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
Claims 9, 10, 12, 14 and 15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 12/2/25. Applicant amended claim to try an get it to read on the elected species, but the amendment still includes the non-elected bent metamaterial structures so these claims are still withdrawn.
Response to Arguments
Applicant's arguments filed 4/13/26 have been fully considered but they are not persuasive.
Regarding the argument that Meade does not disclose the silicon-on-insulator material claimed: In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Regarding the argument that Jiang does not teach the use of semiconductor-on-insulator for the meta material structure: First, the claim requires silicon-on-insulator material for the waveguide and metamaterial structures, not semiconductor-on-insulator. Further, the claim does not state what component is silicon and what component is insulator. Jiang teaches metamaterial structures formed by the slab (116) and columns (102). The slab can be silicon or silicon oxide or nitride (C5 L41-47) and the columns can be silicon oxide or silicon nitride (C5 L57-60). The substrate (118) provides the “on-oxide” since the substrate maybe silicon oxide (C5 L50-55). The core (108) is formed where columnar members are absent, meaning the core is made of the slab material (116), which can be silicon oxide or nitride (C5 L41-47). According to applicant’s specification, the waveguide structures 12 are composed of silicon-on-insulator material and the metamaterial structures are SiN (P0025). Si material does not require just plain silicon, Si material generally refers to silicon and silicon compounds in the art, so SiN would be an “Si material). Similarity, Jiang teaches silicon-on-insulator: silicon slab (116) on oxide substrate (118) and the metamaterial columns are SiN, which is exactly what applicant discloses.
Claim Rejections - 35 USC § 112
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.
Claim 16 is 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. Claim 16 recites “both of which are composed of silicon-on-insulator material, but there are multiple components before “both” so it is not possible to tell what components “both” refer to. Both could be chosen from “a structure”, “a curved waveguide structure”, “metamaterial structures” and “insulator material”.
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, 2, 5, 7 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Meade et al (US 5,526,449) and Jiang et al (US 7,421,179 B1).
Meade teaches:
1. A structure (Figs. 8a-b) comprising:
at least one bent waveguide structure (56); and
metamaterial structures (52) separated from the at least one bent waveguide structure (56) by an insulator material (58).
2. The structure of claim 1, wherein the metamaterial structures (52) are on opposing sides of the at least one bent waveguide structure (56) (Figs. 8a-b).
5. The structure of claim 1, wherein the metamaterial structures (52) are on sides of the at least one bent waveguide structure (56) (see Figs. 8a-b).
11. The structure of claim 1, wherein the at least one bent waveguide structure (56) and the metamaterial structures (52) are of different materials (waveguide is GaxAl1-xAs C8 L59-64 and the metamaterial structure is air, low-dielectrics or solids C6 L25-38).
16. A structure comprising:
a curved waveguide structure (56); and
metamaterial structures (52) separated from the curved waveguide structure (56) by an insulator material (58), the metamaterial structures (52) being on a same level as the curved waveguide structures (56) (Figs. 8a-b).
Meade does not state that metamaterial structures being structured to decouple the at least one waveguide structure to simultaneously reduce insertion loss and crosstalk of the at least one bent waveguide structure. The limitations to decouple the waveguide to simultaneously reduce insertion loss and crosstalk at the bend are purely functional limitations and while features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997); In re Danly, 263 F.2d 844, 847, 120 USPQ 528, 531 (CCPA 1959). "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). All of the structural limitations have been met.
Meade does not teach expressly wherein the metamaterial structures and the at least one bent waveguide structure are composed of silicon-on-insulator material.
7. The structure of claim 5, wherein the metamaterial structures and the at least one bent waveguide structure are composed of Si material.
Jiang teaches a structure (100, Fig. 1) comprising metamaterial structures (102) surrounding a waveguide structure (108) wherein the metamaterial structures (102) and the at least one bent waveguide structure (108) are composed of silicon-on-insulator material (C5 L57 – C6 L3) and wherein the metamaterial structures (102) and the at least one bent waveguide structure (102) are composed of Si material (C5 L41 – C6 L3).
Meade and Jiang are analogous art because they are from the same field of endeavor, waveguide structures surrounded by metamaterials.
At the time of the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to modify the materials of Meade to use SOI and Si for the waveguide and metamaterials as taught by Jiang.
The motivation for doing so would have been to reduce cost and complexity by using widely and well-known materials for waveguide and metamaterial structures.
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 RYAN A LEPISTO whose telephone number is (571)272-1946. The examiner can normally be reached 9AM-6PM EST M-F.
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, Thomas Hollweg can be reached at 571-270-1739. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RYAN A LEPISTO/Primary Examiner, Art Unit 2874
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