DETAILED ACTION
This office action is in response to the election filed on June 15, 2026.
Claims 1-25 remain pending (claims 3, 6, 7, 10-14, 16-19, and 23-25 are withdrawn from consideration as being related to non-elected Group(s) and Species).
Claims 1, 2, 4, 5, 8, 9, 15, and 20-22 are examined herein in a 1st office action on the merits. Claim 1 is the sole examined 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 1-18 and 20-22 in the reply filed on June 15, 2026 is acknowledged. Further, Applicant has elected Species II (claims 4-5) and Species IV (claims 8, 9, and 15), without traverse. Therefore, the Examiner will examine claims 1, 2, 4, 5, 8, 9, 15, and 20-22 in this office action.
Claims 19 and 23-25 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group, there being no allowable generic or linking claim. Non-elected Species claims 3, 6, 7, 10-14, and 16-18 should remain “Withdrawn”, but because they depend from a generic independent claim (1), these claims may be subject for rejoinder. However, please note that as independent claim 1 may be amended during prosecution, some dependent claims will not be valid (based on those hypothetical amendments to claim 1). All 35 U.S.C. 112(b) issues should be vetted by Applicant, and/or withdrawn dependent claims should be canceled.
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).
Information Disclosure Statement
The prior art documents submitted by Applicant in the Information Disclosure Statements filed on December 13, 2025, August 13, 2025, September 6, 2024, July 26, 2024, December 22, 2023, and October 3, 2023, have been considered and made of record (note attached copy of forms PTO-1449).
Claim Interpretation
The following is merely an Examiner’s comment regarding sole examined independent claim 1. Claim 1 only recites “an electromagnetic resonator” and “a nonlinear medium” for structure. Such breadth is noted because is it not even required that the resonator is formed from a nonlinear medium. Also, the claim is broad enough to use a nonlinear resonator” as the only structure (because if the “resonator” is made from “nonlinear medium”, then the claim is anticipated). Further, the properties / characteristics appear to be met (at least with a broadest reasonable interpretation (BRI)) by many types of nonlinear optical “resonator” elements that are capable of B-I-C. Therefore, Applicant’s cooperation is respectfully requested to amend substantial narrowing features (structure and/or function) into the base (broadest) claim.
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 4-5 and 8-9 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 4 recites the broad recitation “third-order nonlinear medium”, and the claim also recites (in parenthesis) the “a Kerr nonlinear medium”, which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. There are other 3rd order nonlinear media that are not Kerr, in other words Kerr is a specific type of 3rd order media. Also, claim 5 recites “(and general semiconductors”), “other chalcogenide glasses”, “other nonlinear gases”, which are vague terms and not clear. For these reasons, claims 4-5 are rejected as being vague and indefinite under the meaning of 35 U.S.C. 112(b).
Dependent claims 8-9 recite the limitation(s) "two ring resonators” and “either one or both resonators” in the claim bodies. However, independent claim 1 defines “an electromagnetic resonator” in the claim body. There is insufficient antecedent basis for those “new” resonator(s) limitation(s) in dependent claims 8-9. It is unclear if these are new features, or refer to the base “resonator” as already identified. For these reasons, claims 8-9 are rejected as being indefinite under the meaning of 35 U.S.C. 112(b).
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Marandi et al. US 2021/0141285 A1.
Marandi et al. US 2021/0141285 A1 teaches (ABS; Figs. 1(a), 1(b), 2(a), 7, 11, 12(a) 13B, 15, 16; corresponding text; Claims) an apparatus for storing electromagnetic energy (cited Figs. above capable of such function; ABS), comprising: an electromagnetic resonator (“Resonator” having resonant functionality), and a nonlinear medium (“Nonlinear” throughout, for a number of nonlinear optical process(es)); wherein the electromagnetic resonator inherently:
-contains a resonance whose lifetime τ depends on resonance frequency (T = T(w) ) and/or wherein the electromagnetic resonator contains a resonance whose lifetime τ depends on a spatial distribution of its index of refraction, n(r), wherein r denotes a spatial position of constituent components of the electromagnetic resonator, such that τ = τ(n(r)), all such functional and property features of this language is met by the structure of Marandi’s design. Marandi notes bound in continuum (B-I-C) throughout, and lifetime is a property / characteristic. Therefore, Marandi clearly, fully meets Applicant’s claimed structural limitations for independent claim 1. Applicant is reminded that the Examiner is not required to impute any “gist” or “inventive concept” from the specification unless such gist / features / properties (structure or otherwise) are directly claimed.
Regarding claim 2, there is no structure claimed, and further such properties / characteristics are met by Marandi (which has a “maximum” value).
Claims 1-2 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Jin et al. US 2025/0020970 A1.
Jin et al. US 2025/0020970 A1 teaches (ABS; Figs. 1, 4A, 4B, 7A, 7B; corresponding text, notably paragraphs [0068], [0071], [0084], [0144]; Claims) an apparatus for storing electromagnetic energy (cited Figs. above capable of such function; ABS), comprising: an electromagnetic resonator (“Resonator” having resonant functionality), and a nonlinear medium (“Nonlinear” throughout, for a number of nonlinear optical process(es)); wherein the electromagnetic resonator inherently:
-contains a resonance whose lifetime τ depends on resonance frequency (T = T(w) ) and/or wherein the electromagnetic resonator contains a resonance whose lifetime τ depends on a spatial distribution of its index of refraction, n(r), wherein r denotes a spatial position of constituent components of the electromagnetic resonator, such that τ = τ(n(r)), all such functional and property features of this language is met by the structure of Jin’s design. Jin notes bound in continuum (B-I-C) throughout, and lifetime is a property / characteristic (paras [0063], [0070], etc.). Therefore, Jin clearly, fully meets Applicant’s claimed structural limitations for independent claim 1. Applicant is reminded that the Examiner is not required to impute any “gist” or “inventive concept” from the specification unless such gist / features / properties (structure or otherwise) are directly claimed.
