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 .
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.
Election/Restrictions
Applicant’s election of Species I in the reply filed on 12/31/2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 10-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/31/2025.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 11/08/2022 was filed on the filing date of this application. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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.
Claims 1-6, 8, and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Park et al. (US20060093002A1), hereafter Park.
Regarding claims 1 and 20, Park discloses a structure comprising (Figs. 6 and 7): a substrate (Fig. 6 element 60; Fig. 7 element 70); a laser chip including a body attached to the substrate (Fig. 6 element 61; Fig. 7 element 71), the laser chip having an output ([0053]-[0054]), and the body of the laser chip having a bottom surface spaced from the substrate by a first gap (Figs. 6 and 7 show a gap between the laser and the substrate); a first adhesive in the first gap (Figs. 6 and 7 show an unlabeled adhesive between the substrate and the laser; See also Fig. 2 element 23 [0035]), the first adhesive having a first thermal conductivity ([0035]1); and a second adhesive positioned in the first gap between the first adhesive and the output of the laser chip (Fig. 6 element 66; Fig. 7 elements 76a), the second adhesive having a second thermal conductivity ([0053]-[0054]), wherein the first thermal conductivity of the first adhesive is greater than the second thermal conductivity of the second adhesive (Implicit2).
Regarding claim 2, Park further discloses the substrate includes a cavity having a floor (See annotated Figs. 6 and 7 below), the body of the laser chip is attached to the substrate inside the cavity (See annotated Figs. 6 and 7 below), and the first gap is arranged between the bottom surface of the body of the laser chip and the floor of the cavity (See annotated Figs. 6 and 7 below).
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Regarding claim 3, Park further discloses the cavity includes a sidewall (See annotated Figs. 6 and 7 above), and further comprising: a waveguide core positioned adjacent to the sidewall of the cavity (Fig. 6 element 623; Fig. 7 element 723), the waveguide core spaced from the output of the laser chip by a second gap (See annotated Figs. 6 and 7 above), and the second adhesive is positioned between the output of the laser chip and the waveguide core (See annotated Figs. 6 and 7 above).
Regarding claim 4, Park further discloses the second adhesive is positioned between the sidewall of the cavity and the body of the laser chip (See annotated Figs. 6 and 7 above).
Regarding claim 5, Park further discloses the first adhesive and the second adhesive each extend fully from the floor of the cavity to the bottom surface of the body of the laser chip (See annotated Figs. 6 and 7 above).
Regarding claim 6, Park further discloses the first adhesive and the second adhesive each contact the floor of the cavity (Fig. 6 element 66; See also Fig. 6 annotated above), and the first adhesive and the second adhesive each contact the bottom surface of the body of the laser chip (Fig. 6 element 66; See also Fig. 6 annotated above).
Regarding claim 8, Park further discloses a waveguide core positioned adjacent to the output of the laser chip (Fig. 6 element 623; Fig. 7 element 723).
Regarding claim 9, Park further discloses the second adhesive is positioned between the output of the laser chip and the waveguide core (See annotated Figs. 6 and 7 above; Fig. 6 element 623; Fig. 7 element 723).
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.
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 1-9, 14, 19, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Park et al. (US20060093002A1), hereafter Park, in view of Cole et al. (US20120044967A1), hereafter Cole.
Regarding claims 1 and 20, Park discloses a structure comprising (Figs. 6 and 7): a substrate (Fig. 6 element 621; Fig. 7 element 721); a laser chip including a body attached to the substrate (Fig. 6 element 61; Fig. 7 element 71), the laser chip having an output ([0053]-[0054]), and the body of the laser chip having a bottom surface spaced from the substrate by a first gap (Figs. 6 and 7 show a gap between the laser and the substrate); a first adhesive in the first gap (Figs. 6 and 7 show an unlabeled adhesive between the substrate and the laser; See also Fig. 2 element 23 [0035]), the first adhesive having a first thermal conductivity ([0035]3); and a second adhesive positioned in the first gap between the first adhesive and the output of the laser chip (Fig. 6 element 66; Fig. 7 elements 76a), the second adhesive having a second thermal conductivity ([0053]-[0054]). While it is likely implicitly disclosed, Park does not explicitly disclose the first thermal conductivity of the first adhesive is greater than the second thermal conductivity of the second adhesive4. However, Cole discloses a highly thermally conductive adhesive material between the laser and the substrate (Fig. 23 element 132; [0053]; [0057]) and a low thermal conductivity adhesive material that has desirable optical properties between the laser and the substrate (Fig. 23 element 130; [0053]). An advantage is to allow good thermal contact to the substrate while protecting the laser facet ([0053]; [0057]). Accordingly, it would have been obvious to a person of ordinary skill in the art prior to the effective filing date to modify Park with the first thermal conductivity of the first adhesive is greater than the second thermal conductivity of the second adhesive as disclosed by Cole in order to allow good thermal contact to the substrate while protecting the laser facet.
Regarding claim 2, Park further discloses the substrate includes a cavity having a floor (See annotated Figs. 6 and 7 below), the body of the laser chip is attached to the substrate inside the cavity (See annotated Figs. 6 and 7 below), and the first gap is arranged between the bottom surface of the body of the laser chip and the floor of the cavity (See annotated Figs. 6 and 7 below).
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Regarding claim 3, Park further discloses the cavity includes a sidewall (See annotated Figs. 6 and 7 above), and further comprising: a waveguide core positioned adjacent to the sidewall of the cavity (Fig. 6 element 623; Fig. 7 element 723), the waveguide core spaced from the output of the laser chip by a second gap (See annotated Figs. 6 and 7 above), and the second adhesive is positioned between the output of the laser chip and the waveguide core (See annotated Figs. 6 and 7 above).
