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 .
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.
Claim(s) 1-6, 8-15 and 17-27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ming Li et al. (U.S. Patent Application Pub. 2020/0366242 A1) in view of Xuan Li et al. (Xuan Li et al., “Research on Silicon-Substrate-Integrated Widely Tunable, Narrow Linewidth External Cavity Lasers”, MDPI Crystals, 8 May 2022) and Debregeas et al. (Debregeas et al., “2kHz linewidth C-band tunable laser by hybrid integration of reflective SOA and SiO2 PLC external cavity”, 2014 IEEE International Semiconductor Laser Conference, September 2014).
Regarding claim 1, Ming Li et al. teaches in FIG. 4 an integrated photonic apparatus, comprising: an integrated laser 1; an optical detector 8, operationally coupled to the integrated external cavity laser disposed to receive a laser output; and a radio frequency (RF) and/or microwave phase shifter 14 having an input operationally coupled to the optical detector and an output operationally coupled to the integrated laser platform. The difference between Ming Li et al. and the claimed invention is that Ming Li et al. does not teach that the laser is an external cavity laser comprising a suitable material waveguide platform incorporating a high-Q resonator disposed within the external laser cavity and an integrated driving electrode and at least one laser-cavity end reflector disposed in/on the platform and a laser gain element coupled thereto. Xuan Li et al. teaches in FIG. 15 an external cavity laser comprising a suitable material waveguide platform incorporating a high-Q resonator (Ming Li et al. teaches on page 6, first paragraph microring resonant cavity can be high Q resonator) disposed within the external laser cavity and an integrated driving electrode (the narrow lines are waveguides and the thick yellow strips are electrodes) and at least one laser-cavity end reflector (Xuan Li et al. teaches in FIG. 15 RSOA which has a reflector on the left-hand side) disposed in/on the platform and a laser gain element coupled thereto. One of ordinary skill in the art would have been motivated to combine the teaching of Xuan Li et al. with the system of Ming Li et al. and replace the laser (and the modulator) of FIG. 4 of Ming Li et al. with FIG. 15 of Xuan Li et al. because of laser of Xuan Li et al. is widely tunable with narrow linewidth. Thus it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use an external cavity laser with a RSOA, as taught by Xuan Li et al., in the system of Ming Li et al.
The combination of Ming Li et al. and Xuan Li et al. still fails to teach a mode-locking component disposed inside the external laser cavity. Debregeas et al. teaches in FIG. 1a) same or similar structure as FIG. 15 of Xuan Li et al. Debregeas et al. teaches on page 50, last paragraph that a heater inside the Sagnac loop operates as a phase control, to precisely align a cavity mode to a particular wavelength. The phase control is similar to the phase modulator 130 of instant application. One of ordinary skill in the art would have been motivated to combine the teaching of Debregeas et al. with the modified system of Ming Li et al. and Xuan Li et al. because Debregeas et al. is cited by Xuan Li et al. as reference [28]. Thus it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to control the phase so as to lock the mode of the cavity to a particular wavelength, as taught by Debregeas et al., in the modified system of Ming Li et al. and Xuan Li et al.
Regarding claim 2, Xuan Li et al. teaches in FIG. 15 ring resonator.
Regarding claim 3, Ming Li et al. teaches in FIG. 4 and paragraph [0051] microwave band-pass filter 11.
Regarding claim 4, Ming Li et al. teaches in FIG. 4 microwave amplifier.
Regarding claim 5, Ming Li et al. teaches in paragraph [0016] indium phosphide substrate.
Regarding claim 6, Xuan Li et al. teaches in FIG. 15 Sagnac loop mirror.
Regarding claim 8, Xuan Li et al. teaches in FIG. 15 a III-V (InP) RSOA. See Debregeas et al. (Debregeas et al., “2kHz linewidth C-band tunable laser by hybrid integration of reflective SOA and SiO2 PLC external cavity”, 2014 IEEE International Semiconductor Laser Conference, September 2014) which is cited by Xuan Li et al. for FIG. 15.
Regarding claim 9, Xuan Li et al. teaches in FIG. 15 that the RSOA is edge coupled to the laser cavity platform.
Regarding claim 10, Ming Li et al. teaches in FIG. 4 phase modulator 3.
Regarding claim 11, Ming Li et al. teaches in FIG. 4 and paragraph [0051] microwave band-pass filter 11.
Regarding claim 12, Ming Li et al. teaches in FIG. 4 microwave amplifier 12.
Regarding claim 13, Ming Li et al. teaches in paragraph [0016] indium phosphide substrate.
