The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 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.
DETAILED ACTION
Applicant’s amendments and remarks filed 3/26/26 are acknowledged. Claims 1, 2, and 5 – 7 have been amended. Claims 1 – 7 are pending.
Response to Amendments / Arguments
Applicant's amendments have attempted to address the previously-raised objections of claims 1 – 7, but failed to do so, because the words and a/the articles to be deleted were left in place which has created unintelligible patterns.
Applicant's amendments have obviated the previously-raised rejections of claims 1 and 7 under 35 USC 102 and necessitated new rejections under 35 USC 103, as detailed below.
Applicant's arguments regarding the amended claims versus the previously-raised rejections under 35 USC 103(a) have been fully considered but they are at least in part moot in view of the new grounds of rejections, as necessitated by Applicant’s amendments. The new limitations in amended claim 1 define 3 values of the ring resonator radius and 3 corresponding values of the soliton repetition rate. Gong uses, by way of example but not limitation, a ring resonator radius value of 60 mm and achieves a repetition rate of 335 GHz (3rd complete para. on p. 1276), Gong generally renders obvious (as a matter of common knowledge in the art at a college-textbook level), that the resonant frequencies and differences between adjacent frequencies (Free Spectral Range (FSR)) of a ring resonator are inversely proportional to its radius and can be scaled up and down by varying the latter. Since Gong does not expressly state such fact of common knowledge, the Examiner applies an additional NPL reference by Coillet that has been yielded by an updated prior-art search and expressly demonstrates an (approximate) inverse dependence of the FSR and a soliton repetition rate on the ring resonator radius. In combination with other prior art of record, Coillet teaches expressly or renders obvious all of the limitations recited by the amended claims, as detailed below.
Applicant’s arguments with respect to claims 2 – 6 have been fully considered, but not found persuasive. They disregard the (high) level of ordinary skill in the art of electro-optic modulators and nonlinear devices (which is quite high with its practitioners holding advanced technical degrees). As was noted for claim 4 in the Office Action of 9/30/25, “the Gong – Coillet – Wang combination considers a microwave-rate soliton microcomb generator that has essential structural features (a LN microresonator with dispersion engineered for soliton generation) and a principle of operation (the dual functionality of LN microresonator for both soliton generation and elector-optic tuning of the generated soliton comb) that are substantially similar/identical to those of the claimed device. The device of the Gong – Coillet – Wang combination would be optimized for the same benefit (improved efficiency of soliton generation and electro-optic modulation) as that of the claimed device, while such optimization would be within ordinary skill in the art (which is noted as being high)”. Instead, Applicant appears to apply a TSM approach/position that is too rigid and to have an untenable position that a claim is not obvious only because there is no “102 reference” for it, even though recited limitations are a matter of routine optimization. In particular, Applicant failed to provide a nexus between a difference (if any) in structural features of the comb generator of the applied prior art and that of the instant application versus the recited values of performance characteristics. To wit, Applicant failed to provide a solid technical explanation as to why the comb generator of the applied prior art, with proper optimization of its parameters, would still be not capable of achieving the recited values of performance characteristics.
Claim Interpretation
Claim 1 recites the limitation “a strong electro-optic Pockels effect” that contains a relative term “strong”. For the purposes of this Action and in accordance with the instant specification, the limitation “a strong electro-optic Pockels effect” is interpreted as defining an electro-optic coefficient at least as large as that of lithium niobate, the latter recited by claim 1 as the material of the microresonator and described by the instant specification as possessing “a strong electro-optic Pockels effect” (“By taking advantage of the strong electro-optic Pockels effect of LN” at para. 0008).
Claim 2 recites the limitation “a high speed” that contains a relative term “high”. For the purposes of this Action and in accordance with the instant specification, the limitation “a high speed” is interpreted as defining frequencies of tens of MHz, as exemplified by the instant specification (“the present invention is directed to a microwave-rate soliton microcomb whose repetition rate can be tuned with a speed up to, for example, 75 MHz, which is orders of magnitude faster than conventional soliton microcomb sources” at para. 0033).
