DETAILED ACTION
This office action is in response to amendment filed on December 1, 2025. In accordance with this amendment, claims 1, 7, 21, 22, and 28-30 have been amended.
Claims 1-10 and 21-30 remain pending and are finally rejected herein, with claims 1, 22, and 28 in independent 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 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
It is again noted that Applicant has not filed an Information Disclosure Statement. If Applicant becomes aware of any prior art that may be pertinent to the examination and analysis of the claimed subject matter, a PTO-1449 form should be filed.
Claim Interpretation
The following are a few Examiner’s comments regarding the presented claims 1-10 and 21-30 as dated on December 1, 2025.
Regarding dependent claims 5, 25, 27, and 29, the Examiner respectfully notes that one having ordinary skill in the art at the time of the effective filing date would know, with clarity, what the term “have substantially equal widths (lengths; thicknesses)” means in the context of the current application. Therefore, no 35 U.S.C. 112(b) rejections are presented herein for vagueness / indefiniteness for the term “substantially” to define width / length / thickness, even though such feature is a frame-of-reference.
Additionally, the Examiner would like to point out, respectfully, that some terms as claimed by at least independent claims 1, 22, and 28 remain very broad in a broadest reasonable interpretation (BRI) required by the Examiner to consider and interpret “Prior Art.” The Examiner appreciates the amendments (dated on December 1, 2025) to add claim context for terms such as “width” and “direction” in the claim. However, for further examples, the following terms may be reviewed:
-“Edge Coupling Member” – An edge coupling “member” could be a cladding or a substrate, or any part of an edge coupler. Note again claim 28, which only requires one of the 1st or the 2nd edge coupling members to have a convex or concave shape.
-“A portion in a convex shape” – Respectfully, any curved surface (even ones infinitesimally small) meets a “portion” in a “convex shape”. A convex shape merely requires any curvature, or any curving formation. Therefore, and unless there are frames of reference added to claims 1, 22, and 28, any waveguide of an edge coupler with any curving shape meets “convex shape” in a BRI (note there is not even any reference for which side (of a hypothetical circle) which the curving occurs).
-“A portion in a concave shape” – Again, respectfully, any curved surface (even ones infinitesimally small) meets a “portion” in a “concave shape”. A concave shape merely requires any curvature, or any curving formation. Therefore, and unless there are frames of reference added to claims 1, 22, and 28, any waveguide of an edge coupler with any curving shape meets “concave shape” in a BRI (note there is not even any reference for which side (of a hypothetical circle) which the curving occurs).
At this point of prosecution, the overall combination of features, as arranged, and as a whole, found in Figs. 2A-2B again appears to be novel over the prior art. For example, the features with a first 202 and second 204 tapering (entirely increasing) waveguide layers, and in which those layers continuously increase (away from the edge coupler end), and in which the lower layer includes “convexly shaped” waveguide (curves outward from the center point of optical signal propagation; curvature at 202S1, also Fig. 3A element 306) and in which the upper layer includes a different “concavely shaped” waveguide (curved inward toward the center point of optical signal propagation; curvature at 204S1, also Fig. 3A element 302), as a whole appear to be novel. However, the large number of missing frames-of-reference from such features make examination difficult at this point of prosecution. Applicant’s cooperation is respectfully requested to amend substantial structural features, with the corresponding frames-of-reference, into claims 1, 22, and 28 in order to properly outline Figs. 2A-2B in view of the opposing convex and concave shapes of Fig. 3A.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-10 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. In particular, and based on the amended features into independent claim 1, Applicant’s claims are now not sufficiently enabled by the original specification and drawings. In particular, as the features of claim 1 have evolved, Applicant now presents a combination of features that are not supported by the specification. This is a new matter rejection. Notably, the phrase “wherein the width is kept unchanged or progressively increased from a first end configured to receive the light…” is now improper. The overall combination of features, as arranged, and now requiring both that one of the first and second edge coupling members comprises a concave shape and the other comprises a convex shape, does not support an example embodiment in which the width is “kept unchanged.” Conversely, in this configuration (see Figs. 2A, 3A, 4A), the width must either increase (or progressively increase) along the length away from the input light. The width cannot stay constant based on the overall features required in the claim. Therefore, this independent claim 1 is rejected under 35 U.S.C. 112(a) for failing to comply with the written description requirement. Claims 2-10 and 21 are also rejected at least as being dependent upon claim 1.