Regarding claim 2, there is no structure claimed, and further such properties / characteristics are met by Jin (which has a “maximum” value).
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 4 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Marandi et al. US 2021/0141285 A1, as applied to claim 1 above, and further in view of Mazur et al. US 2016/0306258 A1.
Regarding base independent claim 1, Marandi et al. US 2021/0141285 A1 teaches (ABS; Figs. 1(a), 1(b), 2(a), 7, 11, 12(a) 13B, 15, 16; corresponding text; Claims) an apparatus for storing electromagnetic energy (cited Figs. above capable of such function; ABS), comprising: an electromagnetic resonator (“Resonator” having resonant functionality), and a nonlinear medium (“Nonlinear” throughout, for a number of nonlinear optical process(es)); wherein the electromagnetic resonator inherently meets the properties / characteristics. Claim 1 merely recites simple structure.
Regarding claims 4-5, Marandi ‘285 does not expressly and exactly teach that the non-linear medium is third-order (or “Kerr”, but note that Kerr is narrower in scope than merely 3rd order; see 35 U.S.C. 112(b) rejection of claims 4-5 above).
Mazur et al. US 2016/0306258 A1 teaches (ABS; Figs. paragraphs [0078], [0124]; [0173]; [0193]; Claims) a waveguide-based feature that includes 3rd order, and/or Kerr nonlinear medium processes. These types of designs (using 3rd order nonlinear susceptibilities) are known in the similar art.
Since Marandi ‘285 and Mazur are both from the same field of endeavor, the purpose disclosed by Mazur would have been recognized in the pertinent art of Marandi ‘285.
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 Mazur, to recognized that types of 3rd order nonlinear processes (such as “Kerr” type) can be used to improve optical outputs from a waveguide / resonators, into the base design of the BIC waveguide resonator of Marandi ‘285, to allow for 3rd order features to be employed in the design, for improving optical variability and optionality. Further, it would have required no undue burden or unnecessary experimentation to arrive at such features of “3rd order nonlinearity”. See KSR v. Teleflex, 127 S.Ct. 1727 (2007). For these reasons, dependent claims 4-5 are found obvious over Marandi ‘285 and further in view of Mazur.
Claims 8, 9, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Marandi et al. US 2021/0141285 A1, as applied to claim 1 above, and further in view of Marandi et al. U.S. Patent No. 11,226,538 B2.
Regarding base independent claim 1, Marandi et al. US 2021/0141285 A1 teaches (ABS; Figs. 1(a), 1(b), 2(a), 7, 11, 12(a) 13B, 15, 16; corresponding text; Claims) an apparatus for storing electromagnetic energy (cited Figs. above capable of such function; ABS), comprising: an electromagnetic resonator (“Resonator” having resonant functionality), and a nonlinear medium (“Nonlinear” throughout, for a number of nonlinear optical process(es)); wherein the electromagnetic resonator inherently meets the properties / characteristics. Claim 1 merely recites simple structure.
Regarding claims 8, 9, and 15, Marandi ‘285 does not expressly and exactly teach those configurations of waveguide and resonator design, with two ring resonators evanescently coupled to a waveguide; and a single ring resonator coupled to one or more waveguide, with a broadband reflector.
However, Marandi et al. U.S. Patent No. 11,226,538 B2 teaches (ABS; Figs.; Claims) many ring resonator configurations and designs for using an input / output waveguide feature and a ring resonator coupled thereto, in order to apply the desired non-linear process. Such designs are not limited to those shown, and could have been recognized by POSITA to include the missing designs of Applicant’s claims 8, 9, and 15 (single or double ring; evanescent waveguide coupling; broadband reflector; etc.).
Since Marandi ‘285 and Marandi ‘538 are both from the same field of endeavor, the purpose disclosed by Marandi ‘538 would have been recognized in the pertinent art of Marandi ‘285.
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 Marandi ‘538, to employ designs such as single ring, double ring, evanescent coupling to waveguide, and broadband reflectors, as a use of the base “EM resonator” that includes “nonlinear medium”, with BIC features of coupling of Marandi ‘285, to allow for recognized designs using ring resonators and waveguides with the base features (of the “EM resonator”), for improving optical variability and optionality. Further, it would have required no undue burden or unnecessary experimentation to arrive at such features of the single and double ring resonator design as the gist if found in claim 1. See KSR v. Teleflex, 127 S.Ct. 1727 (2007). For these reasons, dependent claims 8, 9, and 15 are found obvious over Marandi ‘285 and further in view of Marandi ‘538.
Claims 20-22 are rejected under 35 U.S.C. 103 as being unpatentable over Marandi et al. US 2021/0141285 A1, as applied to independent claim 1 above, standing alone as an intended use (based on bound-in-continuum (B-I-C) properties.
Regarding claims 20 and 22 (claim 21 with design and property choices) are merely intended uses of Marandi ‘285 having base resonator and nonlinear medium of claim 1. Therefore, there is no structure imputed by such “intended use” of design. Further, one having ordinary skill in the art at the time of the effective filing date would have recognized (based on the B-I-C teaches in Marandi ‘285) that such intended use in an apparatus (for sub-Poissonian and Fock states) is within the general level of skill in the art. For these reasons, claims 20-22 are found obvious over Marandi ‘285, standing alone. 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 E-I, which pertain to the state of the art of optical waveguide resonators that employ nonlinearities.
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.
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.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Uyen-Chau Le can be reached at (571) 272-2397. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DANIEL PETKOVSEK/Primary Examiner, Art Unit 2874 July 24, 2026
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