Regarding claim 14, Xuan Li et al. teaches in FIG. 15 ring resonator.
Regarding claim 15, Xuan Li et al. teaches in FIG. 15 ring resonator.
Regarding claim 17, Xuan Li et al. teaches in FIG. 15 RSOA.
Regarding claim 18, Xuan Li et al. teaches in FIG. 15 that the RSOA is edge coupled to the laser cavity platform.
Regarding claim 19, Xuan Li et al. teaches in FIG. 13 another structure for an external cavity comprising a RSOA, microring and an optical coupler (OC) adapted to couple light into and out of the resonator and to couple the laser output to the detector. One of ordinary skill in the art would have combined the teaching of FIG. 13 of Xuan Li et al. with the modified system of Ming Li et al. and Xuan Li et al. because it is a simple substitution of one known, equivalent element for another to obtain predictable results. Thus it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include an OC to couple light into and out of the resonator and to couple the laser output to the detector, as taught by FIG. 13 of Xuan Li et al., in the modified system of Ming Li et al. and Xuan Li et al.
Regarding claim 20, Ming Li et al. teaches in FIG. 4 phase modulator 3; Xuan Li et al. teaches in FIG. 15 Sagnac mirror as cavity end reflector.
Regarding claim 21, Xuan Li et al. teaches in FIG. 15 that the RSOA is edge coupled to the laser cavity platform.
Regarding claim 22, Xuan Li et al. teaches in FIG. 15 Sagnac mirror as cavity end reflector.
Regarding claim 23, Ming Li et al. teaches in FIG. 4 and paragraph [0051] microwave band-pass filter 11.
Regarding claim 24, Ming Li et al. teaches in FIG. 4 microwave amplifier 12.
Regarding claim 25, Ming Li et al. teaches in paragraph [0016] indium phosphide substrate.
Regarding claim 26-27, Xuan Li et al. teaches in FIG. 15 a III-V (InP) RSOA and a Sagnac mirror as a second cavity end reflector.
Claim(s) 1-5, 7, 9-14, 16-18, 20-21 and 23-25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ming Li et al. (U.S. Patent Application Pub. 2020/0366242 A1) in view of Yoffe (U.S. Patent Application Pub. 2021/0336416 A1).
Regarding claim 1, Ming Li et al. teaches in FIG. 4 an integrated photonic apparatus, comprising: an integrated laser 1; an optical detector 8, operationally coupled to the integrated external cavity laser disposed to receive a laser output; and a radio frequency (RF) and/or microwave phase shifter 14 having an input operationally coupled to the optical detector and an output operationally coupled to the integrated laser platform. The difference between Ming Li et al. and the claimed invention is that Ming Li et al. does not teach that the laser is an external cavity laser comprising a suitable material waveguide platform incorporating a high-Q resonator disposed within the external laser cavity and an integrated driving electrode and at least one laser-cavity end reflector disposed in/on the platform and a laser gain element coupled thereto. Yoffe teaches in FIG. 10 and external cavity laser comprising a resonator 1023 and an integrated driving electrode 1025, an end reflector 1029 and a RSOA 1011. One of ordinary skill in the art would have been motivated to combine the teaching of Yoffe with the system of Ming Li et al. because the laser of Yoffe allows precise tuning of the operating point of the laser and suppresses side modes. Thus it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the laser of Yoffe in the system of Ming Li et al.
Ming Li et al. teaches paragraph [0031] that a high Q resonant cavity can be used to select the mode; Yoffe teaches in paragraph [0043] that the ring resonator suppresses side modes. Therefore, the combination of Ming et al. and Yoffe teaches a mode-locking component disposed inside the external laser cavity.
Regarding claim 2, Yoffe teaches in FIG. 10 ring resonator.
Regarding claim 3, Ming Li et al. teaches in FIG. 4 and paragraph [0051] microwave band-pass filter 11.
Regarding claim 4, Ming Li et al. teaches in FIG. 4 microwave amplifier.
Regarding claim 5, Ming Li et al. teaches in paragraph [0016] indium phosphide substrate.
Regarding claim 7, Yoffe teaches in FIG. 10 Bragg grating 1029.
Regarding claim 9, Yoffe teaches in FIG. 10 that the RSOA is edge coupled to the laser cavity platform.
Regarding claim 10, Ming Li et al. teaches in FIG. 4 phase modulator 3.
Regarding claim 11, Ming Li et al. teaches in FIG. 4 and paragraph [0051] microwave band-pass filter 11.
Regarding claim 12, Ming Li et al. teaches in FIG. 4 microwave amplifier 12.
