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 .
DETAILED ACTION
Drawings
Figure 4B should be designated by a legend such as --Prior Art-- because only that which is old is illustrated. See MPEP § 608.02(g).
The drawings are objected to because in Fig 1 element 108 is labeled as a “Laser diode”, while the specification designates this element as a “SOA diode”.
Corrected drawings in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. The replacement sheet(s) should be labeled “Replacement Sheet” in the page header (as per 37 CFR 1.84(c)) so as not to obstruct any portion of the drawing figures. If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
Election/Restrictions
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-10, drawn to a method of cooling an optical sub-assembly, classified in class H10H, subclass 20/8584
II. Claims 11-20, drawn to a system for cooling devices, classified in class G02B, subclass 6/4271.
Inventions I and II are related as product and process of use. The inventions can be shown to be distinct if either or both of the following can be shown: (1) the process for using the product as claimed can be practiced with another materially different product or (2) the product as claimed can be used in a materially different process of using that product (MPEP § 806.05(h)). In the instant case the process for using the product as claimed can be practiced with another materially different product, since the term diode is broad and can encompass many different devices and the structure of the system is not required by the claims.
This application also contains claims directed to the following patentably distinct species:
Type of sub-mount:
1. Silicon Photonics (SiPho) die
2. Aluminum Nitride (AlN) sub-mount
The species are independent or distinct because claims to the different species recite the mutually exclusive characteristics of such species. In addition, these species are not obvious variants of each other based on the current record.
Applicant is required under 35 U.S.C. 121 to elect a single disclosed species for prosecution on the merits to which the claims shall be restricted if no generic claim is finally held to be allowable. Currently, claim 1 is generic.
Restriction for examination purposes as indicated is proper because all these inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and examination burden if restriction were not required because one or more of the following reasons apply:
(a) the inventions have acquired a separate status in the art in view of their different classification;
(b) the inventions have acquired a separate status in the art due to their recognized divergent subject matter;
(c) the inventions require a different field of search (for example, searching different classes/subclasses or electronic resources, or employing different search queries);
(d) the prior art applicable to one invention would not likely be applicable to another invention;
(e) the inventions are likely to raise different non-prior art issues under 35 U.S.C. 101 and/or 35 U.S.C. 112, first paragraph.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of a invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable on the elected invention.
If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103(a) of the other invention.
There is an examination and search burden for these patentably distinct species due to their mutually exclusive characteristics. The species require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search queries); and/or the prior art applicable to one species would not likely be applicable to another species; and/or the species are likely to raise different non-prior art issues under 35 U.S.C. 101 and/or 35 U.S.C. 112, first paragraph.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of a species to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected species, including any claims subsequently added. An argument that a claim is allowable or that all claims are generic is considered nonresponsive unless accompanied by an election.
The election of the species may be made with or without traverse. To preserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the election of species requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable on the elected species.
Should applicant traverse on the ground that the species are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the species to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the species unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103(a) of the other species.
Upon the allowance of a generic claim, applicant will be entitled to consideration of claims to additional species which depend from or otherwise require all the limitations of an allowable generic claim as provided by 37 CFR 1.141.
Applicant is reminded that upon the cancellation of claims to a non-elected invention, the inventorship must be amended in compliance with 37 CFR 1.48(b) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. Any amendment of inventorship must be accompanied by a request under 37 CFR 1.48(b) and by the fee required under 37 CFR 1.17(i).
During a telephone conversation with Theodore Prekop on 2/06/26 a provisional election was made without traverse to prosecute the invention of Group 1, claims 1-10 and Species 1 SiPho die. Affirmation of this election must be made by applicant in replying to this Office action. Claims 6, 11-20 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-5, 7-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 31-33, 35-37 of U.S. Patent No. 11,789,221. Although the claims at issue are not identical, they are not patentably distinct from each other because all the limitations of the currently pending claims are already disclosed in the patented claims.
Claim 1 corresponds to claim 31, which discloses:
A method of cooling an optical sub-assembly comprising:
operating a light emitting diode … attached to a photonics die;
cooling the light emitting diode with a thermoelectric cooler (TEC) in direct contact with the light emitting diode,
wherein … a first surface of the light emitting diode is in direct contact with the TEC and a second surface of the light emitting diode … is in direct contact with the with photonics die.
Claim 2 corresponds to claim 32, which discloses:
wherein the photonics die is a silicon photonics (SiPho) die.
Claim 3 corresponds to claim 31, which discloses:
…wherein the optical beam emitted by the light emitting diode exits the optical sub-assembly via the waveguide…
Claim 4 corresponds to claim 31, which discloses:
… wherein the photonics die is offset from the TEC in a horizontal direction, providing an overhang of the photonics die over the TEC, such that the underfill does not interfere with the optical beam exiting the waveguide
Claim 5 corresponds to claim 33, which discloses:
wherein the photonics die overhangs the TEC by between 1-2 mm.
