DETAILED ACTION
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 1-8 in the 1/7/26 version of the claims are the remaining claims that were originally presented since claims 1-8 are the only original claims properly added and entered in the application before the restriction requirement(s) Office action(s) on the merits mailed through 10/27/25. Moreover, it has been determined that claims 9-13 in the 1/7/26 version of the claims are objected to as being allowable due to the allowable subject matter in claim 9. So, since claim 9 is a linking claim, the restriction requirement among groups Ia-d in the 10/7/25 Office action is hereby withdrawn.
So, currently, at least two groups of claims are present in the 1/7/26 version of the claims:
Claims 1-13 claiming subject matter as originally filed in claims 1-8 and allowable subject matter in claims 9-13.
III. Claims 14-20, in which independent claim 14 contains limitations not originally claimed in independent claim 14, as a non-limiting example, original claim 14 at least did not contain 1st and 2nd light confining regions, and a cladding layer.
Independent claim 14 of group III is still a combination with respect to independent claim 1 of group I [MPEP § 806.05(c)].
In the instant case, the combination as claimed does not require the particulars of the subcombination as claimed because independent combination claim 14 at least does not require, as a non-limiting example, that the 1st and 2nd light confining regions {LCRs} are necessarily a part of the output waveguide [for example, the 1st and 2nd LCRs of independent combination claim 14 only necessarily require the output waveguide {WG} is between 1st and 2nd LCRs; so, in claim 14, the LCRs might not be a part of the output WG, for instance the 1st and 2nd LCRs might be at lateral edges of the PIC substrate and not even be a functional component of the output WG of claim 14; yet the 1st and 2nd LCRs at lateral edges of the PIC substrate may still confine stray light or secondary modes at least due to an air cladding at the lateral edges of the PIC].
In contrast, independent claim 1 does require 1st and 2nd LCRs are necessarily a part of the output waveguide. The subcombination(s) of independent claim(s) 1 has/have separate utility such as in structures that necessarily require(s) 1st and 2nd LCRs are necessarily a part of the output waveguide.
Moreover, it is noted that independent combination claim 14 contains at least the additional components of a “plurality of emitters”, not found in independent subcombination claim 1.
The examiner has required restriction between combination and subcombination inventions. Where applicant elects a subcombination, and claims thereto are subsequently found allowable, any claim(s) depending from or otherwise requiring all the limitations of the allowable subcombination will be examined for patentability in accordance with 37 CFR 1.104. See MPEP § 821.04(a). Applicant is advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
Since applicant has received at least an action on the merits for the originally presented invention contained in Group I, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 14-20 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
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, 7, 8 of the instant application [IA] is/are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of U.S. Patent No. 12292597 [herein, for simplicity referred to as: ‘597] with obviousness evidenced by Li (US 20080002928) and/or Childers (US 20170299850). Claim 1 of IA is substantially a broadened version of ‘597 claims 1-4 with the exception that ‘597 claim 4 teaches an “on-chip lens” but does not explicitly state a cylindrical lens having a semi-circular curve.
However, it was well-known to put a convex/rod lens at the edge of a PIC at least as evidenced by Li (e.g., Li ¶ 0029, fig. 5 shows a convex/rod-type lens at the edge of a PIC). Moreover, it would have been at least been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a cylindrical lens having a semi-circular curve as the on-chip lens at least as evidenced by Childers (e.g., Childers ¶ 0048: semi-circular cylindrical lens is obvious).
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the “on-chip lens” to be a cylindrical lens having a semi-circular curve.
Thus claim 1 is rejected.
Moreover, the subject matter [SM] of IA claim 7 is taught at the end of ‘597 claim 1. As a result, the claim 8 SM is at least obvious since the LCRs of claim 7 readily define the width of the core increasing.
Allowable Subject Matter
Claims 2-6, 9-13 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The prior art, either alone or in combination, does not disclose or render obvious the semi-circular curve has a center of curvature; and the output waveguide is laterally offset relative to the center of curvature in combination with the rest of claim 2.
It is noted that claim 2 is allowable because the unique combination of each and every specific element stated in the claim.
The prior art, either alone or in combination, does not disclose or render obvious the waveguide layer comprises a partially etched region between the output waveguide and the side surface of the slab waveguide so that the input light introduced from the output waveguide into the slab waveguide passes through the partially etched region in combination with the rest of claim 6.
It is noted that claim 6 is allowable because the unique combination of each and every specific element stated in the claim.
The prior art, either alone or in combination, does not disclose or render obvious the side surface defines a plurality of optical elements that includes the optical element; the waveguide layer comprises: a plurality of slab waveguides that includes the slab waveguide, and a plurality of output waveguides including the output waveguide, each of the plurality of output waveguides comprising: a first light confining region; a second light confining region; and a waveguide core positioned between the first light confining region and the second light confining region; and each optical element of the plurality of optical elements is associated with a corresponding slab waveguide of the plurality of slab waveguides and a corresponding output waveguide of the plurality of output waveguides, such that input light introduced from the corresponding output waveguide into the corresponding slab waveguide exits the photonic integrated circuit through the optical element in combination with the rest of claim 9.
It is noted that claim 9 is allowable because the unique combination of each and every specific element stated in the claim.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Mr. Michael Mooney whose telephone number is 571-272-2422. The examiner can normally be reached during weekdays, M-F.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Uyen-Chau Le can be reached on 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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/MICHAEL P MOONEY/ Primary Examiner, Art Unit 2874
Prosecution Insights