CTNF 18/346,506 CTNF 79520 DETAILED ACTION This office action is in response to the election and amendment filed on May 22, 2026. In accordance with this amendment, claims 21, 22, 24, 29, and 31-34 have been amended. Claims 15-34 remain pending and are rejected herein, with claims 15, 21, and 29 in independent form. The Examiner agrees to rejoin all pending claims 15-34 into one Group, because of the amendments to independent claims 21 and 29. Claims 15, 21, and 29 can now be examined concurrently without undue burden, based on the overall combination of features found in independent method form(s). Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Election/Restrictions Applicant's election “without” traverse of Group III, namely claims 15-34, in the reply filed on May 22, 2026 is acknowledged. The partial traversal is on the grounds that because Applicant has amended substantial method features into both independent claims 21 and 29, that all Groups III-V should be joined together and examined as one Group. This is found persuasive based on the current condition of method independent claims 15, 21, and 29 when viewing these claims as a whole. Therefore, the Examiner agrees with withdraw the restriction requirement as mailed on March 23, 2026 and examine all pending claims 15-34 in one Group . In view of the above noted withdrawal of the restriction requirement, applicant is advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application. Once a restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler , 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01 . 08-23-02 AIA Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i). Information Disclosure Statement The prior art documents submitted by Applicant in the Information Disclosure Statements filed on July 18, 2024 and July 31, 2023, have been considered and made of record (note attached copy of forms PTO-1449). Drawings The original drawings (twenty-eight (28) pages) were received on July 3, 2023. These drawings are acknowledged. Claim Rejections - 35 USC § 102 07-06 AIA 15-10-15 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. 07-07-aia AIA 07-07 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 – 07-08-aia AIA (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. 07-12-aia AIA (a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention. 07-15-03-aia AIA Claim s 15, 20, 21, and 23 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Islam et al. US 2024/0045146 A1 . Islam et al. US 2024/0045146 A1 teaches (ABS; Figs. 1, 2, 3A, 3B, 5A; corresponding text, in particular note paragraphs [0028], [0038], [0039]; Claims) a method of forming an optical module (the method is inherent from the device as found in Islam Figs. 2, 3A, 3B; also note the method steps as outlined in paragraphs [0028], [0038], and [0039]), comprising: forming a first grating coupler precursor over a substrate ( lower grating at 38 / 34); etching the first grating coupler precursor to form a first grating coupler with a first plurality of grating lines laterally separated by a first spacing ( etching , paras [0028], [0038], and [0039]; see laterally spaced lines of the lower grating feature); forming a first dielectric over the first grating coupler (layer of material between 34 and 32 is a dielectric, SiO 2 , note [0027]); forming a second grating coupler precursor over the first dielectric ( upper grating at 26 / 32); and etching the second grating coupler precursor to form a second grating coupler with a second plurality of grating lines laterally separated by a second spacing ( etching , paras [0028], [0038], and [0039]; see laterally spaced lines, see laterally spaced lines of the upper grating feature), wherein the second grating coupler is directly over the first grating coupler (at least parts of the top grating are directly over the lower grating, see Figs. 2, 3A, 3B), which clearly, fully meets Applicant’s claimed method steps for forming in independent claim 15. Regarding independent claim 21, the features of the upper and lower gratings in Islam ‘146 can be considered as “trenches”, with exposed sidewalls to create the grating functionality. Regarding dependent claim 20, the two gratings (upper and lower) are capable of transmitting and receiving transverse modes between each other as claimed, and further note that claim 15 is a method of forming claim. The method of forming claim (15) does not change based on these capabilities. Regarding dependent claim 23, the trenches are formed in the 1 st and 2 nd waveguiding materials 60 / 80 as claimed, to the bottom of the 2 nd and spaced from a bottom of the first by a portion of the 1 st waveguide material . 