DETAILED ACTION
This office action is in response to the election filed on January 15, 2026. Claims 1-16 remain pending, with claims 5-16 withdrawn from consideration as being related to non-elected Groups.
Claims 1-4 are examined herein in a first office action on the merits, with claim 1 as the sole independent (method) 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 with traverse of Group I, claims 1-4, in the reply filed on January 15, 2026 is acknowledged. The traversal is on the grounds that the subject matter of the three Groups is “sufficiently related” that all consideration of the claim scope, searching, and examination of these groups could be conducted without serious burden. Although the Examiner appreciates such comments, they are not found persuasive because all features of serious burden and a proper restriction requirement for the distinct groups / inventions has been outlined in the restriction mailed on November 17, 2025. The Examiner reiterates such features as meeting lack of unity of invention required under 37 CFR 1.475(a) (this application was filed under 371, based on PCT JP ‘776).
The requirement is still deemed proper and is therefore made FINAL.
Claims 5-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected Groups II and III, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on November 17, 2025.
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).
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The prior art documents submitted by Applicant in the Information Disclosure Statements filed on November 7, 2025 and October 16, 2023, have been considered and made of record (note attached copy of forms PTO-1449).
Drawings
The original drawings (thirteen (13) pages) were received on September 13, 2023. These drawings are acknowledged.
Claim Objections
Claim 1 is objected to because of the following informalities: regarding independent claim 1, the preamble should be redrafted in more clear fashion. For example, “An optical waveguide manufacturing method of / for irradiating glass with a femtosecond laser (the method comprising:” could be an edit for this preamble. Note the features discussed also below in the 35 U.S.C. 112(b) rejections of at least claim 1. Also in claim 1, the terms “(fs)” and “(kHz)” should not be within parenthesis in the claim. Also, the second laser beam with “the femtosecond laser beam” in the “second process” should read “a second femtosecond laser beam” because these are two different beams (one with 700 kHz or less; a second with 700 kHz or more). Therefore, Applicant may consider claiming the first “femtosecond laser beam” as “first femtosecond laser beam.” Finally, clarification of the phrase “a second process of irradiating an increased refractive index” should be re-drafted for clarity if the “increased refractive index” already exists (caused by/from the 1st step), or if the “increased refractive index” is newly created by the 2nd step irradiation. If the “increased refractive index” is caused in the 1st step, such feature should be added to the “a first process” section. Appropriate correction is required, and careful review of the independent method claim 1 is recommended.
Regarding further dependent claims 2, 3, and 4, in claim 2 the term “pulse peak energy E1” should read “pulse peak energy (E1)”; while the term “pulse peak energy E2” should read “pulse peak energy (E2)”. Also noting claim 2, the two different femtosecond laser beams should be identified. These laser beams are clearly different (with one being less than 750 kHz and the other being more than 750 kHz). Regarding dependent claim 3, the terms “the incident position” and “the focal position” (two instances for each in claim 3) should read “an incident position” and “a focal position”, because this is the first recitation of such feature(s). Also in claim 3, the same “the femtosecond laser beam” issue (from claims 1 and 2 above) should be addressed, because there are two different / distinct beams. Regarding dependent claim 4, the term “the femtosecond laser beam” should be reviewed, and potentially recited as “the first femtosecond laser beam” for clarity.
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 1-4 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. Claim 1 is rejected for the following reasons below, while claims 2-4 are also rejected at least as being in dependent form. However, other features are rejected in claims 2-4 to follow.
Regarding independent claim 1, the preamble lacks sufficient antecedent basis, based on a contextual reading of the ensuing claim body. Notably, the term “a femtosecond laser beam” is vague because the claim body then recites two different “beams” (one beam below 750 kHz and one beam above 750 kHz). Therefore, as a whole, the claim is vague and indefinite because there appear to be two distinct beams for the method steps. Applicant may consider claiming “a femtosecond laser” in the preamble (note the corrections suggested above in “Claim Objections” for the claim body). Also in claim 1, this claim recites the limitations “a femtosecond laser beam” and “the femtosecond laser beam" in the claim body, although these two beams have different repetition frequencies. Therefore, the second recitation of “the femtosecond laser beam” lacks proper antecedent basis, and is rejected under the requirements of 35 U.S.C. 112(b) for clarity of scope (metes-and-bounds). Finally, it is unclear if the term “an increased refractive index portion” is formed in the 1st step (in which it is not claimed), or if this “portion” is formed in the 2nd step (because this is the first claiming of such a portion). Therefore, and based on all such language discussed above, claim 1 if found vague and indefinite and is rejected under 35 U.S.C. 112(b). Claims 2-4 are rejected at least as being in dependent form.
Further regarding claims 2-4, the features “the femtosecond laser beam” is found in numerous instances in these claims, although there appear to be more than one “beam” (one less than 750 kHz and one more than 750 kHz for repetition frequency). Also regarding claim 3, the term “the focal position” in the “second process” is not yet defined and lacks proper antecedent basis (note that “a focal position” is defined in claim 1 for the “first process”). Therefore, such combined terms lack proper antecedent basis akin to claim 1, and are rejected as being vague / indefinite under the meaning of 35 U.S.C. 112(b).
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 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Kouta et al. US 2001/0021293 A1, and further in view of JP 2005-257719 A.
