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 .
Inventorship
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.
Response to Amendment
Applicant's Amendment filed 5/18/2026 has been fully considered and entered.
The objection to the drawings, which were set forth in the Office action mailed 11/18/2025, have been withdrawn in view of Applicant’s Amendment. However, a new objection is placed forth. See section below for details.
The objections to the claims, which were set forth in the Office action mailed 11/18/2025, have been maintained in view of Applicant’s Amendment. Applicant overcame most of the objections, but not all. See section below for details.
The rejection under 35 U.S.C. 112(b) set forth in the Office Action mailed 11/18/2025 is withdrawn in view of Applicant’s Amendment.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-2, 4-16, and 21 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Drawings
The drawing received on 5/18/2026 is acceptable.
The drawings are objected to because first and second alignment features, respectively 5120 and 5122, of Fig. 51B are indistinct, especially in reproductions (see PGPub in PE2E or Google Patents). See 37 C.F.R. 1.84(l-m) or MPEP 608.02(V)(l-m). 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 Objections
Claim 5 is objected to because of the following informalities:
Claim 5, line 2: “second subcircuit” should instead state “second photonic integrated subcircuit”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 4-16, and 21 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Specifically, claims 1 and 21 are amended to claim a spring in, or included in, the second cartridge. The claimed spring is only described in Para. 6 and 280 of the Applicant’s disclosure as well as originally filed (and since withdrawn) claim 18.
Although Para. 6 discloses “In some embodiments, the system can include a ferrule coupled to a spring disposed within the second cartridge,” the spring is only illustrated in embodiment of figures 51A-51C with the presence of microfluidic channels. Additionally, Para. 280 discloses “In some embodiments, a ferrule 5112 can be coupled to a spring 5114 disposed within the second cartridge 5104… In some examples, a handheld connector may be used for cartridge to cartridge coupling (e.g., between a cartridge chip containing a cartridge housing and microfluidics and a reader chip containing a floating ferrule and spring), as shown. In some embodiments, photonic integrated subcircuits 5102, 5104 can be loosely constrained by the structure of the connector and may also be spring loaded, allowing for precision alignment to occur via other structures (e.g., precision pins, etc.).”
However, microfluidic channels belong to the non-elected embodiment. There is no teaching of a spring included in the elected embodiment so it is unclear how a spring would be incorporated into the elected embodiment. Therefore, the specification lacks support for the elected embodiment including a spring.
Further, claim 1 also recites that the spring is included in the second cartridge and the ferrule is included in the first cartridge. However, Fig. 51B shows that the spring biases the ferrule in the same cartridge, specifically the second cartridge 5104, towards the first cartridge 5102. Para. 280 also discusses the spring and ferrule as belonging to the same cartridge as recited above. Thus, the ferrule and spring must belong to the same cartridge if claimed. Accordingly, “the spring is included in the second cartridge and the ferrule is included in the first cartridge” is not supported by the specification.
Claim 1 further recites “the ferrule having a third alignment feature,” but the specification never discloses a ferrule with a third alignment feature in an embodiment also including a spring and lacking the non-elected microfluidics.
Claims 2 and 4-16 are rejected due to their ultimate dependency on base claim 1.
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 1-16 and 21 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.
Claims 1 and 21 recite “wherein the third alignment feature is configured to receive at least one of the first alignment feature”. This limitation is indefinite because the claim recites “a first cartridge comprising... a first alignment feature” and “a ferrule included in the first cartridge… and having a third alignment feature.” The specification does not disclose and the drawings do show such features. The only figures that show a third alignment feature are Fig. 46A and 47I, but neither third alignment (4624 and 4776) receives first alignment (4620 and 4720). It is not clear how the third alignment receives the first alignment. Since “alignment feature” is a broad term, the examiner is interpreting the third alignment feature as any feature useful for alignment and is capable of being received in any manner by the first alignment feature. Claims 2-16 are rejected due to their ultimate dependency upon base claim 1.