Claim Objections
Claims 1 – 7 are objected to because of the following informalities:
The objections of claims 1 – 7 have to be maintained, because Applicant’s amendment left in place the words and articles that should have been deleted and that created unintelligible patterns. Appropriate corrections are required.
Claim Rejections - 35 USC § 103
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over “Near-octave lithium niobate soliton microcomb”, including “Supplemental materials”, by Gong et al, vol. 7, No. 10, Optica, pp. 1275 – 1278, 2020 (hereinafter Gong) in view of “Azimuthal Turing Patterns, Bright and Dark Cavity Solitons in Kerr Combs Generated with Whispering-Gallery-Mode Resonators” by Coillet et al, IEEE Photonics Journal, vol. 5, No. 4, paper 6100409, 2013 (hereinafter Coillet).
Regarding claim 1, Gong describes (Figs. 1, 2, 4, S4, and S5; Abstract; pp. 1275 – 1277) a microwave-rate (tens of GHz; Fig. 2) soliton microcomb for high-speed (electro-optical) tuning soliton microcomb comprising:
an on-chip high-Q lithium niobate (LN) microresonator (Figs. 1a, 1b, and S3 and their captions; “we demonstrate the generation of soliton microcombs in LN thin films” in the Abstract; last para. on p. 1277; Fig. S3 shows a narrowband peak due to a high finesses factor Qin) as a comb resonator whose dispersion (dispersion profile in Figs. 2b and 3) is engineered for soliton comb generation (“We show that by tailoring the microring geometry, especially its height, favorable dispersion can be realized for the emission of dual dispersion waves (DWs) to expand the soliton bandwidth to 4/5 octaves” at 3rd para. on p. 1275) where a strong electro-optic Pockels effect (in LN; “lithium niobate (LN)-on-insulator has gained particular interest [9,14,16], owing to its strong [Symbol font/0x63](2) and [Symbol font/0x63](3) nonlinearities as well as its broad transparency window” at 2nd para. on p. 1275; 1st complete para. on p. 1277; see Section “Claim interpretation” above) is used to dynamically tune (by electro-optics/electrodes, as shown in Fig. S4) a soliton repetition rate (“The microring (Elem. 2) for soliton microcomb generation is surrounded with electrodes which are employed to control the soliton microcomb FSR” at 1st para. of Section 4 in the Supplemental materials) by directly integrating electrooptic tuning and modulation elements (electrodes) into the comb resonator (“The electro-optical tuning can be implemented by applying electric fields along the z axis (g33 = 30 pm/V [20]) via suspended electrodes over the waveguide without impacting its dispersion or by applying inplane electric fields along the y axis [31]” at 1st complete para. on p. 1277: “The microring (Elem. 2) for soliton microcomb generation is surrounded with electrodes which are employed to control the soliton microcomb FSR” under Fig. S4).
Further, Gong uses, by way of example but not limitation, a ring resonator radius of 60 mm which results in a repetition rate of 335 GHz (3rd complete para. on p. 1276). Gong generally renders obvious (as a matter of common knowledge in the art at a college-textbook level) that the resonant frequencies and differences between adjacent frequencies (Free Spectral Range (FSR)) are inversely proportional to the ring resonator radius and can be scaled up and down by varying the latter. Furthermore, Coillet describes (Figs. 1, 3, and 5; Abstract; Sections 1 – 3, 5, and 6) a high-Q disk microresonator (Q ~ 109; 1st para. of Section 2) that is configured as a comb resonator whose dispersion is engineered for soliton comb generation (soliton combs in Figs. 3 and 5). Coillet expressly shows (e.g., the captions of Figs. 5 and 7; last para. of Section 5 and 6) that the repetition frequency of solitons is equal to the Free Spectral Range (FSR) = ς1/2π = c/(a*n0) of the resonator and inversely proportional to the resonator radius a (2nd para. of Section 3). It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention that the radius of the microresonator of Gong can be scaled, up or down, with a corresponding change of the repetition rate of generated solitons, as generally rendered obvious by Gong and expressly described by Coillet, so that an intended repetition rate can first be coarsely set by an appropriate resonator radius and subsequently fine-tuned electro-optically (as taught by Gong).
