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
Claims 6-11 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 03/09/2026.
Applicant's election with traverse of claims 1-5 and 12-14 in the reply filed on 03/09/2026 is acknowledged. The traversal is on the ground(s) that the species are not separate inventions, but disclosed implementations of the same core architecture using different piezoelectric modes to achieve the same result, there is no meaningful search or examination burden, and that the application contains a unifying generic disclosure. This is not found persuasive because the d33 and d31 are separate and distinct embodiments as discussed in the disclosure in ¶0031-¶0034. They require the use of different materials (i.e., monocrystalline quartz is used as a d33 material and PMNT is used as a d31 material) in order to achieve the desired d33 or d31 piezoelectric effect. A d33 material is disclosed as a material that is configured to display a piezoelectric effect along a same axis of a directed light used to obtain a controlled modulation and a d31 material is disclosed as a material that is configured such that an applied electric potential causes a piezoelectric effect along an axis perpendicular to the applied electric potential, which are each shown in Figs. 8 and 4, respectively. Although they each are variants of a common invention, the use of d33 vs. d31 would therefore result in different configurations of the piezoelectric layer, electrodes, and light path relative to each other. The d31 embodiment further requires additional features such as a d31 crystal attached to a substrate that the d33 embodiment does not require, and the d33 embodiment requires additional features such as an optically clear electrode that the d31 embodiment does not require. Both embodiments are mutually exclusive from each other. Thus both embodiments would also require different search strategies. The species have acquired a separate status in the art due to their recognized divergent subject matter and the species require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries), therefore there is a significant search burden.
The requirement is still deemed proper and is therefore made FINAL.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: 200, 300, 400, 500, 600, 700.
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the polished wafer being coated and the high-reflectivity optical coating applied to both optical surfaces, followed by an optically clear electrode must be shown or the feature(s) canceled from the claim(s). Further, there are no reference characters used to designate each element, for example a polished wafer, a front electrode, a back electrode, a high-reflectivity optical coating, a plurality of stacked piezoelectric filters, a plurality of stacked similar piezoelectric elements, a set of individual elements, etc. This is not an exhaustive list. Due to the lack of reference characters, it is unclear whether each feature is shown or not. Therefore, reference characters must be added to the drawings and mentioned in the description. No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 2-5 and 14 are rejected 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.
Regarding claim 2, the limitation “a thickness of the polished wafer is configured to form a Fabry-Perot etalon of desired free spectral range when one or more optical surfaces of the polished wafer are coated.” raises clarity issues. It is unclear how this limitation should be interpreted and it is unclear as to what the metes and bounds of the above claim limitations are and would be needed to meet the above claim limitations.
It is unclear what is meant by “when one or more optical surfaces of the polished wafer are coated” because it is unclear if it is required for the optical surfaces to be coated or not. Due to the limitations of claim 3 which does require a coating, it is assumed that the coating is required in claim 2. Further, it is unclear what is meant by “a thickness of the polished wafer is configured to form a Fabry-Perot etalon” because the polished wafer inherently has a thickness, and the thickness is not what causes the polished wafer to act like a Fabry-Perot etalon, rather it is a parameter that determines the resonance of the Fabry-Perot etalon.
For the purposes of examination, examiner assumes “, wherein
Claims 3-5 are dependent on claim 2 and therefore inherit the same issues.
Regarding claim 3, the limitation “followed by an optically clear electrode” raises clarity issues. It is unclear how this limitation should be interpreted and it is unclear as to what the metes and bounds of the above claim limitations are and would be needed to meet the above claim limitations.
It is unclear whether this is a new electrode that is optically clear or whether this refers to the front and back electrodes of claim 1, which should now be optically clear.
For the purposes of examination, the examiner assumes the optically clear electrode is the same as the front and/or back electrodes.
Claims 4-5 are dependent on claim 2 and therefore inherit the same issues.
Regarding claim 4, the limitation “the Fabry-Perot etalon comprises a selective optical filter with a central wavelength tunable by varying an electric potential across the Fabry-Perot etalon” raises clarity issues. It is unclear how this limitation should be interpreted and it is unclear as to what the metes and bounds of the above claim limitations are and would be needed to meet the above claim limitations.
It is unclear whether there is a new separate selective optical filter in addition to and included in the Fabry-Perot etalon or whether the Fabry-Perot etalon is a selective optical filter. From the disclosure it appears as though they are the same thing. Further, it is unclear what the further limitation is because “a selective optical filter with a central wavelength tunable by varying an electric potential across the Fabry-Perot etalon” is a description of the function of a Fabry-Perot etalon.
