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 .
Response to Amendment
Applicant’s amendments filed on December 23rd, 2025 have been fully considered and entered.
The rejections to claims 1-8 and 12 under 35 USC 102 have been withdrawn in view of applicant’s amendments to the claims.
the claims are now rejected under new grounds under 35 USC 103.
The rejections to claims 3 and 10 under 35 USC 112 have been withdrawn.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-8 and 12 have been considered but are moot because the new grounds of rejection necessitated by applicant’s amendments.
Applicant argues: The block (20) and the adhesive injected through the hole (56) of the block (20) in Prior Art 1 merely fix the ferrule (8), while the protective cap and the UV-curable material of the present invention protect the optical path formed in the optical assembly.
The examiner respectfully disagrees. The optical path formed by lens and mirror assembly would be protected by the adhesive applied in prior art 1. A skilled artisan would use an epoxy or silicone material that does not render this optical path opaque, as is standard in the art.
The device as claimed does not require that the adhesive ‘protect’ the optical path.
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, 12 and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kojima et al. (US 6181854 B1) in view of Birincogioulu (US 20080166136 A1, hereafter known as B1).
Regarding claim 1;
Kojima et al. in view of Sasaki et al. discloses an immersible optical module (the optical module disclosed in Figure 4), comprising:
a substrate (Figure 4, substrate 2) including an optical device (Figure 4, ferrule 8, optoelectric element 12/14);
an optical assembly (ferrule 8, and connected components) coupled to the substrate and forming an optical path between an optical fiber and the optical device (Figure 4 and Figure 5C show that ferrule 8 is enclosed by block 20 on substrate 2 and forms an optical path to optoelectric element 12/14);
and a protective cap (Figure 5C, block 20) coupled to the optical assembly and including an injection hole (Figure 9, hole 56) through which a material (Figure 9, adhesive 58) is injected;
wherein the immersible optical module is formed through a resin molding process (paragraph 7 explains and Figure 3 depicts how the mold setup and how the resin is applied to create the immersible optical module), after the substrate (2), the optical assembly (ferrule 8 and connected components) and protective cap (20) are coupled.
Kojima et al. additionally teach that a thermocuring adhesive may be replaced by a UV curing adhesive material (paragraph 9), and that radiating UV light for a UV curable material would also require changing the material of the cap (20) to be transparent in the UV.
Kojima does not explicitly disclose that the optical assembly includes a reflector and a lens forming the optical path between the optical fiber and the optical device. However, the use of a reflector and lens to redirect and focus an optical signal between a fiber and a photodetector is a known optical coupling configuration.
B1 teaches a unitary optical receiver assembly (module 10, Figures 1-3) in which
an optical assembly includes a collimating lens (first aspheric lens 18, molded along vertical wall 20; paragraph 23) and a turning mirror (angled. beveled wall 24) that together form an optical path between an optical fiber (fiber 12) and a photosensitive device (diode 30).
B1 further teaches a focusing lens (second aspheric lens 26, molded along horizontal wall 28).
Thus, the optical assembly of B1 includes a reflector (24) and a lens (18) that form an optical path between an optical fiber and an optical device.
Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to modify the invention described in the invention of Kojima under the teachings of B1, to include a reflector and a lens to facilitate the optical path between the fiber and device. This may be accomplished using ordinary placement techniques and components (lens, reflector/angled wall machining) known in the art, and would predictably result in more efficiently coupled light between the optical fiber and the optoelectric element and to enable passive alignment with lesser need for active adjustment.
Regarding claim 2;
Kojima et al. discloses the immersible optical module of claim 1, wherein the protective cap (block 20) comprises a fixing part (Figure 5C shows a cross section where the block 20 and substrate 2 are concavely formed inside to help fix the elements to assembly 8) for coupling to the optical assembly.
Regarding claim 3;
Kojima et al. in view of B1 discloses the device of claim 2, wherein the fixing part is formed by which a portion of a side surface of the protective cap (20) is concavely formed in an inward direction of the protective cap (Figure 5C depicts a cross section where the protective cap, or block 20, is concavely formed towards the inside along one side).
Regarding claim 4;
Kojima et al. in view of B1 discloses the device of claim 2, wherein the protective cap (20) is coupled with the optical assembly (8), being spaced apart by a certain space (Figure 9, recesses 52 and 54, as described in paragraph 12) without being in direct contact with the optical assembly except for the fixing part (Figure 9 depicts this).
Regarding claim 5;
Kojima et al. in view of B1 teaches the optical module of claim 4, wherein the UV curable material injection through the injection hole fills the space spaced apart between the protective cap and the optical assembly (adhesive 58 fills recesses 52 and 54).
Regarding claim 6;
Kojima et al. in view of B1 teaches the optical module of claim 1, wherein the protective cap is made of a material capable of transmitting UV light (in paragraph 9, Kojima et al. additionally teach that a thermocuring adhesive may be replaced by a UV curing adhesive material, and that radiating UV light for a UV curable material would also require changing the material of the cap (20) to be transparent in the UV).
Regarding claim 7;
Kojima et al. in view of B1 teaches the optical module of claim 1, wherein the protective cap comprises an inlet through which an optical fiber is introduced into the optical assembly (Figure 1, ferrule 8 slides into groove 4 and below protective cap 20, and has an inlet [hole 10] for an optical fiber to be introduced to the optical assembly).