Gong uses a ring resonator radius of 60 mm which results in a repetition rate of 335 GHz (3rd complete para. on p. 1276). Coillet describes 2 examples of resonators with radii of 5,660 mm and 5,500 mm and corresponding repetition frequencies of 5.9 GHz and 6.1 GHz, respectively (2nd para. of Section 4 and 2nd para. of Section 6). Hence, the Gong – Coillet combination considers ranges of resonator radii (60 mm – 5,660 mm) and corresponding repetition rates (335 GHz – 5.9 GHz) that at least overlap with those of the 3 examples (design choices) recited by claim 1, and hence, a prima facie case of obviousness exists (MPEP 21044.05). Furthermore, the Gong – Coillet combination considers (as detailed above) that the R*F*no product (of the resonator radius R, the repetition rate F, and the refraction index no of the resonator material radius) is approximately constant. Such relationship is presented by the table below which summarizes the examples provided by Gong, Coillet, and the 3 examples (design choices) recited by claim 1. The R*F*no product can be used to estimate a repetition rate value F corresponding to a particular value of the resonator radius R, including the 3 examples (design choices) recited by claim 1, by simple/straightforward scaling up and down. The table demonstrates that, for a given material (e.g., lithium niobate in Gong and the instant application), the R*F*no product is constant within 1%.
radius R (mm)
repetition rate F (GHz)
refractive index n0
R*F*n0
Source
60
335.00
2.14
43,014.00
Gong
450
44.84
2.14
43,180.92
Instant application; claim 1
1,020
19.80
2.14
43,219.44
1,500
13.50
2.14
43,335.00
5,660
5.90
1.37
45,749.78
Coillet
5,500
6.10
1.37
45,963.50
In light of the foregoing analysis, the Gong – Coillet combination teaches expressly or renders obvious all of the recited limitations.
As an aside and relevant comment, it is also noted that Gong, Coillet and the instant application all use a pump wavelength(s) range around of 1,500 nm. This circumstance allows/supports a direct comparison of the resonator radii and corresponding repetition frequencies, even though claim 1 does not recite a pump wavelength, whereas resonator radii and corresponding repetition frequencies depend on the pump wavelength.
Regarding claim 7, Gong describes (Figs. 1, 2, and S4; Abstract; 1st complte para. on p. 1277; para. bridging pp. 3 – 4 of the Supplemental materials) that the microresonator is configured for soliton microcombs with high-speed dynamic modulation (electro-optic modulation in LN).
Claims 2 – 6 are rejected under 35 U.S.C. 103 as being unpatentable over Gong in view of Coillet, and further in view of Wang et al (US 2022/0113191 A1).
Regarding claim 2, Gong describes (Fig. S4) that the repetition rate is tuned electro-optically by using electrodes formed on the microresonator in LN. While Gong does not detail typical speeds of electro-optic modulation/tuning in LN microresonators, Wang discloses (Figs. 1, 2, and 4 – 6; para. 0005 and 0053 – 0066) an on-chip high-Q LN microresonator 3 (“chip-scale microresonator fabrication technology, a high-Q low-mode-volume microring” at para. 0003) as a comb resonator, wherein a strong electro-optic Pockels effect is used to dynamically (electro-optically) tune the comb repetition rate, by directly integrating electrooptic tuning and modulation elements (electrodes in Fig. 2) into the comb resonator. Wang exemplifies that the repetition rate can be at a high frequency of tens of MHz (para. 0033 and 0059). It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention that the soliton repetition rate in the microresonator of the Gong – Coillet combination can be tuned electro-optically at a high speed (at least tens of MHz).
