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 .
Election/Restrictions
Applicant's election with traverse of claims 1-15 in the reply filed on 6/9/2026 is acknowledged. The traversal is on the ground(s) that the Restriction Requirement was improper due to only claim information being provided instead of disclosed species. This is not found persuasive because the Requirement for Restriction dated 4/9/2026 defines Species A in the last two lines of page 4 and defines Species B on the first two lines of page 5 with distinguishing characteristics. Specifically:
Species A: the method(s) requires an edge coupler, protection material, and plasma etching process, classified in G03F 7/42.
Species B: the method(s) requires a fiber support structure, sacrificial material, underfill, optical glue, a lid, and a fiber array unit with grooves, classified in G02B 6/4243.
While these species were also associated with specific claims as argued, enough information was provided to identify the differences between the species without sole reliance on the claims, thus Applicant’s argument that the species were not defined apart from claim distinction is moot.
While not previously identified, and per Applicant’s most recent request, the examiner notes that the previously identified species may also be attributed to specific embodiments provided in the figures. Particularly:
Species A: (Para. 5-7, Fig. 1-20)
Fig. 9 which shows the process of connecting a photonic package comprising an edge coupler (a feature not required in Species B)
Fig. 17 which shows the process involving a first protection material (a feature not required in Species B)
Fig. 13 which shows the plasma etch process (a feature not required in Species B)
Fig. 14 which shows the sawing process (a feature not required in Species B)
Species B: (Para. 8-10, Fig. 21-28)
Fig. 21 which shows the process involving attaching a fiber support structure to the substrate adjacent the first sidewall of the photonic structure (a feature not required in Species A)
Fig. 26 which shows the process involving attaching an optical fiber to the fiber support structure (a feature not required in Species A)
Fig. 22 which shows the process involving sacrificial material (a feature not required in Species A)
Fig. 25 which shows the process involving a lid (a feature not required in Species A)
Fig. 28 which shows the process involving a fiber array unit with grooves (a feature not required in Species A)
Since none of the claims required all of the component steps identified above (even if they were worded differently), the claims were grouped by the species they did describe as a matter of convenience and simplicity. Since the Applicant did not propose or argue an alternative claim grouping and only argued the procedural validity of the restriction, the claims are taken to be reflective of the species identified and the claim grouping remains valid. Note that the previously identified species have not been altered and any further explanation is provided for the sole benefit of the Applicant.
The requirement is still deemed proper and is therefore made FINAL.
Claims 9-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected Species B, there being no generic or linking claim.
Claims 21-25 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species, there being no generic or linking claim. Claims 21-25 appear to be drawn to a species other than the elected Species A since claims 21-25 do not require a process involving an edge coupler, a first protection material adjacent to the edge coupler, a plasma etch process and/or a sawing process.
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).
Inventorship
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.
Information Disclosure Statement
The prior art document(s) submitted by applicant in the Information Disclosure Statements filed on 10/18/2024, 10/31/2024, and 3/4/2025 have all been considered and made of record.
Claim Objections
Claim 1 objected to because of the following informalities:
Claim 1: “depositing a first protection material on a first sidewall of the photonic package that is adjacent the edge coupler” should instead state “depositing a first protection material on a first sidewall of the photonic package that is adjacent to the edge coupler”.
Appropriate correction is required.
Claim Rejections - 35 USC § 102
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 –
(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.
(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.
Claim(s) 1-2 and 4-6 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hsia et al in US20220043208A1 (hereinafter "Hsia").
