 above and the provision and maintenance of signal integrity).
With respect to claim 18, Sahni in view of Badehi and Liff as set forth above discloses the optical device of claim 14, wherein:
the plurality of optical fibers are [sic] secured to the second surface of the prism via the fiber interface; and
the fiber interface is made of silicon.
Per claim 5, above, Badehi (¶¶ 175, 192; Figs. 21C, 26D) teaches fixing optical fibers with adhesive.
The selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination.
With respect to claim 23, Sahni in view of Badehi and Liff as set forth above discloses the optical device of claim 7, wherein:
the fiber lenses within the fiber lens array are offset from one another along a propagation direction of beam paths (Liff provides light path 122 that has both vertical and horizontal components, the lens array is 170 is offset in the vertical direction) within the fiber lens array that correspond to the plurality of optical signals (per the combination, beam paths are seen to take both horizontal and vertical directions; see Sahni Fig. 6); and
the fiber lenses are each spaced from a surface of the fiber lens array that faces the prism (the lenses 112/116 shown in Liff are seen as so spaced as they are spaced in a manner similar to that as shown in Applicant’s Fig. 2F, cited in the arguments for such structure.).
With respect to claim 25, Sahni in view of Badehi and Liff as set forth above discloses the optical device of claim 14, including one wherein
the interface lenses within the interface lens array are offset from one another along a propagation direction of beam paths within the interface lens array that correspond to the plurality of optical signals.
Liff provides light path 122 that has both vertical and horizontal components, the lens array is 170 is offset in the vertical direction. See claim 23, above.
With respect to claim 27, Sahni in view of Badehi and Liff as set forth above discloses the system of claim 1, including one wherein
the plurality of optical signals from the plurality of grating couplers that are reflected by the plurality of lenses travel directly from the plurality of lenses to the plurality of optical fibers without passing through a second one or more intermediary lenses.
Badehi Figs. 10B/C.
With respect to claim 28, Sahni in view of Badehi and Liff as set forth above discloses the system of claim 1, including one wherein:
each of the plurality of lenses is configured to reflect the respective one of the plurality of optical signals between the first surface of the prism and the second surface of the prism at the non-normal angle of incidence (Badehi, Figs. 10B/C); and
the non-normal angle of incidence corresponds to a non-normal angle of reception at which the plurality of optical signals are [sic] received from the plurality of grating couplers (incoming and outgoing angles of reflection are seen as corresponding).
With respect to claim 29, Sahni in view of Badehi and Liff as set forth above discloses the optical device of claim 7, including one wherein
the plurality of fiber lenses of the fiber lens array are [sic] arranged according to the two-dimensional array.
Per claim 7 above and the provision and maintenance of signal integrity
With respect to claim 30, Sahni in view of Badehi and Liff as set forth above discloses the optical device of claim 14, including one wherein
the plurality of interface lenses of the interface lens array are [sic] arranged according to the two-dimensional array.
Per claim 14 above and the provision and maintenance of signal integrity
Claims 4, 10, 13, 17, and 20 are rejected under 35 U.S.C. § 103 as being unpatentable over Sahni in view of Badehi and Liff as set forth above and further in view of U.S. Patent Application Publication No. 2022/0291461 of Elsinger et al. (Elsinger).
With respect to claim 4, Sahni in view of Badehi and Liff as set forth above discloses the system of claim 1, but not one wherein
the two-dimensional array defines a quincunx pattern.
Elsinger discloses an optical fiber-to-chip interconnection that includes (Fig. 3C):
the two-dimensional array defines a quincunx pattern.
Elsinger Fig. 3C shows offset rows of optical fibers with cladding 301 around a core 302.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use a fiber optic configuration along the lines of Elsinger in a system according to Sahni in view of Badehi and Liff as set forth above in order to more closely pack optical fibers. This provides one rationale to combine the references.
Another completely independent and separately sufficient rationale arises as follows. In making the combination (above), prior art elements (listed above) are combined according to known methods (per the references) to yield predictable results (an optical coupling system) as each element merely performs the same function in combination as it does separately. MPEP § 2141(III). This additional rationale is a sufficient, a complete, and an explicitly-recognized rationale to combine the references and conclude that the claim is obvious both under the controlling KSR Supreme Court case and MPEP § 2141(III)(A).