Regarding claim 3, the Gong – Coillet – Wang combination considers that, by taking advantage of the strong electro-optic Pockels effect of LN (the material used by both Gong and Wang) and by integrating electro-optic tuning and modulation component (electrode(s)) directly into the LN comb resonator (Fig. S4 of Gong; Fig. 2 of Wang), a frequency modulation speed up to tens of MHz (> 107 s-1) can be achieved. Figure 2 of Gong shows that the spectrum of generated solitons extends over at least 5 GHz (> 5*109 Hz). Sweeping/modulating across such spectrum with a frequency modulation speed up to tens of MHz corresponds to a frequency modulation rate up to up 5*1016 Hz/s which at least overlap with the recited range and, hence, a prima facie case of obviousness exists (MPEP 2144.05).
Regarding claim 4, it is noted that the Gong – Coillet – Wang combination considers a microwave-rate soliton microcomb generator that has essential structural features (a LN microresonator with dispersion engineered for soliton generation) and a principle of operation (the dual functionality of LN microresonator for both soliton generation and elector-optic tuning of the generated soliton comb) that are substantially similar/identical to those of the claimed device. The device of the Gong – Coillet – Wang combination would be optimized for the same benefit (improved efficiency of soliton generation and electro-optic modulation) as that of the claimed device, while such optimization would be within ordinary skill in the art (which is noted as being high).
Alternatively or additionally, the Examiner took official notice in the Office Action of 9/30/25 that it was well known in the art that LN resonators could be driven with low voltages down to about 1V or lower. Since Applicant has not traversed the official notice, the fact of common knowledge has become applicant admitted prior art. Such low (sub-volt) voltages would correspond to modulation efficiencies at least as high as the recited value.
Regarding claim 5, it is noted that the Gong – Coillet – Wang combination renders obvious that the microresonator can be configured for a significant bandwidth (up to tens of gigahertz) for feedback locking of the repetition rate to an external reference source (external tunable CW laser), enabling both direct injection locking and feedback locking to the comb resonator itself without involving external modulation (3rd para. on p. 1276; para. bridging pp. 3 – 4 of the Supplemental material of Gong). It is also noted that:
(i) Claim 5 does not detail the structural particulars of Fig. 13 of the instant application.
(ii) In similarity with Fig. 13, Fig. S4 of Gong uses a feedback loop with a photodetector to control the microresonator and stabilize the soliton comb.
Regarding claim 6, Gong shows (Fig. S1(s) that the soliton comb (green trace) has low noise at a level at or below a detector background (black traces) (“The soliton comb exhibited low noise compared with the MI comb, as indicated by the measured relative intensity noise spectra (Fig. S1(e))” at 2nd para. of Section 1 of the Supplemental materials). It is also noted that claim 6 neither quantifies a noise floor nor details what “a reference source” is.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 12,027,811 discloses soliton com generation using a ring resonator formed of an electro-optic material (AIN or lithium niobate) with a radius within a range from 10 mm to 1,000 mm (claim 11).
“Spatiotemporal Lugiato-Lefever formalism for Kerr-comb generation in whispering-gallery-mode resonators” by Chembo et al, Phys. Rev. A, vol. 87, paper 053852, 2013, describes (Fig. 2) soliton comb generation using a ring resonator.
“Ultrafast optical ranging using microresonator soliton frequency combs” by Trocha et al, Science, vol. 359, pp. 887–891, 2018, describes (Fig. 1) soliton comb generation using a ring resonator.
US 2018/0307118 A1 discloses (Fig. 2; Abstract) soliton com generation using a ring resonator formed of an electro-optic material
WO 2020/207360 A1 discloses (Figs. 1 – 4) soliton com generation using a ring resonator.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT TAVLYKAEV whose telephone number is (571)270-5634. The examiner can normally be reached 10:00 am - 6:00 pm, Monday - Friday.
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/ROBERT TAVLYKAEV/Primary Examiner, Art Unit 2896
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