07-15 AIA Claim s 15 and 20-23 are rejected under 35 U.S.C. 102( a)(1 ) as being anticipated by Plantier et al. US 2019/0170938 A1 (which has matured into U.S. Patent No. 10,656,332 B2) . Plantier et al. US 2019/0170938 A1 teaches (ABS; Figs. 1A, 2, 4A, 5; corresponding text, notably paragraphs [0086] – [0095], [0116], [0117], [0127], [0133], [0144], and [0169] – [0172]; Claims) a method of forming an optical module (the method is inherent from the device as found in Plantier Figs. 2 and 5; also note the method steps as outlined in cited paragraphs above for layering / deposition and etching), comprising: forming a first grating coupler precursor over a substrate 110 / 121 ( lower grating at 123 / in layer 122); etching the first grating coupler precursor to form a first grating coupler with a first plurality of grating lines laterally separated by a first spacing ( etching , paras cited; see laterally spaced lines of the lower grating feature in Figs. 1A, 2, 4A, 5); forming a first dielectric 131 over the first grating coupler (layer of material between 122 and 132 can be SiO 2 , also another dielectric material, [0168] – [0172]); forming a second grating coupler precursor over the first dielectric ( upper grating at 133 / in layer 132); and etching the second grating coupler precursor to form a second grating coupler with a second plurality of grating lines laterally separated by a second spacing ( etching , cited paragraphs above; see laterally spaced lines, see laterally spaced lines of the upper grating feature), wherein the second grating coupler is directly over the first grating coupler (at least parts of the top grating are directly over the lower grating, see Figs. 1A, 3, 4A, 5), which clearly, fully meets Applicant’s claimed method steps for forming in independent claim 15. Regarding dependent claim 20, the device from the method of Plantier is capable of receiving such transverse mode signals as operating (1 st and 2 nd gratings). Regarding independent claim 21, the features of the upper and lower gratings in Plantier ‘938 can be considered as “trenches”, with exposed sidewalls to create the grating functionality. Regarding dependent claim 22, see paragraph [0090], as the same material can be used as selected. Regarding dependent claim 23, the trenches are formed in the 1 st and 2 nd waveguiding materials 122 / 132 as claimed, to the bottom of the 2 nd and spaced from a bottom of the first by a portion of the 1 st waveguide material . 07-15 AIA Claim s 15 and 21 are rejected under 35 U.S.C. 102( a)(1)-(2 ) as being anticipated by Kopp et al. US 2010/0265504 A1 (which has matured into U.S. Patent No. 8,493,562 B1); and Wang et al. CN 113866875 A; as well as Li et al. CN 115201970 A (see attached PTO-892 form references N and O). Li is 35 U.S.C. 102(a)(2) . Kopp (see Figs. 5, 8), CN ‘875 (see Figs. 1-3 and 5), and CN ‘970 (see Figs. 3-8, 10) all teach a method of forming an optical module (the method is inherent from the device as found in Kopp, Wang and Li; also note the method steps as outlined in cited paragraphs for layering / deposition and etching), comprising: forming a first grating coupler precursor over a substrate ( lower grating in all Figs.); etching the first grating coupler precursor to form a first grating coupler with a first plurality of grating lines laterally separated by a first spacing ( etching steps recited in all references); forming a first dielectric over the first grating coupler (layer between grating in references are all dielectrics); forming a second grating coupler precursor over the first dielectric ( upper gratings in all Figs.); and etching the second grating coupler precursor to form a second grating coupler with a second plurality of grating lines laterally separated by a second spacing ( etching , steps recited in all references), wherein the second grating coupler is directly over the first grating coupler (at least parts of the top grating are directly over the lower grating, as in each of Kopp, Wang, and Li), which clearly, fully meets Applicant’s claimed method steps for forming in independent claim 15. Regarding independent claim 21, the features of the upper and lower gratings in Kopp, Wang, and Li can be considered as “trenches”, with exposed sidewalls to create the grating functionality . Claim Rejections - 35 USC § 103 07-06 AIA 15-10-15 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. 07-20-aia AIA 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. 07-23-aia AIA The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows: 1. Determining the scope and contents of the prior art. 2. Ascertaining the differences between the prior art and the claims at issue. 3. Resolving the level of ordinary skill in the pertinent art. 4. Considering objective evidence present in the application indicating obviousness or nonobviousness. 07-20-02-aia AIA 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. 