DETAILED ACTION
This office action is in response to the election filed on December 31, 2025. Claims 1-18 remain pending (claims 2-12 and 18 are withdrawn from consideration as being related to either non-elected Groups or Species).
Claims 1 and 13-17 are examined herein in a first office action on the merits, with claim 1 as the sole independent claim.
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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-17, and Species VIII, claims 14-17, in the reply filed on December 31, 2025, is acknowledged. It is noted that claims 1 and 13 were found as generic in the restriction requirement mailed on October 31, 2025. Therefore, claims 1 and 13-17 are examined herein in the following first office action on the merits.
Claim 18 of Group II is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on December 31, 2025. Claims 2-12 are also withdrawn from consideration at this point of prosecution, pertaining to non-elected Species claims in Group I. Claims 2-12 are subject for future claim rejoinder upon allowance of an independent claim upon which they depend.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The prior art documents submitted by Applicant in the Information Disclosure Statements filed on February 6, 2023, have been considered and made of record (note attached copy of forms PTO-1449).
Claim Interpretation
The following is a general comment regarding the broadest pending independent claim 1. Of note is that claim 1 recites a “substrate formed of silicon” and “a first optical waveguide”; and “a semiconductor element formed of a III-V compound semiconductor” and “a second waveguide.” However, neither the first or second “waveguide” is defined by any particular material (in other words the 1st waveguide is not necessarily “silicon” and the 2nd waveguide is not necessarily “III-V material”). Accordingly, the breadth of claim 1 is duly noted. Applicant’s cooperation is respectfully requested to amend substantial structural features into at least independent claim 1, in response to these general comments, and noting the following prior art rejections.
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.
Claims 1, 13, 14, and 17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Van Campenhout et al. US 2019/0101711 A1 (which has matured into U.S. Patent No. 10,678,007 B2).
Van Campenhout et al. US 2019/0101711 A1 teaches (ABS; Figs. 1, 3, 4; corresponding text, in particular paragraphs [0091] – [0112]; Claims) a semiconductor optical device (as in Fig. 1, also shown in different perspectives in Figs. 3-4; “III-V to SI 100% directional couplers”, note Fig. 3 language) comprising: a substrate formed of silicon (paras [0010], [0011], [0091], [0092], [0096]; SOI, 104 / 106) and having a first optical waveguide 108 (the “passive waveguide”); and a semiconductor element formed of a III-V compound semiconductor (paras [0010], [0011], [0093], [0094], [0096]; all features down to 110 are part of the “semiconductor element”) and having a second optical waveguide 110 (the “active waveguide”), the semiconductor element being structurally connected and attached to the upper surface of the substrate (strongly connected to during fabrication step(s)), wherein the first optical waveguide and the second optical waveguide form a directional coupler (see Fig. 2, “directional couplers”), which clearly, fully meets Applicant’s claimed structural limitations for independent claim 1.
Note in particular that claim 1 is a device claim. Therefore, the Examiner asserts that there is no patentable weight given to the method step of “bonding to” in the claim that the “semiconductor element” and the (silicon) “substrate” as formed or connected. The US PTO is not equipped to test the myriad methods of forming and making a device, when the claim is an apparatus / device claim. Therefore, the Examiner asserts that there is no patentable structure imputed by the “bonded to”, and the structural features themselves as found in claim 1 are anticipated by Van Campenhout ‘711, because those sub-layers are attached to each other securely.
Regarding dependent claim 13, see Van Campenhout paras [0013], [0018], [0103] – [0104], [0107] , [0126] in which optical gain functions are disclosed, and the overall semiconductor element (in combination) can function as a “laser” element (laser diode at least in para [0126]), which meets all structure (lasers also shown in Fig. 4).
Regarding claim 14, see the tapered tip formation of the first optical waveguide in Fig. 3, with the tapering at the end thereof, and the overall formation of the tapering tip being part of the “directional coupler” formation with the second optical waveguide (Fig. 3), which meets all claimed structure.
Regarding claim 17, the tapering tip is symmetrically shaped (to a pointing end which is symmetric) to the extension / end of the 1st waveguide in Fig. 3.
Claims 1 and 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wilmart et al. FR-3068527 A1 (see English translation attached as PTO-892 form reference U).