Regarding independent method claim 1, Kouta et al. US 2001/0021293 A1 teaches (ABS; Figs. 1, 9, 10, 11-15; corresponding text, in particular paragraphs [0017] – [0022], [0041] – [0058], [0064] – [0079], [0141] – [0179]; Claims) an optical waveguide manufacturing method for irradiating glass with a femtosecond laser (beam(s)) to form the optical waveguide (Example 1; paras [0064] – [0068]), the method comprising: a process of irradiating the glass (“glass”, [0048], etc. used as medium for WG) with a femtosecond laser beam at a pulse width of 300 fs or less (para [0066], noted as 150 fs in Kouta) and a repetition frequency of 700 kHz or more (laser capable of being used with repetition rates of up to 200 MHz, from the lower kHz values in Example 1, see para [0074]), for irradiating an increased refractive index portion (Kouta ABS) with such laser beam, which pertains to the second process of irradiating step.
Regarding independent method claim 1, there is no express and exact teaching found with Kouta ‘293 for a chronologically prior method step, the “first process”, for (preliminarily prepping) using a femtosecond laser beam to create a feature in which the relative movement of the glass and a focal position of the femtosecond laser are changed, while the laser has a pulse width of less than 300 fs and pulse repetition frequency of less than 750 kHz are used, in order to make the optical waveguide core, for example. However, using the femtosecond laser in Kouta is shown at or around such pulse widths (around 150 fs, [0066], [0088], [0091], etc.) and also it is disclosed in different embodiments of Kouta that repetition frequencies of less than 750 kHz are used (to the tens or hundreds of kHz, para [0006], [0066]).
However, such a process of moving the glass substrate (to create a waveguide or other refractive index gradation) in comparison to a femtosecond laser beam is known in the prior art. Such relative movements help to create features irradiated into the glass / substrate to create such index changes (e.g. to create a core / clad interface). For example, JP 2005-257719 A teaches (ABS; Figs. 7-9; corresponding text, in particular paragraphs [0029], [0034] – [0039]; Claims) teaches a method for drawing with a Fs laser beam in order to make a refractive index change portion within the glass / substrate, in that a waveguide core is formed in the irradiated glass with a pulse width of 150 fs and repetition frequencies of less than 750 kHz for such preparation step (such as about 1 kHz; paras [0034] – [0039]) while scanning the laser beam over a region such as in Figs. 7-9.
Since Kouta US ‘293 and JP ‘719 are both from the same field of endeavor, the purpose disclosed by JP ‘719 would have been recognized in the pertinent art of Kouta US ‘293.
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 JP ‘719, to create a waveguide core region in a substrate / glass, by using the inscription of a femtosecond laser to irradiate such position by relative movement of the substrate / glass to the laser, to form a waveguide core, with the defined 300 fs or less and 750 kHz or less properties, into the base method of manufacturing and design of Kouta’s waveguide that later results in refractive index changed portions, as a recognize method / process for forming the original waveguide core feature in Kouta, by a similar laser. Further, it would have required no undue burden or unnecessary experimentation to arrive at such feature of a the “first process step” in Kouta by viewing JP ‘719. See KSR v. Teleflex, 127 S.Ct. 1727 (2007). For these reasons, independent method claim 1 is found obvious over Kouta US ‘293 and further in view of JP ‘719 (henceforth “COMBO”).
Regarding dependent claim 2, based on the hypothetical combination of features in COMBO’s two laser beams, and because JP ‘719 is about 197 uW, while Kouta is about 2.5 nJ, such peak pulse energies are close enough to be in a range where the peak energy is higher in a first process, but also follows in the range of E1 > E2 with E2> (E1 / 100) as an obvious range of values. The two laser beam process steps would have energies within a reasonable range of 100 times each other. For these reasons, one having ordinary skill in the art at the time of the effective filing date of the current application would have found these “pulse peak energy” features as obvious design choices. See KSR.
Regarding claim 3, within COMBO, the primary prior art of Kouta US ‘293 teaches (Fig. 11-15; paras [0066], [0092] – [0093]) that such features such as refractive index changes are known to occur within an area of tolerance of the beam diameter near such focal point of the laser source, which can be similar to the width of the optical core of a waveguide. Further, it is within the general level of skill in the laser inscription art of optical waveguides, gratings, filters, etc., that refractive index changed areas can be inscribed with a laser at locations deeper than an emission point or focal point. Therefore, the “at a distance…. larger” claim feature in claim 3 is found obvious based on COMBO, and using the general level of skill in the art for the depth of the focal positions of such irradiation. See KSR v. Teleflex, 127 S.Ct. 1727 (2007). For these reasons, dependent claim 3 is found obvious over COMBO itself.
Regarding claim 4, within COMBO, the secondary prior art of JP ‘719 teaches (Figs. 7-9, para [0029]) that features for controlling the refractive index distribution with the core of a formed waveguide can be accomplished by changing the amount of movement for each scan, so that inherently a plurality of spatial periods different from each other are formed for the increase refractive index portion (JP ‘719 Fig. 7-8). For these reasons, such method portion of the “first process” in claim 1 and claim 4 is found obvious based on COMBO, as this part is implied by the secondary art of JP ‘719. KSR.
Additionally, although not all features of the “Written Opinion” from PCT JP ‘776 are found herein, the Examiner fully incorporates such logic and rationale to this rejection of claims 1-4. See Section (2) “Citations and Explanations” from PCT JP ‘776.
Inventorship
19. 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 A-I, which pertain to the state of the art of user lasers (such as femtosecond with pulse widths and repetition frequencies similar to the claims), to irradiate optical features into substrates / glass for waveguiding.
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.
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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 (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 February 4, 2026