DETAILED ACTION
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 .
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-8, 10 and 22 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 has been amended to recite “wherein the coupling each of the plurality of optical fibers to the PIC comprises spot melting at least one optical fiber of the plurality of optical fibers by moving a laser from a center of the at least one optical fiber outwards.” Page 9 of Remarks cites support for the amendment as at Paragraph [0051] and Figure 4A.
Paragraph [0051] states “For example, the laser 420 can be used to spot melt the optical fiber 402 from the center outwards.” A reading of this description does not convey any movement of the laser. Figure 4A appears to show a laser directed toward a center of the optical fiber and subsequent melting occurring outward and proximal from the center of the fiber without any specific laser movement. Movement of the laser does not appear to have been described in a manner to convey that the inventor had possession of an invention involving movement of the laser.
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.
Claims 1-8, 10 and 22 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 1 recites the broad recitation “coupling, using at least one of: (i) laser splicing, (ii) laser spot welding, or (iii) arc welding, each of the plurality of optical fibers directly to the PIC…”, and the claim also recites “wherein the coupling each of the plurality of optical fibers to the PIC comprises spot meling at least one optical fiber of the plurality of optical fibers by moving a laser…” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Since at least one of the options of arc welding does not require the use of a laser, it is unclear what meaning this option has within the scope of the claim.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1 and 5-8 are rejected under 35 U.S.C. 103 as being unpatentable over Patent No. 6,411,759 to Beguin et al. (hereinafter “Beguin”) in view of Patent No. 4,971,418 to Dorsey et al. (hereinafter “Dorsey”). Beguin was applied in a prior Office action.
In re claim 1, Beguin discloses a method, see FIG. 11, comprising:
aligning each of a plurality of optical fibers (2) for coupling to a photonic integrated circuit (PIC) (1), comprising:
detecting transmission from each respective optical fiber (2) to the PIC (1) using a probe, and aligning the respective optical fiber (2) based on the detected transmission (Beguin: “The chip 1 incorporating the waveguide 1a, and the optical fiber 2, are … aligned in a conventional manner (typically by a conventional method which maximises light transmitted between the optical fiber and the waveguide) as illustrated in FIG. 2”); and
coupling, at least one of: (i) laser splicing, (ii) laser spot welding, or (iii) arc welding, each of the plurality of optical fibers (2) directly to the PIC (1) using an attachment/fusion joint that is free of epoxy free and free of catalyst (Beguin: “After the fusion of the waveguide 1a and optical fiber 2, the power of the laser beam is reduced to a lower level and, preferably, this power level is gradually reduced still further during a relatively long period of time in order to allow the fusion joint to cool down gradually”). See columns 4-6 and col. 9 of Beguin for further details.
Beguin fails to disclose the coupling of each of the plurality of optical fibers to the PIC as comprising spot melting at least one optical fiber of the plurality of optical fibers by moving a laser from a center of the at least one optical fiber outwards. Dorsey, however, teaches moving a laser beam along an axis of an optical fiber to selectively heat sections of a fiber splice to suit the heating requirements of the splice (Column 3 lines 30-36).
It would have been obvious before the effective filing date of the claimed invention to spot melt the at least one optical fiber by moving a laser from a center of the at least one optical fiber outwards in the method disclosed by Beguin. One would have been motivated to perform the spot melt as proposed to better control heat application toward various parts of the splice according to conventional means (Dorsey: Column 3 lines 30-36).
Regarding claims 5 and 6, the polymer or mineral joint (25) shown in FIG. 4 of Beguin reads upon the claimed non index-matching epoxy.
Regarding claim 7, the coupling each of the plurality of optical fibers (2) to the PIC (1) further comprises: pushing at least one of the plurality of optical fibers (2) toward the PIC (1) as seen in FIG. 2 of Beguin.
Regarding claim 8, Beguin discloses a shield element (20) capable of confining heat from the coupling of at least one of the plurality of optical fibers (2) to the PIC (1), and wherein the shield element (20) is made of carbon instead of metal.
Claim(s) 1, 7-8, and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Japanese Patent Pub. No. JP H07-218757 A to Hiramoto et al. (hereinafter “Hiramoto”) in view of Patent No. 4,971,418 to Dorsey et al. (hereinafter “Dorsey”). Hiramoto was applied in a prior Office action.
Regarding claim 1, Hiramoto discloses a method, see Figures 4-7, comprising:
aligning each of a plurality of optical fibers (5) for coupling to a photonic integrated circuit (PIC) (10), comprising:
detecting transmission from each respective optical fiber (5) to the PIC (10) using a probe (14), and aligning the respective optical fiber (5) based on the detected transmission (Hiramoto: “In this optical axis adjustment, the laser light emitted from the semiconductor laser 1 is incident on one end of the optical fiber 5 via the lens 3 and is emitted from the opposite side of the waveguide element 10 by using the fine movement tables 6 and 6. It is performed by adjusting while observing the instruction value of the optical power meter 14 so that the optical power becomes maximum”); and
coupling, using at least one of: (i) laser splicing, (ii) laser spot welding, or (iii) arc welding, each of the plurality of optical fibers (5) directly to the PIC (10) using an attachment that is free of epoxy free and free of catalyst (Hiramoto: “it becomes possible to uniformly melt the waveguide element 10 and the optical fiber 5 which have greatly different heat capacities, and it is possible to reproducibly achieve high-strength fusion splicing with low loss”). See the English translation of Hiramoto for further details.