Claim 6, upon which claims 8-10 depend, recites “wherein at least one of the first cartridge or the second cartridge comprises a carrier configured to hold a respective one of the first photonic integrated subcircuit and the second photonic integrated subcircuit”
In contrast, claims 8-10 recite only first photonic subcircuits and the carrier. This creates the following issues:
Claim 8 recites “wherein the first photonic integrated subcircuit comprises at least two trench features and the carrier comprises at least two extruded portions, and wherein each trench feature is configured to receive a respective extruded portion such that the first photonic integrated subcircuit is secured to the carrier.”
When the carrier is a part of the second photonic integrated subcircuit, as is an option in claim 6, then the carrier further defined in claim 8 is somehow a part of the second photonic integrated subcircuit and the first photonic integrated subcircuit. This does not make sense and further conflicts with claim 1, upon which claim 6 depends, since the first photonic integrated subcircuit belongs to the first cartridge and the second photonic integrated subcircuit belongs to the second cartridge and the two are clearly distinct.
Claim 6 requires the carrier to be a part of the first photonic integrated subcircuit or the second photonic integrated subcircuit. When the carrier is a part of the first photonic integrated subcircuit, how is it bonded to itself as in claims 8-10? The structure best aligned with the disclosure is a photonic integrated subcircuit and a carrier that are parts of the same cartridge, such that they can be bonded together as in claims 9-10, not that the photonic integrated subcircuit somehow folds onto itself so that it may be bonded to itself (since the carrier, as claimed, is a part of a specific cartridge and not a separate entity).
Claim Rejections - 35 USC § 102
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 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, 4-6, 9-13, 15-16, and 21 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Butler et al. in US 20180267255 A1 (hereinafter "Butler").
Regarding claims 1 and 21, Butler discloses a system for coupling photonic integrated subcircuits (and a method of providing, receiving, and aligning said system), the system (integrated photonic device 550 is interpreted as the system; see Fig. 23-24; note that Fig. 24 is similar to Fig. 23 according to Para. 243; see Annotated Fig. 1 below) comprising:
a first cartridge comprising a first photonic integrated subcircuit and a first alignment feature (waveguide connector 150 is interpreted as the first cartridge; the waveguides of 150 are interpreted as the first photonic integrated subcircuit; a guide tube 40 of ferrule 10 is interpreted as the first alignment feature);
a second cartridge comprising a second photonic integrated subcircuit and a second alignment feature (fiber connector 400 is interpreted as the second cartridge; the necessarily present fibers of the fiber connector 400 are interpreted as the second photonic integrated subcircuit; the guide tube 40 of ferrule 510 is interpreted as the second alignment feature); and
a ferrule included in the first cartridge (ferrule 10 is included in interpreted first cartridge 150), the ferrule having a third alignment feature (the top surface 22 of substrate 20 of ferrule 10 is interpreted as the third alignment feature since it is very carefully flattened to enable a substantially even horizontal plane thus aiding alignment; see Para. 147); and
a spring included in the second cartridge and coupled to the ferrule (resilient member 726 is identified as a spring in Para. 243; 726 is included in interpreted second cartridge 400; spring 726 and ferrule 10 are indirectly coupled, but are still considered to be coupled),
wherein the first alignment feature and the second alignment feature are configured to enable alignment between the first photonic integrated subcircuit and the second photonic integrated subcircuit (the guide tube 40 of 150 and the guide tube 40 of 400 are capable of enabling alignment between the waveguides of 150 and the fibers of 400),
wherein the third alignment feature is configured to receive at least one of the first alignment feature or the second alignment feature (top surface 22 interpreted as the third alignment feature is capable of receiving guide tube 40 of 150 which is the interpreted first alignment feature), and
wherein, when the first photonic integrated subcircuit is aligned to the second photonic integrated subcircuit, a first light path of the first photonic integrated subcircuit is optically coupled to a second light path of the second photonic integrated subcircuit (see Abstract).