Further, the combination would then provide:
the two-dimensional array defines a quincunx pattern.
With respect to claim 10, Sahni in view of Badehi and Liff as set forth above discloses the optical device of claim 7, but not one wherein
the two-dimensional array defines a quincunx pattern.
Per claim 4 (above) and the analysis therein, Elsinger provides the two-dimensional array defines a quincunx pattern.
With respect to claim 13, Sahni in view of Badehi and Liff as set forth above discloses the optical device of claim 7, but not one wherein
the fiber lens array is made of silicon.
Elsinger ¶ 742, Fig. 61 provides for a silicon lens array.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use a fiber lens array made of silicon along the lines of Elsinger in a system according to Sahni in view of Badehi and Liff as set forth above in order to use ready materials for a silicon photonics system. This provides one rationale to combine the references.
Another completely independent and separately sufficient rationale arises as follows. In making the combination (above), prior art elements (listed above) are combined according to known methods (per the references) to yield predictable results (an optical coupling system) as each element merely performs the same function in combination as it does separately. MPEP § 2141(III). This additional rationale is a sufficient, a complete, and an explicitly-recognized rationale to combine the references and conclude that the claim is obvious both under the controlling KSR Supreme Court case and MPEP § 2141(III)(A).
Further, the combination would then provide:
the fiber lens array is made of silicon.
With respect to claim 17, Sahni in view of Badehi and Liff as set forth above discloses the optical device of claim 14, but not one wherein
the two-dimensional array defines a quincunx pattern.
Per claims 4 and 10 (above) and the analysis therein, Elsinger provides the two-dimensional array defines a quincunx pattern.
With respect to claim 20, Sahni in view of Badehi and Liff as set forth above discloses the optical device of claim 14, but not one wherein
the interface lens array is made of silicon.
Elsinger ¶ 742, Fig. 61 provides for a silicon lens array.
Per claim 13 (above) and the analysis therein, Elsinger provides the fiber lens array made of silicon.
Claim 6, 12, and 19 are rejected under 35 U.S.C. § 103 as being unpatentable over Sahni in view of Badehi, and Liff as set forth above in view of U.S. Patent Application Publication No. 2004/0202418 of Ghiron et al. (Ghiron).
With respect to claim 6, Sahni in view of Badehi and Liff as set forth above discloses the system of claim 1, but not one wherein
the prism is made of silicon.
Ghiron discloses a beam shaping and practical methods of reducing loss associated with mating external sources and optics to thin silicon waveguides that includes (Fig. 1, ¶ 17):
the prism is made of silicon.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use a silicon prism along the lines of Ghiron in a silicon photonics system according to Sahni in view of Badehi, and Liff as set forth above in order to provide elements made of ready materials. This provides one rationale to combine the references.
Another completely independent and separately sufficient rationale arises as follows. In making the combination (above), prior art elements (listed above) are combined according to known methods (per the references) to yield predictable results (an optical coupling system) as each element merely performs the same function in combination as it does separately. MPEP § 2141(III). This additional rationale is a sufficient, a complete, and an explicitly-recognized rationale to combine the references and conclude that the claim is obvious both under the controlling KSR Supreme Court case and MPEP § 2141(III)(A).
Further, the combination would then provide:
the prism is made of silicon.
With respect to claim 12, Sahni in view of Badehi and Liff as set forth above discloses the optical device of claim 7, but not one wherein
the prism is made of silicon.
Per claim 6 (above) and the analysis therein, Ghiron provides the prism made of silicon.
With respect to claim 19, Sahni in view of Badehi and Liff as set forth above discloses the optical device of claim 14, but not one wherein
the prism is made of silicon.
Per claims 6 and 12 (above) and the analysis therein, Ghiron provides the prism made of silicon.
Response to Arguments
Applicant's arguments filed in the pre-appeal brief conference request of August 25, 2025 have been fully considered but they are not persuasive and the claim rejections are not rebutted.
