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 12/30/2025 has been fully considered and entered.
The objections to the claims, which were set forth in the Non-Final Rejection dated 10/09/2025, have been withdrawn in view of Applicant’s Amendment.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1, 8-9, 11-13, 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.
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.
Claim(s) 1, 8-9, 11-12, and 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Park in US 20200233149 A1 (hereinafter "Park") in view of Kuyken et al in US 20230208101 A1 (hereinafter "Kuyken") and in further view of Dudley et al. in US 20210242651 A1 (hereinafter "Dudley").
Regarding claims 1, 8-9, and 21, Park discloses a device comprising:
at least one of each of first, second, and third and fourth elements fabricated on a common substrate (see claim 1 and Fig. 1 where more than four interpreted “elements” 104, 102, 107, 103, 106, and 101 are all on substrate 105);
wherein at least one of the first elements (layer 101 is interpreted as the first element) comprises an active waveguide structure (see Para. 0027) supporting an active optical mode (see Para. 0024), at least one of the second elements (layer 102 is interpreted as the second element) comprises a passive waveguide structure supporting a passive optical mode (see Para. 0024), and at least one of the third elements (layer 103 is interpreted as the third elements), at least partly butt-coupled to at least one of the first elements (see Fig. 1 and Para. 25), comprises an intermediate waveguide structure supporting intermediate optical modes (see Para. 25 and 29-31);
wherein the first element (101) comprises InP (see Para. 27);
wherein the second element (102) comprises at least one of SiN (see Para. 25);
wherein the third element (103) comprises a layer with refractive index (see Fig. 1 and Para. 30);
wherein the active waveguide structure is defined by at least one etch after attachment to the common substrate (this is a product-by-process limitation, see below);
wherein the first element comprises a first optical source (see Para. 27);
wherein the second element comprises at least one input/output structure (see Para. 28 and Fig. 1 where the left end of 102 is interpreted as the input/output structure); and
wherein mutual alignments of the first, second, and third elements are defined using lithographic alignment marks that facilitate alignment between layers formed during processing steps of fabricating the first, the second, and the third elements (see Abstract).
Park fails to explicitly disclose a device:
wherein the third element comprises a layer with refractive index between 1.44 and 2.2.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the application to form the third element (103) with a refractive index between 1.44 and 2 to facilitate efficient coupling (see Para. 30), since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Park is further silent to a device:
wherein the second element is configured to interact with an analyte region;
wherein at least one of the fourth elements comprises at least one photodetector (note Para. 56 where Park acknowledges that photodetectors may be created), and
wherein a part of an optical signal emitted from the first optical source is coupled to at least one photodetector after being coupled to both input/output structure and analyte region.
Kuyken discloses a device comprising:
a photodetector (photodetector 302, which is interpreted as the fourth element),
a first optical source (mode-locked laser 120 is an optical source, is interpreted as a widely tunable laser (claim 8), and is a comb source (claim 9); see Para. 78);
an input/output structure (input and output ports are interpreted as input/output structure; see Para. 87) configured to interact with an analyte region (sensing area 301 is interpreted as an analyte region; see Para. 85);
a tap coupler (coupling element 105 is interpreted as a tap coupler or second element (relating to claim 12) that is coupled to a photodetector configured to monitor an optical source before interacting with the analyte region; see Para. 70 and Fig. 3);
a modulator structure (phase shifter of Para. 69 is interpreted as a modulator structure or first element (claim 21)) configured to control a phase of the optical signal; and
wherein a part of an optical signal emitted from the first optical source (mode-locked lasers 110, 120) is coupled to a photodetector (photodetector 302) after being coupled to an analyte region (see Para. 85).
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: (a) the tap coupler and photodetector of Kuyken in the device of Park for the purpose of collecting a portion of light and turning it into an optical signal thereby achieving a device capable of creating an electrical signal representing a particular light source for analytic purposes, (b) the input/output structures of Kuyken in the device of Park for the purpose of external communication thereby achieving a device capable of external interaction, such as with sensors, other devices, or the outside world, and (c) the modulator structure such as the phase shifter of Kuyken in the device of Park for the purpose of manipulating, tuning, and/or controlling a light signal thereby achieving a device capable of complex, programmatic functions and/or increased sensitivity.
Park/Kuyken fails to disclose a device:
wherein at least one light filtering structure that is not waveguide coupled to the photodetector comprises a patterned opaque region disposed on the common substrate and is configured to reduce the amount of scattered stray light incident to the photodetector, the scattered stray light being scattered from at least one of the first optical source or a waveguide on the common substrate.
Dudley teaches a device:
wherein at least one light filtering structure that is not waveguide coupled to the photodetector comprises a patterned opaque region disposed on the common substrate (the light isolation structure formed by 810 and 910 comprise an opaque region, are disposed on the interpreted common substrate 610, and are interpreted as being patterned during formation) and is configured to reduce the amount of scattered stray light incident to the photodetector (the light isolation structures of Dudley are capable of reducing the amount of scattered stray light incident to the photodetector), the scattered stray light being scattered from at least one of the first optical source or a waveguide on the common substrate (Para. 3 identifies that light from the source or integrated circuit may be blocked via scattering; see also Para. 38, 46, and 72).
