1.Claims 1-5 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. Applicant had amended claim 1 to recite modifying the surface of a waveguide “to alter its optical properties” in the filing of the RCE. However, a careful review of the specification as originally filed fails to provide any disclosure as to the surface modification actually altering any optical property of the waveguide. Rather, it would appear that the silane coating taught as modifying the surface of the waveguide would function in the same manner as the silane coating disclosed in Giller et al. Applicant needs to point out exactly where in the instant specification support exists for the aspect of the instant surface modification altering the optical property, or properties, of the treated waveguide. Further, it needs to be shown exactly how the instant surface treatment, which is apparently a silane coupling agent application, actually differs from the silane coupling agent coating taught in Giller et al.
2.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) 1-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Giller et al 2006/0192306 in view of Jenkins et al 11,850,811 essentially for reasons of record noting the following.
It would appear that at least one instant surface modification of the waveguide is exactly at least one surface modification taught in Giller et al—namely, the coating of a silane coupling agent. Giller et al teaches that such a coating eliminates cavities that would degrade an optical property and it is submitted that at least on this basis, the primary reference is teaching a surface treatment that affects—and therefore alters—an optical property of the waveguide that is so treated. As noted in paragraph 1, supra, there simply is no disclosure in the instant specification of any surface treatment that actually alters an optical property of the waveguide. Indeed, if applying a silane coupling agent in the instant specification actually alters a surface property of the waveguide, then why would not such also be occurring during the silane coupling agent coating in Giller et al? It is further submitted that the coating of the silane--and other—coupling agents as taught in Giller et al would provide a material on the waveguide that in fact has a different refractive index than the waveguide and would therefor alter the optical properties of the waveguide as argued by applicant. While applicant suggests that Giller et al is silent with respect to any modification that alters the optical properties of the waveguide itself, it must be noted that the instant specification also fails to teach any such thing. There is no disclosure in the instant specification of a surface treatment that “changes refractive index, introduces diffractive structures, modifies polarization or otherwise alters how the waveguide interacts with light” as argued by applicant at page 2 of the amendment. Jenkins et al is applied for reasons of record. While Jenkins et al may not align other elements, the primary reference clearly does this.
3.Applicant's arguments filed March 16, 2026 have been fully considered but they are not persuasive. Applicant’s comments concerning the surface modification altering the optical property have been essentially addressed in paragraphs 1 and 2, supra. At this juncture, it is respectfully submitted that there simply is no discernible difference from the surface modification in Giller et al and the instant surface modification. Additionally, applicant needs to point out exactly where in the instant specification support exists for the instant surface modification actually altering the optical properties of the waveguide. While Jenkins et al does not incorporate additional components to make the optical system, the primary reference clearly does. It is submitted that the arguments advanced in an effort to obviate the rejection amount to no more than conjecture on applicant’s part. There is no indication that employing a closed mold in the primary reference would have any deleterious effect on the optical system being manufactured. The ,molds would be glass and hence the alignment of the components would be readily observed. Jenkins et al does not need to teach a post-molding coating step since such is taught in Giller et al. It is submitted that applicant is arguing the references separately when the rejection is based on the combination.
4.Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATHIEU D VARGOT whose telephone number is (571)272-1211. The examiner can normally be reached on Mon-Fri from 9 to 6.
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/MATHIEU D VARGOT/Primary Examiner, Art Unit 1742
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