Non-Final Rejection
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . Following a non-final action, applicant filed an amendment on 6/10/2026 in which claims 16 and 27 are amended and claims 28-32 are added. Claims 16-32 are pending.
A double patenting rejection could have and should have been presented in the prior action. This rejection is therefore not necessitated by amendment, and this action is made non-final.
Note the examiner of record has changed.
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 16-22, 24, 26, and 28-32 are rejected under 35 U.S.C. 103 as being unpatentable over EP 0466975 (“Hasegawa”) in view of US 2017/0146793 (“Gudeman”).
16. A semiconductor laser, comprising:
a carrier,
an edge-emitting laser diode which is arranged on the carrier and which has an active zone for generating laser radiation and a facet with a radiation exit area,
Hasegawa in Fig. 2 and discussion thereof starting col. 3 describes a semiconductor light-emitting device 1 on a carrier 4. Hasegawa does not call it an edge emitting laser diode. Gudeman is a similar device and uses an edge emitting laser diode as the light emitting device. [0024]. It would have been obvious to a person of ordinary skill in the art to use such a laser as they are useful for certain applications such as high speed communications, and edge emitters provide a high quality beam that is often necessary, as taught by Gudeman.
an optical element which covers the facet,
a connecting material which is arranged between the optical element and the facet,
a molded body which covers the laser diode and the optical element at least in places, wherein
Hasegawa shows an optical element 8 that covers the facet of the light emitter, a connecting material 5 that is between the optical element and facet, and a molded body 5 that covers the light emitter and optical element at least in places. While the resin 5 is being applied against both elements, only the part between the optical element and facet is deemed the “connecting material” and the rest is deemed the “molded body.”
To the extent it may be argued (or actually claimed later) that these two things need to be separate, Gudeman shows a similar device and shows in Figs. 5-6 that the optical element may be butt coupled to the laser with an index matching adhesive, i.e. a connecting material. [0035]-[0036]. It would have been obvious to a person of ordinary skill in the art as a simple substitution of a known element for another to yield predictable results. MPEP 2143 I.B. Hasegawa shows the same device but arguably has a different combination of optical element and connecting material, but Gudeman shows an optical element that would definitely have such connecting material. Substitution of one for the other would yield predictable results because they generally do the same thing in each reference and will do the same thing that they already do in the references, redirect the light. The resin material can still cover the laser as intended in Hasegawa, it would just be removed where the light is meant to escape, as already done in Hasegawa. It is also generally considered obvious to make things integral. MPEP 2144.04 V.B.
the optical element is at least partially transparent to the laser radiation emitted by the laser diode during operation,
the optical element is designed to change a main propagation direction of the laser radiation entering the optical element during operation,
the optical element comprises a curved outer surface and,
a main propagation radiation direction of the laser diode is transverse or perpendicular to a main propagation radiation direction of the semiconductor laser.
Hasegawa’s optical element 8 is partially transparent to the light and changes the propagation direction of the light so that it is transverse or perpendicular to the main radiation direction, as apparent in Fig. 2. It does not have a curved outer surface.
Gudeman shows a similar device with a laser coupled to an optical element. See Fig. 6. The optical element has a curved outer surface and reflects the laser radiation so it is transverse or perpendicular to a main propagation radiation direction of the semiconductor laser. It would have been obvious to a person of ordinary skill in the art to make the reflector curved because this allows you to shape the light in a particular way that may be desirable. See [0039] showing how curves affect the reflections.
Regarding claim 17, in Hasegawa the molded body 5 completely covers the laser.
Regarding claim 18, the resin 5 i.e. molded body can also be said to surround the carrier in places. While it perhaps does not do so in exactly the same way as claimed, the purpose of the resin is for protection, and it would have been obvious to also surround the carrier in places if it is determined the carrier needs protection. Additionally, Fig. 1 shows that a laser diode might be on a submount and heat sink. It would have been obvious to a person of ordinary skill in the art to use these things as heat is known to harm lasers. The heat sink could be added in Fig. 2 and this would be a carrier completely surrounded by the resin.
