DETAILED ACTION
This office action is in response to the election filed on July 29, 2025. Claims 1-23 remain pending (claims 6, 7, and 9-17 are withdrawn from consideration as being related to non-elected Groups).
Claims 1-5, 8, and 18-23 are examined herein in a 1st office action on the merits, with claim 1 as the sole examined independent claim.
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 1-5, 8, and 18-23, in the reply filed on July 29, 2025 is acknowledged. Claims 6, 7, and 9-17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected Groups, there being no allowable generic or linking claim.
Information Disclosure Statement
The prior art documents submitted by Applicant in the Information Disclosure Statements filed on September 9, 2025, June 18, 2025, and November 28, 2022, have been considered and made of record (note attached copy of forms PTO-1449).
Claim Objections
Claims 1-5, 8, and 18-23 are objected to because of the following informalities: noting all pending claims, the Examiner respectfully notes that many minor typos, informalities, and other language inconsistent with usage at the US PTO being found in the claims. Applicant’s care is respectfully requested to carefully and thoroughly review the elected claim set, being claims 1-5, 8, and 18-23.
For example, at least the following informalities are noted: (1) Reference numbers should be removed from the claims (all elected claims include reference number in parenthesis () ); (2) The claims should begin with “A photodetector” or “A modulator” or “A semiconductor apparatus” instead of “Photodetector” or “Modulator” or “Semiconductor apparatus”; (3) In claim 1, the term “comprises or is formed by” appears redundant and awkward; (4) Dependent claims 2-5, 8, and 18-23 should being with “The photodetector of claim x”; (5) The feature “Photodetector or modulator of claim 1” or “Semiconductor apparatus” should be corrected, as claims 18-23 are listed to depend directly from “claim 1”; (6) Terms such as “preferably”, “in particular”, or identifiers of both “comprising” and “consisting” should be avoided, noting at least independent claim 1, but also many dependent claims include these optional terms; (7) Dependent claims 18-23 should be reviewed as it is unclear which claim(s) they depend (and use “preferably”). Appropriate correction is required.
Accordingly, Applicant’s cooperation is requested to carefully review and amend features into US Patent Office conformance.
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 1-5, 8, and 18-23 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. Claim 1 is the sole independent claim, and is rejected herein. Claims 2-5, 8, and 18-23 are rejected at least as being dependent upon rejected claim 1, but are also rejected for further reasons to follow.
Regarding independent claims 1, 8, 18-20, and 22, a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 1 recites the broad recitation “being spaced apart from one another” / “at least in sections with a gate electrode” / “are in contact, on at least one side”, and the claim also then recites “preferably in the transverse direction” / “preferably comprising silicon” / “in particular on the side facing” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Noting claim 8, the term “in particular” is twice used to further make the claim indefinite for the same reasons. Noting claim 18, the term “preferably” is used four times to further make the claim indefinite for the same reasons. Noting claim 19, the term “in particular” is used four times to further make the claim indefinite for the same reasons. Noting claim 20, the term “preferably” is used twice to further make the claim indefinite for the same reasons. Noting claim 22, the term “preferably” is used twice to further make the claim indefinite for the same reasons.
Claims 1 and 4 lacks proper antecedent basis because “a gate electrode” is then followed by two reference numbers “(15a, 15b)” to follow. In claim 4, the term “each of the two gate electrodes.” Therefore, it is unclear which gate electrode is being referred because only one gate electrode (“a”) is claimed. Also “Two” gate electrodes is never claimed prior art claim 4. Therefore, and based on the reference numbers in the parentheses, claim 1 lacks proper antecedent basis and is found indefinite under the meaning of 35 U.S.C. 112(b).
Further regarding claims 1, 3, and 19, the phrased terms “comprises or consists” / “comprising silicon or consisting of silicon” is confusing and such terminology is rarely if ever used in patent claims, together. Applicant should pick one of “comprising” OR “consisting” for clear claiming.
Further regarding claims 20-23, the term “the modulator (22)” is not found in claim 1 and thus these claims lack proper antecedent basis and are rejected as being indefinite under 35 U.S.C. 112(b).
Based on the multiple indefinite issues, claim 1 as a whole is found indefinite in scope. The Examiner will make a prima facie effort to identify the closest prior art of record for claim 1 and the pending dependent claims 2-5, 8, and 18-23. However, Applicant’s cooperation is requested to substantially amend claim 1 in response to this office action.
