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
Terminal Disclaimer
The terminal disclaimer filed on 08/06/2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of U.S. Patent No. 11,789,221 has been reviewed and is accepted. The terminal disclaimer has been recorded.
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.
Claims 3-5 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, regards as the invention.
Claim 3 recites the limitation "the diode" in line 2 of the claim. There is insufficient antecedent basis for this limitation in the claim. In order to overcome this rejection, the claim should be amended to recite “the light emitting diode”.
The remainder of the claims are rejected for their dependence on claim 3.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 7 is rejected under 35 U.S.C. 112(d) as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 1 already discloses all the limitations of claim 7. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 1-4 and 7-9 are rejected under 35 U.S.C. 103 as being unpatentable over Ding et al. (2017/0261708) hereinafter ‘708, and further in view of Liu (10,600,948) hereinafter ‘948.
Fig 3 of ‘708 discloses an optical system consisting of a Si-Pho substrate 110 with a laser diode 120 and a driver chip 123 mounted on the substrate such that the light generated by the laser diode exits the Si-Pho substrate though the waveguides 114, 116 and 150.
‘708 does not disclose any cooling mechanism for the optical system. However, it is well known in the art that devices like laser diodes and drivers generate heat during operation which negatively impacts the longevity of the device, changes the output wavelength of the LD and wastes energy.
Fig 5 of ‘948 discloses an IC package consisting of a substrate 64 on which an IC chip 62 is mounted. The temperature of the IC chip is controlled by a TEC 86 mounted directly on top of the IC chip. The heat generated by the chip 62 is converted into electricity that is then used to power the IC chip and/or stored as energy by a battery 110.
It would have been obvious to one of ordinary skill in the art to incorporate the teachings of ‘948 into the device of ‘708 by using a TEC 86 positioned directly on top of the laser diode 120 and the driver chip 123 in order to control their temperature, since the combination would yield the predictable result of saving energy, stabilizing output wavelength and extending the operational lifetime of the optical system.
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.
Regarding claim 1, combination of Fig 3 of ‘708 and Fig 5 of ‘948 (both viewed upside down) discloses a method of cooling an optical sub-assembly, comprising:
1. “operating a light emitting diode [LD 120 of ‘708] mounted directly to a bottom surface [mounting surface of 110 of ‘708, surface 74 of ‘948] of a diode submount structure [Silicon Photonics (SiPho) device 110 of ‘708, substrate 64 of ‘948]; and
cooling the light emitting diode [120] with a thermoelectric cooler (TEC) [thermoelectric device 86 of ‘948], the light emitting diode [120] being in direct contact with a top surface [surface 90 of ‘948] of the TEC [86],
wherein the light emitting diode [120] is positioned between the bottom surface [74,110] of the diode submount structure [64, 110] and the top surface [90] of the TEC [86], and
cooling with the TEC [86], an integrated circuit (IC) die [62 of ‘948, 123 of ‘708] that is in direct contact with the top surface [90] of the TEC [86].”
Regarding claims 2-4, 7-9, combination of Fig 3 of ‘708 and Fig 5 of ‘948 discloses the method of cooling the optical sub-assembly:
2. “wherein the diode submount structure [110 of ‘708] is a silicon photonics (SiPho) die.”
3. “the SiPho die [110] comprises a waveguide [114,116,150 of ‘708], and light from the diode [120] exits the SiPho die via the waveguide.”
4. “wherein the SiPho die [110, 64 of ‘948] is positioned over the TEC [86 of ‘948] and overhangs the TEC [see Fig 5] to prevent an underfill material from covering the waveguide [114,116,150].”
7. “wherein cooling the light emitting diode [120] comprises directly cooling the light emitting diode mounted between the diode submount structure [110,64] and the TEC [86].”
8. “wherein the IC die [62 of ‘948, 123 of ‘708] is electrically connected [66 of ‘948, 152 of ‘708] to the diode submount structure [64 of ‘948, 110 of ‘708].”
9. “wherein the IC die [62 of ‘948, 123 of ‘708] is positioned between the diode submount structure [64, 110] and the TEC [86].”
Claims 5 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over a combination of ‘708 and ‘948 as applied to claim 1 above.
Regarding claim 5, combination of ‘708 and ‘948 discloses the method of cooling the optical sub-assembly as described above, but does not disclose:
5. “wherein the SiPho die overhangs the TEC by between 1-2 mm.”
However, 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, as evidenced by APA1.
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, combination of ‘708 and ‘948 discloses the method of cooling the optical sub-assembly as described above, in addition:
10. “the top surface [90] of the TEC [86] and a bottom surface [92] of the TEC [86].”
Furthermore, the references disclose a plurality of electrical connections for supplying current to the opto-electronic devices included in the sub-assemblies, but do not disclose:
10. “wherein the top surface of the TEC faces away from a housing with electrical interconnects, and a bottom surface of the TEC is mounted to the housing”
However, housing for opto-electronic devices is well known in the art for the purpose of protecting sensitive elements from the environment, as evidenced by APA2. 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, as evidenced by APA2.
It would have been obvious to one of ordinary skill in the art to modify the device of ‘708 and ‘948 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.
Admitted Prior Art
The rejection of claim 5 and 10 based on the well-known in the art statement is taken to be admitted prior art (hereinafter APA1 and APA2 respectively) because applicant either failed to traverse the examiner’s assertion of official notice or that the traverse was inadequate, see MPEP 2144.03.
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 in the previous office action which lists other references with similar features as the 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.
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.
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/M. A. Golub-Miller/Primary Examiner, Art Unit 2828
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