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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on January 15, 2026 has been entered.
Claims 1-19 remain pending. Applicant amended claims 7, 13 and 16 to obviate the objections and the 35 U.S.C. 112(b) rejection set forth in the previous Office action. Applicant also made editorial changes to page 3 of the specification to obviate an objection.
Response to Arguments
Applicant's arguments directed to the patentability of the claims have been fully considered but they are not persuasive.
Applicant argues that the claims are patentable over the combination of Maleki and Ilchenko because Ilchenko does not disclose a WGM resonator having a Bragg grating over at least a portion of the resonator’s perimeter as required by claim 1. Remarks 8. The basis of the argument is that Ilchenko teaches gratings in waveguides used to couple light into and out of a WGM resonator, and not gratings on the WGM resonator itself. Id. The argument is not persuasive because the basis of the argument is not commensurate with the scope of the claim. Contrary to the implication of Applicant’s argument, claim 1 does not convey that the Bragg grating is on the resonator. Rather, the claim recites that the Bragg grating is “arranged over…a perimeter of the resonator”, and the broadest reasonable interpretation of the limitation does not require the grating to actually touch the resonator (i.e. a grating situated inside the tip of waveguide 210A in Maleki can be deemed to be “arranged over a boundary of the resonator”).
Applicant also argues that the modification proposed by the rejection would change the structure and mode behavior of Maleki’s resonator, contrary to the principle operation emphasized by Ilchenko. Remarks 10. According to Applicant, Ilchenko teaches shaping/matching the waveguide grating to the evanescent field, not relocating the grating onto the resonator. Id. The argument is not persuasive/moot in light of the response above. As discussed above, the language of claim 1 does not require the grating to be on the resonator, and naturally the rejection is not suggesting relocating the grating onto the resonator. The suggested modification maintains the grating in the waveguide for the purpose identified by Applicant (i.e. shaping/matching the waveguide grating to the evanescent field). Thus, contrary to Applicant’s argument, the suggested modification does not undermine the principle of operation emphasized by Ilchenko.
For the foregoing reasons, Applicant’s arguments that the claims are patentable over the combination of Maleki and Ilchenko are not persuasive, and the outstanding rejection of claim 1 and most of the dependent claim rejections are maintained.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. he broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f):
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f). The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f). The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) because the claim limitations use generic placeholders that are coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholders are not preceded by a structural modifier.
Such claim limitations are: “coupling mechanism” in claim 10.
Because these claim limitations are being interpreted under 35 U.S.C. 112(f) they are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If Applicant does not intend to have these limitations interpreted under 35 U.S.C. 112(f), Applicant may:
(1) amend the claim limitations to avoid them being interpreted under 35 U.S.C. 112(f) (e.g., by reciting sufficient structure to perform the claimed function); or
(2) present a sufficient showing that the claim limitations recite sufficient structure to perform the claimed function so as to avoid them being interpreted under 35 U.S.C. 112(f).
Claim Objections
Claim 16 is objected to because of the following informalities:
The limitation “the polymer” should be changed to “the at least one polymer”.
Appropriate correction is required.
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 1-11, 14, 15, 17 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Maleki et al. (“Maleki”) (US 2002/0097401) in view of Ilchenko (US 2005/0147355).
Regarding claim 1, Maleki (Paragraph 6) teaches a sensor comprising a whispering gallery mode (WGM) resonator. The optical sensor based on a WGM microresonator (Paragraph 45) can be designed to respond to specific analytes by adding a surface coating on the exterior surface of the resonator that binds to a specific analyte (is selectively functionalized for the attachment of analyte receptors). The WGM resonator can be coupled to a fiber or waveguide (Paragraphs 31-32 and Figures 3). This fiber or waveguide is arranged over at least a portion of the perimeter of the resonator.
Maleki does not explicitly state that the fiber or waveguide is a Bragg grating.
Ilchenko (Paragraph 5) teaches waveguide gratings that couple light out of a WGM resonator. The waveguide or fiber can be a Bragg grating with a design where the grating profile may be shaped to match the non-rectangular shape of the evanescent field outside of the WGR to improve the coupling efficiency under a mode-matched or quasi-mode-matched condition. Since the cross sectional spatial profile of an evanescent field of a WG mode outside a WGM resonator is essentially elliptical, the grooves of the grating can be fabricated in such a way so as to form elliptical interaction area. This grating design can minimize optical reflection back to the waveguide and provides improved matching of the coupler to the elliptical overlap area of resonator WG modes' evanescent field with the plane of the coupler (Paragraph 35).
In light of the disclosure of Ilchenko, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used a specifically designed Bragg grating waveguide or fiber as the fiber or waveguide of Maleki, in order to minimize optical reflection back to the waveguide and provide improved matching of the coupler to the elliptical overlap area of resonator WG modes' evanescent field.
Regarding claims 2 and 4, Maleki (Paragraph 45) teaches that the functionalization can also be formed on the surface of the optical coupler. Moreover, because the grating is arranged over at least a portion of the resonator, the grating comprising analyte receptors (functionalization) would be arranged over a surface of the resonator.
Regarding claim 3, the gratings can be fabricated on a substrate (Paragraph 19, Ilchenko). The WGM and the substrate may be formed from different materials (Paragraph 27, Ilchenko).
Regarding claim 5, the resonator (Paragraph 17, Maleki) can be formed from silica (SiO2).
Regarding claim 6, the gratings can be fabricated on a substrate (Paragraph 19, Ilchenko). The substrate (grating) can be formed from the same material as the WGM resonator (Paragraph 27, Ilchenko), and the WGM resonator (Paragraph 17, Maleki) can be formed from silica (SiO2), meaning the grating can be formed from silica.