Wilmart et al. FR-3068527 A1 teaches (ABS; Figs. 7A, 7B, 8, 16; corresponding text, in particular English translation pages 6-14; Claims) a semiconductor optical device (as in Fig. 8, also shown in different perspectives in Fig. 16; counter or contra directional coupler, as in Fig. 8, pg. 12 translation) comprising: a substrate 60/64/66 formed of silicon (at least crystalline silicon (60), silicon nitride in silicon oxide (64), or monocrystalline silicon in layer 66) and having a first optical waveguide 25 (the “silicon waveguide”); and a semiconductor element formed of a III-V compound semiconductor (all features of layers 68 / 70 are part of the “semiconductor element”, with amplifier 30 and WG 28; pgs. 7-8) and having a second optical waveguide 28 (being made of III-V gain material, pg. 8), the semiconductor element being structurally connected and attached to the upper surface of the substrate (strongly connected to during fabrication step(s)), wherein the first optical waveguide and the second optical waveguide form a directional coupler (see Wilmart Figs., creation of counter – or contra - “directional” coupling functionality), which clearly, fully meets Applicant’s claimed structural limitations for independent claim 1.
Note in particular that claim 1 is a device claim. Therefore, the Examiner asserts that there is no patentable weight given to the method step of “bonding to” in the claim that the “semiconductor element” and the (silicon) “substrate” as formed or connected. The US PTO is not equipped to test the myriad methods of forming and making a device, when the claim is an apparatus / device claim. Therefore, the Examiner asserts that there is no patentable structure imputed by the “bonded to”, and the structural features themselves as found in claim 1 are anticipated by Wilmart FR ‘527, because those sub-layers are attached to each other securely.
Regarding dependent claim 13, Wilmart FR ‘527 has optical gain in the semiconductor as part of the III-V material (“whose heart is made of a gain material III-V; Claim 1)) of the waveguide 28, and overall has laser functions (a source “laser” element, Title), which meets all structure.
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.
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 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Tolstikhin et al. US 2008/0138008 A1, and further in view of Dupont et al. U.S. Patent No. 8,472,493 B2.
Regarding sole examined independent claim 1, Tolstikhin et al. US 2008/0138008 A1 teaches (ABS; Figs. 1, 2; corresponding text, in particular paragraphs [0039] – [0050]; Claims) a semiconductor optical device (as in Figs. 1-2, also shown in different perspectives in later Figs.; directional coupling functionality shown in bi- or co- directional nature, as in Fig. 1-2) comprising: a substrate (lower substrate and also 210 in Fig. 2) and having a first optical waveguide 110 (the “passive waveguide”); and a semiconductor element formed of a III-V compound semiconductor (all features of layers above include part(s) of III-V materials, paras [0040], [0011]; Claim 1; the “active waveguide(s)” 220 / 230 in Fig. 2 are part of the “semiconductor element”) and having a second optical waveguide 220 / 230 (being part of the element with III-V gain material), the semiconductor element being structurally connected and attached to the upper surface of the substrate (strongly connected to during fabrication step(s)), wherein the first optical waveguide and the second optical waveguide form a directional coupler (see Tolstikhin ‘008 Figs., creation of co- or bi- directional coupling functionality between a passive and active waveguide(s)), which clearly, fully meets Applicant’s claimed structural limitations for independent claim 1.
Note in particular that claim 1 is a device claim. Therefore, the Examiner asserts that there is no patentable weight given to the method step of “bonding to” in the claim that the “semiconductor element” and the (silicon) “substrate” as formed or connected. The US PTO is not equipped to test the myriad methods of forming and making a device, when the claim is an apparatus / device claim. Therefore, the Examiner asserts that there is no patentable structure imputed by the “bonded to”, and those structural features themselves as found in claim 1 are found in Tolstikhin, because those sub-layers are attached to each other securely.
Regarding independent claim 1, Tolstikhin US ‘008 does not expressly and exactly teach that the substrate, and or first waveguide (the “passive waveguide”), is formed of silicon. Therefore, Tolstikhin US ‘008 cannot anticipate claim 1 under the strict requirements of 35 U.S.C. 102. However, such features are found obvious based on common skill in the art and based on the prior art reference to Dupont et al. U.S. Patent No. 8,472,493 B2.
Dupont et al. U.S. Patent No. 8,472,493 B2 teaches (ABS; Figs. 1-3; corresponding text; Claims) a semiconductor device in which an active laser layer 8/7/6 is optically coupled to as passive (lower) waveguide layer (at 3 / 2 / 1) and in which the lower substrate layer is at least formed of silicon (Background, Figs. 1-2, at sub-layer of the “substrate” 1, 2, and 3 can be formed of silicon material (column 1, lines 40-67). Additionally, the upper layers (of the laser) are made of III-V compound semiconductor materials, even though such coupling may not expressly be “directional” in nature.