Claim 7 corresponds to claim 37, which discloses:
wherein cooling the light emitting diode comprises providing the light emitting diode in direct thermal communication with both the photonics die and the TEC, and the wherein TEC directly cools the light emitting diode.
Claim 8 corresponds to claim 35, which discloses:
wherein the optical sub-assembly further comprises one or more integrated circuits electrically connected to the photonics die.
Claim 9 corresponds to claim 36, which discloses:
further comprising: cooling the one or more integrated circuits electrically connected to the photonics die via direct thermal communication with the photonics die and the TEC.
Claim 10 corresponds to claim 31, which discloses:
… wherein the TEC is mounted to a housing and is in electrical contact with the housing;
… wherein the TEC comprises a top surface and a bottom surface such that the bottom surface of the TEC is attached to the housing and the top surface of the TEC is attached to the light emitting diode.
Claim Rejections - 35 USC § 102
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.
Claims 1-4 and 7-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tamura et al. (9,762,026) hereinafter ‘026.
Regarding claim 1, Fig 6 of ‘026 discloses a method of cooling an optical sub-assembly, comprising:
1. “operating a diode [light source 10-12 col. 7 ln. 13-14] mounted to a diode submount structure [Silicon Photonics (SiP) device 13,32,31,15]; and
cooling the diode [col. 11 ln. 52-57] with a thermoelectric cooler (TEC) [Peltier device 16] in thermal contact with the diode [light source],
wherein the diode [light source] is positioned between the diode submount structure [SiP] and the TEC [Peltier device].”
Regarding claims 2-4, 7-9, Fig 6 of ‘026 discloses the method of cooling the optical sub-assembly:
2. “wherein the diode submount structure [SiP] is a silicon photonics (SiPho) die.”
3. “the SiPho die [SiP] comprises a waveguide [32], and light from the diode [light source] exits the SiPho die via the waveguide [see arrows in Fig 6 designating the direction of light].”
4. “wherein the SiPho die [SiP] is positioned over the TEC [Peltier device 16] and overhangs the TEC [see Fig 6] to prevent an underfill material [25] from covering the waveguide [32] [material 25 does not interfere with waveguide 32].”
7. “wherein cooling the diode [light source] comprises directly cooling the diode mounted between the diode submount structure [SiP] and the TEC [Peltier device].” See col. 11 ln. 54-57
8. “further comprising: cooling one or more integrated circuits [electric circuits col. 11 ln. 42-44] electrically connected to the diode submount structure [SiP].” The heat generated by the circuits is dissipated by the SiP substrate into the surrounding air.
9. “wherein the one or more integrated circuits [electric circuits col. 11 ln. 42-44] are positioned between the diode submount structure [SiP] and the TEC [16].”
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, 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.
Claims 5 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over ‘026 as applied to claims 1-4 above.
Regarding claim 5, ‘026 discloses the method of cooling the optical sub-assembly as described above, including various dimensions of the different parts of the device, but does not disclose:
5. “wherein the SiPho die overhangs the TEC by between 1-2 mm.”
However, the examiner takes an official notice that the length of the overhang between two elements is a result effective variable that determines by how much one of the elements is extended beyond the device structure and the amount of clearance available for the waveguide of the extended elements to avoid the underfill.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to make the overhang in the range of 1-2 mm, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 10, ‘026 discloses the method of cooling the optical sub-assembly as described above, in addition:
10. “wherein the TEC [Peltier device] includes a top surface [bottom surface] and a bottom surface [top surface], and the diode [light source] is directly connected to the top surface of the TEC.”
Furthermore, the reference discloses a plurality of electrical connections for supplying current to the opto-electronic devices included in the sub-assembly, but does not disclose:
10. “top surface facing away from a housing with electrical interconnects, and a bottom surface mounted to the housing”
However, the examiner takes an official notice that housing for opto-electronic devices is well known in the art for the purpose of protecting sensitive elements from the environment. It is also well known to attach device elements to the housing and to each other directly in order to provide structural support and shorten connections between the elements.
It would have been obvious to one of ordinary skill in the art to modify the device of ‘026 by attaching one of the surfaces of the TEC to a housing that has electrical interconnects and attaching the opposite surface of the TEC directly to the device to be cooled for at least the purpose of the efficiently cooling electronic devices and protecting them for the environment.
Thus, the claimed invention would have been obvious before the effective filing date of the claimed invention because “all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art. KSR, 550 U.S. at 416, 82 USPQ2d at 1395.
Pertinent Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Applicant’s attention is drawn to the references cited on form PTO-892 which lists other references with similar features as the invention.
Contact Info
Any inquiry concerning this communication or earlier communications from the examiner should be directed to M. A. GOLUB-MILLER whose telephone number is (571)272-8602. The examiner can normally be reached on M-F 9-5.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, MinSun Harvey can be reached on (571) 272-1835. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. For more information about the PAIR system, see https://ppair-my.uspto.gov/pair/PrivatePair. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
/M. A. Golub-Miller/Primary Examiner, Art Unit 2828
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