DETAILED ACTION
This office action is in response to the amendment filed on February 19, 2026. In accordance with this amendment, claims 1 and 8 have been amended. The attached Declaration under 37 CFR 1.130(a) has been reviewed.
Claims 1-20 remain pending, with claims 1 and 10 being in independent claim form. Note that claims 10-20 may be eligible for claim rejoinder upon allowance.
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 without traverse of Group I, claims 1-9, in the reply filed on July 28, 2025 was previously acknowledged. Claims 10-20 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group, there being no allowable generic or linking claim (at the present time of prosecution). Please note that if Applicant amends around the 35 U.S.C. 103 rejections herein (to Kippenberg / Creazzo), claims 10-20 will be considered for rejoinder. Substantially similar amendments must be made for independent (device) claim 10, in comparison to those made for independent (method) claim 1.
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).
Information Disclosure Statement
The prior art documents submitted by Applicant in the Information Disclosure Statements filed on November 4, 2025, have been considered and made of record (note attached copy of forms PTO-1449).
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.
Noting dependent claim 18 (which is “Withdrawn” but eligible for rejoinder), the term “frequency combs” lacks proper antecedent basis because claim 10 recites a “frequency comb.” Claim 18 would be rejected under 35 U.S.C. 112(b) for vagueness and indefiniteness. Correction is required.
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 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Kippenberg et al. US 2022/0050356 A1 (which has matured into U.S. Patent No. 11,513,419 B2), and further in view of Creazzo et al. US 2013/0235890 A1.
Kippenberg et al. US 2022/0050356 A1 teaches (ABS; Figs. 1, 4, 5; corresponding text, in particular paragraphs [0080] – [0106], [0109]; Claims) a device (notably Figs. 1, 4, 5) and inherent method, comprising each method step to include: receiving an input on a device (laser 10) on a device, wherein the device comprises a waveguide 20 in optical communication with a ring resonator 30, and wherein the ring resonator is in thermal communication with a heater integrated with the device 53 (paras [0080] – [0084]); determining a target mode by effecting, with the ring resonator, single-mode ring feedback (para [0087]; Kippenberg claim 24, predetermined “target” is inherent part of the control); adjusting a temperature of the ring resonator so as to modulate the ring feedback (the sensor 60 monitors), wherein the adjusting comprises heating the ring with the heater ([0087]); and applying the ring feedback to the input laser source 10 ([0087]; claim 24) to generate an output frequency comb that includes the target mode (see device shown in Figs. 1, 4, 5), which the method of using optical feedback for the input / laser and the resultant output of frequency comb generation comb by the same structural features.
Regarding independent method claim 1, Kippenberg does not expressly and exactly teach that the laser is a multimode gain input, and in that the frequency comb being output uses feedback to this multimode gain (laser) to output the frequency comb in which a single-mode target is output. Kippenberg does discuss features of multi-mode for the laser, at paragraph [0109], in which multi-mode emission from a diode (laser) can be applied in that features of single-mode and multi-mode operation are considered. However, no exact integration of single-mode and multi-mode properties are expressly disclosed in method form.
Further, Creazzo et al. US 2013/0235890 A1 teaches (ABS; Figs. 1A, 1B, 2A, 7A; corresponding text, in particular paragraph [0057]; Claims) a tunable laser device in which a multi-mode gain chip / laser 21 (multiple modes, as in para [0043], [0044], [0054]) is used in an integrated circuit design, in that optical laser signals are used with adjustable heater / thermal tuning, in that features of the output frequency comb are tunable (para [0057]), and use feedback. Creazzo teaches that this gain chip can be used in similar configurations to Kippenberg at that location defined in Figs. 1A / 1B. Note Creazzo paragraphs [0041], [0083], [0090] reciting resonator function.
Since Kippenberg and Creazzo are both from the same field of endeavor, the purpose disclosed by Creazzo would have been recognized in the pertinent art of Kippenberg.
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 Creazzo, to use a gain chip, such as one incorporating multi-mode operation, into the base design of the optical frequency comb generation device of Kippenberg, as the input source / laser, to allow for multiple laser signals being output as the frequency comb, with integration of the method steps of multi-mode and single-mode (based on feedback to the laser in both Creazzo and Kippenberg based on thermal tuning of optical elements), to allow for tunable “target modes” as part of the output frequency comb. Further, it would have required no undue burden or unnecessary experimentation to arrive at such feature of a using a multi-mode gain input as the laser in Kippenberg. See KSR v. Teleflex, 127 S.Ct. 1727 (2007). For these reasons, independent method claim 1 is found obvious over Kippenberg and further in view of Creazzo (henceforth “COMBO”).
Regarding further dependent claims 2-9, all such method steps are shown and/or derived from the same device and mode of operation to output the frequency comb. The multimode gain chip, device, waveguide, integrated heater, ring resonator, and functional operation of the feedback are all shown by features of Kippenberg and Creazzo, or are obvious based on the hypothetical COMBO method steps of claim 1. See KSR v. Teleflex, 127 S.Ct. 1727 (2007). For these reasons, all method steps outlined by claims 2-9 can be easily derived from the hypothetical combination and do not present any patentable distinction over COMBO.
Response to Arguments
Applicant’s arguments, see amendment with remarks (page 5), filed February 19, 2026, with respect to previous 35 U.S.C. 102(a)(1) rejection to Gil-Molina NPL, have been fully considered and are persuasive. The Examiner notes the Declaration filed under 37 CFR 1.130(a) was considered for this withdrawal.
Applicant’s arguments, see amendment (page 5), filed February 19, 2026, with respect to the rejection(s) of claim(s) 1-9 under 35 U.S.C. 112(b) have been fully considered and are persuasive. Therefore, those rejection(s) have been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Kippenberg / Creazzo (“COMBO”) for claims 1-9. Because Applicant’s amendments to at least independent claim 1, these new 35 U.S.C. 103 rejections were necessitated by a narrower independent claim (in scope (metes-and-bounds) without “optionally”). Accordingly, this action is made Final.
Inventorship
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
Applicant's amendment (to at least independent claim 1) 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 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 Daniel Petkovsek whose telephone number is (571) 272-4174. The examiner can normally be reached M-F 7:30 - 6 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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
May 29, 2026
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