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 Arguments
Applicant's arguments filed on 1/29/26 have been fully considered but they are not persuasive. Regarding applicant’s argument,
“In Mashanovich, the coupling is implemented in a different structural configuration, in which a grating on a first silicon waveguide couples light from that waveguide into a third waveguide (silicon nitride), rather than into the second waveguide as claimed. A second grating is located on the third waveguide and is used to couple between the third waveguide and an additional waveguide (e.g., silicon oxynitride), so the functional coupling path differs from the configuration "between the first grating section and the second waveguide." In the pending claims, by contrast, the first grating structure is provided in the first waveguide and is expressly configured to couple light directly between the first grating section and the second waveguide. Accordingly, the claimed structure defines a direct coupling relationship between the first grating section and the second waveguide itself…”
Examiner respectfully asserts that naming structures doesn’t imply a structure difference. Moreover, directly coupling is not claimed nor implied by the claim language.
Regard applicant’s argument, “Vermeulen does not present an architecture where multiple integrated waveguides on the substrate share a carefully coordinated grating layout and period to implement an internal band-splitting function”, claim 1 does not require the waveguide to be on or a part of the substrate. In fact, the substrate has no physical connection to the waveguides in claim 1.
Regard applicant’s argument, “In contrast, the pending bandsplitter claims define an on-chip component that splits light between multiple integrated waveguides, with specific requirements on the grating period, grating sections, and associated waveguides (including a third waveguide and detailed grating/modulation structures in the dependent claims) that realize a band-splitter rather than a simple fiber coupler”
Examiner respectfully asserts that band splitting is not claimed in the body of claim 1.
Allowable Subject Matter
Claims 2, 7 – 11, 14 and 15 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. The following is a statement of reasons for the indication of allowable subject matter: The prior art of record, taken alone or in combination, fails to disclose or render obvious a third waveguide provided on the substrate structure, the third waveguide comprising a second grating section the second grating section configured to cause the second grating structure to couple light at wavelengths within the spectral range between the second grating section and the second waveguide. The closest relevant prior art of record, MASHANOVICH et al., “Temperature Dependence of Grating-Assisted Coupling to Small Silicon Waveguides”, 2007, teaches a grating from the second waveguide (silicon, fig. 1) to cause coupling to the third waveguide (silicon nitride), not the grating in the third waveguide to cause coupling between the second grating and the second waveguide as claimed. The grating in the silicon nitride merely causes coupling to the silicon oxynitride as seen in fig. 1.
Furthermore, another prior art of record, Reed et al. (U.S. PG Pub. # 2006/0120667 A1), teaches the claimed coupling between a first waveguide (SION) having a grating and a second waveguide (Silicon Nitride) and a third waveguide (Si) having a grating, but fails to teach or suggest that the gratings both have the same period L as claimed.
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.
Claim 1, 3, 4, 6 and 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by MASHANOVICH et al., “Temperature Dependence of Grating-Assisted Coupling to Small Silicon Waveguides”, 2007, IEEE as cited by applicant.
In Re claim 1, MASHANOVICH et al. teaches an optical bandsplitter (fig. 1) comprising: a substrate structure (Si Substrate); a first waveguide (silicon waveguide) comprising: a first end section (left side); a second end section (right side); and a first grating section between the first and second end sections; and a second waveguide (right silicon nitride waveguide) provided adjacent at least one surface of the first waveguide; wherein the first grating section comprises a first grating structure having a grating period, L, (col. 1, par. 3) configured to cause the first grating structure to couple light at wavelengths within a spectral range between the first grating section and the second waveguide (arrow from silicon waveguide to silicon nitride waveguide).
In Re claim 3, MASHANOVICH et al. teaches that first waveguide is silicon and the second waveguide is silicon nitride, thus two different effective refractive indices and propagation constants. As stated in MPEP §2114, “[w]hile features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function.” In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997). A claim containing “a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). As such, while the functional language limitations are not ignored, such limitations are not given patentable weight, and the claimed limitations are anticipated if a prior art apparatus is capable of performing the claimed function. MPEP §2114. Claim 3 contains a functional limitation (different propagation constants). Since the disclosed apparatus of MASHANOVICH et al. is fully capable of performing the recited function, and contains all recited structural elements, the claim rejection based on MASHANOVICH et al. is proper.
In addition, it is respectfully noted that it would be improper to import specific structural limitations (which are not actually claimed and recited in the claims) from the specification into the claims when interpreting functional language limitations. See MPEP §2111. Thus, the pending claims will be given their broadest reasonable interpretation consistent with the specification, without importing limitations from the specification into the claims.
In Re claim 4, The patentability of an apparatus depends only on the claimed structural limitations. MASHANOVICH et al. teaches a structure that is substantially identical to that of the claimed invention, therefore the claimed properties or functions are presumed to be inherent. The burden is on the applicant to show that the MASHANOVICH et al. device does not possess these functional characteristics. See MPEP 2112.01.
In Re claim 6, An apparatus claim must be structurally distinguishable from the prior art. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function (In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997); See MPEP 2114 [R-1]). A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus if the prior art apparatus teaches all of the structural limitations of the claim (Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987); See MPEP 2114 [R-1]).