Certain typographic relics are maintained in this section as derived from optical character recognition/OCR processes used by the Office. Applicant is welcome to contact examiner should there be any confusion regarding these. Applicant’s filed documents are seen as the ones officially setting forth Applicant’s position(s).
Applicant argues that:
With regard to claim 1, Applicant submits the proposed Sahni, Badehi, and Liff combination does not teach or suggest at least “a photonic interposer including a plurality of grating couplers ... that are optically connected directly to the first surface of the prism, such that the plurality of optical signals travel directly from the plurality of grating couplers to the plurality of lenses of the lensed reflecting surface of the prism without passing through a first one or more intermediary lenses,” as recited in claim 1.
Examiner response: In the rejections, Sahni Fig. 3 provides basic structure including gratings that is combined with Sahni Fig. 6 for a single prism embodiment. Fig. 3 has no lenses while Fig. 6 does. The lenses of Fig. 6 are not part of the rejection Badehi and Liff provide additional features seen to be within the knowledge of the person of ordinary skill in the art before the effective filing date of the claimed invention.
In the FOA [Final Office Action dated March 19, 2025], the Examiner relies on a combination of Figures 3 and 6 of Sahni for allegedly disclosing the aforementioned features in claim 1. See FOA, p. 9 (asserting “Sahni Fig.6 shows a single prism (505) operating in the same optical manner as the two prisms (307A/B) of Fig. 3.”). However, with respect to the prism 307B, Sahni does not teach or suggest that any grating couplers are connected to the prism 307B, such that optical signals travel from such grating couplers to the mirror 311 and TFF 309A, let alone travel from the grating couplers to the mirror 311 and TFF 309A without passing through intermediary lenses. In fact, with reference to prism 307B, Sahni explicitly teaches that the grating couplers coupled to the prism 307B only receive signals from the prism 307B, not that signals travel from these grating couplers through the prism 307B. See Sahni, ¶¶ [0041] and [0045].
Examiner response: No intermediary lenses are shown or disclosed in Sahni regarding Fig. 3, ¶¶ 40-45. None have been shown by Applicant. Consequently, optical signals pass from the grating couplers to the optical fibers without passing through intermediary lenses.
Applicant focusses only on prism 307B. However, the plurality of grating couplers in Sahni Fig. 3 includes those at 305A which do transmit signals. Per the rejection, the prism of Sahni Fig. 3 is seen to include both 307A and 307B. Applicant must include the entire data set for the rejection and not just cherry pick elements thereof.
Additionally, with respect to the prism 307A, while Sahni discloses that signals pass “from the Tx grating couplers 305A to the Tx fiber 301A via the splitter prism 307A,” Sahni is completely silent regarding the signals passing from the Tx grating couplers 305A to the Tx fiber 301A via the mirror 311 and adjacent TFF 309A (which the Office maps to the “lensed reflecting surface of the prism” in claim 1).
Examiner response: Such subject matter is addressed in Sahni Fig. 6 per the rejection. Here, Applicant does not argue the rejection, but is arguing something else instead and has strayed from the scope of the rejection made by examiner. As such, these remarks do not serve to rebut the rejection.
Additionally, with respect to the prism 505 in Figure 6 of Sahni, the Examiner makes numerous erroneous assertions. Sahni in Figure 6 only discusses the prism 505 in the context of passing signals from the optical fiber 501 onto the grating couplers in the photonics die 513. In fact, despite the Examiner's assertions to the contrary, if the prism 505 in Figure 6 is considered to function similarly as the prism 307A/307B in Figure 3, then according to Sahni, any signals that pass from the grating couplers of the photonics die to the prism 505 would not be reflected from the HR coating 509 of the prism 505. Furthermore, Sahni in Figure 6 explicitly discloses signals for reception being coupled onto grating couplers of the photonic die 513 via a lens array 511. Thus, even assuming, arguendo, that the Examiner’s assertion that the prism 505 can be used for reception and transmission were correct (and Applicant does not concede this), it follows that the signals for transmission would be passed from the grating couplers to the prism 505 via the lens array 511.
Examiner response: Sahni ¶ 30 provides, "An optical transceiver contains optoelectronic circuits that create and process the optical/electrical signals on the transmitter (Tx) and the receiver (Rx) sides, as well as optical interfaces that couple the optical signals to and from a fiber."
