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 .
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 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.
DETAILED ACTION
This is an AIA application filed July 17, 2023.
The earliest effective filing date of this AIA application is seen as August 9, 2022, the date of the earliest priority application (United States provisional patent application serial number 63/396,507) for any claims which are fully supported under 35 U.S.C. 112(a) by the provisional application.
The effective filing date of this AIA application is seen as July 17, 2023, the actual filing date, for any claims that are not fully supported by the foregoing provisional or non-provisional application(s).
The claims filed May 18, 2026 are entered, currently outstanding, and subject to examination.
This action is in response to the filing of the same date.
The current status and history of the claims is summarized below:
Last Amendment/Response
Previously
Amended:
1, 9, & 15
N/A
Cancelled:
2, 8, 10, 14, & 17
N/A
Withdrawn:
none
N/A
Added:
none
N/A
Claims 1, 3-7, 9, 11-13, 15, 16, and 18-20 are currently pending and outstanding.
Regarding the last reply:
Claims 1, 9, and 15 were amended.
Claims 2, 8, 10, 14, and 17 were cancelled.
No claims were withdrawn.
No claims were added.
Claims 1, 3-7, 9, 11-13, 15, 16, and 18-20 are currently outstanding and subject to examination.
This is a final action and is the second action on the merits.
Allowable subject matter is not indicated below.
Often, in the substance of the action below, formal matters are addressed first, claim rejections second, and any response to arguments third.
Reference to Published Application
In its response, Applicant has made reference to the published application. For appeal purposes, all references to the specification must consistent with the official record of prosecution. 37 C.F.R. § 41.37(c)(a)(iii). Reference to the patent application publication does not satisfy this requirement. Examiner strongly urges Applicant to make its best record and to only refer to the specification of record by page and line number per 37 C.F.R. § 41.37.
Specification
Applicant must provide the same terminology/vocabulary/phrasing in the specification that is present in the claims. At least one term or phrase is missing from the specification present in the claim(s).
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o).
Correction is required as the following amendment(s)/text in the claims find(s) no antecedent in the specification.
Claim(s)
Antecedent Missing For
1, 9, and 15
"single plane"
As set forth in MPEP § 608.01(o):
The meaning of every term used in any of the claims should be apparent from the descriptive portion of the specification with clear disclosure as to its import; and in mechanical cases, it should be identified in the descriptive portion of the specification by reference to the drawing, designating the part or parts therein to which the term applies. A term used in the claims may be given a special meaning in the description. See MPEP § 2111.01 and § 2173.05(a).
Usually the terminology of the original claims follows the nomenclature of the specification, but sometimes in amending the claims or in adding new claims, new terms are introduced that do not appear in the specification. The use of a confusing variety of terms for the same thing should not be permitted.
. . . While an applicant is not limited to the nomenclature used in the application as filed, he or she should make appropriate amendment of the specification whenever this nomenclature is departed from by amendment of the claims so as to have clear support or antecedent basis in the specification for the new terms appearing in the claims. This is necessary in order to insure [sic, ensure] certainty in construing the claims in the light of the specification, Ex parte Kotler, 1901 C.D. 62, 95 O.G. 2684 (Comm’r Pat. 1901). See 37 CFR 1.75 and MPEP §§ 608.01(i), § 1302.01.
Consequently, identity between terms and phrases in the specification and claims is preferred and is seen as mandatory to ensure “certainty in construing the claims in the light of the specification”.
Further, under 37 C.F.R. § 1.121(e) regarding disclosure consistency:
The disclosure must be amended, when required by the Office, to correct inaccuracies of description and definition, and to secure substantial correspondence between the claims, the remainder of the specification, and the drawings.
Examiner considers direct correspondence between the specification and the claims to be important with respect to determining the scope of the claims.
Examiner strongly urges Applicant to review its claims with a fine-toothed comb and scrutinize them for any discrepancies between claim language and language that is used in the written description/specification as originally filed. Applicant is responsible for what it drafts. Discrepancies may be interpreted to Applicant’s detriment.
Special Definitions for Claim Language - MPEP § 2111.01(IV)
No special definitions are seen as present in the specification regarding the language used in the claims. Consequently, the words and phrases of the claims are given their plain meaning. MPEP §§ 2173.01, 2173.05(a), and 2111.01.
