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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 6/11/26 has been entered.
Response to Arguments
Applicant's arguments filed 5/12/26 have been fully considered but they are not persuasive. Regarding applicant’s argument, “Accordingly, Applicant respectfully submits that MASHANOVICH or Vermeulen fail to disclose or suggest all recitations of amended independent Claim 1”, Examiner respectfully assert that all of the allowable subject matter of claim 2 has not been placed into claim 1 and that MASHANOVICH still meets the amended claim limitations of at least claim 1 as set forth below.
Allowable Subject Matter
Claims 2 and 7 – 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.
Regarding claims 2, 7 – 11, 14 and 15:
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 wherein the second grating section comprises a second grating structure having the grating period. The closest relevant prior art of record, MASHANOVICH et al, teaches the second waveguide (right silicon nitride waveguide) having a different grating period than that of the first grating period (pg. 177 col. 1, par. 3).
Regarding claims 12 and 13:
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 wherein said grating section has a width that is greater than a width of a respective end section; 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.
The closest relevant prior art of record, MASHANOVICH et al, fails to teach or suggest the claimed dimensions of the bandsplitter.
Thus, with no teaching from the prior art, and without the benefit of applicant's teachings, there is no motivation for one of ordinary skill in the art to combine/modify the prior art of record in a manner so as to create the claimed invention.
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 (fig. 1) 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); and a third waveguide (left silicon nitride waveguide) provided on the substrate structure, the third waveguide comprising: a second grating section (fig. 1); and a third end section (left or right side) at one end of the second grating section.
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, 5 and 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Reed et al. (U.S. PG Pub. # 2006/0120667 A1).
In Re claim 1, ‘667 teaches an optical bandsplitter (fig. 5) comprising: a substrate structure (Si Substrate); a first waveguide (left SiON) comprising: a first end section (left side); a second end section (right side); and a first grating section (middle of grating at Λ1) between the first and second end sections; and a second waveguide (Si3N4) provided adjacent at least one surface of the first waveguide; wherein the first grating section comprises a first grating structure having a grating period (Λ1) 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 as seen in fig. 5); and a third waveguide (Si) provided on the substrate structure, the third waveguide comprising: a second grating section (Λ1); and a third end section (left of right side of the Si waveguide) at one end of the second grating section.
In Re claim 4, The patentability of an apparatus depends only on the claimed structural limitations. ‘667 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 ‘667 device does not possess these functional characteristics. See MPEP 2112.01.
In Re claim 5, ‘667 teaches chirped as claimed (par. 0037).
In Re claim 16, Applicant is claiming the product including the process of making ‘667, 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.
(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 and 17 – 20 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Fertig et al. (U.S. PG Pub. # 2021/0116639 A1).
In Re claim 1, ‘639 teaches an optical bandsplitter (fig. 3B) comprising: a substrate structure (chip, par. 0029); a first waveguide (bottom waveguide of 304 or from 304 to 305) comprising: a first end section (at 302); a second end section (@ 321 or 305); and a first grating section (305 or 303,par. 0040, 0043, 0046, 0055) between the first and second end sections; a second waveguide (between 303 and 309) provided adjacent at least one surface of the first waveguide; wherein the first grating section comprises a first grating structure having a grating period 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 (as seen by the arrow); and a third waveguide (from 311 to 319 or from 311 to 313) provided on the substrate structure, the third waveguide comprising: a second grating section (311); and a third end section (left) at one end of the second grating section (fig. 3B).
In Re claim 17, ‘639 teaches wherein at least one end section is coupled to the photonic integrated circuit (items 305, 313, 307, 317, 323, 325, 315) for transmission of optical signals between the photonic integrated circuit and the optical bandsplitter (fig. 3B).
In Re claim 18, ‘639 teaches wherein the photonic integrated circuit comprises an optical filter (305, 313, 307 or 315) configured to transmit a specified wavelength output from the optical bandsplitter.
In Re claim 19, 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, fig. 3C shows transmitting and receiving, thus the optical device is a transceiver.
Conclusion
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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/CHAD H SMITH/ Primary Examiner, Art Unit 2874
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