Regarding claim 19, the exit surface 8b of Hasegawa is free of the molded body.
Regarding claim 20, the optical element completely covers the facet.
Regarding claims 21-22, Hasegawa does not show AR coatings, but Gudeman teaches that it was known to include AR coatings where the light is exiting. See Fig. 6, item 90. It would have been obvious to a person of ordinary skill in the art to include AR coatings because they help prevent unwanted backreflections, allowing the light to escape where it is wanted.
Regarding claim 24, as shown in Gudeman Figs. 9-10 the optical element is designed to shape the laser radiation entering the optical element during operation.
Regarding claim 26, a conversion element is not shown. The examiner takes Official Notice that such wavelength converters are well known. It would have been obvious to a person of ordinary skill in the art to use one as semiconductor lasers may not emit in precisely the desired output wavelength, so these permit selection of a different wavelength.
Regarding claim 28, the optical element is effectively attached to the light emitter in Hasegawa via the resin 5. Alternatively, as in the rejection of claim 16 above, the optical element may be coupled to the laser with an adhesive as taught by Gudeman.
Regarding claim 29, the molded body 5 directly contacts the light emitting element as shown in Hasegawa Fig. 2.
Regarding claim 30, Gudeman’s optical element is elliptical. [0029].
Regarding claim 31, the particular shape of the optical element is not shown, but of course a quarter sphere is a known shape. It would have been obvious to a person of ordinary skill in the art to use whatever shape to match the desired beam shape. Indeed Gudeman suggests these shapes are exemplary, and making the reflector any shape depending on the output desired. [0039].
Regarding claim 32, the optical element is intended to be reflective. A person skilled in the art would understand that they may add a mirror layer to increase reflectivity. For example Gudeman coats with gold to add reflectivity. [0031]-[0032].
Claim 23 is rejected under 35 U.S.C. 103 as being unpatentable over Hasegawa and Gudeman as applied to the parent claims, and further in view of JP 2003-59087 (“JP ‘087”).
Regarding claim 23, Hasegawa does not show a photocatalytically acting layer is applied on the radiation exit side of the optical element to support decomposition reactions on the radiation exit side. JP ‘087 teaches that a photocatalytic layer may be placed on a radiation exit side of a laser. See abstract, and entirety of page 2 of translation attached to this action. This would correspond to the exit side of the optical element. It would have been obvious to a person of ordinary skill in the art to include such a layer as it helps remove things such as mold or dust that may harm the beam, as taught by JP ‘087.
Claims 25 and 27 are rejected under 35 U.S.C. 103 as being unpatentable over Hasegawa and Gudeman as applied to the parent claims, and further in view of US 2018/0166850 (“Gudeman II”).
Regarding claim 25, Hasegawa does not show a plurality of edge emitting lasers on a carrier and each having an associated optical element, and a beam combiner combining the beams. Gudeman II is a similar type of device and Fig. 6 shows that there may be multiple lasers each with an optical element. [0053]. It further states that the beams may be combined in a beam combiner. [0100]. It would have been obvious to a person of ordinary skill in the art to use multiple lasers as this permits data communication using multiple wavelengths on a single fiber, as taught by Gudeman II. [0053]. They would of course need to be combined to go onto the single fiber.
Claim 27 is an independent claim that includes some (but not all) of the limitations of claims 16 and 25. All of the limitations are therefore met for the same reasons as in the rejections of those claims above.
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 16-32 are rejected on the ground of nonstatutory double patenting as being unpatentable over the claims listed below of U.S. Patent No. 11,749,959 (“the ‘959 patent”) in view of US 2017/0146793 (“Gudeman”). Although the claims at issue are not identical, they are not patentably distinct from each other as follows.
