DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Drawings
The replacement drawings submitted on 5/29/2025 have addressed some of the concerns of the previous office action including illegible reference numbers, and blurry labels, however they have additional issues that need to be addressed.
Is the wrap-around metal on either the laser carrier 106 or the PIC carrier 108 in figs. 1A and 1B? If the wrap-around metal is present it must be labeled.
Are figs. 2A and 2B showing the same embodiments of figs. 1A and 1B or different embodiments? Fig. 2A shows wrap-around metal 202 around carrier substrate 200 appears to be a “T” shape. No similar element is present in figs. 1A, 1B or 2B. The wrap-around metal shown in fig. 2B appears to be only along part of one edge of the “carrier substrate” (a configuration appearing different from figs. 1A, 1B or 2A.
Fig. 3 shows element 312 as the wrap-around metal on element 306. This configuration appears most similar to figs. 1A and 1B. The
It should be clear in all of the figures showing the wrap-around metal what element is the wrap-around metal, how it is configured and whether it is the same embodiment of other figures or the same embodiment.
Fig. 3, element 308 and 306 are labeled “Submount 1” and “Submount 2” respectively, however these terms are not used in the specification.
Fig. 3, element 316 is used for both the “insert image” and the side edge of 308.
Fig. 4B. The specification says: “FIG. 4B is a side view of a PIC assembly 409 showing the laser on carrier 403 bonded to the PIC chip 402, according to one or more embodiments of the invention.” Carrier 403 and PIC chip 402 are not shown or labeled in fig. 4B.
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 Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
“configured to expand an output collimated beam from the laser to relax alignment tolerances between the laser and the PIC to optically couple and align the laser and the PIC” in claim 1 and
“to enable the first and second micro-optical components to expand the output collimated beam to relax alignment tolerances between the laser and the PIC to optically couple and align the laser and the PIC” in claim 11.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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, 4-11 and 14-20 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 recites “the first and second micro-optical components are configured to expand an output collimated beam from the laser to relax alignment tolerances between the laser and the PIC to optically couple and align the laser and the PIC” and claim 11 recites “to enable the first and second micro-optical components to expand the output collimated beam to relax alignment tolerances between the laser and the PIC to optically couple and align the laser and the PIC” in claim 11.
As noted above, the claimed first and second micro-optical components are claimed with a generic placeholder and functional language involving 112(f) treatment, as the nature (shape, size, optical characteristics, etc.) of the micro-optical components are not provided in the claim. Looking to the specification, the micro-optical components are shown as 110, 112 and 310 and described as “silicon or fused silica micro-lenses” which are “used to expand an output collimated beam from the laser”. Using a micro-optic or micro-lens to expand a collimated beam from a laser can be done with a conventional micro-lens. The problem with the claim is that it recites an additional function of the micro-optics which is to “relax alignment tolerances between the laser and the PIC”. In order to understand how this function is accomplished, the nature of both the first and second micro-optical components must be explained. The laser beam entering the first micro-optical component is collimated. The first micro-optical component presumably expands the beam. It is unclear how the beam is shaped after that to “relax the alignment tolerances”. The phrase “relax the alignment tolerances” implies that the laser and PIC can have imperfect alignment and still operate effectively. This means that they may be offset in the X, Y and/or Z directions from each other and still be successfully coupled. Without a more complete disclosure regarding the nature of these two micro-optical components, under a 112(f) claim interpretation, the metes and bounds of the claim cannot be ascertained. In other words, one skilled in the art cannot determine what is claimed to perform the function of “relax(ing) the alignment tolerances”.
Claim 20 recites a method step of “electrically connecting a packaging machine pick-up tool with the wrap-around metal to turn-on and move the first carrier substrate for active alignment and optically coupling process with the PIC”. It is not clear when this method step occurs relative to the method steps recited in claim 11. The method steps of claim 11 include “optically coupling” “bonding” and “providing”.
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.
Claims 1, 5, 10, 11 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Miyata US 20190372302 A1 in view of Hajati et al. US 20200090569 A1
Regarding claim 1, Miyata discloses a photonic integrated circuit (PIC) assembly (Fig. 3), comprising: a PIC (Fig. 3, 20); and a light source (Fig. 3, 4) mounted on a first carrier substrate (Fig. 3, 16), and optically coupled and aligned with the PIC (Fig. 3; para. [0025], 3rd to 5th lines), wherein the first carrier substrate includes a wrap-around metal (42 providing electrical bonding of laser), that enables the fist carrier substrate to be bonded electrically with the PIC using solder bumps [0043], wherein the wrap-around metal enables the first carrier substrate to be electrically controlled by an external device for facilitating alignment and optical coupling process with the PIC (this clause beginning with “enables the first carrier substrate” is an intended use that does not impart any specific physical structure to either the wrap-around metal or the first carrier substrate).
Miyata does not expressly disclose a first and second micro-optical components.
Hajati et al. discloses each of a laser (Fig. 13, 204) and a PIC (Fig. 13, 200) includes first and second micro-optical components (Fig. 13, 206) bonded to respective output facets (see Fig. 13 below) facing each other, and wherein the first and second micro-optical components are configured to expand an output collimated beam from the laser (Fig. 13; spec. - para. [0067]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Miyata with the micro-optical arrangement of Hajati to maximize optical power transfer.
