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 .
Response to Arguments
Applicant's arguments filed 1/26/26 have been fully considered but they are not persuasive. Regarding applicant’s argument “The Applicant submits that the above-mentioned features of amended claim 1 are not taught or suggested by the combination of Jordan and Popovic…or by the combination of Lipson and Popovic”, Examiner respectfully asserts that the cited prior art as presented below does in fact teach that there is an area of no evanescent optical coupling between the waveguide and cavity between the evanescent optical coupling locations as claimed.
Claim Rejections - 35 USC § 112
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.
Claim 5 is 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. The claim recites “a distance along said circumferential half of the optical cavity between the first location and the second location is less than one-quarter of a total circumferential distance around the optical cavity”. However, this limitation is not disclosed in the specification or drawings. The specification recites that the coupling region extends around about one-tenth to about one-quarter of a circumference of the outer wall of the passive optical cavity in par. 0075 and the optical coupling region extending around about one-tenth to about one-quarter of a circumference of the outer wall of the passive optical cavity in par. 0076. This cited limitation does not suggest or imply that a distance between the coupling regions is less than one-quarter of a total circumferential distance around the optical cavity, merely that each coupling region extends one-tenth to one-quarter of a total circumferential distance around the optical cavity.
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.
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 – 4, 6 – 8, 10 and 16 – 20 are rejected under 35 U.S.C. 103 as being unpatentable over Jordan et al. (U.S. Patent # 6,389,203 B1) in view of Popovic et al. (PG Pub. # 2016/0139487 A1).
In Re claim 1, ‘203 teaches a photonic system, comprising: an optical cavity (23) having a preferred radial mode (whichever mode propagates in the cavity as all light has at least one mode) for light propagation within the optical cavity,
and an optical waveguide (26) configured to approach the optical cavity within an evanescent optical coupling distance at a first locations (27A) along a circumferential half (fig. 2A) of the optical cavity and at a second location (27B) along said circumferential half of the optical cavity, wherein the optical waveguide is not within the evanescent optical coupling distance of the optical cavity between the first location and the second location (figs. 2A, col. 3, lines 2 – 6), such that at least some light propagating through the optical waveguide will optically couple into the preferred radial mode of the optical cavity at each of the first location and the second location along said circumferential half of the optical cavity (figs. 2A – 3B).
‘203 appears to be expressly silent to wherein the preferred radial mode has a unique light propagation constant within the optical cavity and the optical waveguide having a light propagation constant that substantially matches the unique light propagation constant of the preferred radial mode within the optical cavity.
‘487 teaches that if a coupling waveguide has a matching propagation constant to that of a resonator structure mode, then solely or mainly the fundamental optical mode may be coupled between the resonator structure and the optical waveguide. This design feature facilitates isolating the incident optical signals in the waveguide from coupling to other, higher order (and potentially higher loss) undesired resonator modes (par. 0088).
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the optical cavity and optical waveguide of ‘203 to make the optical cavity and optical waveguide to have a matching propagation constant, as taught by ‘487, thus a unique light propagation constant, so as to mainly or solely couple the fundamental mode between the optical cavity and optical waveguide thus isolating the incident optical signals in the waveguide from coupling to other, higher order (and potentially higher loss) undesired resonator modes as a person with ordinary skill has good reason to pursue the known options within his or her technical grasp.
In Re claim 2 – 4 and 6, ‘203 teaches the claimed limitations as seen in figs. 2A – 3B.
In Re claim 7, ‘203 teaches the structure of claimed invention and tuning (28, 29) to achieve a desired coupling result. Thus, the patentability of an apparatus depends only on the claimed structural limitations. ‘203 teaches a structure that is substantially identical to that of the claimed invention, therefore the claimed properties or functions are presumed to be inherent. The burden is on the applicant to show that the ‘203 device does not possess these functional characteristics. See MPEP 2112.01.
In Re claim 8, ‘203 teaches wherein the optical waveguide has a first width within the first optical coupling region and a second width within the second optical coupling region, wherein the first width and the second width of the optical waveguide are measured in a transverse direction relative to a light propagation direction through the optical waveguide (fig. 2B, 3B).
In Re claim 10, the previous combination teaches the system of claim 11, but is silent to wherein the first width and the second width of the optical waveguide are different. However, it is well known in the art that altering the waveguide width at a coupling region to a cavity alters the coupling efficiency or modes or wavelengths to be coupled. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the first width and the second width of the optical waveguide different so as to alter the efficiency or modes or wavelengths coupling at the evanescent coupling locations so as to ensure desired optical coupling since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).
In Re claims 16 and 17, the previous combination teaches the system of claim 11, and wherein the optical cavity has an outer wall defined by an outer radius, an inner wall defined by an inner radius (fig. 2B), but is silent to wherein the radial width of the optical cavity is greater than or equal to two times the first width of the optical waveguide, and wherein the radial width of the optical cavity is greater than or equal to two times the second width of the optical waveguide; and wherein each of the first width of the optical waveguide and the second width of the optical waveguide is within a range extending from about 250 nanometers to about 650 nanometers.
