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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 2/12/2026 has been entered.
Response to Amendment
Applicant's arguments filed 1/12/2026 have been fully considered but they are not persuasive. Applicant references agreements made in an “interview” however there is no Interview Summary of record, reported by either the Office or Applicant. Furthermore, the amendments to the claims are problematic as the create antecedent basis issues and as well as indefiniteness issues (see rejection below). The amendments to the claims change the scope of the claims, but fail to overcome the prior art, as outlined in the rejection below.
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 1-6, 8-14, and 16-19 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.
Independent claim 1 has been amended to include the limitation, “at least an optical element formed as part of the output facet and configured to filter, focus, or polarize the laser beam.” However, independent claim 1 already claims, “an output facet that is coupled to the bottom surface of the VCSEL and comprises an integrated optical element” (emphasis added).
Therefore, there is insufficient antecedent basis for the amended optical element. Furthermore, this creates confusion as it is unclear whether this is the same optical element already being claimed, and if it is an additional optical element. If the situation is the latter, that is, if the claims have been amended to include an additional optical element, rather than the optical element already claimed, Examiner requests that Applicant point out where, in the instant Specification and Figures, support for this amendment is.
Independent claim 10 has been amended to include the limitation, “at least one optical element formed as part of each of the plurality of output facets, the at least one optical element configured to filter, focus, or polarize the laser beam.” However, independent claim 1 already claims, “an output facet that is coupled to the bottom surface of the VCSEL and comprises an integrated optical element” (emphasis added).
Therefore, there is insufficient antecedent basis for the amended optical element. Furthermore, this creates confusion as it is unclear whether this is the same optical element already being claimed, and if it is an additional optical element. If the situation is the latter, that is, if the claims have been amended to include an additional optical element, rather than the optical element already claimed, Examiner requests that Applicant point out where, in the instant Specification and Figures, support for this amendment is.
Independent claim 16 has been amended to include the limitation, “filtering the laser beam using at least one optical element formed as part of the output facet.” However, independent claim 16 already claims, “an optical element integrated in an output facet” (emphasis added).
Therefore, there is insufficient antecedent basis for the amended optical element. Furthermore, this creates confusion as it is unclear whether this is the same optical element already being claimed, and if it is an additional optical element. If the situation is the latter, that is, if the claims have been amended to include an additional optical element, rather than the optical element already claimed, Examiner requests that Applicant point out where, in the instant Specification and Figures, support for this amendment is.
For purposes of examination, the amended “optical element” will be considered to be the same optical element as already claimed.
Claims 2-6, 8, 9, 11-14, and 17-19 are dependent claims and therefore carry the same deficiencies.
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) 1-4, 8, and 9, is/are rejected under 35 U.S.C. 103 as being unpatentable over CN 106950660 A (herein “Tian”, cited on the PTO-892 of 7/02/2025).
Regarding claim 1, Tian discloses in Fig. 3, an apparatus comprising:
a photonic integrated circuit (PIC) comprising a grating coupler (6) and a waveguide (10);
a vertical cavity surface emitting laser (VCSEL) (3) that is coupled to the PIC and comprises a bottom surface (shown where optical element 7 attaches to VCSEL 3) that is substantially parallel to a principal plane of the PIC (shown in Fig. 3 as parallel surfaces);
an output facet that is coupled to the bottom surface of the VCSEL (3) and comprises an integrated optical element (7) configured to redirect a laser beam emitted by the VCSEL at an off- normal angle relative to the principal plane of the PIC (shown by second arrow exiting optical element 7 at an off-normal angle), wherein the grating coupler (6) is configured to receive the laser beam from the VCSEL at the off-normal angle and to diffract the laser beam to couple to the waveguide (10) (this is indicated by the 3 arrows, the first arrow being normal, the second being off-normal relative to the principal plane of the PIC, and the third arrow showing the beam coupled into the waveguide 10 by diffraction grating 6); and
at least an optical element (7) formed as part of the output facet (see Fig. 3) and configured to filter, focus, or polarize the laser beam.
Tian discloses that optical element 7 is a prism (see English Translation and Fig. 3). A person of ordinary skill in the art at the effective filing date of the invention would understand that the optical element is a prism (7) and that the prism is not decorative, but rather, functional. In fact, these SU8 polymer prisms (as disclosed by Tian) are used in VSCEL PICs specifically to steer and focus the light, thus meeting the amended claimed limitation.
Regarding claim 2, Tian discloses in Fig. 3, the VCSEL and the PIC are coupled through a flip-chip solder bonding technique or an adhesive bonding technique (see at least Abstract, wherein flip-chip bonding is disclosed).
Regarding claim 3, Tian discloses in Fig. 3, the output facet (7) comprises a flat surface angled relative to the principal plane of the PIC (shown where first arrow meets second arrow as light exits the output face of the optical element 7).