With regard to the functional limitation “to relax alignment tolerances between the laser and the PIC”, this was addressed in the 112(b) rejection above. Without a better understanding regarding what structure performs this function it is presumed that the micro-optic components of Hajati meet this function.
Regarding claim 11, Miyata disclosues a method for integrating a light source with a PIC, comprising: optically coupling and aligning (Fig. 3 [0025]) a light source (Fig. 3, 4) mounted on a first carrier substrate (Fig. 3, 16) with the PIC (Miyata: Fig. 3, 20); wherein the light source is a laser; bonding the light source mounted on the first carrier substrate with the PIC, where in the first carrier includes a wrap-around metal (42), that enables the first carrier substrate to be bonded electrically with the PIC using solder bumps, and where in the wrap-around metal enables the first carrier substrate to be electrically controlled by an external device during alignment and optical coupling process with the PIC.
Miyata does not expressly disclose a first and second micro-optical components.
Hajati et al. discloses each of a laser (Fig. 13, 204) and a PIC (Fig. 13, 200) includes first and second micro-optical components (Fig. 13, 206) bonded to respective output facets (see Fig. 13 below) facing each other, and wherein the first and second micro-optical components are configured to expand an output collimated beam from the laser (Fig. 13; spec. - para. [0067]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Miyata with the micro-optical arrangement of Hajati to maximize optical power transfer.
With regard to the functional limitation “to relax alignment tolerances between the laser and the PIC”, this was addressed in the 112(b) rejection above. Without a better understanding regarding what structure performs this function it is presumed that the micro-optic components of Hajati meet this function.
Regarding claims 5 and 15, the combination of Miyata/Hajati discloses the PIC assembly of claim 1, and Miyata discloses both the PIC is mounted on a second carrier substrate (Fig. 3, 6) and the second carrier substrate acts as a base substrate for mounting the first carrier substrate (Fig. 3, 16 = first carrier substrate, 6 = second carrier substrate).
Regarding claim 10, the combination of Miyata/Hajati discloses the PIC assembly of claim 1. The limitation “enables a packaging machine pick-up tool to turn-on and move the first carrier substrate for active alignment and optically coupling process with the PIC” is an intended use and does not further limit the structure of the device.
Claims 4, 6-7, 14 and 16-17 are rejected under 35 U.S.C. 103 as being unpatentable over Miyata and Hajati and further in view of Yang (US 20030180003 A1).
Regarding claims 4 and 14, the combination of Miyata/Hajati discloses the PIC assembly of claim 1, and Miyata discloses the light source is a laser (Fig. 3, 4; para. [0025], 5th & 6th lines) and the PIC is mounted on a second carrier substrate (Fig. 3, 6).
The combination of Miyata/Hajati does not disclose the first carrier substrate and the second carrier substrate are mounted on a base substrate.
Yang discloses a first carrier substrate supporting a light source and a similarly sized second carrier substrate supporting a PIC. This arrangement allows for the light source and the PIC to be aligned and pre-bonded before placement onto a much larger base substrate, to ensure accurate alignment.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Miyata/Hajati with the arrangement of Yang to ensure more accurate alignment.
Regarding claims 6, 7, 16 and 17, the combination of Miyata/Hajati/Yang renders obvious the PIC assembly of claim 4. Yang teaches the first carrier substrate and the second carrier substrate each comprise side edges that are parallel to each other, wherein said side edges of the first carrier substrate and the second carrier substrate are first bonded using Ultraviolet (UV) cure epoxies, and once the first carrier substrate is fixed in position with respect to the second carrier substrate using the Ultraviolet (UV) cure epoxies, the side edges are solder bonded to provide additional mechanical bonding strength between the first carrier substrate and the second carrier substrate, upon aligning and optically coupling the laser and the PIC. [0029]; the solder bumps are jetted at a location on a bottom edge of the first carrier substrate, to fix and mount the first carrier substrate onto the base substrate upon aligning and optically coupling the laser and the PIC, and wherein electrical bond pads on the base substrate coincide with the wrap- around metal on the first carrier substrate to form an electrical contact therein.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the suggestions of the combination Miyata/Hajati/Yang as disclosed in the above rejection of claim 4, with the bonded edges of Yang to assure a secure and aligned bonding.
Claims 8, 9, 18 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Miyata/Hijati further in view of Li et al. (WO 2020242382 A1).
With regard to claims 8, 9, 18 and 19 the combination of Miyata/Hijati discloses the PIC assembly and method of claims 1 and 11.
The combination of Miyata/Hijati does not disclose the PIC includes an etched cavity, and the laser on the first carrier substrate is inverted and inserted into the etched cavity.
Li et al. discloses a laser placed in a trench in a PIC through flip-chip bonding (spec. - pg. 11, lines 34-35). Li et al., also, discloses that such a configuration enhances alignment accuracy (spec. - pg. 12, lines 3-6). Vallance et al. discloses the use of a substrate as a hermetic seal (Fig. 1A, 13; spec. - col. 4, lines 22-24). Vallance, also, discloses that hermetically sealing packages protects the opto-electronic devices inside from corrosive media, moisture, and the like (spec. - col. 2, lines 15-18).
Therefore, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to combine the teachings of Miyata/Hajatiwith the flip-chip bonding of Li to enhance alignment accuracy and the hermetic structure of Vallance to enhance alignment accuracy and protect the enclosed opto-electronic devices.
Conclusion
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/THOMAS A HOLLWEG/Supervisory Patent Examiner, Art Unit 2874