In Re claim 16, Applicant is claiming the product including the process of making the optical bandsplitter, and therefore is of "product-by-process" nature. The courts have been holding for quite some time that the determination of the patentability of product-by-process claim is based on the product itself rather than on the process by which the product is made. In re Thrope, 777 F. 2d 695, 227 USPQ 964 (Fed. Cir. 1985); and patentability of claim to a product does not rest merely on a difference in the method by which that product is made. Rather, it is the product itself which must be new and unobvious. Applicant has chosen to claim the invention in the product form. Thus a prior art product which possesses the claimed product characteristics can anticipate or render obvious the claim subject matter regardless of the manner in which it is fabricated. A rejection based on 35 U.S.C. section 102 or alternatively on 35 U.S.C. section 103 of the status is eminently fair and acceptable. In re Brown and Saffer, 173 USPQ 685 and 688; In re Pilkington, 162 USPQ 147.
Claims 1, 4 – 6, 12, 13 and 16 – 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Vermeulen et al. (U.S. PG Pub. # 2010/0322555).
In Re claim 1, ‘555 teaches an optical bandsplitter comprising: a substrate structure (par. 0104); a first waveguide comprising: a first end section; a second end section; and a first grating section between the first and second end sections (as seen below); and a second waveguide (fiber core) provided adjacent at least one surface of the first waveguide (as seen below and in fig 1); wherein the first grating section comprises a first grating structure having a grating period, L, (par. 0103,0105) configured to cause the first grating structure to couple light at wavelengths within a spectral range between the first grating section and the second waveguide (fig. 1).
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1st end section 2nd end section
Grating section second waveguide (fiber)
In Re claim 4, The patentability of an apparatus depends only on the claimed structural limitations. ‘555 teaches a structure that is substantially identical to that of the claimed invention, therefore the claimed properties or functions are presumed to be inherent. The burden is on the applicant to show that the ‘555 device does not possess these functional characteristics. See MPEP 2112.01.
In Re claim 5, ‘555 teaches using non-periodic gratings (par. 0073), but is silent to the non-periodicity being chirped. However, it is well known in the art to use chirped gratings so as to compensate for dispersion. Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the non-periodic grating of ‘555 to make it a chirped grating so as to allow for compensation of dispersion as a person with ordinary skill has good reason to pursue the known options within his or her technical grasp.
In Re claim 6, An apparatus claim must be structurally distinguishable from the prior art. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function (In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997); See MPEP 2114 [R-1]). A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus if the prior art apparatus teaches all of the structural limitations of the claim (Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987); See MPEP 2114 [R-1]).
In Re claim 12, ‘555 teaches wherein said grating section has a width that is greater than a width of a respective end section (fig. 5); and wherein a tapered section is provided between said grating section and a respective end section, the tapered section having a width that varies from the width of the end section to the width of the grating section (fig. 5).
In Re claim 13, ‘555 teaches a taper (fig. 5, par. 0031), but is expressly silent to an adiabatic taper that varies linearly, polynomialy, or exponentially. However, it is well known in the art to use adiabatic tapers that varies linearly, polynomialy, or exponentially so as to ensure optimum optical coupling between waveguides of differing sizes. Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the taper of ‘555 to be vary adiabatically and be either linearly, polynomialy, or exponentially varying so as to ensure optimum optical coupling between the end sections of the waveguide waveguide and the second waveguide as a person with ordinary skill has good reason to pursue the known options within his or her technical grasp.
In Re claim 16, ‘555 teaches CMOS as claimed (par. 0104).
Alternatively, In Re claim 1, ‘555 teaches an optical bandsplitter (fig. 1) comprising: a substrate structure (par. 0104); a first waveguide comprising: a first end section (left side of Si Waveguide, fig. 1); a second end section (right side of Si Waveguide, fig. 1;; and a first grating section (fig. 1) between the first and second end sections; and a second waveguide (fiber core) provided adjacent at least one surface of the first waveguide; wherein the first grating section comprises a first grating structure having a grating period, L, (par. 0073, 0103,0105) configured to cause the first grating structure to couple light at wavelengths within a spectral range between the first grating section and the second waveguide (fig. 1).
In Re claim 17, ‘555 teaches An optical device comprising a photonic integrated circuit (pars. 0021, 0123, claim 15) and optical bandsplitter of claim 1, wherein at least one end section is coupled to the photonic integrated circuit for transmission of optical signals between the photonic integrated circuit and the optical bandsplitter (fig. 24).
In Re claim 18, ‘555 teaches filter as claimed (par. 0123, a demultiplexer or ring resonator as they separate bands).
In Re claim 19, ‘555 teaches Applicant is claiming the product including the process of making the optical device, and therefore is of "product-by-process" nature. The courts have been holding for quite some time that the determination of the patentability of product-by-process claim is based on the product itself rather than on the process by which the product is made. In re Thrope, 777 F. 2d 695, 227 USPQ 964 (Fed. Cir. 1985); and patentability of claim to a product does not rest merely on a difference in the method by which that product is made. Rather, it is the product itself which must be new and unobvious. Applicant has chosen to claim the invention in the product form. Thus a prior art product which possesses the claimed product characteristics can anticipate or render obvious the claim subject matter regardless of the manner in which it is fabricated. A rejection based on 35 U.S.C. section 102 or alternatively on 35 U.S.C. section 103 of the status is eminently fair and acceptable. In re Brown and Saffer, 173 USPQ 685 and 688; In re Pilkington, 162 USPQ 147.
In Re claim 20, ‘555 teaches an optical transceiver (fig. 24 as a laser and photodetector are included).
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHAD SMITH whose telephone number is (571)270-1294. The examiner can normally be reached M-F 7:30 - 5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Uyen-Chau Le can be reached at 1-571-272-2397. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHAD H SMITH/Primary Examiner, Art Unit 2874