Regarding claim 4, Tian discloses in Fig. 3, the flat surface that is angled relative to the principle plane of the PIC is formed by etching (see at least Abstract, wherein etching is disclosed). The examiner notes that applicant is claiming the product (an angled surface of an output facet) including the process of making the product (etching), and therefore claim 3 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 8, Tian discloses in Fig. 3, the laser beam is in one of a visible light spectrum, a near-infrared (NIR) spectrum, or an infrared (IR) spectrum (Tian discloses a VCSEL, which emits light in the near infrared to ultraviolet spectra and VCSELS are also capable of emitting light in the visible light spectrum).
Regarding claim 9, Tian discloses in Fig. 3, the grating coupler (6) is configured to diffract the laser beam from the VCSEL (3) in a direction aligned with an input of the waveguide (10) (indicated by the arrows, leaving the VCSEL 3 and entering the optical element 7, then exiting optical element 7 and entering into grating coupler 6, and then lastly, traveling through the waveguide 10).
Claim(s) 16-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over CN 106950660 A (herein “Tian”, cited on the PTO-892 of 7/02/2025) in view of US 2023/0411932 A1 Markov et al. (herein “Markov”, cited on the attached PTO-892).
Regarding claim 16, Tian discloses in Fig. 3, a method comprising:
generating a laser beam (indicated by arrow exiting 3) at a bottom-emitting vertical cavity surface emitting laser (VCSEL) (3) whose bottom surface is substantially parallel to a principal plane of a photonic integrated circuit (PIC) (shown where optical element 7 attaches to VCSEL 3, shown as a parallel surface in Fig. 3) comprising a grating coupler (6) and a waveguide (10);
redirecting, by an optical element (7) integrated in an output facet coupled to the bottom surface of the VCSEL (3), the laser beam at an off-normal angle relative to the principal plane of the PIC (shown by second arrow exiting optical element 7 at an off-normal angle);
receiving, by the grating coupler (6), the laser beam from the VCSEL (3) at the off-normal angle; and
diffracting, by the grating coupler (6), the laser beam to a waveguide (10) of the PIC (this is indicated by the 3 arrows, the first arrow being normal, the second being off-normal relative to the principal plane of the PIC, and the third arrow showing the beam coupled into the waveguide 10 by diffraction grating 6).
Tian discloses that optical element 7 is a prism that is an optical element formed as part of the output facet (see English Translation and Fig. 3), but is silent as to specifically filtering the laser beam. However, Markov discloses using a filter with a VCSEL light source so as to alter aspects of the converging light as needed as well as to maintain orientations as needed (see para [0084]). Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention to include a filter as taught by Markov, so as optimize the signal exiting the output facet.
Regarding claim 17, Tian discloses in Fig. 3, the VCSEL and the PIC are coupled through a flip-chip solder bonding technique or an adhesive bonding technique (see at least Abstract, wherein flip-chip bonding is disclosed).
Regarding claim 18, Tian discloses in Fig. 3, redirecting the laser beam at the off-normal angle comprises refracting the laser beam at a flat surface that is formed by etching and is angled relative to the principal plane of the PIC (see at least Abstract, wherein etching is disclosed).
Claim(s) 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over CN 106950660 A (herein “Tian”, cited on the PTO-892 of 7/02/2025) in view of US 2023/0411932 A1 Markov et al. (herein “Markov”, cited on the attached PTO-892) in further view of in view of US 11,726,276 B1 Wood et al. (herein “Wood”, cited on the PTO-892 of 7/02/2025).
Regarding claim 19, Tian is silent as to the output facet comprises a plurality of micro-prisms, a grating, a metasurface, or a curved surface comprising free-form elements, wherein a shape of the metasurface comprises a square post, a rectangular post, a cylinder, or an irregular post. However, Wood discloses in Fig. 12 a VCSEL (104) having an output facet (shown by lines indicating light beam) comprising a plurality of micro-prisms, a grating, a metasurface, or a curved surface comprising free-form elements, wherein a shape of the metasurface comprises a square post, a rectangular post, a cylinder, or an irregular post (micro-optics 1206), and filtering, focusing, or polarizing the laser beam through one or more optical elements on a bottom surface of the output facet (col. 12, lines 31-44). It would have been obvious to one of ordinary skill in the art at the effective filing date of the invention to include the micro-optics taught by Wood in the apparatus of Tian so as to enhance the quality of the optical coupling.
Claim(s) 5 and 10-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over CN 106950660 A (herein “Tian”, cited on the PTO-892 of 7/02/2025) in view of in view of US 11,726,276 B1 Wood et al. (herein “Wood”, cited on the PTO-892 of 7/02/2025).
