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Claims 2, 9, 10, 12, 14 and 15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species, there being no allowable generic or linking claim.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. Claim 16 includes limitations that could render this claim withdrawn if the “at the same level” is removed since the elected species only discloses the structures at the same level.
Response to Arguments
Applicant's arguments filed 7/24/26 have been fully considered but they are not persuasive. Regarding the argument that Meade does not disclose discrete bent metamaterial structures extending along opposite sides of a curved waveguide: First, the bent metamaterial structures is indefinite, since this recites the discrete metamaterial structures are in themselves bent, when it is believed applicant means the structure follow the bend of the waveguide. The claim only requires there be metamaterial structures that extend along a portion of a curvature. This could be an extension in a straight line that does not follow the same curvature as the waveguide, which is what Meade teaches. Jiang is no longer a part of the rejection.
Regarding the argument that Meade does not teach metamaterial structures positioned above, below, or at the same level as the curved waveguide. It is unclear where the metamaterial structures of Meade are if they are not above, below or at the same level. They are clearly shown at the same level (see Fig. 8a). The limitations of above or below would render the claim withdrawn since this would read on unelected species. This covers the arguments that concern actual claim language and not comparing the art to applicant’s description. Jiang is no longer a part of the rejection.
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.
Claims 1, 5, 7 and 16 are 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. Claims not discussed are rejected for the having the indefinite language of its parent claim.
Claim 1 recites, “the plurality of discrete bent metamaterial structures”. There is no antecedent basis for this limitation. Further, it is unclear how the each discrete metamaterial structure is “bent”. These components are cylinders. The row of structures next to the curved waveguide follow a curved path, but the claim states each structure itself is “bent”. Further, it is unclear how the metamaterial structures decouple the curved waveguide structure. These structure may decouple an optical signal in the waveguide, but to decouple the waveguide itself does not make sense. The same can be said for the insertion loss and crosstalk, these relate to a signal in the structure, not to the physical components themselves.
Claim 5 recites the metamaterial structures “remain” physically separated from waveguide. Remain means to stay in the same place when things are removed, so it’s unclear how this relates to the structure of elected Fig. 4.
Claim 16 recites the curved waveguide structure and metamaterial structure comprise silicon-on-insulator material, but is unclear as to what component is make of silicon and what component is made of insulator.
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 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Meade et al (US 5,526,449). Meade teaches:
1. A structure (Figs. 8-10) comprising:
at least one bent curved waveguide structure (56) (see Fig. 8a); and
a plurality of discrete metamaterial structures (52) separated from the curved waveguide structure (56) by an insulator material (51, 60) and positioned on opposing sides of the curved waveguide structure (56) (see Fig. 8a), the plurality of discrete (bent?) metamaterial structures (52) extending along at least a portion of a curvature of the curved waveguide structure (56) (see Fig. 8a, the claim does not require the metamaterial structures follow the same curvature of the waveguide, only that there are structures extending along the curvature, which includes structures in a straight lines that does not have the same radius of curvature).
5. The structure of claim 1, wherein the plurality of discrete (bent?) metamaterial structures (52) remain physically separated from the curved waveguide structure (56) by the insulator material (51, 60) along the curvature of the curved waveguide structure (56) (see Fig. 8a, the metamaterial structures are always physically separated from the waveguide at all points).
Meade does not state the metamaterial structures being configured to control evanescent waves adjacent the curved waveguide structure to decouple the curved waveguide structure and simultaneously reduce insertion loss and crosstalk of the curved waveguide structure. The limitations to control evanescent waves adjacent the curved waveguide structure to decouple the curved waveguide structure and simultaneously reduce insertion loss and crosstalk of the curved waveguide structure. 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.
Claims 7 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Meade and Scherer et al (US 6,468,823 B1).
Meade teaches the structure previously discussed including the limitations of claims 1 and 5 and further teaches:
16. A structure (Figs. 8-10) comprising:
a curved waveguide structure (56) (see Fig. 8a); and
a plurality of metamaterial structures (52) separated from the curved waveguide structure (56) by an insulator material (51, 60),
the plurality of metamaterial structures (52) at a same level as the curved waveguide structure (56) (see Fig. 8a).
Meade does not teach wherein the curved waveguide structure and the plurality of metamaterial structures comprise silicon-on-insulator material, or
7. The structure of claim 5, wherein the plurality of discrete bent metamaterial structures and the curved waveguide structure are composed of Si material.
Scherer teaches a structure (Figs. 2-4), wherein metamaterial structures and waveguide structure are composed of Si material on silicon insulator material (Fig. 2a, C3 L21-34).
Meade and Scherer are analogous art because they are from the same field of endeavor, optical waveguide 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 material of Meade to use the silicon-on-insulator material taught by Scherer. Scherer specifies SOI materials or GaAs type materials may be used.
The motivation for doing so would have been to reduce cost by using materials used for optical waveguides for decades.
Meade and Scherer do not state the metamaterial structure are configured to control evanescent waves adjacent the curved waveguide structure to simultaneously reduce insertion loss and crosstalk.
The limitations to control evanescent waves adjacent the curved waveguide structure to simultaneously reduce insertion loss and crosstalk 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.
Conclusion
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.
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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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