Regarding claim 13, Ming Li et al. teaches in paragraph [0016] indium phosphide substrate.
Regarding claim 14, Yoffe teaches in FIG. 10 ring resonator.
Regarding claim 16, Yoffe teaches in FIG. 10 Bragg grating 1029.
Regarding claim 17, Yoffe teaches in FIG. 10 RSOA.
Regarding claim 18, Yoffe teaches in FIG. 10 that the RSOA is edge coupled to the laser cavity platform.
Regarding claim 20, Yoffe teaches in paragraph [0038] that a phase modulator is integrated on the RSOA chip and in FIG. 10 reflective facet 1013.
Regarding claim 21, Yoffe teaches in FIG. 10 that the RSOA is edge coupled to the laser cavity platform.
Regarding claim 23, Ming Li et al. teaches in FIG. 4 and paragraph [0051] microwave band-pass filter 11.
Regarding claim 24, Ming Li et al. teaches in FIG. 4 microwave amplifier 12.
Regarding claim 25, Ming Li et al. teaches in paragraph [0016] indium phosphide substrate.
Claim(s) 28-33 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ming Li et al., Xuan Li et al. and Debregeas et al. as applied to claims 1-6, 8-15 and 17-27 above, and further in view of Matsko et al. (U.S. Patent Application Pub. 20120327497 A1).
Ming Li et al., Xuan Li et al. and Debregeas et al. have been discussed above in regard to claims 1-6, 8-15 and 17-27. Regarding claims 28-29, the difference between Ming Li et al., Xuan Li et al. and Debregeas et al. and the claimed invention is that Ming Li et al., Xuan Li et al. and Debregeas et al. do not teach generating a multi-frequency comb-like laser output with a spectrum that matches the resonance frequencies of the high-Q resonator and feeding the RF/microwave signal back into the high-Q resonator to electro-optically modulate the resonator and phase lock the laser modes. Matsko et al. teaches in FIG. 1(b) feeding the RF signal back into the resonator 100 and in paragraph [0071] to phase lock the optical harmonics. The Examiner notes that FIG. 1(a) of Matsko et al. is similar to Ming Li et al. where a separated phase modulator is used. Matsko et al. teaches in paragraph [0087] that optical frequency combs are generated with frequency spacing corresponding to the FSR of the resonator. One of ordinary skill in the art would have combined the teaching of Matsko et al. with the modified system of Ming Li et al., Xuan Li et al. and Debregeas et al. because it is a simple substitution of one known, equivalent configuration for another to obtain predictable results. Thus it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to replace the external phase modulator in the modified system of Ming Li et al., Xuan Li et al. and Debregeas et al. by phase modulating the resonator, as taught by Matsko et al.
Regarding claim 30, Xuan Li et al. teaches in FIG. 15 high-Q ring resonator.
Regarding claim 31, Matsko et al. teaches in FIG. 1(b) RF amplifier.
Regarding claim 32, Matsko et al. teaches in FIG. 1(b) RF filter.
Regarding claim 33, Ming Li et al. teaches in paragraph [0016] indium phosphide substrate.
Response to Arguments
Applicant's arguments filed 29 June 2026 have been fully considered but they are not persuasive.
The Applicant argues:
In a non-limiting, exemplary embodiment (claim 1), the high-Q resonator is the mode-locking component. Essential to applicant's claimed invention is that the detected microwave electro-optically drives the high-Q resonator inside the laser cavity to mode-lock the multiple lasing frequency components inside the laser cavity. The mode-locked laser produces a phase- locked optical frequency comb laser output.
Ming Li ('242), in distinction, incorporates a stand-alone, single-frequency laser, which has no effect on the microwave generation. The microwave modulation sidebands are produced by conventional optoelectronic oscillation. As disclosed by Ming Li ('242), the output of the microwave phase shifter is used solely to modulate the output emitted by the laser. The laser assembly functions solely as a light source to emit a single-mode laser wave. Microwave generation occurs outside of the optoelectronic oscillator loop after the beam has been modulated. This is shown clearly in Fig. 3 and 4 and described throughout the specification.
The argument is not persuasive. In response to applicant's argument that the references fail to show certain features of applicant's invention, it is noted that the features upon which applicant relies (i.e., producing a phase-locked optical frequency comb laser output) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
That Xuan Li et al. allegedly teaches an external cavity laser...incorporating a high-Q resonator is of no consequence to correct the defect of Ming Li. One of ordinary skill in the art would not have been motivated to combine the teaching of Xuan Li et al. with the system of Ming Li et al. and replace the laser (and the modulator) of FIG. 4 of Ming Li et al. with FIG. 15 of Xuan Li et al. because it would merely complicate the apparatus in Ming Li used solely as a light source. An external cavity laser with a mode-locking component would serve no useful purpose in Ming Li to generate the microwaves. As such, the motivation to combine simply does not exist.