Regarding claim 1, Hsia discloses a method, comprising:
connecting a photonic package to a substrate (connecting the layer with waveguide 104 and the coupler 107 to the oxide layer 102B as in Fig. 2 is interpreted as connecting a photonic package to a substrate), wherein the photonic package comprises a waveguide (104) and an edge coupler (107; see Fig. 15) that is optically coupled to the waveguide (104; see Fig. 2);
connecting a semiconductor device to the substrate adjacent the photonic package (photonic components 106 is interpreted as a semiconductor device; 106 is connected to 102B in Fig. 2);
depositing a first protection material on a first sidewall of the photonic package that is adjacent to the edge coupler (dielectric layer 108 is deposited on 104 and 107; the sidewall nearest the next photonic package of the wafer is interpreted as the first sidewall; see Fig. 3 and Para. 35);
encapsulating the photonic package and the semiconductor device with an encapsulant (dielectric layer 117 is interpreted as an encapsulant encapsulating the photonic package and the semiconductor device since it covers the layer including 106, 104, and 107; see Fig. 6);
performing a first sawing process through the encapsulant and the substrate (the singulation process is interpreted as performing a first sawing process through the encapsulant and the substrate since it necessarily cuts through all layers; see Para. 54 and Fig. 14; note that singulation includes sawing processes according to Para. 54), wherein the first sawing process exposes the first protection material (singulation exposes all side surfaces of the layers and thus is interpreted as the first sawing process exposing the first protection material 108); and
removing the first protection material to expose the first sidewall of the photonic package (the debris formed from the first sawing process is interpreted as removing the first protection material to expose the first sidewall of the photonic package since the debris will necessarily include some of 108).
Regarding claim 2, Hsia discloses the method of claim 1 as discussed above further comprising performing a plasma etching process on the photonic package to form a lateral recess, wherein the first sidewall is within the lateral recess (recess 129 is interpreted as the lateral recess; Para. 49 discusses dry etching, which is otherwise known as plasma etching; the first sidewall is within the L-shaped recess formed once the section of 129 was removed, see Fig. 12).
Regarding claim 4, Hsia discloses the method of claim 1 as discussed above, wherein the photonic package comprises a support, and wherein the first sawing process exposes a second sidewall of the support (both sidewalls of support 125 are exposed during the singulation process described above; see Fig. 14).
Regarding claim 5, Hsia discloses the method of claim 1 as discussed above, wherein removing the first protection material comprises performing a flux cleaning process (see Para. 45; the examiner notes that all cleaning processes are flux cleansings since the item being cleaned must go from a state of unclean to a state of clean and will be in a “flux” state in-between).
Regarding claim 6, Hsia discloses the method of claim 1 as discussed above, further comprising attaching an optical fiber to the photonic package, wherein the optical fiber is optically coupled to the edge coupler (see Fig. 15; see Para. 51 and 54).
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.
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hsia et al in US 20220043208 A1 (hereinafter "Hsia").
Regarding claim 3, Hsia discloses the method of claim 2 as discussed above, but fails to teach that the lateral recess has a lateral depth explicitly between 0 μm and 10 μm. However, Hsia teaches the lateral recess is about 6 μm to about 25 μm (see Fig. 12 and Para. 46).
In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists absent any evidence of (a) the criticality of the claimed range to produce new and unexpected results, and/or (b) the prior art teaching away from the claimed invention. Iron Grip Barbell Co., Inc. v. USA Sports, Inc., 392 F.3d 1317, 1322, 73 USPQ2d 1225, 1228 (Fed. Cir. 2004). See MPEP 2144.05 (I)(III).
In the present case, the prior art's range renders obvious the claimed range because the current invention fails to establish criticality of the claimed range, and one of ordinary skill would have expected the prior art to operate as disclosed when utilizing the claimed range. Moreover, there is no evidence to support that the prior art teaches away from the claimed invention.
Allowable Subject Matter
Claims 7-8 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: The prior art of record, which is the most relevant prior art known, does not disclose or render obvious:
A method as defined by claim 7, further comprising, before connecting the photonic package to the substrate, performing a singulation process on the photonic package, wherein the singulation process comprises: performing a plasma etching process to form a first recess in a bottom side of the photonic package; and performing a second sawing process to form a second recess in a top side of the photonic package, wherein the second recess extends into the first recess in combination with all of the other limitations of base claim 1.
The Hsia reference (see above) fails to disclose such limitations, and if modified to include the structures required by the limitations would fail to operate as intended. Nothing on the record suggests that such differences would be obvious to one having ordinary skill in the art before the effective filing date of the claimed invention. Lastly, one having ordinary skill in the art does not possess any general knowledge or known motivations to find such differences obvious in view of the prior art of record.
Claim 8 is allowable by virtue of its dependency on claim 7.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DARBY M THOMASON whose telephone number is (703)756-5817. The examiner can normally be reached Mon.-Fri. 8am-5pm.
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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.
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/DARBY M. THOMASON/Examiner, Art Unit 2874
/UYEN CHAU N LE/Supervisory Patent Examiner, Art Unit 2874
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