Regarding claim 4, Park further discloses the second adhesive is positioned between the sidewall of the cavity and the body of the laser chip (See annotated Figs. 6 and 7 above).
Regarding claim 5, Park further discloses the first adhesive and the second adhesive each extend fully from the floor of the cavity to the bottom surface of the body of the laser chip (See annotated Figs. 6 and 7 above).
Regarding claim 6, Park further discloses the first adhesive and the second adhesive each contact the floor of the cavity (Fig. 6 element 66; See also Fig. 6 annotated above), and the first adhesive and the second adhesive each contact the bottom surface of the body of the laser chip (Fig. 6 element 66; See also Fig. 6 annotated above).
Regarding claim 7, Park further discloses the laser chip further includes a bond pad (Fig. 3 element 39), and a conductive trace on the floor of the cavity ([0035]). Park does not explicitly disclose the conductive trace connected to the bond pad by solder. However, Cole discloses conductive traces connected to the bond pad by solder (Fig. 2 elements 28 connect the laser 12 and the substrate to provide electrical connection [0038]). An advantage is to provide electrical connection to the laser ([0038]). Accordingly, it would have been obvious to a person of ordinary skill in the art prior to the effective filing date of the claimed invention to modify Park with conductive traces connected to the bond pad by solder as disclosed by Cole in order to provide electrical connection to the laser.
Regarding claim 8, Park further discloses a waveguide core positioned adjacent to the output of the laser chip (Fig. 6 element 623; Fig. 7 element 723).
Regarding claim 9, Park further discloses the second adhesive is positioned between the output of the laser chip and the waveguide core (See annotated Figs. 6 and 7 above; Fig. 6 element 623; Fig. 7 element 723).
Regarding claim 14, Cole further discloses a solder pad positioned in the first gap between the first adhesive and the second adhesive (Fig. 23 shows solder bumps between 134 and 132).
Regarding claim 19, Cole further discloses the first adhesive is in contact with the second adhesive in the first gap (Fig. 23 elements 132 and 134 contact).
Claims 15-17 are rejected under 35 U.S.C. 103 as being unpatentable over Park or Park in view of Cole, as applied to claim 1 above, in further view of Kainuma et al. (US20180156972A1), hereafter Kainuma.
Regarding claim 15, Park or Park in view of Cole do not explicitly disclose the first adhesive comprises an organic binder and a plurality of particles in the organic binder. However, Kainuma discloses a first adhesive comprises an organic binder and a plurality of particles in the organic binder ([0069]). An advantage is to use a material that can effectively transfer heat ([0071]). Accordingly, it would have been obvious to a person of ordinary skill in the art prior to the effective filing date of the claimed invention to modify Park or Park in view of Cole with a first adhesive comprises an organic binder and a plurality of particles in the organic binder as disclosed by Kainuma in order to use a material that can effectively transfer heat and since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Regarding claim 16, Kainuma further discloses the plurality of particles comprise silicon dioxide, boron oxide, calcium oxide, carbon, aluminum nitride, or boron nitride ([0069]).
Regarding claim 17, Park in view of Kainuma or Park in view of Cole in further view of Kainuma do not explicitly disclose the plurality of particles have a mean particle size of about one micron. However, the Office takes Official Notice that optimizing the size of the particles in order to balance costs and performance. Accordingly, it would have been obvious to a person of ordinary skill in the art prior to the effective filing date of the claimed invention to modify Park in view of Kainuma or Park in view of Cole in further view of Kainuma with the plurality of particles have a mean particle size of about one micron since it is known in the art to optimize the filler particle size to balance cost and performance and since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Park or Park in view of Cole, as applied to claim 1 above, in further view of Takagi et al. (US20190068936A1), hereafter Takagi.
Regarding claim 18, Park or Park in view of Cole do not explicitly disclose the first thermal conductivity is greater than or equal to 0.2 W/m-K. However, Takagi discloses a first bonding material with a thermal conductivity is greater than or equal to 0.2 W/m-K ([0072]). An advantage, as is known in the art, is to use a material with the desired thermal conductivity to remove heat from the laser device. Accordingly, it would have been obvious to a person of ordinary skill in the art prior to the effective filing date of the claimed invention to modify Park or Park in view of Cole with the first thermal conductivity is greater than or equal to 0.2 W/m-K as disclosed by Takagi in order to use a material with the desired thermal conductivity to remove heat from the laser device and since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See attached Notice of References Cited. US20030006225A1 Fig. 2 elements 155 and 150. US20150099318A1 Fig. 11.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSHUA KING whose telephone number is (571)270-1441. The examiner can normally be reached Monday to Friday 10am-5pm MT.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Min Sun Harvey can be reached at (571) 272-1835. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Joshua King/Primary Examiner, Art Unit 2828 04/01/2026
1 The Office notes that all materials have a thermal conductivity. It is an inherent property of materials that describes how well that material conducts heat.
2 Park discloses that the bonding material 23 is metallic and the bonding material 66/76a is epoxy. A person of ordinary skill in the art understands that metals materials typically used in laser manufacturing (e.g. copper, gold, silver, aluminum, etc.) have much higher thermal conductivity than epoxy. While there are some epoxies that have higher thermal conductivities, these epoxies are explicitly referred to as thermally conductive epoxies. Accordingly, the general knowledge of a person of ordinary skill in the art would allow them to infer that the first adhesive in Park being metallic would have a higher thermal conductivity than the second adhesive being epoxy.
3 The Office notes that all materials have a thermal conductivity. It is an inherent property of materials that describes how well that material conducts heat.
4 MPEP 2112 allows 102/103 rejections to be made where the prior art product appears to be identical except that the prior art is silent regarding the properties or characteristic of a material.
Prosecution Insights