07-21-aia AIA Claim s 29-34 are rejected under 35 U.S.C. 103 as being unpatentable over Plantier et al. US 2019/0170938 A1, and further in view of Peters et al. US 2009/0021835 A1 . Regarding independent method claim 29, Plantier et al. US 2019/0170938 A1 teaches (ABS; Figs. 1A, 2, 4A, 5; corresponding text, notably paragraphs [0086] – [0095], [0116], [0117], [0127], [0133], [0144], and [0169] – [0172]; Claims) a method of forming an optical module (the method is inherent from the device as found in Plantier Figs. 2 and 5; also note the method steps as outlined in cited paragraphs above for layering / deposition and etching), comprising: forming a first grating coupler precursor over a substrate 110 / 121 ( lower grating at 123 / in layer 122); etching the first grating coupler precursor to form a first grating coupler with a first plurality of grating lines laterally separated by a first spacing ( etching , paras cited; see laterally spaced lines of the lower grating feature in Figs. 1A, 2, 4A, 5); forming a first dielectric 131 over the first grating coupler (layer of material between 122 and 132 can be SiO 2 , also another dielectric material, [0168] – [0172]); forming a second grating coupler precursor over the first dielectric ( upper grating at 133 / in layer 132); and etching the second grating coupler precursor to form a second grating coupler with a second plurality of grating lines laterally separated by a second spacing ( etching , cited paragraphs above; see laterally spaced lines, see laterally spaced lines of the upper grating feature), wherein the second grating coupler is directly over the first grating coupler (at least parts of the top grating are directly over the lower grating, see Figs. 1A, 3, 4A, 5). Regarding the specifics of claim 29, Plantier US ‘938 does not expressly and exactly teach that the method steps create a first plurality of grating couplers (from the 1 st grating coupler layer) also with a first optical combiner , and that the second plurality of waveguide and grating couplers are formed with a second optical combiner . However, using waveguide with gratings integrally with larger number of waveguides / gratings is a known type of technology in the art in order to increase the amount of optical data that can be transferred, and also known with wavelength selective functionality, so that different data can be encoded on different wavelengths. For example, Peters US ‘835 teaches (ABS; Figs. 1, 5, 6; paragraphs [0042] – [0047]; Claims) an optical device that includes waveguide gratings on numerous waveguides, during fabrication, and an optical combiner (the AWG, combiner features found therein to combine signals / wavelengths) on the optical substrate formation. Such integration is known to allow increased amounts of optical signals to propagate and improve sizing constraints by using the combined wavelengths to make the chip smaller. Since Plantier and Peters are both from the same field of endeavor, the purpose disclosed by Peters would have been recognized in the pertinent art of Plantier. A person having ordinary skill in the art at a time before the effective filing date of the current application would have recognized the teaching of Peters, to have multiple layered features to include a plurality of grating couplers and also an optical combiner, in each layer, to allow for improved design of the grating coupler feature of Plantier, into their base method of formation of Plantier’s device, to allow increased optical capacity on chip and using wavelength selectivity of the gratings in operation. Further, it would have required no undue burden or unnecessary experimentation to arrive at such feature of the “first plurality of grating couplers” and the “optical combiner” at each level for the two gratings. See KSR v. Teleflex , 127 S.Ct. 1727 (2007). For these reasons, independent claim 29 is found obvious over Plantier and further in view of Peters (henceforth “COMBO”). Further regarding dependent claims 30-34, there is no express and exact recitation of a single embodiment that employs such features in COMBO (features of optical designs for the method steps (claims 30-34). However, at a time before the effective filing date of the current application, it would have been an obvious matter of common skill and design choice to a person of ordinary skill in the art to use features such as having different grating periods on different levels (because Plantier can have distinct periods in the different layers), using additional layering, tapering, etching, isolation, vertical spacing, etc., because Applicant has not disclosed that using such features provides an advantage, is used for a particular purpose, or solves a stated problem. One of ordinary skill in the art, furthermore, would have expected COMBO to perform equally well with such features as the optical dependencies (grating features for coupling with the combiner) because these claim terms would have been easily integrated and would have also been recognized by one with common skill in the art to improve optical signal propagation and the resultant method formation and design. It would have required no undue burden or unnecessary experimentation to arrive at those features with a method of forming an optical device such as in COMBO. Further, the base method steps of the independent claim 29 is found obvious over COMBO as discussed previously within this section. Therefore, it would have been an obvious matter of common skill and design choice to modify (and/or update) COMBO to obtain the invention as specified in claims 30-34. See KSR v. Teleflex , 127 S.Ct. 1727 (2007) . 