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
Specification
The amendment filed on 01/16/2026 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: Page 13 lines 9-10 refer to units of measure “nm”, however the dimensions described are measured in micrometers not in nanometers. There is no support in the specification for these dimensions to be 1000 times smaller compared to other measurements of the device and it would not be physically possible to manufacture such a device with current technology.
Applicant is required to cancel the new matter in the reply to this Office Action.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 2, 4, 6-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-5, 7, 8, 10 of copending Application No. 17/763,554 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because a laser structure that uses two Bragg gratings to create a laser resonator is well known in the art as evidenced by Fig 1 of AAPA. Also, Bragg gratings inherently have a period for corrugations.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 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.
Claims 1, 2, 4, 6-12 are rejected under 35 U.S.C. 103 as being unpatentable over Applicant’s Admitted Prior Art (Figs 1 and 3 of applicant’s disclosure identified as known art), hereinafter AAPA, and further in view of Chang-Hasnain et al. (2007/0115553) found in IDS, hereinafter ‘553 and Fuchs et al. (2015/0109672) hereinafter ‘672.
Regarding claim 1, Figs 1B, 3B of AAPA disclose an optical system, comprising:
1. “a waveguide [10] based on a first material [Si] having a first refractive index n1 [high index material n=3.48], said waveguide extending in a first direction x [horizontal] and being configured to guide a propagation of a light radiation of wavelength λ in said first direction x,
a first Bragg mirror [11] formed from a first part [110] of said waveguide, said first Bragg mirror further comprising
corrugations at a face [top] of said first waveguide part [110], said corrugations extending in a second direction y [perpendicular horizontal] normal to the first direction x and having a height h3 [t] in a third direction z [vertical] normal to the first and second directions (see Fig 3B),
the corrugations being based on a third material [Si] having a third refractive index n3 [high index material n=3.48],
a second Bragg mirror [12] comprising a second part [120] of the waveguide,
an optical cavity [130] located between the first and second Bragg mirrors [11, 12] and comprising a third part of the waveguide, and an amplifying medium [20] based on a fourth material [InP], at said third part of the waveguide [130].”
AAPA discloses an optical system as described above, but does not disclose a separation layer made of a silicon oxide low index second material between the corrugations and the waveguide in the first Bragg mirror.
However, such Bragg mirror design is well known in the art as evidenced by Fig 1 of ‘553, which discloses a high contrast, highly reflective grating mirror 10 for laser light. The mirror consisting of Si substrate 12 (high index first material), SiO2 spacer 14 (low index second material) and corrugations 16 (high index third material). The refractive index value for Si is n=3.48 and for SiO2 it is n=1.47. Such grating design is known to have high efficiency, high Q-resonance and high reflectivity, as well as being highly optimizable by varying the dimensions of the spacer and the corrugations and by varying the refractive index difference between the layers of the grating.
It would have been obvious to one of ordinary skill in the art to incorporate the teachings of ‘553 into the device of ‘AAPA by using a low index silicon oxide spacer under the corrugations of the grating, since the combination would yield the predictable result of achieving better control over the output parameters of the laser beam by using a high efficiency, highly optimizable grating.
Thus, the claimed invention would have been obvious before the effective filing date of the claimed invention because “all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art. KSR, 550 U.S. at 416, 82 USPQ2d at 1395.
Combination of AAPA and ‘553 discloses:
1. “the corrugations [16 of ‘553] of said first Bragg mirror [10 of ‘553,11] being separated from the face [top face] of the first waveguide part [12 of ‘553, 110] by being formed directly on a separation layer [14] that is based on a second material being silicon oxide [SiO2] and having a thickness e2 in the third direction z [vertical] and having a second refractive index n2 [n=1.47], the corrugations being based on a third material [Si] having a third refractive index n3 [n=3.48], such that n2<n3 [1.47<3.48], n2<n1 [1.47<3.48].”
Combination of AAPA and ‘553 discloses an optical system as described above, but does not disclose:
1. “the height h3 of the corrugations is between 20 nm and 50 nm”
However, paragraph 0019 of AAPA discloses the height of the corrugations t to be 10 nm. In addition, ‘553 discloses that the thickness of the corrugations is a design parameter that influences the reflectivity of the grating (paragraphs 0043-44).
It would have been obvious to one of ordinary skill in the art at the time the invention was made to increase the height of the corrugations from 10 nm to 20-50 nm, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or working ranges of a result effective variable involves only routine skill in the art. In re Aller, 105 USPQ 233.
Combination of AAPA and ‘553 discloses an optical system as described above, but does not disclose:
1. “n3-n2≤0.5.”
However, paragraph 0016 ‘553 discloses that the difference between the refractive indices is a result effective variable that determines the bandwidth and the modulation depth of the grating. Furthermore, paragraphs 0031 and 0032 of ‘672 disclose setting the difference between refractive indices of the grating to be greater than 0.4 in order to obtain high reflection grating. The reference discloses low index material to be silicon oxide and high index material to be tantalum oxide or the like.