The argument is not persuasive. In response to applicant's argument that there is no suggestion to combine the references, the examiner recognizes that obviousness can only be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988) and In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992). In this case, one of ordinary skill in the art would have been motivated to combine the teaching of Xuan Li et al. with the system of Ming Li et al. and replace the laser (and the modulator) of FIG. 4 of Ming Li et al. with FIG. 15 of Xuan Li et al. because the laser of Xuan Li et al. is widely tunable with narrow linewidth.
The argument continuous:
Claim(s) 1-5, 7, 9-14, 16-18 and 20-25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ming Li et al. (U.S. Patent Application Pub. 2020/0366242 Al) in view of Yoffe (U.S. Patent Application Pub. 2021/0336416 Al). Applicant respectfully traverses this rejection.
Similarly to the first rejection, the alleged difference between Ming Li et al. and the claimed invention is that "Ming Li et al. does not teach that the laser is an external cavity laser..." Yoffe is alleged to teach "in FIG. 10 an external cavity laser comprising a resonator 1023..."
The applicant respectfully submits that the combination of Ming Li and Yoffe fails to establish a prima facie case of obviousness for the same reasons as applied to Ming Li in combination with Xuan Li described above; i.e., the laser in Ming Li is outside of the optoelectronic oscillator loop for microwave generation. The laser solely functions as a light source to provide optical energy to the optoelectronic oscillator. In contrast, applicant's claimed
external cavity laser comprising a suitable material waveguide platform incorporating a high-Q resonator disposed within the external laser cavity; and...
a radio frequency (RF) and/or microwave phase shifter having ...an output operationally coupled to a mode-locking component disposed inside the integrated external laser cavity
are essential limitations for applicant's claimed microwave generation apparatus (and associated method).
Accordingly, claim(s) 1-5, 7, 9-14, 16-18 and 20-25 are patentable over Ming Li et al. in view of Yoffe.
The argument is not persuasive. As discussed above, the features upon which applicant relies (i.e., i.e., producing a phase-locked optical frequency comb laser output) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
The Applicant argues on page 13 of the Remarks:
Claim(s) 28-33 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ming Li et al. and Xuan Li et al. as applied to claims 1-6, 8-15 and 17-27 above, and further in view of Matsko et al. (U.S. Patent Application Pub. 20120327497 Al). Applicant respectfully traverses this rejection.
The examiner alleges that “the difference between Ming Li et al. and Xuan Li et al. and the claimed invention is that Ming Li et al. and Xuan Li et al. do not teach generating a multi- frequency comb-like laser output with a spectrum that matches the resonance frequencies of the high-Q resonator and feeding the RF/microwave signal back into the high-Q resonator to electro- optically modulate the resonator and phase lock the laser modes. Matsko et al. teaches in FIG. I(b) feeding the RF signal back into the resonator 100 and in paragraph [0071] to phase lock the optical harmonics.”
Applicant respectfully responds that similarly to the teaching of Ming Li, Matsko's laser is outside the optoelectronic oscillator loop for microwave generation, and solely functions as a light source (optical energy) to the optoelectronic oscillator. In Matsko, like Ming Li, the laser is a stand-alone single-frequency laser that has nothing to do with the microwave generation. In Matsko, the microwave modulation sidebands are produced by nonlinear optical mixing in a whispering-gallery resonator, outside of the laser as shown clearly in Fig. l. The laser functions solely as a light source to emit a single-frequency continuous-wave laser wave to provide optical energy for the nonlinear whispering gallery resonator that excites the nonlinear process of four wave mixing (FWM) to improve the spectral purity.
The argument is not persuasive. The Ming Li et al. teaches converting the light signal to RF for feedback. The same is true for Matsko et al. The combination of Ming Li et al., Xuan Li et al., Debregeas et al. and Matsko et al. teaches all the limitations of claims 28-33 and must behave or have features the same as the claimed invention.
Conclusion
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 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 SHI K LI whose telephone number is (571)272-3031. The examiner can normally be reached M-F 6:53 a.m. -3:23 p.m.
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, David Payne can be reached at 571 272-3024. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
skl11 July 2026
/SHI K LI/Primary Examiner, Art Unit 2635
Prosecution Insights