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Annotated Figure 1
Regarding claim 2, Butler discloses the system of claim 1 as discussed above, wherein the second alignment feature comprises a receiving feature configured to receive the first alignment feature (the guide tube 40 of 400 comprises guide pin 86 which is interpreted as a receiving feature that receives the guide tube 40 of 150).
Regarding claim 4, Butler discloses the system of claim 1 as discussed above, wherein the first light path is within a top surface of the first photonic integrated subcircuit (the mating surface of 150 facing 400 containing the light path of the waveguides is interpreted as the top surface of 150) and the second light path is within a bottom surface of the second photonic integrated subcircuit (the mating surface of 400 facing 150 containing the light path of the fibers interpreted as interpreted as the bottom surface of 400).
Regarding claim 5, Butler discloses the system of claim 4 as discussed above, wherein the top surface of the first photonic integrated subcircuit partially overlaps the bottom surface of the second photonic integrated subcircuit (since the identified end mating surfaces must overlap when they are aligned, they are considered to partially overlap).
Regarding claim 6, Butler discloses the system of claim 1 as discussed above, wherein at least one of
the first cartridge comprises a carrier configured to hold the first photonic integrated subcircuit (PLC substrate 110 is interpreted as a carrier configured to hold the waveguides of 150, which are interpreted as the first photonic integrated subcircuit); or
the second cartridge comprises a carrier configured to hold the second photonic integrated subcircuit (fiber support substrate 410 is interpreted as a carrier configured to hold the fibers of 400, which are interpreted as the second photonic integrated subcircuit).
Regarding claim 9, Butler discloses the system of claim 6 as discussed above, wherein the first photonic integrated subcircuit is bonded to the carrier (Para. 189 discusses leaving a gap between the top surface of the PLC substrate 110 and the bottom surface of the guide tube to accommodate securing material 50; Para. 182 exemplifies 50 as an adhesive).
Regarding claim 10, Butler discloses the system of claim 9, wherein the first photonic integrated subcircuit is bonded to the carrier using an adhesive (Para. 182).
Regarding claim 11, Butler discloses the system of claim 1 as discussed above, wherein the first alignment feature comprises at least one of a rod shape, a cylindrical shape, or a cuboid shape (guide tube 40 of ferrule 10 is interpreted as the first alignment feature and has a rod shape and/or cylindrical shape; not relied upon, but pointed out to expedite prosecution, receiving tube 730 is cuboid shaped and could be interpreted as a first alignment feature).
Regarding claim 12, Butler discloses the system of claim 1 as discussed above,
wherein the first cartridge comprises a fourth alignment feature (the other guide tube 40 of ferrule 10 is interpreted as the fourth alignment feature) and the second cartridge comprises a fifth alignment feature (the other guide tube 40 of ferrule 510 is interpreted as the fifth alignment feature),
wherein the fourth alignment feature and the fifth alignment feature are configured to further enable alignment between the first photonic integrated subcircuit and the second photonic integrated subcircuit (the other guide tube 40 of 150 interpreted as the fourth alignment feature and the other guide tube 40 of 400 interpreted as the fifth alignment feature are capable of enabling alignment between the waveguides of 150 and the fibers of 400).
Regarding claim 13, Butler discloses the system of claim 1 as discussed above, wherein the second alignment feature comprises a groove, a hole, or a receptacle (guide tubes 40 contain bores 48; the bore of the guide tube 40 interpreted as the second alignment feature is necessarily a hole and/or receptacle).
Regarding claim 15, Butler discloses the system of claim 1 as discussed above, further comprising a first optical component coupled to the first photonic integrated subcircuit and the first alignment feature (fiber connector ferrule 510 is coupled to the waveguides of 150, previously interpreted as the first photonic subcircuit, and a guide tube 40 of the ferrule 10, previously interpreted as the first alignment feature; thus fiber connector ferrule 510 is interpreted as the first optical component).
Regarding claim 16, Butler discloses the system of claim 15 as discussed above, wherein the first optical component comprises an optical fiber (fiber connector ferrule 510 interpreted as the first optical component necessarily comprises an optical fiber).