Since Tolstikhin and Dupont are both from the same field of endeavor, the purpose disclosed by Dupont would have been recognized in the pertinent art of Tolstikhin.
A person having ordinary skill in the art at a time before the effective filing date of the current application would have recognized the teaching of Dupont, to use silicon material as the passive waveguide, or as part of the substrate itself, into the base design of the semiconductor optical device (which is capable of directionally coupling between III-V material “active” WG and a “passive” WG), to allow for a recognized material in optics for the passive part of a waveguide to couple optical signals, and while noting the “silicon” is ubiquitous in semiconductor optics, for known purposes. Further, it would have required no undue burden or unnecessary experimentation to arrive at such feature of using “silicon” for the waveguide and/or substrate of the lower portion of Tolstikhin. See KSR v. Teleflex, 127 S.Ct. 1727 (2007). For these reasons, independent claim 1 is found obvious over Tolstikhin and further in view of Dupont (henceforth “COMBO”).
Regarding dependent claim 13, at least Tolstikhin of COMBO has optical gain in the semiconductor as part of the III-V material, with the upper features of the “active” waveguide of the waveguide(s) 220 / 230, and overall has laser functions (can be injection laser(s) as featured, or a photodetector), which meets all structure.
Claims 15 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Van Campenhout et al. US 2019/0101711 A1 (which has matured into U.S. Patent No. 10,678,007 B2), based on independent claim 1 above, standing alone.
Regarding sole examined independent claim 1, Van Campenhout et al. US 2019/0101711 A1 teaches (ABS; Figs. 1, 3, 4; corresponding text, in particular paragraphs [0091] – [0112]; Claims) a semiconductor optical device (as in Fig. 1, also shown in different perspectives in Figs. 3-4; “III-V to SI 100% directional couplers”, note Fig. 3 language) comprising: a substrate formed of silicon (paras [0010], [0011], [0091], [0092], [0096]; SOI, 104 / 106) and having a first optical waveguide 108 (the “passive waveguide”); and a semiconductor element formed of a III-V compound semiconductor (paras [0010], [0011], [0093], [0094], [0096]; all features down to 110 are part of the “semiconductor element”) and having a second optical waveguide 110 (the “active waveguide”), the semiconductor element being structurally connected and attached to the upper surface of the substrate (strongly connected to during fabrication step(s)), wherein the first optical waveguide and the second optical waveguide form a directional coupler (see Fig. 2, “directional couplers”).
Regarding further dependent claims 15 and 16, Van Campenhout ‘711 does not expressly and exactly teach that the tapering of the first optical waveguide is asymmetrical shaped during the extension of such first waveguide (claim 15) and in that the asymmetry is formed in the tapered portion in the approach of the 1st to 2nd waveguide connective features (claim 16).
However, at a time before the effective filing date of the current application, it would have been an obvious matter of common skill and design choice to a person of ordinary skill in the art to use features such asymmetry in the tapering design of two connected optical waveguides used for such coupling, because Applicant has not disclosed that using such features provides an advantage, is used for a particular purpose, or solves a stated problem. One of ordinary skill in the art, furthermore, would have expected Van Campenhout to perform equally well with such features as asymmetrical tapering features between the two waveguides, because these claim terms would have been easily integrated and would have also been recognized by one with common skill in the art to improve optical signal propagation coupling in an upward direction (into / out of the base substrate) for connection between a III-V gain material WG and a passive (silicon based) WG and substrate. It would have required no undue burden or unnecessary experimentation to arrive at those features with a semiconductor optical device such as in Van Campenhout. Further, the base structure of the sole independent claim 1 is clearly anticipated by Van Campenhout and a number of other pertinent prior art reference(s). Therefore, it would have been an obvious matter of common skill and design choice to modify (and/or update) Van Campenhout to obtain the invention as specified in claims 15-16. See KSR v. Teleflex, 127 S.Ct. 1727 (2007).
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: PTO-892 form references B-E, which pertain to the state of the art of optical semiconductor devices that use silicon substrates / waveguides and also couple (directionally, adiabatically, evanescently, etc.) between two separated regions in an integrated opto-electronic design.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Daniel Petkovsek whose telephone number is (571) 272-4174. The examiner can normally be reached M-F 7:30 - 6 PM.
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/DANIEL PETKOVSEK/Primary Examiner, Art Unit 2874 March 16, 2026