If special definitions are present, Applicant should bring those to the attention of the examiner and the prosecution history with its next response in a manner both specific and particular. In doing so, there will be no mistake, confusion, and/or ambiguity as to what constitutes the special definition(s).
To date, Applicant has provided no indication of special definitions.
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 of this title, 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.
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, 3-6, 15, 18, and 19 are rejected under 35 U.S.C. § 103 as being unpatentable over U.S. Patent Application Publication No. 20180062347 of Hodges et al. (Hodges, cited by Applicant).
With respect to claim 1, Hodges discloses (Figs. 1A-E, ¶¶ 18 et seq.) an optical package (Figs. 1C/D) comprising:
a base plate (first cooling plate 102A and second cooling plate 102B as combined in the drawings/figures) with a first side (Fig. 1C) and a second side (Fig. 1D) opposite the first side (per the Figs.),
wherein the base plate (102A/B) has a coolant channel (channels 104A/B) positioned between the first side and the second side;
a first set of optics (first components 130A) coupled with the first side of the base plate (Fig. 1C; ¶ 27: "First components 130A or second components 130B may include any type of electronic or other devices known to a person of ordinary skill in the art, e.g., laser diode drivers, pump diodes, and the like."),
wherein at least one of the first set of optics (130A) is thermally coupled with the coolant channel (¶ 28, "In an embodiment, at least one first component 130A may be mounted over at least one first channel 104A and a corresponding at least one first tubing 106A to ensure that the at least one first component 130A maintains a substantially uniform temperature during operation."); and
a second set of optics (second components 130B) coupled with the second side of the base plate (Fig. 1D and ¶ 27 per above),
wherein at least one of the second set of optics (130B) is thermally coupled with the coolant channel (¶ 28, "Similarly, at least one second component 130B may be mounted over at least one second channel 104B and a corresponding at least one second tubing 106B to ensure that the at least one second component 130B maintains a substantially uniform temperature during operation)."
wherein the base plate is a unitary physical element (¶ 24, "In an embodiment, first cooling plate 102A may be removably attached or secured to second cooling plate 102B back face 116A to back face 116B using any number or type of fasteners 120 known to a person of ordinary skill in the art, e.g., screws, bolts, nuts, and the like.” See also making parts integral below),
wherein the coolant channel is disposed in a single plane between the first side and the second side (each of the individual coolant channels 104A/B are in single planes so for a designated one of these, it’s in a single plane), and
wherein the base plate has a height as measured from the first side to the second side of between 5 and 20 millimeters (mm) (see “relative dimensions” below).
Regarding making parts integral per the base plate, making separate parts integral can merely be a matter of obvious engineering choice. In re Larson, 340 F.2d 965, 968, 144 USPQ 347, 349 (CCPA 1965); MPEP § 2144.04(V)(B). Further, forming in one piece an article which has formerly been formed into two pieces and put together involves only routine skill in the art. Howard v. Detroit Stove Works, 150 US 164 (1893).
Also per MPEP § 2144.04(V)(B): In re Larson, 340 F.2d 965, 968, 144 USPQ 347, 349 (CCPA 1965) (A claim to a fluid transporting vehicle was rejected as obvious over a prior art reference which differed from the prior art in claiming a brake drum integral with a clamping means, whereas the brake disc and clamp of the prior art comprise several parts rigidly secured together as a single unit. The court affirmed the rejection holding, among other reasons, “that the use of a one piece construction instead of the structure disclosed in [the prior art] would be merely a matter of obvious engineering choice.”); but see Schenck v. Nortron Corp., 713 F.2d 782, 218 USPQ 698 (Fed. Cir. 1983) (Claims were directed to a vibratory testing machine (a hard-bearing wheel balancer) comprising a holding structure, a base structure, and a supporting means which form “a single integral and gaplessly continuous piece.” Nortron argued that the invention is just making integral what had been made in four bolted pieces. The court found this argument unpersuasive and held that the claims were patentable because the prior art perceived a need for mechanisms to dampen resonance, whereas the inventor eliminated the need for dampening via the one-piece gapless support structure, showing insight that was contrary to the understandings and expectations of the art.).