Regarding claim 8;
Kojima et al. in view of B1 teaches the optical module of claim 1, wherein an injection hole is located on an upper surface of a protective cap (Figure 9, injection hole 56 is on the top surface of block 20).
Regarding claim 12;
Kojima et al. in view of B1 discloses the immersible optical module of claim 1, wherein a lower surface (lead frame 24) of the optical assembly is formed to encapsulate an area where the optical devices of the substrate are located (Figure 3, lead frame 24 is disposed under and encapsulates the area where the optical devices of the substrate are located).
Regarding claim 13;
Kojima et al. in view of B1 discloses the immersible optical module of claim 12, wherein:
Kojima et al. teaches that a UV curable material injected through an injection hole (Paragraph 7 details that the resin is injected through an injected hole [not shown]) seals the encapsulated area (Figure 3, the resin injected into mold 30 seals the encapsulated area).
Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to modify the invention of claim 12 under the teachings of Kojima et al. to include a second injection hole through which a UV curable material is injected to seal the encapsulated area. This could be accomplished using techniques known to the art (sealed molds with injection holes), and would predictably result in an immersible optical module sealed from the external environment.
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kojima et al. (US 6181854 B1) in view of Birincogioulu (US 20080166136 A1, hereafter known as B1), and further in view of Sasaki et al. (US 6293711 B1).
Regarding claim 14;
Kojima et al. in view of B1 discloses the immersible optical module of claim 1.
Sasaki et al. teach an optical assembly which comprises a body (Figure 9, substrate 4 and all devices contained on it) and a cover (retaining member 30 covers a portion of the assembly).
Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to design the optical assembly of claim 1 under the teachings of Sasaki et al., wherein the optical assembly comprises a body and a cover. This could be accomplished using methods known to the art, and would predictably result in a stable optical assembly which is protected from the external environment by a cover, and compactly contained to the body of the assembly to minimize space.
Claim(s) 9 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kojima et al. (US 6181854 B1) in view of Birincogioulu (US 20080166136 A1, hereafter known as B1), and further in view of Sugioka et al. (US 20090010603 A1).
Regarding claim 9;
Kojima et al. in view of B1 discloses the immersible optical module of claim 1.
Sugioka et al. disclose an optical package utilizing injection molding (paragraph 142) of resin composed of UV curable materials (paragraph 199 explicitly states that UV curing is performed), including at least one of:
An epoxy-based composition (paragraph 35, “...compound having at least one… epoxy group [is] preferably used”)
A silicone-based composition (paragraph 154, “…a silicone resin is poured to the master die to produce a die for molding the core…”)
A polyether-based composition (paragraph 63, “the above-mentioned polyether methacrylate…”)
A urethane-based composition (paragraph 58)
A polyester-based composition (paragraph 87)
A modified acryl-based composition (paragraph 56-57 detail many acryl-based compositions)
Sugioka et al. do not disclose silicone-acrylate-based composition or polyacrylic composition for the UV curable material.
Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to modify the resin used for injection molding in the device of claim 1 to be based on epoxy, silicone, polyether, urethane, polyester, or a modified acryl, based on the teachings of Sugioka et al. This could be accomplished using methods known to the art, and would predicably result in a reliable UV curable resin which is appropriate for injection molding and forming the immersible optical module.
Regarding claim 10;
Kojima et al. in view of B1 discloses the immersible optical module of claim 1.
Sugioka et al. discloses an optical package utilizing injection molding (paragraph 142) of resin composed of a UV curable material (paragraphs 35, 56-58, 63, 87, and 154), wherein the UV curable material has a viscosity of 1,000 mPa*s or more (paragraphs 180-181 disclose an epoxy resin with a viscosity of 4,330 mPa*s at 25 degrees Celsius).
Sugioka does not expressly disclose a value of 3,000 mPa*s or less, but does motivate a low viscosity as being beneficial for processibility during production (paragraph 157, “Further, if the curable silicone material with a low viscosity is used, the processibility, e.g. removal of foams produced at the time of the production, or die formation with high precision of transfer patterns is made possible.”)
Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to modify the UV curable material in the module of claim 1 under the teachings of Sugioka et al, to have a viscosity of 1,000 mPa*s or more, and 3,000 mPa*s or less. A skilled artisan would have been motivated to reduce the viscosity of the UV curable material to improve processibility during production. Arriving at a range between 1,000 to 3,000 mPa*s would have been a matter of routine optimization of a results effective variable (viscosity); it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kojima et al. (US 6181854 B1) in view of Birincogioulu (US 20080166136 A1, hereafter known as B1), and further in view of Okada et al. (US 20220373758 A1).
Regarding claim 11;
Kojima et al. in view of B1 discloses the immersible optical module of claim 1.
Okada et al. discloses a UV curable resin (paragraph 2) with a viscosity of 2,000 mPa*s or more and 3,000 mPa*s or less (Abstract).
Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to modify the UC curable material in the invention of claim 1 to have a viscosity of 2,000 mPa*s or more and 3,000 mPa*s or less, under the teachings of Okada et al. This could be accomplished used methods and materials known to the art, and would predictably result in an optical device wherein the injection molding is performed using a material with the ideal viscosity for filling a space and forming a mold for an immersible optical module.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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/PREET B PATEL/Examiner, Art Unit 2874
/THOMAS A HOLLWEG/Supervisory Patent Examiner, Art Unit 2874
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