07-21-aia AIA Claim s 16-19 and 24-28 are rejected under 35 U.S.C. 103 as being unpatentable over Plantier et al. US 2019/0170938 A1, standing alone . Regarding independent method claims 15 and 21, Plantier et al. US 2019/0170938 A1 teaches (ABS; Figs. 1A, 2, 4A, 5; corresponding text, notably paragraphs [0086] – [0095], [0116], [0117], [0127], [0133], [0144], and [0169] – [0172]; Claims) a method of forming an optical module (the method is inherent from the device as found in Plantier Figs. 2 and 5; also note the method steps as outlined in cited paragraphs above for layering / deposition and etching), comprising: forming a first grating coupler precursor over a substrate 110 / 121 ( lower grating at 123 / in layer 122); etching the first grating coupler precursor to form a first grating coupler with a first plurality of grating lines laterally separated by a first spacing ( etching , paras cited; see laterally spaced lines of the lower grating feature in Figs. 1A, 2, 4A, 5); forming a first dielectric 131 over the first grating coupler (layer of material between 122 and 132 can be SiO 2 , also another dielectric material, [0168] – [0172]); forming a second grating coupler precursor over the first dielectric ( upper grating at 133 / in layer 132); and etching the second grating coupler precursor to form a second grating coupler with a second plurality of grating lines laterally separated by a second spacing ( etching , cited paragraphs above; see laterally spaced lines, see laterally spaced lines of the upper grating feature), wherein the second grating coupler is directly over the first grating coupler (at least parts of the top grating are directly over the lower grating, see Figs. 1A, 3, 4A, 5). Regarding the specifics of further dependent claims 16-19 and 24-28, Plantier US ‘938 does not expressly and exactly teach that the method steps create a first plurality of grating couplers (from the 1 st grating coupler layer) also with a first optical combiner, with a third grating with different spacing / lines (claim 16 and 24+); a mirror or lens configuration added to the integrated design (claims 17-18), using the etch to go through a bottom surface of the waveguide layer (claim 19), or the second widths of the second grating are less than the first widths (claim 28). However, a person having ordinary skill in the art at a time before the effective filing date of the current application would have recognized the general teachings of Plantier, with the two layer formation of the (method) of forming such design with a dielectric layer therebetween, and with the added particular of dependent claims 16-19 and 24-28, as obvious design choices and integrations to further the base method as outlined by claims 15 and 21. Further, it would have required no undue burden or unnecessary experimentation to arrive at such features of the “first plurality of grating couplers” and the “optical combiner” at each level for the two grating, a third grating with different spacing / lines (claim 16 and 24+); a mirror or lens configuration added to the integrated design (claims 17-18), using the etch to go through a bottom surface of the waveguide layer (claim 19), or the second widths of the second grating are less than the first widths (claim 28). Also, the base independent method claims 15 and 21 are clearly anticipated by Plantier and a number of other prior art references above. See KSR v. Teleflex , 127 S.Ct. 1727 (2007). For these reasons, dependent claims 16-19 and 24-28 are found obvious over Plantier, standing alone . Inventorship 07-20-02-aia AIA 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. Conclusion 07-96 AIA The prior art made of record and not relied upon is considered pertinent to applicant's disclosure : PTO-892 form references D-F, which pertain to the state of the art of integrated grating designs with etched gratings on two separate waveguide levels . Any inquiry concerning this communication or earlier communications from the examiner should be directed to Daniel Petkovsek whose telephone number is (571) 272-4174. The examiner can normally be reached M-F 7:30 - 6 PM. 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 (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. /DANIEL PETKOVSEK/Primary Examiner, Art Unit 2874 June 10, 2026 Application/Control Number: 18/346,506 Page 2 Art Unit: 2874 Application/Control Number: 18/346,506 Page 3 Art Unit: 2874 Application/Control Number: 18/346,506 Page 4 Art Unit: 2874 Application/Control Number: 18/346,506 Page 5 Art Unit: 2874 Application/Control Number: 18/346,506 Page 6 Art Unit: 2874 Application/Control Number: 18/346,506 Page 7 Art Unit: 2874 Application/Control Number: 18/346,506 Page 8 Art Unit: 2874 Application/Control Number: 18/346,506 Page 9 Art Unit: 2874 Application/Control Number: 18/346,506 Page 10 Art Unit: 2874 Application/Control Number: 18/346,506 Page 11 Art Unit: 2874 Application/Control Number: 18/346,506 Page 12 Art Unit: 2874 Application/Control Number: 18/346,506 Page 14 Art Unit: 2874 Application/Control Number: 18/346,506 Page 15 Art Unit: 2874 Application/Control Number: 18/346,506 Page 16 Art Unit: 2874
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