In this case, making the separate parts integral would allow/provide/enable additional mechanical support as well as manufacturing, repair, and customer support advantages for easy replacement.
Regarding the height of the base plate, where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device. Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984). MPEP § 2144.04(IV)(A).
As the scope of claim 1’s base plate height departs from that of Hodges with regards to the relative dimensions, the claimed device is not patentably distinct from the prior art device of Hodges as set forth above.
The size of the Hodges device may be made to any specification without losing efficiency. Herein and below, this analysis is referred to as “relative dimensions/size”.
With respect to claim 3, Hodges as set forth above discloses the optical package of claim 1, including one wherein the base plate (102A/B) includes:
an input fluid port (inlet end 108A) by which liquid coolant can flow into the coolant channel; and
an output fluid port (outlet end 110A) by which the liquid coolant can flow out of the coolant channel.
With respect to claim 4, Hodges as set forth above discloses the optical package of claim 1, including one wherein the base plate includes
copper, aluminum, graphite, a ceramic material, or diamond.
¶ 19, "First cooling plate 102A or second cooling plate 102B may include any thermally conductive material known to a person of ordinary skill in the art. In an embodiment, first cooling plate 102A or second cooling plate 102B may be made of any thermally conductive metal known to a person of ordinary skill in the art, e.g., aluminum."
The person of ordinary skill in the art before the effective filing date of the claimed invention is seen to know all the materials listed in claim 4. See also MPEP § 2144.07 for the viewpoint that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination.
With respect to claim 5, Hodges as set forth above discloses the optical package of claim 1, including one wherein
the first set of optics has a same physical configuration as the second set of optics.
Per Figs. 1C and 1D, all the elements are square.
With respect to claim 6, Hodges as set forth above discloses the optical package of claim 1, including one wherein
the first set of optics has a different physical configuration than the second set of optics.
When placed back to back, the elements 130A/B would align in different directions.
With respect to claim 15, Hodges as set forth above discloses a method of forming an optical package, wherein the method comprises:
identifying a base plate with a first side and a second side opposite the first side,
wherein the base plate has a coolant channel positioned between the first side and the second side;
physically coupling a first set of optics with the first side of the base plate such that at least one of the first set of optics is thermally coupled with the coolant channel; and
physically coupling a second set of optics with the second side of the base plate such that at least one of the second set of optics is thermally coupled with the coolant channel,
wherein the base plate is a unitary physical element,
wherein the coolant channel is disposed in a single plane between the first side and the second side, and wherein the base plate has a height as measured from the first side to the second side of between 5 and 20 millimeters (mm).
The method of claim 15 would naturally occur in the making of a device according to claim 1, above.
With respect to claim 18, Hodges as set forth above discloses the method of claim 15, wherein,
subsequent to the physical coupling of the first and second sets of optics,
the first set of optics has a same physical configuration as the second set of optics.
The method of claim 18 above would naturally occur in the construction and/or manufacture of a device as set forth in claim 5, above.
With respect to claim 19, Hodges as set forth above discloses the method of claim 15, including one wherein,
subsequent to the physical coupling of the first and second sets of optics,
the first set of optics has a different physical configuration than the second set of optics.
The method of claim 19 above would naturally occur in the construction and/or manufacture of a device as set forth in claim 6, above.
Claims s 7, 9, 11-13, 16, and 20 are rejected under 35 U.S.C. § 103 as being unpatentable over Hodges as set forth above in view of U.S. Patent No. 5222170 of Bargar et al. (Bargar, cited by Applicant).
With respect to claim 7, Hodges as set forth above discloses the optical package of claim 1, but not one wherein:
the first set of optics includes
a first diode,
a first optical component, and
a first optical fiber coupling; and
the second set of optics includes
a second diode,
a second optical component, and
a second optical fiber coupling.