Regarding claim 7, the claimed operating wavelength is unspecified. It can presumably correspond to any value, including a value that is twice the period of the grating of the modified Maleki sensor. Consequently, said grating is deemed to anticipate the subject matter of the claim.
Regarding claims 8 and 17, Maleki does not explicitly disclose that the resonator material is doped with a material providing laser gain.
Ilchenko (Paragraph 53) teaches using an electro-optic WGM resonator 1710 as both the modulator and the laser cavity. The WGM resonator 1710 produces both an electro-optic effect for active mode locking and an optical gain under proper optical pumping. In one implementation, the material for the WGM resonator may be an electro-optic material doped with active ions, such as Er-doped LiNbO3 crystals, to produce a desired laser gain.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used a WGM resonator doped with active ions such as erbium doped lithium niobate, in order to produce a desired laser gain and to allow the WGM resonator to function as both the modulator and a laser cavity.
Regarding claim 9, the sensor can have just the optical coupler functionalized (Paragraph 45, Maleki). This would mean the sensor is functionalized over only a part of the perimeter of the resonator.
Regarding claim 10, the resonator can be a disk (Paragraph 16, Maleki). The sensor also comprises a coupling mechanism in the form of a waveguide that houses the grating (Figure 2, Maleki).
Regarding claim 11, Ilchenko (Paragraph 41 and Figures 11 and 12) teaches that the resonators can be part of a closed loop configuration with a plurality of sections.
Regarding claim 14, the sensor (Figure 2, Maleki ) is part of a sensing system including an optical detection module configured to receive signals from the sensor and a signal processing module for transducing the signal. While Maleki does not explicitly disclose a readout unit is configured to receive the sensor, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided the system with a housing that receives the individual components/modules of the system, such that the readout unit houses the sensor, the optical detection module and the signal processing module. The modification would provide protection and facilitate handling.
Regarding claim 15, the system further includes a laser to optically pump the system (Paragraph 54, Ilchenko and Paragraph 30, Maleki) , a photodetector (Optical detection module, Figure 2, Maleki) and processing electronics (Processing module that can include a microprocessor, Paragraph 31 and Figure 2, Maleki).
Regarding claim 18, the sensor can have just the optical coupler functionalized (Paragraph 45, Maleki). This would mean the sensor is functionalized over only a part of the perimeter of the resonator. The grating (optical coupler) can be shaped to match the evanescent field (Paragraph 35). The exact portion of the perimeter covered would be a matter of routine experimentation to provide a desired degree of matching between the coupler and the WGR evanescent field, meaning it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have functionalized the sensor as recited in the claim.
Claims 12 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Maleki in view of Ilchenko as applied to claims 1-11, 14, 15, 17 and 18 above, and further in view of Yun (US 2019/0296521).
Regarding claims 12 and 19, Maleki in view of Ilchenko teaches a sensor that meets the limitations of claim 1. This combination further teaches that the material of the resonator can be doped with a material providing laser gain as in claim 8.
Maleki in view of Ilchenko does not teach that the resonator is fabricated in rare-earth doped aluminum oxide.
Yun (Paragraph 3) teaches forming optically excitable laser particles. These particles can be WGM resonators (Paragraphs 31, 200 and 232, Yun). The particles can be formed from oxide crystals of aluminum oxide or silica doped with rare-earth dopants (Paragraph 114, Yun).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have formed the resonators from rare-earth doped aluminum oxide, instead of silica, since Yun discloses either as suitable materials for forming WGM resonators. As set forth in MPEP 2144.07, the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. Given that the rare-earth ions of Yun (Paragraph 53) include several of those used in the instant application and claimed in claim 19, the ions would provide emission outside absorption bands of water in the same manner as in the instant case.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Maleki in view of Ilchenko as applied to claims 1-11, 14, 15, 17 and 18 above, and further in view of Phan Huy et al. (“Phan”) (US 2010/0290062 A1).
With respect to claim 16, while Maleki discloses that the waveguide can be made from silica, (see [0017]), neither Maleki nor Ilchenko disclose a grating made from PMMA. However, Phan discloses that it is well-known in the art to form waveguides (e.g. optical fibers) in which Bragg gratings are formed from silica or PMMA (see [0036]). In light of the disclosure of Phan disclosing that silica and PMMA are equivalents as a material for forming waveguides, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have formed the waveguide, and hence the grating, from PMMA. The modification constitutes substitution of one element for an equivalent, which is considered obvious.
Allowable Subject Matter
Claim 13 is objected to as being dependent upon a rejected base claim, but it would be allowable if it is rewritten in independent form including all of the limitations of the base claim and any intervening claims.
As stated above, Maleki in view of Ilchenko reaches a sensor as claimed in claim 1. Maleki (Paragraph 35 and Figures 5) teaches that the resonator can be in a sample chamber. Maleki (Paragraph 48) further teaches that multiple WGM micro cavities may be used to from a detector array. However, the teachings of Paragraph 48 do not specify the form of the array or that the resonators of the array are in chambers that are in fluid communication wherein openings in the chambers have different sizes.
It is noted that if the limitations of claim 13 are imported into claim 1, the dependent claims should be amended to recite a plurality of the resonators (plural) rather than the single resonator of some of the dependent claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PAUL S HYUN whose telephone number is (571)272-8559. The examiner can normally be reached M-F 8:30-5:00.
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/PAUL S HYUN/Primary Examiner, Art Unit 1796