In response to this rejection, Applicant should remove the feature “the width is kept unchanged” from the claim. For example, the claim could be re-drafted as “wherein the width [[progressively increases from a first end configured to receive the light…”, or make clearly that only smaller sub-sections of the width are kept unchanged. The claim currently reads as if the entire width is kept unchanged along the length thereof.
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 1-10 and 21-30 are rejected under 35 U.S.C. 103 as being unpatentable over Bian U.S. Patent No. 11,366,269 B2, and further in view of Bian U.S. Patent No. 11,808,995 B2 / Bian et al. US 2023/0187566 A1 (for the convex and concave (curved) shapes of the edge coupling members).
Regarding independent method claims 1, 22, and 28, Bian U.S. Patent No. 11,366,269 B2 teaches (ABS; Figs. 1-7; corresponding text, in particular columns 2-6; Claims, see claim 14) a method (structure of Bian shown by many Figs., note Bian’s claim 14 for the inherently method), comprising: receiving a substrate 36 / 34; and forming an edge coupler (different edge coupler embodiments shown as in Figs. 1-7) on the substrate, the edge coupler configured to receive light (from 20 at the edge of the chip), and the forming comprising: depositing a first edge coupling member (at 26 / 32), extending in a first direction (to the right in Bian ‘269 Figs. 1-7) in which the light propagates and allowing the light to pass through, in a first layer over the substrate (Bian claim 14, noted first layer above 34); and depositing a second edge coupling member (28 / 22), extending in the same first direction and allowed the light to pass through, in a second layer over the first layer (note the two layers are discussed in Bian claim 14 and implied in the structure; there is no clear claim language that the depositing steps are different / sequential; even if these steps were claimed as different / sequential, such features may be implied by Bian ‘269); wherein each of the first and second edge coupling members has a width measured in a second direction (see widths shown flat in Figs. 1, 3, 5, 7) perpendicular to the first direction, wherein the width is either (kept unchanged; note the 35 U.S.C. 112(a) rejection above) or progressively increased from a first end configured to receive the light to a second end opposite the first end of each of the first and second edge coupling members (see Figs. 1, 3, 5, 7, etc. of Bian ‘269; the two edge coupling members both progressively increase to the right).
Regarding independent claims 1, 22, and 28, Bian ‘269 does not expressly and exactly teach that one of the first / second edge coupling members comprises a concave shape and the other comprises a convex shape (claims 1 and 22; note that claim 22 is broader than claim 1 because the edge couplers are not required to progressively increase away from the input / edge); or does not teach that only one of the edge coupling member being either a concave or convex shape (claim 28). Noting method claim 28, Bian ‘269 teaches that the second layer 28 / 22 is less than or substantially equal to the lower (first) layer 26 / 32.
However, using concave and/or convex shapes is known in the optical integrated circuit art, and in particular with edge couplers to include waveguide cores. Those waveguide cores are known to include tapering shapes, which, based on the curvature thereof, create both “convex shapes” and “concave shapes.” Notably, both Bian U.S. Patent No. 11,808,995 B2 (see Figs. 1, 3, 5, 8-10), with concave and convex shapes shown throughout those example embodiment drawings; and Bian et al. US 2023/0187566 A1 teach an inherent method for forming an edge coupler (ABS; Figs. 5, 7, 8; corresponding text; Claims) which includes two layers of optical waveguides 35 / 22 on a substrate, such waveguides each having curved surfaces, and further that the curve and/or tapering waveguide are non-decreasing from the edge of the substrate which couples to an edge coupler formation. Note that the waveguides increase (to the right in the Figs.), and any curved surface, such as those shown in Bian ‘566, are both convex and concave (one side can be picked for concave, the other for convex, etc.).