For the purposes of examination, examiner assumes “the Fabry-Perot etalon is a selective optical filter with a central wavelength tunable by varying an electric potential across the Fabry-Perot etalon.” Examiner further assumes this limitation is inherent.
Claim 5 is dependent on claim 4 and therefore inherits the same issues.
Regarding claim 14, the limitation “wherein use of a piezoelectric stack eliminates a need for secondary position sensor feedback to achieve a linear displacement accuracy.” raises clarity issues. It is unclear how this limitation (expounding on an inherent benefit and/or possible use of the invention) should be interpreted and it is unclear as to what the metes and bounds of the above claim limitations are and would be needed to meet the above claim limitations.
It has been held “when claims merely recite a description of a problem to be solved or a function or result achieved by the invention, the boundaries of the claim scope may be unclear” Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1255, 85 USPQ2d 1654, 1663 (Fed. Cir. 2008); see MPEP 2173.05(g).
For the purposes of examination, examiner assumes this limitation is inherent. The examiner respectfully suggests canceling the claim.
Applicant should clarify the claim limitations as appropriate. Care should be taken during revision of the description and of any statements of problem or advantage, not to add subject-matter which extends beyond the content of the application (specification) as originally filed.
If the language of a claim, considered as a whole in light of the specification and given its broadest reasonable interpretation, is such that a person of ordinary skill in the relevant art would read it with more than one reasonable interpretation, then a rejection of the claims under 35 U.S.C. 112, second paragraph, is appropriate. See MPEP 2173.05(a), MPEP 2143.03(I), and MPEP 2173.06.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Link et al. (US 5153771 A), hereinafter Link.
Regarding independent claim 1, Link discloses an active hyperspectral filter array comprising:
a polished wafer (12; Fig. 1; col. 3 line 63 – col. 4 line 9) comprising a d33 material1 (Fig. 1),
wherein the d33 piezoelectric material is configured to display a piezoelectric effect along a same axis of a directed light used to obtain a controlled modulation (Fig. 1; col. 5 lines 20-51; claim 1);
wherein the polished wafer (12) comprises:
a front electrode (14; Fig. 1; col. 4 lines 10-12) on a front surface of the polished wafer (12) (Fig. 1), a back electrode (14; Fig. 1; col. 4 lines 10-12) on a back surface of the polished wafer (12) (Fig. 1),
wherein the front electrode (14) and the back electrode (14) are configured such that an optical path length is variable by application of an appropriate electric field (Fig. 1; col. 5 lines 20-51; claim 1).
Regarding claim 2, Link discloses the active hyperspectral filter array of claim 1, as set forth above. Link further discloses the polished wafer (12) is a Fabry-Perot etalon (10; Fig. 1; col. 5 lines 15-23) of desired free spectral range (col. 5 lines 30-39), wherein one or more optical surfaces of the polished wafer (12) are coated (Fig. 1; col. 3 line 63 – col. 4 line 9).
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.
Claim(s) 3-5 are rejected under 35 U.S.C. 103 as being unpatentable over Link (US 5153771 A).
Regarding claim 3, Link discloses the active hyperspectral filter array of claim 2, as set forth above. Link further discloses the Fabry-Perot etalon (10) has a high-reflectivity optical coating (14; Fig. 1; col. 3 line 63 - col. 4 line 9; implicit that it must be high-reflectivity in order for the etalon to function correctly, further the reflectivity of the coating is adjustable therefore it can be made to be high-reflectivity) applied to both optical surfaces (Fig. 1; col. 3 line 63 - col. 4 line 9) that is also an optically clear electrode (14; Fig. 1; col. 3 line 63 - col. 4 line 9).
Link does not disclose the optically clear electrode is a separate element that follows the high-reflectivity optical coating. However, it has been held that constructing a formerly integral structure in various elements involves only routine skill in the art. In re Dulberg 129 USPQ 348, 349 (CCPA 1961).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention have the optically clear electrode be a separate element that follows the high-reflectivity optical coating since it has been held that constructing a formerly integral structure in various elements involves only routine skill in the art. In re Dulberg 129 USPQ 348, 349 (CCPA 1961).
Regarding claim 4, Link discloses the active hyperspectral filter array of claim 3, as set forth above. Link further discloses the Fabry-Perot etalon (10) is a selective optical filter (col. 1 lines 12-25) with a central wavelength tunable by varying an electric potential across the Fabry-Perot etalon (Fig. 1; col. 5 lines 20-51; as the optical path length varies, due to interference it would necessarily follow that the central wavelength has changed).
