DETAILED ACTION
Response to Arguments
Applicant’s arguments filed on 1/16/2026 have been considered but they are not persuasive. And new ground of rejections (under 35 U.S.C. 112(a) and 112(b)) are made.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-23 and 25-28 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
1). Claim 1, and thus depending claims 2-11 and 26, recites the limitation “such that light conveyed to each optical output of the given one of the plurality of subsets of optical outputs includes all wavelengths of light conveyed to any one or more optical inputs of the given one of the plurality of subsets of optical inputs” (lines 22-24 on page 2).
Based on the claims, any one of the optical inputs of the given one of the plurality of subsets of optical inputs can have multiple wavelengths (“wavelengths”), and the wavelengths of light conveyed to any one or more optical inputs of the given one of the plurality of subsets of optical inputs may be same. E.g., if the given one subset of inputs has three inputs (input 1, input 2 and input 3) and its corresponding given one subset of outputs has two outputs (output 1 and output 2), and the input 1 has two wavelength (l1, l2), input 2 has two wavelength (l2, l3), input 3 has two wavelength (l3, l4), based on the claim 1 (“all wavelengths” and “one or more optical inputs”), the output 1 can have (l1, l2, l3), and the output 2 can have (l1, l2, l3); and another possible outputs are: the output 1 has (l2, l3, l4), and the output 2 has (l2, l3, l4). That is, each optical output of the given subset outputs includes all wavelengths from one or more optical inputs of the given subset of optical inputs, and a wavelength to one input of the given one subset may be the same as the wavelength to another input of the given one subset.
But, the original disclosure does not disclose that any one of the optical inputs of the given one of the plurality of subsets of optical inputs includes more than one wavelength. The original disclosure discloses that each input of the optical distribution network has a single wavelength (continuous wave CW) ([0034], Figures 7A – 7C, [0064]-[0067]), and “Each one of the plurality of optical inputs of the optical distribution network is connected to receive a different one of the beams of continuous wave light as output by the plurality of lasers” ([0007]), “the optical distribution network 703 is configured to convey different ones of the N wavelengths (λ1 to λN) of CW light received at the N optical inputs 707-1 to 707-N to different ones of the M optical outputs 708-1 to 708-M” ([0065]-[0067]); that is, the wavelength to one input is different from the wavelengths to any other inputs.
Claim 1-11 and 26 contain subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention
Claims 12 and 23, thus depending claims 13-22, 25 and 27-28 respectively, recites similar limitations as claim 1; therefore claims 12 and 23, and depending claims 13-22, 25 and 27-28, are rejected for the same reasons as applied to claims 1-11 and 26.
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 1-23 and 25-28 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.
Claim 1, and thus depending claims 2-11 and 26, recites the limitation “wherein the optical distribution network is configured so that light conveyed into each of the plurality of subsets of optical inputs is conveyed to one of the plurality of subsets of optical outputs” (line 26 on page 2 to line 2 on page 3). However, in lines 14-18 on page 2, claim 1 requires “wherein the optical distribution network is configured to convey a portion of light received at a given one of the plurality of subsets of optical inputs to a given one of the plurality of subsets of optical outputs and just to the given one of the plurality of subsets of the optical outputs”.
But, according to the limitation “wherein the optical distribution network is configured so that light conveyed into each of the plurality of subsets of optical inputs is conveyed to one of the plurality of subsets of optical outputs”, if there are two subsets of optical inputs and two subsets of optical outputs (e.g., output 1 or output 2), the two sets of optical inputs can be conveyed to output 1, or the two sets of optical inputs can be conveyed to output 2 (because of the phrase “one of”); that is, the two sets of optical inputs can be conveyed to either output 1 or output 2, which contradicts, and makes unclear, the function defined by the limitations “wherein the optical distribution network is configured to convey a portion of light received at a given one of the plurality of subsets of optical inputs to a given one of the plurality of subsets of optical outputs and just to the given one of the plurality of subsets of the optical outputs”. This renders the claim scope unclear, and be indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claims 12 and 23, thus depending claims 13-22, 25 and 27-28 respectively, recites similar limitations as claim 1, therefore claims 12 and 23, and depending claims 13-22, 25 and 27-28, are rejected for the same reasons as applied to claims 1-11 and 26.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-23 and 25 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-22 of U.S. Patent No. 12,537,603. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-22 of U.S. Patent No. 12,537,603 contain all the limitations of claims 1-23 and 25 of the instant application.
Following table shows the comparison between claim 1 of the instant application and the claim 1 of U.S. Patent No. 12,537,603. Similar comparisons are for independent claims 12 and 23.
