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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 7 February 2023, 16 October 2024, and 18 March 2025 have been considered by the examiner.
Election/Restrictions
Applicant’s election of Group A, claims 10-14, in the reply filed on 4 March 2025 is acknowledged. Claims 15-18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim.
Applicant did not specify in the reply whether the election was with or without traverse. Since applicant did not formally traverse (using "with traverse" language), and did not present any formal arguments rebutting the restriction, the examiner is acknowledging the paper dated 4 March 2025 as an election without traverse.
Claim Objections
Claims 10 and 12 are objected to because of the following informalities: in claim 10, line 10, “the lowermost portion” should read --a lowermost portion--, and in claim 12, line 3, “the outer surface” should read --an outer surface--. Appropriate correction is required.
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.
Claim 11 is 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 11 recites “a thickness of the lower plate on the inner lower surface of the hole” (lines 1-2). This limitation renders the claim indefinite because claim 10, from which claim 11 depends, has previously recited “an inner lower surface of the hole in the side wall of the base” (line 9) and compared that surface to “the lowermost portion of the main surface of the lower plate of the base” (line 10). Claim 10 also specifies that there is “a boundary between the hole and the lower plate” (lines 8-9). It is not clear, in light of the limitations from claim 10 quoted above, how a thickness of the lower plate on the inner lower surface of the hole could exist, as required by claim 11. The language of claim 10 indicates that the lower plate is not part of the hole and that the inner lower surface of the hole occurs within the side wall, not on the lower plate. Clarification is required. Applicant is advised that, for the purpose of examination, the phrase “a thickness of the lower plate on the inner lower surface of the hole” in claim 11 has been interpreted as --a thickness from a bottom surface of the side wall to the inner lower surface of the hole in the side wall--.
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) 10-13 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kyocera Corp. JP 2004-259860 A (cited on IDS filed 7 February 2023; hereinafter “Kyocera”).
Paragraph numbers and quotations in the following rejections refer to the machine translation of Kyocera into English filed by applicant on 7 February 2023.
Regarding claim 10, Kyocera discloses an optical device (“package for housing an optical semiconductor element”; [0019]; FIGs. 1-2) comprising:
an optical element (“optical semiconductor element” 3; [0026]);
a sleeve (“optical fiber fixing member” 8; [0040]) including a receptacle portion (hole through sleeve 8, not labeled; FIG. 1) and an insertion portion (“one end portion” 8b; [0045]);
a base (1; [0027]) having a lower plate (“square bottom plate” 1a) having a main surface (top of 1a) with the optical element being mounted thereon (see FIG. 2) and a side wall (“metal plate” 1c; [0036]) having a hole (“through-hole” B; [0045]) with the insertion portion of the sleeve optically coupled with the optical element (via optical fiber 9; [0042]) inserted into the hole ([0046]), the side wall being integral with the lower plate ([0035]; see FIG. 2),
wherein a step difference (difference between top of T2 and top of T1 – see annotated FIG. 2 below) is provided at a boundary between the hole and the lower plate, wherein an inner lower surface of the hole in the side wall of the base (top of T1) is positioned lower than a lowermost portion of the main surface of the lower plate of the base (top of T2) (see annotated FIG. 2 below).
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Regarding claim 11, Kyocera additionally discloses wherein a thickness (annotated as T1) from a bottom surface of the side wall (1c) to the inner lower surface of the hole (B) in the side wall is smaller than a thickness (annotated as T2) of the lower plate (1a) on the lowermost part of the main surface (see annotated FIG. 2 above, which shows T1 < T2).
Regarding claim 12, Kyocera additionally discloses wherein the sleeve (8) is provided with a guide (“remaining portion” 8a; [0046]) determining a position of the sleeve (see FIGs. 1-2 – guide 8a determines a position of sleeve 8 by abutting side wall 1c when the insertion portion 8b is inserted into through-hole B), and
wherein a length (annotated as L1) from an outer surface of the side wall (1c) to the step difference of the lower plate is larger than a length (annotated as L2) from the guide to a distal end of the insertion portion (8a) (see annotated FIG. 2 below, which shows L1 > L2).
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Regarding claim 13, Kyocera additionally discloses wherein a side surface of the guide (8a) is in contact with the outer surface of the side wall (1c) (see FIG. 2).
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) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kyocera, as applied to claim 12 above.
Regarding claim 14, Kyocera does not explicitly teach wherein a side surface of the guide (8a) is fixed to the outer surface (of 1c; see FIG. 2) by welding. However, Kyocera teaches that both the guide and the outer surface are made of metal ([0045]), and Kyocera teaches that welding is a suitable technique to fix other metal components of the optical device to each other (e.g., [0048] teaches that metal fitting 10 which houses optical fiber 9 may be “laser-beam welded” to guide 8). Therefore, before the effective filing date of the instant application, it would have been obvious to one of ordinary skill in the art to fix a side surface of the guide to the outer surface of the side wall by welding for the purpose of using a known, suitable technique for fixing two metal components together, thereby rendering obvious instant claim 14.
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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Yue et al. US 2021/0263246 A1. See FIGs. 1, 6.
Nakayama et al. US 2019/0007154 A1. See FIG. 3.
Takagi US 2007/0031093 A1. See FIGs. 3-4.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EMMA R. OXFORD whose telephone number is (703)756-1438. The examiner can normally be reached Monday-Friday.
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 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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/EMMA R. OXFORD/Examiner, Art Unit 2874
/UYEN CHAU N LE/Supervisory Patent Examiner, Art Unit 2874
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