DETAILED ACTION
This Office action is responsive to Applicant’s response submitted 09 February 2026.
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 .
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 1-3 and 6-24 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. More specifically, independent claims 1, 10 and 13 all recite “a plurality of coils of a particular length”. However, the claim language “a particular length” is indefinite. The metes the bounds of the particular length is not clearly defined. It is unclear as to what length the particular length is to achieve the intended use of phase shifting. Since “a particular length” is not clearly defined, for examination purposes, the Examiner interprets “a particular length” to be any length. Therefore, claims 1, 10, 13 and their dependent claims are rendered indefinite.
Appropriate correction is required.
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) 1-3, 6- 9, 14-16, 22 and 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication 2012/0063714 to Park et al in view of U.S. Patent 10,663,662 to Gehl et al.
In regards to claims 1 and 23, Park recites a phase shifter (Figure 2A) consisting of silicon [0038], the phase shifter having: a slab portion; a rib portion protruding from the slab portion, each of the rib portion and the slab portion having an-contacted NPN junction scheme geometry [0036] such that the phase shifter has a pair of N- type material regions with a P-type material region arranged completely therebetween as a waveguide core, wherein the waveguide core extends from one end of the rib portion through the slab portion.
But Park fails to expressly recite wherein the phase shifter is arranged as a spiral structure having a plurality of coils of a particular length which enables at least 2pi/3pi phase shifting. However, Gehl teaches a spiral waveguide that provides phase shifting adjustments (Figures 5 & 9), wherein the spiral shaped layout provides a compact waveguide structure and maximize the use of available space while minimizing the loss associated with bending. (Columns 4-5) Gehl further teaches the type of waveguide to be spirals are ridge waveguides or rib waveguides. Furthermore, Park shows the phase shifter structure to be a ridge or rib waveguide (see Figure 2A) and Applicant also shows (see Applicant’s Figure 5) and discusses (see Applicant’s Specification [0061]) the phase shifter structure to be a rib waveguide. Additionally, both Applicant and Gehl teaches the spiral coiling of the rib waveguide for the purpose of size and area optimization (Applicant’s Specification [0087] & Gehl Columns 4-5). Therefore, it would have been obvious before the effective filing date to a person having ordinary skill in the art for the phase shifter to be arranged as a spiral structure having a plurality of coils of a particular length.
Park in view of Gehl further fail to expressly recite an antenna, the plurality of coils being arranged around the antenna. However, modified Park in view of Gehl teaches the desire to form a compact system. Gehl further teaches the system to be used in a variety of optical communication systems applications that utilize lengthy waveguides. (Column 1) Gehl also teaches placing components, such as a thermos-optic component in the center of the spiral for space saving purposes. Since antennas are a variety of optical communication systems and Gehl teaches placing components in the center of the spiral, it would have been obvious before the effective filing date to a person having ordinary skill in the art to have provided recite an antenna, the plurality of coils being arranged around the antenna for a purpose of a more compact optical communication system.
Lastly, although Park in view of Gehl does not expressly teach enabling at least 2pi/3pi phase shifting, an apparatus claim must be structurally distinguishable from the prior art. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function (In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997); See MPEP 2114 [R-1]). A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus if the prior art apparatus teaches all the structural limitations of the claim (Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987); see MPEP 2114 [R-1]).
The Examiner notes that the limitation “to enable at least 2pi/3i phase shifting” does not define any structure. The modified Park in view of Gehl device meets the structural limitations of the claim and is capable of being configured to perform this function. Therefore, the Park in view of Gehl must also be capable of enabling at least 2pi phase shifting or 3pi phase shifting.
In regards to claim 2, although Park does not expressly recites the phase shifter is configured to operate under depletion modulation, an apparatus claim must be structurally distinguishable from the prior art. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function (In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997); See MPEP 2114 [R-1]). It has been held that “apparatus claims cover what a device is, not what a device does” (Hewlett-Packard Co. v. Bausch & Lomb Inc. 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990)) A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus if the prior art apparatus teaches all the structural limitations of the claim (Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987); see MPEP 2114 [R-1]). The limitation “configured to operate under depletion modulation” does not define any structure. Since all of the claimed structural limitations are met by the prior art, it is presumed the device is capable of operating in the claimed manner. Therefore, the prior art anticipates the claimed invention.