16. A semiconductor laser, comprising:
a carrier,
an edge-emitting laser diode which is arranged on the carrier and which has an active zone for generating laser radiation and a facet with a radiation exit area,
an optical element which covers the facet,
a connecting material which is arranged between the optical element and the facet,
a molded body which covers the laser diode and the optical element at least in places, wherein
the optical element is at least partially transparent to the laser radiation emitted by the laser diode during operation,
the optical element is designed to change a main propagation direction of the laser radiation entering the optical element during operation,
The above is all in claim 1 of the ‘959 patent.
the optical element comprises a curved outer surface and,
a main propagation radiation direction of the laser diode is transverse or perpendicular to a main propagation radiation direction of the semiconductor laser.
This is not claimed. Gudeman shows a similar device with a laser coupled to an optical element. See Fig. 6. The optical element has a curved outer surface and reflects the laser radiation so it is transverse or perpendicular to a main propagation radiation direction of the semiconductor laser. It would have been obvious to a person of ordinary skill in the art to make the light perpendicular as claimed because this is desired for many TOSA architectures, as taught by Gudeman. [0025]. It would have been obvious to a person of ordinary skill in the art to make the reflector curved because this allows you to shape the light in a particular way that may be desirable. See [0039] showing how curves affect the reflections.
Claims 17-22 are substantially the same as claims 2, 4, and 6-9 of the ‘959 patent, respectively.
Claim 23 is found in claim 1.
Claim 24 is substantially the same as claim 10 of the ‘959 patent.
Regarding claim 25: The semiconductor laser according to claim 24, which comprises a beam combiner, wherein the semiconductor laser comprises two further edge-emitting laser diodes, each of which is arranged on a carrier,
The above is claims 11-12 of the ‘959 patent.
one optical element each covers the facet of one further edge-emitting laser diode, and the beam combiner is arranged downstream of the three optical elements of the laser diode and the two further edge-emitting laser diodes.
The above is not claimed, but would have been obvious to a person skilled in the art. Once you add additional lasers and a beam combiner, it is only natural to make them like the first laser diode, i.e. include an optical element for each. The beam combiner is also naturally downstream of the optical elements because the point is that the optical elements provide the laser output, so the combining will be done after the output.
Claim 26 is substantially the same as claim 13 of the ‘959 patent.
27. A semiconductor laser, comprising:
a carrier,
an edge-emitting laser diode which is arranged on the carrier and which has an active zone for generating laser radiation and a facet with a radiation exit area,
an optical element which covers the facet,
a connecting material which is arranged between the optical element and the facet,
a molded body which covers the laser diode and the optical element at least in places,
. . .
the optical element is at least partially transparent to the laser radiation emitted by the laser diode during operation, and
the optical element is designed to change the main propagation direction of the laser radiation entering the optical element during operation.
The above is found in claim 1 of the ‘959 patent.
. . . two further edge-emitting laser diodes, each of which is arranged on a carrier, wherein . . .
The above is found in claim 11 of the ‘959 patent.
Regarding claim 28, Gudeman teaches that the optical element may be butt coupled to the laser by an adhesive, [0035], i.e. it is mechanically attached. It would have been obvious to a person of ordinary skill in the art to do so to ensure it stays where it is supposed to be.
Regarding claim 29, it is not claimed the molded body is in direct contact with the laser diode at least in places, only in claim 1 that it “covers” the laser. There are only two options here: it directly contacts the laser, or it does not. It would have been obvious to try either option. See MPEP 2143 I.E. The molded body covers the laser, protecting it, and it could do so either by directly contacting or by surrounding without touching. Either could be chosen, and the result would be predictable either way as the molded body does not have a complicated function, it just covers. The result would therefore have been predictable.
Regarding claim 30, Gudeman’s optical element is elliptical. [0029].
Regarding claim 31, the particular shape of the optical element is not shown, but of course a quarter sphere is a known shape. It would have been obvious to a person of ordinary skill in the art to use whatever shape to match the desired beam shape. Indeed Gudeman suggests these shapes are exemplary, and making the reflector any shape depending on the output desired. [0039].
Regarding claim 32, the optical element is intended to be reflective. A person skilled in the art would understand that they may add a mirror layer to increase reflectivity.
Conclusion
Other references are cited that share some similarities.
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/JAMES A MENEFEE/ Primary Examiner, Art Unit 2828
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