¶ 50 provides, "Referring to FIG. 5, there is shown an external MUX/DEMUX 500 coupled to a photonics die 513, with an input/output fiber 501, polarization splitter 503, prism 505, lens array 511, and polarization rotator 515."
Fig. 6 has the same input/output fiber 501.
¶ 56 provides "For instance, a fiber spacing of 127 μm between Tx and Rx can be readily achieved.” As both Tx and Rx are present in Sahni Fig. 6, both transmission and reception are seen to occur.
The prism 505 is part of a "an external MUX/DEMUX 500 coupled to a photonics die 513" per ¶ 50. As such, it does not need to show bidirectional communication. It just needs to be capable of it. As such capacity is inherently present in prism 505, it would work in the system shown in Fig. 3.
Applicant states without support that "In fact, despite the Examiner's assertions to the contrary, if the prism 505 in Figure 6 is considered to function similarly as the prism 307A/307B in Figure 3, then according to Sahni, any signals that pass from the grating couplers of the photonics die to the prism 505 would not be reflected from the HR coating 509 of the prism 505.” Applicant’s presumption that the two prisms operate identically in the same manner is not supported by the rejection. If they did, the rejection would not require Fig. 6. They may operate differently regarding optical signals and still remain within the knowledge of the person of ordinary skill in the art before the effective filing date of the claimed invention. Applicant has not shown that such a combination is not obvious.
Lens array 511 is not a part of prism 505. Applicant is re-writing the rejection beyond the scope set forth in the action.
As such, the rejection is not rebutted.
Furthermore, Applicant respectfully would like to note that the Examiner's comments in the Advisory Action dated July 23, 2025 (hereinafter, “AA”) with respect to Sahni are misleading and unclear. In the AA, the Examiner appears to assert that the reliance on Sahni was an inadvertent error that was nevertheless remedied in the same FOA. See AA, p. 3 (stating “examiner mistranscribed the claim in making the rejection which was fully and completely remedied further down the same page” and “the phrase ... such that the plurality of optical signals travel directly from the plurality of grating couplers to the plurality of lenses of the lensed reflecting surface of the prism without passing through a first one or more intermediary lenses ... is explicitly stated to be absent from the Sahni reference further on the same page ... [a]Js such, this element is shown in the other, secondary references.”).
Examiner response: The mistranscription is remedied in the present action. Should there be further confusion, or mistakes by examiner, Applicant is welcome to draw the same to examiner’s attention. However, due to the explanation given in the advisory action, examiner is not aligned nor in agreement with Applicant’s assertions regarding being misled or lack of clarity.
However, Applicant submits that the Examiner assertion in the AA is contradicted by numerous statements in the FOA asserting that the Examiner is relying on Sahni for disclosing the aforementioned features in claim 1. See FOA, p. 9 (asserting “[iJn Sahni Fig. 6, the reflecting surface is the surface with the HR coating 509, the first surface of the prism becomes the left surface of prism 505 and the second surface of the prism becomes the lower surface of the prism 505, such lower surface is deemed to be absent of any lenses.”); see id., p. 26 (asserting “[pJer above, no resolution by either Badehi or Liff is needed as Sahni is able to provide the needed elements and relationships.”); see id., p. 28 (asserting “Sahni, per above, resolves the presence of ‘without passing through a first one or more intermediary lenses’”’).
Examiner response: Examiner does not see the purported contradiction and none is explicitly set forth by Applicant. None of the statements is seen as contradicting the others. As such, the rejection is not rebutted.
Applicant's arguments with regards to the remaining claims all rely upon the arguments set forth above. Consequently, these remaining arguments as seen as being addressed by the examiner's corresponding remarks.
Applicant’s remaining arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references. As such, the examiner makes no remarks regarding them.
Conclusion
Applicant’s publication US 20230081747 A1 of March 16, 2023 was previously cited.
No new art is cited.
THIS ACTION IS MADE FINAL. 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 extension fee 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.
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/Andrew Jordan/
Primary Examiner, Art Unit 2874
V: (571) 270-1571 (Pacific time)
F: (571) 270-2571
November 24, 2025