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) 7-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Butler et al. in US 20180267255 A1 (hereinafter "Butler") as applied to claim 1 above and in view of Buchmann et al. in US Patent 5,319,725 A (hereinafter "Buchmann").
Regarding claim 7, Butler discloses the system of claim 6 as discussed above, but fails to teach that a surface of the carrier comprises one or more pedestals located between the respective photonic integrated subcircuits and the carrier.
However, a surface of a carrier comprising one or more pedestals located between a photonic integrated subcircuits and the carrier is well-known in the art. These pedestals are well known in the art to align stacked materials as taught by Buchmann (see Fig. 3-5; see Col. 8 line 59-Col. 9 line 42 which describes various pedestal and depression alignments for mating between two layers).
Accordingly, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have the pedestals of Buchmann in the system of Butler for the purpose of aligning and locking a component in physical space relative to another component thereby achieving a simple and robust means of increased physical security and/or increasing part-to-part alignment.
Regarding claim 8, Butler discloses the system of claim 6 as discussed above, but fails to teach that the first photonic integrated subcircuit comprises at least two trench features and the carrier comprises at least two extruded portions, and wherein each trench feature is configured to receive a respective extruded portion such that the first photonic integrated subcircuit is secured to the carrier.
However, portions such as pedestals and trench features such as depressions are well known in the art to align stacked materials as taught by Buchmann (see Fig. 3-5; see Col. 8 line 59-Col. 9 line 42 which describes various pedestal and depression alignments for mating between two chips). Specifically, Buchmann teaches a first chip comprises at least two trench features (depressions 56 and 57 are interpreted as trench features) and a second chip comprises at least two portions (pillars 58.1 and 58.2 are interpreted as portions), and wherein each trench feature is configured to receive a respective portion such that the first chip is secured to the second chip (see Col. 8 line 59-Col. 9 line 42; emphasis on the final sentence).
Accordingly, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have the portions and trenches of Buchmann in the system of Butler for the purpose of aligning and locking a component in physical space relative to another component thereby achieving a simple and robust means of increased physical security and/or increased part-to-part alignment.
Butler/Buchmann does not teach that the portions are extruded. However, “extruded” is interpreted as a product-by-process limitation and since no additional structure is presumed to be gained via extrusion, the extruded portions have been interpreted as portions regardless of how they were created. Thus claim 8 is considered a product-by-process claim, and thus, this limitation is not given patentable weight and is rejected for the reasons provided above. In product-by-process claims, “once a product appearing to be substantially identical is found and a 35 U.S.C. 102/103 rejection [is] made, the burden shifts to the applicant to show an unobvious difference.” MPEP 2113. This rejection under 35 U.S.C. 102/103 is proper because the “patentability of a product does not depend on its method of production.” In re Thorpe, 227 USPQ 964, 966 (Fed. Cir. 1985).
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Butler et al. in US 20180267255 A1 (hereinafter "Butler").
Regarding claim 14, Butler discloses the system of claim 1 as discussed above, but fails to teach that the second alignment feature comprises a triangular groove, rectangular groove, or a cylindrical groove in Fig. 23-24.
However, Butler teaches that the substrate 20 may include a triangle grove to help with the alignment of 40. In this embodiment, the interpreted second alignment feature would then include guide tube 40 and the groove in which 40 is positioned. See Fig. 2A-2B where the guide pin sit in triangular groove. Para. 213 also teaches providing triangular grooves on the top or bottom of connecting surfaces in which a cylindrical member resides. The various groove shapes are considered an obvious design choice.
Accordingly, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have included a shaped groove in the second alignment feature of Fig. 23-24 for the purpose of reducing guide pin misalignment during manufacturing thereby achieving increased overall device alignment.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DARBY M THOMASON whose telephone number is (703)756-5817. The examiner can normally be reached Mon.-Fri. 8am-5pm.
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, Uyen-Chau Le can be reached at (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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/DARBY M. THOMASON/Examiner, Art Unit 2874
/UYEN CHAU N LE/Supervisory Patent Examiner, Art Unit 2874
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