Subsequently, concave and convex shapes are known through the prior art such as Bian ‘995 and Bian ‘566 to improve the coupling of the optical input signals to the chip (through an edge) by strategically and operationally coupling the signals into main part of the chip. One having ordinary skill in the art at the time of the effective filing date would have recognized using both concave and/or convex shapes to improve coupling, and to design the tapering for optimized input features.
Since Bian ‘269 and Bian ‘995 / Bian ‘566 are all from the same field of endeavor, the purpose disclosed by Bian ‘995 / Bian ‘566 would have been recognized in the pertinent art of Bian ‘269.
A person having ordinary skill in the art at a time before the effective filing date of the current application would have recognized the teachings of Bian ‘995 / Bian ‘566, to use tapering shapes such as one waveguide / core having a convex shape, while the second waveguide / core having a concave shape (with an increasing width the right), into the base design of the method of making an edge coupler found in Bian ‘269, for the recognized improvements of the coupling by having desired and functional tapered shapes in the coupling (optimized performance). Further, it would have required no undue burden or unnecessary experimentation to arrive at such feature of the “concave shapes” and “convex shapes” into Bian ‘269. See KSR v. Teleflex, 127 S.Ct. 1727 (2007). For these reasons, independent claims 1, 22, and 28 are found obvious over Bian ‘269 and further in view of Bian ‘995 / Bian ‘566 (henceforth “COMBO1”).
Regarding further dependent claims 2-10, 21, 23-27, and 29-30, these further dependencies are either expressly presumed (implied) as in the hypothetical method steps of COMBO1’s outlined claims 1, 22, and 28 above, or would have been obvious design choices with merely common skill to an ordinarily skilled artisan. At a time before the effective filing date of the current application, it would have been an obvious matter of common skill and design choice to a person of ordinary skill in the art to use features for the optical edge coupling with two tapering waveguides, because Applicant has not disclosed that using such features provides an advantage, is used for a particular purpose, or solves a stated problem. One of ordinary skill in the art, furthermore, would have expected the COMBO1 hypothetical method combination to perform equally well with such features as the waveguide formation steps because these claim terms would have been easily integrated and would have also been recognized by one with common skill in the art to improve optical signal propagation in a dual layer edge coupler (to an output or an integrated optical chip feature (PIC)). It would have required no undue burden or unnecessary experimentation to arrive at those features with an edge coupler in COMBO1’s hypothetical method combination. Further, the base structure of the independent claims 1, 22, and 28 are made obvious by the outlined reasoning and rationale in COMBO1. Therefore, it would have been an obvious matter of common skill and design choice to modify COMBO1’s hypothetical formation as in the curvature (convex and concave shapes; from Bian ‘955 and ‘566) to obtain the invention as specified in claims 2-10, 21, 23-27, and 29-30. See KSR v. Teleflex, 127 S.Ct. 1727 (2007).
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
Applicant’s cooperation is requested to amend substantial structural and or method steps to the presented method claims (at least into method independent claims 1, 22, and 28). Notably, the terms “convex” and “concave” can be labeled with more specifically tied structural features (Applicant’s Figs. 2A-2B, in view of Fig. 3A). Further, features such as the two “edge coupling member(s)” being overlapped to each other may improve the claim(s). Finally, please note that claims 1, 22, and 28 have varying degrees of scope and thus makes it difficult to outline the inventive concept in any one claim. Applicant may consider presenting one independent claim for prosecution (2nd independent claim 22 is considered as the broadest claim; independent claim 28 is the middle claim in breadth; while claim 1 is considered as the narrowest independent claim).
Note the attached PTO-892 form references A-D, some of which are used in the 35 U.S.C. 103 rejections above under obviousness. These references pertain to the state of the art of optical edge couplers that include waveguide tapering with curvature based shapes and integration of method of manufacturing design.
Applicant's amendment dated December 1, 2025 necessitated any 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.
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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/DANIEL PETKOVSEK/Primary Examiner, Art Unit 2874 March 6, 2026