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
Response to Amendment
Applicant’s Amendment filed on July 8, 2025 has been fully considered and entered.
Claim Rejections - 35 USC § 103
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.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-13 are rejected under 35 U.S.C. 103(a) as being unpatentable over Xie (US 2019/0137706 A1) in view of Shimada et al. (5,084,895).
Regarding claim 1, Xie discloses an electronic device, comprising: a substrate (102) including one or more electrical traces and a dielectric material (paragraph 0031); a photonic integrated circuit (PIC) (104) coupled with the substrate, the PIC including one or more optical interconnects (paragraph 0044 discloses the lens array 142 attached to the edge of PIC 104, and therefore must be coupled to some type of optical interconnect within the PIC 104), wherein: the PIC is configured to communicate a photonic signal with one or more optical fibers (130); the PIC is configured to process the photonic signal into an electronic signal (paragraph 0028 discloses PIC die may include a voltage converter); and an electronic integrated circuit (EIC) (paragraph 0028 discloses PIC die 104 including electronic ICs such as a laser driver or voltage converter, which necessarily would be in communication with the PIC) coupled with the substrate, wherein the EIC is in communication with the PIC, and the EIC is configured to transmit the electronic signal to the PIC or to receive the electronic signal from the PIC; and a lens assembly (142); wherein the optical interconnects of the PIC are aligned with the lens, and the lens is configured to transmit the photonic signal communicated between PIC and the optical fibers.
Still regarding claim 1, Xie teaches the claimed invention except for the lens assembly including at least one gradient refractive index (GRIN) lens. Shimada discloses a lens assembly (32 in Fig. 9) including at least one gradient refractive index (GRIN) lens (Fig. 3 and column 7, lines 9-14), wherein: the GRIN lens has a central longitudinal axis and a perimeter edge; and a refractive index of the GRIN lens decreases from the central longitudinal axis to the perimeter edge; and the GRIN lens is configured to transmit a photonic signal to optical fibers (800). Since both of the inventions relate to optical devices, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to use a gradient refractive index (GRIN) lens as disclosed by Shimada in the device of Xie for the purpose of improving the coupling by enhancing the focus of the light beam.
Regarding claims 2 and 3, the proposed combination of Xie and Shimada teaches the claimed invention except for specifically stating the GRIN lens comprising a GRIN fiber. However, waveguides or fibers used as an alternative to lenses is well-known in the art and as such, 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 GRIN fiber as a matter of obvious design variation, increasing the versatility in the manufacturing process. Further, since Shimada discloses the perimeter edge having a lower refractive index, one having ordinary skill would find it obvious to form a cladding layer at the perimeter edge in order to better confine the optical signal within the fiber.
Regarding claim 4, Xie discloses the lens has a first lens face and a second lens face, and one or more of the first lens face or the second lens face are planar in Fig. 1.
Regarding claim 5, Xie discloses the first end of the lens forms a direct interface with the PIC in Fig. 1.
Regarding claims 6 and 7, Xie further discloses an optical PIC (106) on a surface of the PIC 104. The proposed combination of Xie and Shimada teaches the claimed invention except for specifically stating the optical interconnects comprise a waveguide. However, waveguides used as optical interconnects are ubiquitous in the art and as such, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use waveguides as an optical interconnect to guide the photonic signal transmitted through the GRIN lens in order to direct signals to and from any optical components within the PIC in an integrated and compact configuration.
Regarding claims 8-11, Xie further discloses a fiber array unit (FAU) (bridge structure 110) including a coupling element (138), wherein the FAU is configured for coupling with the one or more optical fibers (see paragraph 0052 disclosing coupling to two or more fibers 130). The proposed combination of Xie and Shimada teaches the claimed invention except for specifically stating a fiber array unit lens. However, lens of various shapes, including spherical lenses, are ubiquitous in the art and as such, 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 spherical lens for coupling with the optical fibers for the purpose of enhancing the coupling. Further, one having ordinary skill in the art would find it obvious to form the FAU lens with a refractive index decreasing radially from a central longitudinal axis of the FAU lens, since Shimada teaches such a lens, providing the benefit of further improving the coupling by enhancing the focus of the light beam.
Regarding claim 12, Xie discloses a transmission gap, and the photonic signal is communicated between the PIC and the fiber array unit through the transmission gap in Fig. 1.
Regarding claims 13, the proposed combination of Xie and Shimada teaches the claimed invention except for the PIC within a cavity of the substrate. However, integrated devices within cavities of a substrate are ubiquitous in the art and as such, 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 substrate comprising a cavity configured to receive one or more components of the electronic device, wherein the PIC extends into the cavity for the purpose of forming a compact and robust device.
Response to Arguments
Applicant's arguments, filed July 8, 2025, with respect to claims have been considered but are not persuasive.
On page 7, Applicant submits there is no evidence that improved coupling would be obtained by modifying Xie with the GRIN lens of Shimada. However, Shimada clearly states the microlens 302 can “converge or focus a light beam not only in [the] Y-direction, but also in the Z-direction because of the convex profile of the output plane 32 and the refractive index distribution” (column 7, lines 26-30). Shimada further states that such a structure makes it “easy to align or coincide an optical axis of the microlens 3-2 to that of a light emitting element” (column 7, lines 36-38). Finally, Shimada also describes how “the undesired astigmation of a semiconductor laser 1 is removed by designing properly the convex curve of the output plane 32 and the refractive index distribution” (column 7, lines 42-46). As such, it should be clear to one having ordinary skill the multitude of ways in which incorporating the GRIN lens of Shimada would enhancing coupling of the light beam.
On page 7, Applicant also states that the “proposed juice” of improved coupling may not be “worth the squeeze”. Applicant further states that adding a GRIN lens to Xie “potentially degrades the isolator’s effectiveness”. However, Applicant has provided no evidence to support this assertion beyond mere speculation. The modification simply uses the GRIN lens of Shimada in place of the lens 142 which is already present in Xie. Since Xie already uses a lens, but doesn’t limit the type, using the GRIN lens of Shimada with all of the benefits described above, would not introduce any additional complexity. In other words, a skilled artisan would not have to “squeeze” very much.
Applicant finally states that the modification is “unnecessary” because the components of Xie provide “adequate performance”. However, the GRIN lens of Shimada provides many advantages over a standard lens as described above. As stated in MPEP 2144, the strongest rationale for combining references is a recognition, expressly or impliedly in the prior art or drawn from a convincing line of reasoning based on established scientific principles or legal precedent, that some advantage or expected beneficial result would have been produced by their combination. In re Sernaker, 702 F.2d 989, 994-95, 217 USPQ 1, 5-6 (Fed. Cir. 1983). Naturally all inventions would have at least “adequate” performance. However, the desire to enhance commercial opportunities by improving a product is universal. In this instance, the additional benefits provided by Shimada’s GRIN lens have been clearly established. Replacing one type of lens with another type of lens is well within the means of one of ordinary skill in the art. Finally, Applicant has provided no evidence of teaching away from the modification.
For the reasons above, the prima facie rejection is maintained.
Conclusion
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 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRIS H CHU whose telephone number is (571)272-8655. The examiner can normally be reached on Mon-Fri 9AM-5PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Uyen-Chau Le can be reached on 571-272-239797. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Any inquiry of a general or clerical nature should be directed to the Technology Center 2800 receptionist at telephone number (571) 272-1562.
Chris H. Chu
/CHRIS H CHU/Primary Examiner, Art Unit 2874 September 23, 2025