Bargar discloses an optical fiber device fabrication that includes (Figs. 1-3):
a set of optics (package 100) that includes
a first diode (laser 6 is a semiconductor laser per claim 10; semiconductor lasers are laser diodes),
a first optical component (lens on the end of the optical fiber 16), and
a first optical fiber coupling ("An optical fiber pigtail 14 with an end portion mounted in a feedthrough tube 9 and secured by a crimp 15 is fixed in the package in optically coupled relationship with the laser 6.” per col. 4, ll. 54 and adjacent).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use an optical package along the lines of Hodges in a system according to Hodges as set forth above in order to provide temperature-regulated optical signals. This provides one rationale to combine the references.
Another completely independent and separately sufficient rationale arises as follows. In making the combination (above), prior art elements (listed above) are combined according to known methods (per the references) to yield predictable results (an optical signal system) would occur as each element merely performs the same function in combination as it does separately. MPEP § 2141(III). This additional rationale is a sufficient, a complete, and an explicitly-recognized rationale to combine the references and conclude that the claim is obvious both under the controlling KSR Supreme Court case and MPEP § 2141(III)(A). Current Office policy regarding the determination of obviousness is set forth in the Federal Register notice at 89 Fed. Reg. 14449 (Feb. 27, 2024).
Additionally, mere duplication of parts has no distinguishing significance unless a new and unexpected result is produced. In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960); MPEP § 2144.04(VI)(B). Consequently, optical devices along the lines of Bargar may be duplicated as needed.
Consequently, the combination would then provide:
the first set of optics includes
a first diode,
a first optical component, and
a first optical fiber coupling; and
the second set of optics includes
a second diode,
a second optical component, and
a second optical fiber coupling.
With respect to claim 9, Hodges as set forth above (Figs. 1A-E, ¶¶ 18 et seq.) discloses a base plate (102A/B) for use in an optical package (Figs. 1C/D), wherein the base plate comprises:
a first side to physically couple with a first set of optics (per claim 1) that includes a first laser diode (per Bargar; see claim 7, above);
a second side to physically couple with a second set of optics that includes a second laser diode (per claim 1 and Bargar);
a coolant channel positioned between the first side and the second side (per claim 1, Hodges);
an input fluid port configured to allow liquid coolant to flow into the coolant channel (per claim 1); and
an output fluid port configured to allow the liquid coolant to flow from the coolant channel (per claim 1);
wherein the liquid coolant is to thermally couple with the first laser diode when the first laser diode is physically coupled with the first side (per claim 7), and
the liquid coolant is to thermally couple with the second laser diode when the second laser diode is physically coupled with the second side (per claim 7),
wherein the base plate is a unitary physical element (per claim 1),
wherein the coolant channel is disposed in a single plane (per claim 1) between the first side and the second side, and
wherein the base plate has a height as measured from the first side to the second side of between 5 and 20 millimeters (mm) (per claim 1).
With respect to claim 11, Hodges in view of Bargar as set forth above discloses the base plate of claim 9, wherein the liquid coolant includes
water, a dielectric fluid, a mineral oil, or a refrigerant.
Hodges, ¶ 39, "The cooling fluid may be any fluid capable of cooling the cooling plate and thus, removing heat from the system, known to a person of ordinary skill in the art, e.g., water."
The person of ordinary skill in the art before the effective filing date of the claimed invention is seen to know all the materials listed in claim 11. See also MPEP § 2144.07 for the viewpoint that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination.
With respect to claim 12, Hodges in view of Bargar as set forth above discloses the base plate of claim 9, including one wherein the base plate includes
copper, aluminum, graphite, a ceramic material, or diamond.
¶ 19, "First cooling plate 102A or second cooling plate 102B may include any thermally conductive material known to a person of ordinary skill in the art. In an embodiment, first cooling plate 102A or second cooling plate 102B may be made of any thermally conductive metal known to a person of ordinary skill in the art, e.g., aluminum."
The person of ordinary skill in the art before the effective filing date of the claimed invention is seen to know all the materials listed in claim 4. See also MPEP § 2144.07 for the viewpoint that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination.
With respect to claim 13, Hodges in view of Bargar as set forth above discloses the base plate of claim 9, including one wherein:
the first set of optics further includes a first lens and a first optical fiber coupling; and
the second set of optics includes a second lens and a second optical fiber coupling.
Per claim 7, above.
With respect to claim 16, Hodges in view of Bargar as set forth above discloses the method of claim 15, including one further comprising
adjusting,
subsequent to the physical coupling of the first set of optics and prior to the physical coupling of the second set of optics,
a physical pose of a lens or mirror of the first set of optics.