However, it is well known in the art make the waveguide smaller at the coupling regions to a resonator so as to allow for optimum evanescent coupling for desired optical modes and that industry wide communication bandwidths traverse evanescently along waveguides of 250 to 650 nm as claimed.
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the radial widths as claimed so as to allow for desired optimum optical coupling depending upon desired use of the system of ‘203 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.
In Re claim 18, ‘203 teaches a cladding material (24) disposed around (doesn’t mean surround) and between the optical cavity and the optical waveguide, the cladding material having an optical refractive index different than each of an optical refractive index of the optical cavity and an optical refractive index of the optical waveguide (col. 3, lines 20 – 30).
In Re claim 19, ‘203 teaches wherein the cladding material is disposed between the first and second locations along said circumferential half of the optical cavity (figs. 2A – 3B).
In Re claim 20, the previous combination teaches the system of claim 18 and wherein the optical cavity has an outer wall defined by an outer radius, an inner wall defined by an inner radius, and a radial width measured as the outer radius minus the inner radius (figs. 2A – 3B).
the previous combination is silent to wherein the radial width of the optical cavity is greater than λ/ncore2-nclad2, wherein λ is a free-space wavelength of light corresponding to the preferred radial mode within the optical cavity, ncore is the optical refractive index of the optical cavity, and nclad is the optical refractive index of the cladding material.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make width meet the claimed parameter so as to ensure that the light traverses the cavity and achieves resonance as designed as the claimed formula is a known formula used for determining dimensions of waveguides to ensure light confinement/propagation in a waveguide.
Claims 1 – 4, 6 – 9, 12, 14 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Lipson et al. (U.S. PG Pub. # 2015/0188659 A1) in view of Popovic et al. (PG Pub. # 2016/0139487 A1).
In Re claim 1, ‘659 teaches a photonic system (fig. 7), comprising: an optical cavity (ring, par. 0053) having a preferred radial mode (whichever mode propagates in the cavity as all light has at least one mode) for light propagation within the optical cavity,
and an optical waveguide (racetrack, par. 0053) configured to approach the optical cavity within an evanescent optical coupling distance at a first locations (coupling 1) along a circumferential half of the optical cavity and at a second location (coupling 2) along said circumferential half of the optical cavity, wherein the optical waveguide is not within the evanescent optical coupling distance of the optical cavity between the first location and the second location (fig. 7), such that at least some light propagating through the optical waveguide will optically couple into the preferred radial mode of the optical cavity at each of the first location and the second location along said circumferential half of the optical cavity (fig. 7).
‘659 appears to be expressly silent to wherein the preferred radial mode has a unique light propagation constant within the optical cavity and the optical waveguide having a light propagation constant that substantially matches the unique light propagation constant of the preferred radial mode within the optical cavity.
‘487 teaches that if a coupling waveguide has a matching propagation constant to that of a resonator structure mode, then solely or mainly the fundamental optical mode may be coupled between the resonator structure and the optical waveguide. This design feature facilitates isolating the incident optical signals in the waveguide from coupling to other, higher order (and potentially higher loss) undesired resonator modes (par. 0088).
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the optical cavity and optical waveguide of ‘659 to make the optical cavity and optical waveguide to have a matching propagation constant, as taught by ‘487, thus a unique light propagation constant, so as to mainly or solely couple the fundamental mode between the optical cavity and optical waveguide thus isolating the incident optical signals in the waveguide from coupling to other, higher order (and potentially higher loss) undesired resonator modes as a person with ordinary skill has good reason to pursue the known options within his or her technical grasp.
In Re claims 2 – 4 and 6, ‘659 teaches the claimed limitations in fig. 7 and pars. 0053 – 0054.
In Re claim 7, the patentability of an apparatus depends only on the claimed structural limitations. ‘659 teaches a structure that is substantially identical to that of the claimed invention, therefore the claimed properties or functions are presumed to be inherent. The burden is on the applicant to show that the ‘659 device does not possess these functional characteristics. See MPEP 2112.01.
In Re claim 8, ‘659 teaches the claimed widths and properties (par. 0055).
In Re claim 9, ‘659 teaches wherein the first width and the second width of the optical waveguide are substantially equal (par. 0055).
In Re claim 12, ‘659 teaches wherein the optical cavity has an outer wall defined by an outer radius, an inner wall defined by an inner radius, and a radial width measured as the outer radius minus the inner radius (fig. 7), wherein the radial width of the optical cavity is within a range extending from about 500 nanometers to about 3 micrometers (par. 0055 – 0059, as the term about has no metes or bounds so the values as cited meet the limitation of about).
In Re claim 14, ‘659 teaches wherein the preferred radial mode for light propagation within the optical cavity is a fundamental mode (par. 0059).
In Re claim 15, the patentability of an apparatus depends only on the claimed structural limitations. ‘659 teaches a structure that is substantially identical to that of the claimed invention, therefore the claimed properties or functions are presumed to be inherent. The burden is on the applicant to show that the ‘659 device does not possess these functional characteristics. See MPEP 2112.01.
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 CHAD SMITH whose telephone number is (571)270-1294. The examiner can normally be reached M-F 7:30 - 5.
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 1-571-272-2397. 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.
/CHAD H SMITH/Primary Examiner, Art Unit 2874