In regards to claims 3 and 7, although Park does not expressly recite the phase shifter includes a maximum optical loss on the order of 3 dB (decibels) or less and a dynamic switching energy of the phase shifter is less than 0.1mWatt, Park meets the physical limitations claimed and appear patentably indistinguishable, “the discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Since all of the claimed structural limitations are met by the prior art, it is presumed the device possesses the same claimed properties and the produced properties. Therefore, the prior art anticipates the claimed invention.
In regards to claim 6, Park recites the phase shifter has a doping density in a range of 1016cm-3 to 1017cm-3. [0038]
In regards to claim 8 and 9, although Park does not expressly recite an acceptor concertation NA which ranges from 1016 to 1018cm-3 inclusive and a donor concentration ND which ranges from 1016 to 1018cm-3, inclusive, Park does teach accepter and donor impurity concentrations in the junction of the phase shifter. [0038] Furthermore, it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges of a result effective variable through routine experimentation involves only routine skill in the art. Therefore, it would have been obvious at the time the invention was made to a person having ordinary skill in the art to have an acceptor concertation NA which ranges from 1016 to 1018cm-3 inclusive and a donor concentration ND which ranges from 1016 to 1018cm-3, inclusive. In re Aller, 105 USPA 233; In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980)
In regards to claim 14, Park teaches the phase shifter is symmetrical.
In regards to claim 15, Park teaches the slab portion includes a pair of opposing edges each formed from one of the pair of N-type material regions.
In regards to claim 16, although Park fails to expressly recite the waveguide core width dimension within a range 500 nm to 2 pm, inclusive, it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges of a result effective variable through routine experimentation involves only routine skill in the art. Therefore, it would have been obvious at the time the invention was made to a person having ordinary skill in the art to have the waveguide core width dimension within a range 500 nm to 2 pm, inclusive. In re Aller, 105 USPA 233; In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980)
In regards to claim 22, Gehl recites the phase shifter to be segmented into multiple electrically-contacted regions. (Column 8) Although Park in view of Gehl does not expressly recite “in order to parallelize the resistors”, the Examiner notes that the limitation “in order to parallelize the resistors” does not define any structure. The modified Park in view of Gehl device meets the structural limitations of the claim and is capable of being configured to perform this function. Therefore, the Park in view of Gehl must also be capable of in order to parallelize the resistors.
Response to Arguments
Applicant’s asserts the Non-Final Office action mailed 19 November 2025 fails to address claim 23. However, this Examiner disagrees. Claim 23 has been addressed together with claim 1 on Page 3 of the Office action.
Applicant further argues the limitation “to enable last least 2pi/3pi phase shifting” read together with “a plurality of coils” defines structure. Additionally, Applicant cites Applicant’s Specification, paragraph [0009] to support this assertion. However, the Examiner disagrees. The limitation “a plurality of coils” is taught by modified Park in view of Gehl. The limitation “to enable at least 2pi/3pi phase shifting” does not provide any additional structure to the plurality of coils to enable the specific phase shifting limitations. While Applicant’s Specification may provide additional structure such as pitch and total length, it is improper to import language from the specification into the claim. Although Applicant has amended the claim to include “a particular length”, the limitation is indefinite as discussed above.
Lastly, Applicant argues Gehl’s configuration of a spiral is a hybrid spiral. However, the claim language does not require a specific spiral, only “a spiraled structure”. The Gehl reference meets the claim limitation of a “spiraled structure”.
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 TINA M WONG whose telephone number is (571)272-2352. The examiner can normally be reached M-F 8:30-5:30.
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/TINA WONG/Primary Examiner, Art Unit 2874