DETAILED ACTION
This office action is in response to the election and amendment filed on June 5, 2025. In accordance with this amendment, claims 1-47 have been amended.
Claims 1-47 remain pending (claims 21-30 and 34-47 are withdrawn from consideration as being related to non-elected Groups). Claims 1-20 and 31-33 are examined herein in a first office action on the merits, with claims 1 and 31 in independent claim form.
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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-20 and 31-33, in the reply filed on June 5, 2025 is acknowledged. Claims 21-30 and 34-47 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected Groups, there being no allowable generic or linking claim.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Information Disclosure Statement
The prior art documents submitted by Applicant in the Information Disclosure Statements filed on September 26, 2025 and April 11, 2023, have been considered and made of record (note attached copy of forms PTO-1449).
Drawings
The corrected drawings (sixteen (16) total pages) were received on August 8, 2025. These drawings are acknowledged.
Claim Objections
Claims 1, 2, 6, 8, 19, and 31 are objected to because of the following informalities: regarding 1st independent claim 1, the term “the pixel optical waveguide” is objected to because there are recited more than one pixel optical waveguide previously (because the respective waveguides are “associated with each optical switch”). Note the 35 U.S.C. 112(b) rejection below for lack of proper antecedent basis. Regarding claim 2, the same issue exists with “the second pixel optical waveguide” feature. Regarding further dependent claims with the same features, see claims 6, 8, and 19. Regarding the 2nd independent claim 31, the preamble language “comprising a light emitting pixel” is confusing and should be reviewed. It is also unclear if the “optical chip” is the base structure, or if the “light emitting pixel” itself includes all such features in the claim body. Appropriate correction is required.
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.
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 1-20 are ejected 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 is rejected herein, while claims 2-20 are also rejected at least as being dependent upon claim 1.
Claims 1 and 2 recites the limitation "the pixel optical waveguide” and “the second pixel optical waveguide” in the claim body. There is insufficient antecedent basis for this limitation in the claim. There appear to be more than one “first/second pixel optical waveguide(s)”, because there are plural switches (“each” optical switch) to have been received switched light therefrom. Accordingly, having “the” pixel optical waveguide is vague and indefinite under the meaning of 35 U.S.C. 112(b). Regarding further dependent claims with the same features (pixel optical waveguide), see claims 6, 8, and 19. Accordingly, claims 1, 2, 6, 8, and 19 are rejected as being vague and indefinite under the meaning of 35 U.S.C. 112(b).
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 (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 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 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.
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 1-20 and 31-33 are rejected under 35 U.S.C. 103 as being unpatentable over Nicolaescu US 2019/0391243 A1.
Regarding independent claim 1, Nicolaescu US 2019/0391243 A1 teaches (ABS; Figs. 26-28, 36-46, 56B-58F, 61-63; corresponding text, in particular paragraphs [0152] – [0186], [0218] – [0231]; Claims) an optical chip (photonic circuit is a “chip” in configuration; 4200), comprising: at least one row of selectable emitting elements, which each comprise: a row feed optical waveguide 4202; a plurality of selectable optical switches 4211 (can be electrically controllable for desired switching, para [0182] – [0183]); a pixel optical waveguide 4209 associated with each switch, of the / a plurality of optical switches, the pixel optical waveguide configured to receive a switched signal into the waveguide (of 4209); and a first vertical coupler 4213 associated with the pixel optical waveguide and configured to direct the switched optical signal out of a plane of the optical chip (4200; paras [0175] – [0182]; Figs. 38A-38C, 42-44).
Regarding independent claim 1, Nicolaescu ‘243 does not expressly and exactly teach, in one singular embodiment, that the optical switches and/or first vertical coupler are “solid-state” in form.
However, using solid-state type features in integrated optics is common and known in the art. For example, even Nicolaescu teaches using solid state design for grating type couplers in later disclosure, for example features of using added ring resonators 5627 actuated by an applied voltage (Figs. 38A-38C, 42-44, 56B; paras [0175], [0218]), in order to couple / propagate the optical signals in the correct direction. Additionally, using solid-state features for both optical switches and vertical coupler would have been an obvious design choice to implement as a usable alternative (with “solid-state” function of the switch / grating coupler) because a person having ordinary skill in the art would have recognized such types of elements as interchangeable. It would have required no undue burden or unnecessary experimentation to apply those types of switches / couplers into the design of Nicolaescu. See KSR v. Teleflex, 127 S.Ct. 1727 (2007). For these reasons, independent claim 1 is found obvious over Nicolaescu ‘243, standing alone.
Further, the Examiner fully incorporates, and agrees with, the logic and rationale found in the Written Opinion from corresponding PCT/US2022/019751. Dependent claims 2-20 are rejected herein for the same reasons as enumerated by Section (2) of PCT ‘751, as all such features would have been obvious to Nicolaescu ‘243, standing alone, and under the teachings of KSR. There is no patentable structural formations or combinations found in any dependent claim 2-20.
Regarding the second dependent claim 31, similar rationale applies as in the rejections of claim 1, above, but further note the 1x2 multimode interference (MMI) splitter 4208 connected to the waveguide (at 4207), which is branched via the splitter to a desired vertical coupler feature, and then directed to a lens (as in para [0182], Figs. 42-44; lenses can both collect, collimate, detect, etc. in Nicolaescu). Similarly to claim 1, using solid-state type features in integrated optics is common and known in the art. For example, even Nicolaescu teaches using solid state design for grating type couplers in later disclosure, for example features of using added ring resonators 5627 actuated by an applied voltage (Figs. 38A-38C, 42-44, 56B; paras [0175], [0218]), in order to couple / propagate the optical signals in the correct direction. Additionally, using solid-state features for both optical switches and vertical coupler would have been an obvious design choice to implement as a usable alternative (with “solid-state” function of the switch / grating coupler) because a person having ordinary skill in the art would have recognized such types of elements as interchangeable. It would have required no undue burden or unnecessary experimentation to apply those types of switches / couplers into the design of Nicolaescu. See KSR v. Teleflex, 127 S.Ct. 1727 (2007). For these reasons, independent claim 31 is found obvious over Nicolaescu ‘243, standing alone.
Further, the Examiner fully incorporates, and agrees with, the logic and rationale found in the Written Opinion from corresponding PCT/US2022/019751. Dependent claims 32-33 are rejected herein for the same reasons as enumerated by Section (2) of PCT ‘751, as all such features would have been obvious to Nicolaescu ‘243, standing alone, and under the teachings of KSR. There is no patentable structural formations or combinations found in any dependent claim 32-33.
Inventorship
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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: PTO-892 form references A-C, which pertain to the state of the art of optical switching and steering functionality in an integrated photonic device, using switches, waveguides, vertical (grating) couplers, in order to output pixels (light signals) to the outside planes of the chip. For Zhang US ‘761, see Figs. 1A, 1B, 1C, 2, 4A-4C; for Sun US ‘201, see Figs. 3, 4, and 5; and for Renshaw US ‘784, see Figs. 1-4.
Applicant’s cooperation is respectfully requested to amend substantial structural and/or functional limitations into independent claims 1 and 31 in response to this office action, in particular noting the Written Opinion from PCT US ‘751 and the very close prior art to at least Nicolaescu ‘243.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Daniel Petkovsek whose telephone number is (571) 272-4174. The examiner can normally be reached M-F 7:30 - 6 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Uyen-Chau Le can be reached at (571) 272-2397. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DANIEL PETKOVSEK/Primary Examiner, Art Unit 2874 October 30, 2025