Regarding claim 5, Link discloses the active hyperspectral filter array of claim 4, as set forth above. Link further discloses the polished wafer comprises a Monocrystalline Quartz (y-cut quartz; col. 3 line 65 – col. 4 line 3).
Claim(s) 12 is rejected under 35 U.S.C. 103 as being unpatentable over Hsu (US 20030081319 A1) in view of Tsuruoka (US 20220115582 A1).
Regarding independent claim 12, Hsu discloses an active hyperspectral filter array comprising:
a plurality of stacked piezoelectric filters (20’; Figs. 2, 5; ¶0023, ¶0032) comprising a plurality of stacked similar piezoelectric elements (20; Figs. 2, 5; ¶0023) together (Figs. 2, 5),
wherein each stacked similar piezoelectric element (20) comprises a set of individual elements (26, 261; Figs. 2, 5; ¶0023),
wherein each layer of the plurality of stacked piezoelectric filters is made by casting a ceramic or organic slurry to form a tape (no patentable weight since this limitation is drawn to a product by process and it fails to further limit the subject matter of the claim. Citing In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985), “even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production.” See MPEP § 2113), and
wherein each stacked similar piezoelectric element (20) comprises an optically selective Fabry-Perot etalon (abstract, ¶0014).
Hsu is silent on the polarization of each piezoelectric element, specifically Hsu does not disclose the set of individual elements each with an alternating polarity stacked and field applied in a direction of polarization.
However, Tsuruoka teaches a plurality of stacked piezoelectric elements (20; Fig. 6; ¶0254) comprising a set of individual elements (20) each with an alternating polarity stacked and field applied in a direction of polarization (Fig. 6; ¶0255).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the stacked piezoelectric elements to have an alternating polarity and field applied in a direction of polarization for the purpose of ensuring there is no risk of a short circuit (¶0289 of Tsuruoka).
Claim(s) 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over Hsu (US 20030081319 A1) in view of Tsuruoka (US 20220115582 A1) and further in view of Link (US 5153771 A).
Regarding claim 13, Hsu in view of Tsuruoka discloses the active hyperspectral filter array of claim 12, as set forth above. Hsu further discloses the tape is dried and electroded (262; Fig. 2; ¶0023; this limitation is drawn to a product by process and it fails to further limit the subject matter of the claim. Citing In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985), “even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production.” See MPEP § 2113) with a thin electrode (262) (Fig. 2). Neither Hsu nor Tsuruoka disclose an optically transmissive electrode.
However, Link teaches a piezoelectric element (12; Fig. 1; col. 5 lines 20-51; claim 1) that is a Fabry-Perot etalon (10; Fig. 1; col. 5 lines 15-23), comprising a thin optically transmissive electrode (14; Fig. 1; col. 4 lines 10-12).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the Hsu in view of Tsuruoka to incorporate the electrodes being optically transparent for the purpose of allowing light to pass through the electrode to enter and exit the etalon (Fig. 1 of Link).
Regarding claim 14, Hsu in view of Tsuruoka and further in view of Link discloses the active hyperspectral filter array of claim 13, as set forth above. Hsu further discloses use of a piezoelectric stack eliminates a need for secondary position sensor feedback to achieve a linear displacement accuracy (inherent, see 112(b) rejection above).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Kubota et al. (US 20160315245 A1), Onishi (US 20060049715 A1), and Aigner et al. (US 6975183 B2) disclose piezoelectric stacks with alternating polarity. Oh et al. (WO 2010131784 A1), Ortiz et al. (US 6396083 B1), Hilgeman (US 5452121 A), and Daval et al. (US 3758194 A) disclose similar Fabry-Perot resonators using piezoelectric layers. Lewis et al. (US 6271899 B1) discloses an etalon comprising stacked liquid crystal and electrode layers and Seeser et al. (US 20020191268 A1) discloses a variable multi-cavity optical device comprising stacked piezoelectric and electrode layers. Ishida et al. (US 20210297055 A1) discloses a piezoelectric filter wherein the piezoelectric layer is made of monocrystalline quartz.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NATASHA NIGAM whose telephone number is (571)270-5423. The examiner can normally be reached Monday - Friday 8-5.
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/NATASHA NIGAM/Examiner, Art Unit 2872 March 19th, 2026
/George G. King/Primary Examiner, Art Unit 2872
1 As the instant application states in ¶0032 “a d33 piezoelectric material displays the piezoelectric effect along the same axis through which light would be directed in order to obtain controlled modulation,” and ¶0002 states Figure 8 is an example of a d33 piezoelectric effect, examiner assumes that any wafer displaying the same piezoelectric effect along the same axis through which light is directed comprises a d33 material.