Hiramoto fails to disclose the coupling of each of the plurality of optical fibers to the PIC as comprising spot melting at least one optical fiber of the plurality of optical fibers by moving a laser from a center of the at least one optical fiber outwards. Dorsey, however, teaches moving a laser beam along an axis of an optical fiber to selectively heat sections of a fiber splice to suit the heating requirements of the splice (Column 3 lines 30-36).
It would have been obvious before the effective filing date of the claimed invention to spot melt the at least one optical fiber by moving a laser from a center of the at least one optical fiber outwards in the method disclosed by Hiramoto. One would have been motivated to perform the spot melt as proposed to better control heat application toward various parts of the splice according to conventional means (Dorsey: Column 3 lines 30-36).
Regarding claim 7, as seen in Figures 1-3 of Hiramoto, the coupling each of the plurality of optical fibers (5) to the PIC (10) further comprises: pushing at least one of the plurality of optical fibers (5) toward the PIC (10).
Regarding claim 8, as seen in Figure 4 of Hiramoto, the areas of the PIC (10) outside of the laser spot (S) are zones capable of confining heat from the coupling of at least one of the plurality of optical fibers (5) to the PIC (10), and are zones that do not include a metal.
Regarding claim 10, the probe (14) of Hiramoto comprises an electrical probe (14) and wherein detecting transmission from each respective optical fiber (5) to the PIC (10) using the probe (14) inherently comprises detecting photocurrent feedback because the probe (14) is an optical power meter.
Claims 3 and 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Beguin in view of Dorsey, or Hiramoto in view of Dorsey, as applied to claim 1 above.
Regarding claim 4, Beguin in view of Dorsey, or Hiramoto in view of Dorsey, only differs in that neither teaches using laser spot welding using at least two laser spots. Laser sport welding using at least two laser spots, however, was a well-known technique for securely attaching optical components together before the effective filing date. It would have been obvious to one of ordinary skill to use as a suitable alternative method such as laser spot welding to couple the optical fibers to the PIC of Beguin in view of Dorsey, or Hiramoto in view of Dorsey, instead of using the laser splicing disclosed by Beguin in view of Dorsey, or Hiramoto in view of Dorsey, thereby obtaining the invention specified by claim 4. Therefore, it would have been obvious to one ordinary skill in the art before the effective filing date of the claimed invention to obtain the invention specified by claim 4 in view of Beguin in view of Dorsey, or Hiramoto in view of Dorsey, and further in view of common knowledge in the art regarding laser spot welding.
In re claim 4, Beguin in view of Dorsey, or Hiramoto in view of Dorsey, only differs in that neither teaches using arc welding using one or more electrodes. Arc welding using one or more electrodes, however, was a well-known technique for securely attaching optical components together before the effective filing date. It would have been obvious to one of ordinary skill to use a suitable alternative method such as arc welding to couple the optical fibers to the PIC of Beguin in view of Dorsey, or Hiramoto in view of Dorsey, instead of using the laser splicing disclosed by Beguin in view of Dorsey, or Hiramoto in view of Dorsey, thereby obtaining the invention specified by claim 4. Therefore, it would have been obvious to one ordinary skill in the art before the effective filing date of the claimed invention to obtain the invention specified by claim 4 in view of Beguin in view of Dorsey, or Hiramoto in view of Dorsey, and further in view of common knowledge in the art regarding arc welding.
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 11, 12, and 15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 10, 11, and 14 of U.S. Patent No. 11,675,130 (hereinafter “the ‘130 patent”). The ‘130 patent was applied in a prior Office action.
Although the claims at issue are not identical, they are not patentably distinct from each other because each of claims 11, 12, and 15 is literally anticipated by a corresponding claim recited in the ‘130 patent. For example, claim 10 of the ‘130 patent literally anticipates claim 11 of the present application. Claim 11 of the ‘130 patent literally anticipates claim 12 of the present application, etc. Anticipation is the epitome of obviousness. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to obtain the invention specified by claims 11, 12, and 15 in view of claims 10, 11, and 14 of the ‘130 patent.
Claims 13-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 11 of the ‘130 patent in view of Beguin.
In re claim 13, claim 11 of the ‘130 patent only appears to differ in that the patented claim does not recite adding, after the coupling, strain relief for the attachment of the plurality of optical fibers to the PIC. Beguin, as previously discussed, teaches adding, after the coupling, strain relief for the attachment of the plurality of optical fibers to the PIC in the form of a polymer or mineral joint (25) as shown in FIG. 4 of Beguin reads upon the claimed non index-matching epoxy. In order to provide a robust joint between the optical fibers and the PIC, claim 11 of the ‘130 patent claim would have been modified by adding, after the coupling, the strain relief (25) of Beguin for the attachment of the plurality of optical fibers to the PIC, thereby obtaining the invention specified by claim 13. Therefore, it would have been obvious to one ordinary skill in the art before the effective filing date of the claimed invention to obtain the invention specified by claim 13 in view of claim 11 of the ‘130 patent combined with Beguin.
In re claim 14, the strain relief (25) of Beguin may be considered a non index matching epoxy. Therefore, claim 14 is considered obvious in view of claim 11 of the ‘130 patent for the same reasons mentioned with respect to claim 13.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-8, 10-15, and 22 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
THIS ACTION IS MADE FINAL. 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 Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL H CALEY whose telephone number is (571)272-2286. The examiner can normally be reached M-F 9am - 5pm.
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/MICHAEL H CALEY/Supervisory Patent Examiner, Art Unit 2871