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 light isolation structure(s) of Dudley in the device of Park/Kuyken for the purpose of preventing unwanted stray light, including light produced by the device, from reaching the photodetector thereby achieving a device with less signal noise.
The examiner notes that applicant is claiming the product (device) including the process of making the product (etching the waveguide structure after attachment), and therefor claim 1 is of "product-by-process" nature. The courts have been holding for quite some time that: the determination of the patentability of a product-by-process claim is based on the product itself rather than on the process by which the product is made. In re Thrope, 777 F. 2d 695, 227 USPQ 964, 966 (Fed. Cir. 1985); and that patentability of claim to a product does not rest merely on a difference in the method by which that product is made. Rather, it is the product itself which must be new and unobvious. Applicant has chosen to claim the invention in the product form. When the prior art discloses a product which reasonably appears to be either identical with or only slightly different than a product claimed in a product-by-process claim, a rejection based alternatively on either on 35 U.S.C. section 102 or alternatively on 35 U.S.C. section 103 of the statute is eminently fair and acceptable. In re Brown, 459 F.2d 531, 535, 173 USPQ 685 and 688 (CCPA 1972). See MPEP §2113.
Regarding claim 11, Park/Kuyken/Dudley discloses the device of claim 9 as discussed above. Park is further silent to a second optical source and its features.
Kuyken further discloses the device as comprising:
a second optical source (mode-locked laser 110; see Para. 78) that is a comb source (see Abstract);
wherein a repetition rate of the second optical source (110) is different from (Para. 85) a repetition rate of the first optical source (120); and
wherein at least part of the optical signal from both the first optical source (120) and the second optical source (110) are coupled to at least one photodetector (302) realized in one of the fourth elements (photodetector 302).
The second optical source of Park/Kuyken/Dudley is interpreted as a first element.
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 second optical source with a different repetition rate of the first optical source as taught by Kuyken in the device of Park/Kuyken/Dudley for the purpose of obtaining a plurality of beat notes upon combination which can be detected by a photodetector thereby achieving a device capable of registering measurements with fine resolution.
Regarding claim 12, Park/Kuyken/Dudley discloses the device of claim 1 as discussed above. Kuyken fails to teach that the optical source that the tap coupler monitors is the interpreted first optical source (mode-locked laser 120).
However, 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 a photodetector configured to monitor any optical source, including the interpreted first optical source 120, with no unexpected results and a reasonable expectation of success for the purpose of monitoring the light before interacting with the analyte region thereby achieving a reference signal for comparison to the analyte-interacted signal which can be used to create an analyte signature without background noise thereby achieving a clearer visual interpretation of the analyte signature.
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Park in US 20200233149 A1 (hereinafter "Park") in view of Kuyken et al in US 20230208101 A1 (hereinafter "Kuyken") and Dudley et al. in US 20210242651 A1 (hereinafter "Dudley") as applied to claim 1 above, and in still further view of Tummidi in US 20200264391 A1 (hereinafter "Tummidi").
Regarding claim 13, Park/Kuyken/Dudley discloses the device of claim 1 as discussed above. Kuyken further discloses (and thus the device of Park/Kuyken/Dudley would further include the following features) that the input/output structure (301) is realized as a coupler (Para. 87 discloses coupling to input and output ports of the device 300, which would use light couplers, instead of the integrated version of sensing area 301 in Fig. 3). Park/Kuyken/Dudley fails to teach that the coupler is one of edge couplers or grating couplers.
Tummidi teaches that a coupler may be an edge coupler (Fig. 2; Para. 31). A person having ordinary skill in the art would have found it obvious at the time the invention was made to use any coupler including edge couplers or grating couplers which were known in the art and since edge couplers are easier to manufacture (Tummidi; see Para. 2-3).
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 coupler of Tummidi in the device of Park/Kuyken/Dudley for the purpose of providing improved coupling means with low loss thereby achieving means which can measure larger analyte regions.
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.
This prior art, made of record, but not relied upon, is considered pertinent to applicant’s disclosure since the following references have similar structure and/or use similar structure and/or similar optical elements to what is disclosed and/or claimed in the instant application:
"Thin wall to block LED light from hitting photodiode?", Electrical Engineering, https://electronics.stackexchange.com/questions/445479/thin-wall-to-block-led-light-from-hitting-photodiode, June 2019 discloses additional structures added to reduce stray light.
US 20230228941 A1 discloses groove portions to reduce stray light.
US 20120057880 A1 discloses microspheres for reducing stray light.
US 20180172906 A1 discloses structure for reducing stray light.
US 6406196 B1 discloses structure for reducing unwanted light.
US 20200284727 A1 discloses structure for reducing unwanted light.
US 20050123241 A1 discloses extinction enhancement grating for reducing unwanted light.
US 20050141806 A1 discloses a similar device.
US 20190041577 A1 discloses a similar device.
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.
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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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