Per claim 7, a lens is included which would require adjusting, or setting, its pose for the device to work properly. Step selection is not seen as a limiting distinction per claim 18, above
With respect to claim 20, Hodges in view of Bargar as set forth above discloses the method of claim 15, wherein:
the first set of optics includes
a first diode,
a first optical component, and
a first optical fiber coupling; and
the second set of optics includes
a second diode,
a second optical component, and
a second optical fiber coupling.
See claim 7, above.
The method of claim 20 above would naturally occur in the construction and/or manufacture of a device as set forth in claim 7, above.
Response to Arguments
Applicant's arguments filed May 18, 2026 have been fully considered but they are not persuasive and the claim rejections are not rebutted.
Applicant argues that:
The Applicant respectfully submits that Hodges et al. does not describe this construction. As detailed hereinbelow, Hodges et al. describes a construction for a laser cooling system that incorporates two cooling plates 1 02A, 1 02B arranged in a stacked configuration, as illustrated in Fig. 1E, which is reproduced below. As a result of this construction, the cooling channel is not configured in a single plane between the sides of the stacked cooling plates. Since Hodges et al. does not describe each and every feature of the claimed invention, as now recited by the claims, the Applicant respectfully submits that the rejection for anticipation must be withdrawn.
Examiner response: Hodges provides coolant channels 104A/B which are both in single planes. At least one of these coolant channels is in a single plane.
As noted in the Specification of the above-captioned patent application, one aspect of the claimed invention is to avoid the double-layer construction that is embodied, for example, in Hodges et al. Specifically, the Specification of the above-captioned patent application provides the following discussion:
[0016] The use of such a base plate may provide significant benefits over legacy optical packages. Specifically, embodiments of the optical package described herein may have a smaller cost, mass, and/or size as compared to a "double-stacked" package layout that includes two optical packages stacked on top of one another.
(U.S. Patent Application Publication No. 2024/0053554 (the publication of the above-captioned patent application) (hereinafter "the '554 Publication"), at paragraph [0016] (emphasis added).)
The Applicant respectfully submits that the use of a unitary structure of the base plate, where the cooling channel is disposed in a single plane, makes it possible to create a base plate with a height between 5 and 20 mm. The Applicant respectfully submits that this would not be possible, for example, by relying on the construction described by Hodges et al.
Examiner response: Per above, Applicant has made reference to the published application. For appeal purposes, all references to the specification must consistent with the official record of prosecution. 37 C.F.R. § 41.37(c)(a)(iii). Reference to the patent application publication does not satisfy this requirement. Examiner strongly urges Applicant to make its best record and to only refer to the specification of record by page and line number per 37 C.F.R. § 41.37.
Per the rejection above, making elements integral is considered as a routine skill per MPEP § 2144.04(V)(B). Further, Applicant has not addressed how the fastening of individual parts together do not constitute and “unitary physical element”. Once connected, examiner believes that the integration of the first and second cooling plates by fasteners causes them to provide a unitary physical element.
Per claim 1’s rejection, above, where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device. Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984). MPEP § 2144.04(IV)(A).
Applicant's arguments with regards to the remaining claims all rely upon the arguments set forth above. Consequently, these remaining arguments as seen as being addressed by the examiner's corresponding remarks.
Applicant’s remaining arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references. As such, the examiner makes no remarks regarding them.
Conclusion
Applicant’s publication US 20240053554 A1 published February 15, 2024 is cited.
No new art is cited.
Applicant's amendment necessitated any 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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW JORDAN whose telephone number is (571) 270-1571. The examiner can normally be reached most days 1000-1800 PACIFIC TIME ZONE (messages are returned).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. While examiner does not examine over the phone (see 37 C.F.R. § 1.2), examiner is glad to clarify or discuss issues so long as it forwards prosecution.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Thomas (Tom) HOLLWEG can be reached at (571) 270-1739. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Andrew Jordan/
Primary Examiner, Art Unit 2874
V: (571) 270-1571 (Pacific time)
F: (571) 270-2571
July 22, 2026
Prosecution Insights