Regarding claims 5, Tian is silent as to the output facet comprises a plurality of micro-prisms, a grating, a metasurface, or a curved surface comprising free-form elements. However, Wood discloses in Fig. 12 a VCSEL (104) having an output facet (shown by lines indicating light beam) comprising a plurality of micro-prisms, a grating, a metasurface, or a curved surface comprising free-form elements (micro-optics 1206), and filtering, focusing, or polarizing the laser beam through one or more optical elements on a bottom surface of the output facet (col. 12, lines 31-44). It would have been obvious to one of ordinary skill in the art at the effective filing date of the invention to include the micro-optics taught by Wood in the apparatus of Tian so as to enhance the quality of the optical coupling.
Regarding claim 10, Tian discloses in Fig. 3, an apparatus comprising:
a photonic integrated circuit (PIC) comprising a grating coupler (6) and a waveguide (10);
a vertical cavity surface emitting laser (VCSEL) (3) that is coupled to the PIC and comprises a bottom surface (shown where optical element 7 attaches to VCSEL 3) that is substantially parallel to a principal plane of the PIC (shown in Fig. 3 as parallel surfaces); and
an output facet that is coupled to the bottom surface of the VCSEL (3) and comprises an integrated optical element (7) configured to redirect a laser beam emitted by the VCSEL at an off- normal angle relative to the principal plane of the PIC (shown by second arrow exiting optical element 7 at an off-normal angle), wherein the grating coupler (6) is configured to receive the laser beam from the VCSEL at the off-normal angle and to diffract the laser beam to couple to the waveguide (10) (this is indicated by the 3 arrows, the first arrow being normal, the second being off-normal relative to the principal plane of the PIC, and the third arrow showing the beam coupled into the waveguide 10 by diffraction grating 6); and
at least an optical element (7) formed as part of the output facet (see Fig. 3) and configured to filter, focus, or polarize the laser beam.
Tian discloses that optical element 7 is a prism (see English Translation and Fig. 3). A person of ordinary skill in the art at the effective filing date of the invention would understand that the optical element is a prism (7) and that the prism is not decorative, but rather, functional. In fact, these SU8 polymer prisms (as disclosed by Tian) are used in VSCEL PICs specifically to steer and focus the light, thus meeting the amended claimed limitation.
Tian is silent as to the VCSEL being a plurality of VCSELs. However, Wood discloses in Fig. 4, an example of a plurality of VCSELs (VCSEL array 104) being optically coupled to a PIC (108). Wood teaches that including a plurality of VCSELS enables the desired number of transmit and receive channels. Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention to include a plurality of VCSELs as taught by Wood in the apparatus of Tian so as to increase the number of channels. Furthermore, it has been held that a mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8.
Regarding claim 11, Wood discloses the photonic integrated circuit (PIC) further comprises a multiple-to-one coupler, and the multiple-to-one coupler is to combine diffracted laser beams from the plurality of grating couplers and couple to the waveguide (col. 12, lines 45-65, wherein optical coupling is maximized).
It would have been obvious to one of ordinary skill in the art at the effective filing date of the invention to include the coupler taught by Wood so as to maximize coupling between the laser beams exiting the VCSELs and the gratings on the waveguide on the PIC.
Regarding claim 12, Tian discloses in Fig. 3, the output facet comprises an angled flat surface (shown where arrow exits VCSEL 3).
Regarding claim 13, Tian is silent as to the output facet comprises a plurality of micro-prisms, a grating, a metasurface, or a curved surface comprising free-form elements. However, Wood discloses in Fig. 12 a VCSEL (104) having an output facet (shown by lines indicating light beam) comprising a plurality of micro-prisms, a grating, a metasurface, or a curved surface comprising free-form elements (micro-optics 1206), and filtering, focusing, or polarizing the laser beam through one or more optical elements on a bottom surface of the output facet (col. 12, lines 31-44). It would have been obvious to one of ordinary skill in the art at the effective filing date of the invention to include the micro-optics taught by Wood in the apparatus of Tian so as to enhance the quality of the optical coupling.
Claim(s) 6 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over CN 106950660 A (herein “Tian”, cited on the PTO-892 of 7/02/2025) in view of in view of US 11,726,276 B1 Wood et al. (herein “Wood”, cited on the PTO-892 of 7/02/2025) in further view of US 2022/0057519 A1 Goldstein et al. (herein “Goldstein”, cited on the attached PTO-892).
Regarding claims 6 and 14, Tian in view of Wood discloses micro-optics on the output facet (col. 12, lines 31-44). Goldstein explicitly discloses the use of microptics with metasurfaces (para [0156]). Goldstein teaches that this allows for rapid scanning of the beam. Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention to include metasurfaces so as to increase the scanning speed as taught by Goldstein. Furthermore, determining the shape of the metasurface would require only routine skill in the art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARY A EL-SHAMMAA whose telephone number is (571)272-2469. The examiner can normally be reached Mon-Fri, 9am-6pm (flexible schedule).
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/MARY A EL-SHAMMAA/Examiner, Art Unit 2874
/THOMAS A HOLLWEG/Supervisory Patent Examiner, Art Unit 2874