It would have been obvious to one of ordinary skill in the art at the time the invention was made incorporate the teaching of ‘672 and choose the material of the corrugations such that the difference between refractive indices n3-n2 is 0.5, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or working ranges or the optimum value for a result effective variable involves only routine skill in the art. In re Aller, 105 USPQ 233, In re Boesch, 617 F.2d 272,205 USPQ 215(CCPA 1980).
Regarding claims 7-12, combination of AAPA, ‘553 and ‘672 further discloses:
7. “wherein the first refractive index n1 is greater than or equal to 3 [3.48 > 3] and the second refractive index n2 is less than or equal to 2 [1.47 < 2].”
8. “wherein the first material is silicon, and
the third material is one of a silicon nitride, an aluminium nitride, an aluminium oxide, and a tantalum oxide [Ta2O5].” see paragraphs 0004 of AAPA and 0032 of ‘672.
9. “wherein the optical cavity [130] has a length in the first direction x that is greater than or equal to 500 μm [1 mm].” See paragraph 0019 of AAPA
10. “wherein the second Bragg mirror [12] has a reflectivity that is greater than or equal to 99% [100%] and a spectral bandwidth δωDBR2, which is greater than or equal to 2 nm [2 nm].” See paragraph 0018 of AAPA
11. “wherein the second Bragg mirror [12] comprises second corrugations based on the first material [Si] directly in contact with at least one face [top face] of the second part [120] of the waveguide, said second corrugations having a height h2 [t] greater than or equal to 5 nm [10 nm].”
12. “forming a remote sensing laser configured to be implemented in a laser detection and ranging system.” No additional structure is disclosed that would differentiate the claimed invention from the prior art.
Regarding claim 2, combination of AAPA, ‘553 and ‘672 discloses the optical system as described above, in addition Fig 1 of AAPA appears to disclose that the corrugations of gratings 11 and 12 are encapsulated, but does not disclose the material:
2. “wherein the corrugations are encapsulated in an encapsulation layer based on the second material.”
However, the examiner takes an official notice that covering grating corrugations in an encapsulation layer made of silicon oxide is well known in the art, for at least the purpose of protecting them from the ambient environment.
It would have been obvious to one of ordinary skill in the art to modify the device of AAPA and ‘553 by encapsulating the corrugations of the Bragg mirror grating in silicon oxide, since the combination would yield the predictable result of protecting the grating from the environment.
Thus, the claimed invention would have been obvious before the effective filing date of the claimed invention because “all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art. KSR, 550 U.S. at 416, 82 USPQ2d at 1395.
Regarding claim 4, combination of AAPA, ‘553 and ‘672 discloses the optical system as described above, but does not disclose the specific thickness of the separation layer:
4. “wherein the thickness e2 of the separation layer is greater than or equal to 10 nm and less than or equal to 50 nm.”
However, ‘553 discloses that the thickness of the low index layer under the grating is a design parameter that influences the reflectivity of the grating (paragraphs 0043-44). It can be seen that the thickness of the separation layer is a result effective variable that influences the resulting output parameters of the grating.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to set the thickness of the separation layer in the range of 10-50 nm, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or working ranges or the optimum value for a result effective variable involves only routine skill in the art. In re Aller, 105 USPQ 233, In re Boesch, 617 F.2d 272,205 USPQ 215(CCPA 1980).
Regarding claim 6, combination of AAPA, ‘672 and ‘553 discloses the optical system as described above, but does not disclose:
6. “wherein the height h3 and the thickness e2 are configured so that the mirror has a spectral bandwidth δωDBR less than or equal to 0.5 nm.”
However, spectral bandwidth of the Bragg mirror is a result effective variable that determines the wavelength range and the number of modes that the mirror reflects, as evidenced by APA.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to select a desired spectral bandwidth of 0.5 nm or less, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Admitted Prior Art
The rejection of claim 6 (spectral bandwidth of the Bragg mirror) based on the well-known in the art statement is taken to be admitted prior art (hereinafter APA) because applicant either failed to traverse the examiner’s assertion of official notice or that the traverse was inadequate, see MPEP 2144.03.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1 filed on 01/16/26 have been considered but are moot because of the new ground of rejection.
Pertinent Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Applicant’s attention is drawn to the references cited on form PTO-892 in the previous office action which lists other references with similar features as the invention.
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 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.
Contact Info
Any inquiry concerning this communication or earlier communications from the examiner should be directed to M. A. GOLUB-MILLER whose telephone number is (571)272-8602. The examiner can normally be reached on M-F 9-5.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, MinSun Harvey can be reached on (571) 272-1835. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/M. A. Golub-Miller/Primary Examiner, Art Unit 2828