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.
Claims 1-5, 8, and 18-23 are rejected under 35 U.S.C. 103 as being unpatentable over Suzuki et al. US 2016/0380121 A1, and further in view of Niu et al. CN 101179104 A.
Regarding independent claim 1, Suzuki et al. US 2016/0380121 A1 teaches (ABS; Figs.1-20; all text, in particular paragraphs [0046] – [0054]; Claims) a photodetector (Fig. 1, 6a) comprising a longitudinal section of a waveguide,, which comprises or is formed by two waveguide segments (61 / 62) extending in the longitudinal direction and at least substantially parallel to one another, the waveguide segments being spaced apart from one another (via a slot or negative space between) preferably in the transverse direction forming a gap 71 extending therebetween, and an active element (control and functionality applies electrically), which overlaps the longitudinal section of the waveguide and comprises or consists of at least one material which absorbs electromagnetic radiation of at least one wavelength and, as a result of the absorption, generates an electrical photosignal, wherein the two waveguide segments respectively are in contact, on at least one side,
Regarding claim 1, the very close prior art of Suzuki US ‘121 does not expressly and exactly teach the silicon features of the “a gate electrode” or the location facing such active element on one side.
However, such features are obvious design choices for integrating the gate electrode(s), for locations and spacings. One having ordinary skill in the art would have recognized the placement, location, and materials chosen for the gate electrodes to provide control features for the photodetector (based on two separate waveguide cores) as in Suzuki. The key to Applicant’s invention (“gist”) appears to be the relation of the gap / recess / slot in between two adjacent optical waveguide cores.
Additionally, the prior art of Niu et al. CN 101179104 A teaches (ABS; Figs. 1-3; pages 1-3; Claims) similar features for the silicon formations and locations of the gate electrodes, in light emitting and detecting devices, so that the control gates at the electrodes can be used in advantageous manners. Note in particular features from the Chinese First Office Action regarding CN ‘104 and how the gates can be located with the waveguides in control aspects, and being formed using at least silicon.
Further, the Examiner fully incorporates, and agrees with, the logic and rationale found in the Written Opinion of the INTL Searching Authority for PCT/EP2021/054457 and the Chinese First Office Action for ‘523. Current pending claims 1-5, 8, and 18-23 are substantially similar to those claims in both the PCT and China document. Therefore, all such rejections are fully incorporated herein for any dependent claim 2-5, 8, and 18-23. The prior art of Suzuki US ‘121 and further in view of Niu CN ‘104 makes obvious all such limitations as presented.
Since Suzuki and Niu are both from the same field of endeavor, the purpose disclosed by Niu would have been recognized in the pertinent art of Suzuki.
A person having ordinary skill in the art at a time before the effective filing date of the current application would have recognized the teaching of Niu, to use the gate electrodes to be located, spaced, and facing such features of the waveguide core(s) in formation, as well as being “comprising or consisting” of silicon, into the base design of the photo-detector device of Suzuki, to allow for improved electrical control and improved modulation based on locations and compositions of the gate electrode(s), for increasing photodetection properties and function. Further, it would have required no undue burden or unnecessary experimentation to arrive at such features of the “gate electrode(s)”, as taught in Niu. See KSR v. Teleflex, 127 S.Ct. 1727 (2007). For these reasons, independent claim 1 is found obvious over Suzuki and further in view of Niu.
Regarding further dependent claims 2-5, 8, and 18-23, all such claims are found obvious for the same reason(s) as enumerated in the Chinese First Office Action and/or the Written Opinion of the INTL Searching Authority for PCT/EP2021/05445. Current pending claims 2-5, 8, and 18-23 are substantially similar to those claims in both the PCT and China document. Therefore, all structure found in claims 2-5, 8, and 18-23 would have been obvious over Suzuki / Niu based on the tenets of obviousness found in KSR v. Teleflex, 127 S.Ct. 1727 (2007).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: PTO-892 form references A, B, N, and U, which pertain to the state of the art of photodetectors than employ optical waveguide cores with a slot/recess/gap therebetween, with electrical control for the modulation function.
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/DANIEL PETKOVSEK/Primary Examiner, Art Unit 2874 October 30, 2025
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