Instant Application 18/174,860 (Claim 1)
U.S. Patent No. 12,537,603 (Claim 1)
An electro-optical chip, comprising:
a plurality of transmit macros, each of the plurality of transmit macros including an optical waveguide and a plurality of ring resonators positioned along the optical waveguide within an evanescent optical coupling distance of the optical waveguide; and
An electro-optical chip, comprising: a plurality of transmit macros, each of the plurality of transmit macros including an optical waveguide and a plurality of ring resonators positioned along the optical waveguide within an evanescent optical coupling distance of the optical waveguide; and
an optical distribution network implemented onboard the electro-optical chip, the optical distribution network having a plurality of optical inputs and a plurality of optical outputs,
an optical distribution network implemented onboard the electro-optical chip, the optical distribution network having a number N of optical inputs and a number M of optical outputs, wherein the number N is greater than one and the number M is greater than one, each of the optical inputs connected to receive a single and different wavelength of continuous wave light so that a number N of different wavelengths of continuous wave light are collectively received across the number N of optical inputs,
wherein the plurality of optical inputs is delineated into a plurality of subsets of optical inputs, wherein each of the plurality of subsets of optical inputs includes at least two of the plurality of optical inputs, wherein each of the plurality of optical inputs is in any given one of the plurality of subsets of optical inputs and just in the given one of the plurality of subsets of optical inputs,
wherein the plurality of optical outputs is delineated into a plurality of subsets of optical outputs, wherein each of the plurality of subsets of optical outputs includes at least two of the plurality of optical outputs, wherein each of the plurality of optical outputs is in any given one of the plurality of subsets of optical outputs and just in the given one of the plurality of subsets of optical outputs,
wherein the optical distribution network is configured to convey a portion of light received at a given one of the plurality of subsets of optical inputs to a given one of the plurality of subsets of optical outputs and just to the given one of the plurality of subsets of the optical outputs, such that light conveyed to each optical output of the given one of the plurality of subsets of optical outputs includes all wavelengths of light conveyed to any one or more optical inputs of the given one of the plurality of subsets of optical inputs, wherein the optical distribution network is configured so that light conveyed into each of the plurality of subsets of optical inputs is conveyed to one of the plurality of subsets of optical outputs,
the optical distribution network configured to convey a portion of the continuous wave light received at each optical input within a first subset of the optical inputs to each optical output within a first subset of the optical outputs, wherein a number of optical inputs in the first subset of the optical inputs is less than the number N, and
wherein a number of optical outputs in the first subset of the optical outputs is less than the number M, the optical distribution network configured to convey a portion of the continuous wave light received at each optical input within a second subset of the optical inputs to each optical output within a second subset of the optical outputs,
wherein a number of optical inputs in the second subset of the optical inputs is less than the number N, and wherein a number of optical outputs in the second subset of the optical outputs is less than the number M, wherein each optical input of the first subset of optical inputs is not in the second subset of the optical inputs, wherein each optical output of the first subset of optical outputs is not in the second subset of the optical outputs,
wherein each of the plurality of optical outputs is optically connected to the optical waveguide in a corresponding one of the plurality of transmit macros.
each of the number M of optical outputs optically connected to the optical waveguide in a corresponding one of the plurality of transmit macros.
Dependent claims 2-11 and 13-22 of the U.S. Patent No. 12,537,603, combined with the independent claims 1 and 12, contain the similar limitations of dependent claims 2-11, 13-22 and 25 of the instant application.
Claims 26-28 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 12 of U.S. Patent No. 12,537,603 in view of Tian et al (CN 113141548. English Machine Translation has been provided previously with the Final Office Action).
Claims 1 and 12 of U.S. Patent No. 12,537,603 discloses all of the subject matter as applied to claims 1, 12 and 12. But, the claims 1 and 12 of U.S. Patent No. 12,537,603 do not expressly disclose that the optical distribution network is dynamically configurable such that conveyance of light from a particular one of plurality of subsets of optical inputs to a particular one of the plurality of subsets of optical outputs is configurable during operation of the electro-optical chip.
However, to make an optical distribution network dynamically configurable is known in the art. E.g., Tian et al discloses an optical communication system (Figure 2), and an optical distribution network (ODN in Figure 2) is dynamically configurable such that conveyance of light from a particular subset of a plurality of optical inputs (from OLTs) to a particular one of the plurality of optical outputs (outputs to ONUs) is configurable during operation of the optical communication system (by controller SDN, Figure 2).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to apply the teachings of Tian et al to the claims 1 and 12 etc. of U.S. Patent No. 12,537,603 so that the system/method is more flexible and intelligent, and the functions of the system/method is enhanced.
Conclusion
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/LI LIU/Primary Examiner, Art Unit 2634 February 20, 2026