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 .
DETAILED ACTION
Information Disclosure Statement
The information disclosure statements (IDS) have been considered by the examiner.
Drawings
Twenty-three sheets for formal drawings were filed October 18, 2023 and have been accepted by the Examiner.
Specification
Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
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.
Claims 1-3, 5, 14, 16-18, 21 and 22 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Saito et al. (KR 0153548 B1).
Regarding claims 1, 17 and 21, Saito discloses a system for aligning a substrate (206 in Fig. 13) with an optical fiber (210), the system comprising: the optical fiber (210); the substrate comprising: one or more optical waveguides (204); at least one guide pin (224) defining a first end and a second end, wherein the at least one guide pin comprises a capture feature (226) proximate the second end; and a substrate body comprising a receiving feature (230) configured to receive and connect the first end of the at least one guide pin, wherein the second end for the at least one guide pin extends outwardly from the substrate body; and a connector (216) comprising: at least one receiver portion defining a recess (234) and comprising a locking feature (238), wherein the connector is configured to receive the optical fiber, wherein the recess of the at least one receiver portion is configured to receive the at least one guide pin, and wherein the capture feature is configured to engage with the locking feature, wherein, when the capture feature is engaged with the locking feature, the optical fiber is aligned with the one or more optical waveguides and restrained from movement relative to the substrate (Fig. 14 and accompanying description, “second ferrule 216 is locked with respect to the guide pin 224, i.e., the optical fiber connection board 206”).
Regarding claims 2 and 22, Saito discloses the capture feature of the at least one guide pin comprises a first portion (tip of guide pin 224) proximate to the second end and a second portion (groove 226) proximate to the second end, the first portion having an increased thickness relative to the second portion, the first portion being closer to the second end than the second portion, and wherein at least one of the first portion or the second portion is configured to engage with the locking feature in Figs. 13-14.
Regarding claim 3, Saito discloses the capture feature (226) is a groove within the at least one guide pin in Figs. 13-14.
Regarding claim 14, Saito discloses an attachment (228) comprising the receiving feature, wherein the substrate is configured to receive and connect the attachment in Figs. 13-14.
Regarding claim 16, Saito discloses the one or more optical waveguides are buried optical waveguides in Figs. 13-14.
Regarding claims 5 and 18, Saito discloses the connector further comprises a finger tab (236) that is configured to enable a user to grip the connector and provide a retraction force to cause the locking feature to release from a capture state and enable relative movement of the at least one guide pin with respect to the locking feature in Figs. 13-14 and accompanying description of 236: “lock leaf spring 236 is picked up and deformed to the side of the second ferrule 216”, and “the edge of the lock hole 238 of the leaf spring 236 is released from the groove 226 of the guide pin 224.”
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 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 of this title, 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 4, 6-11, 19 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Saito et al. (KR 0153548 B1).
Regarding claim 4, Saito teaches the claimed invention except for specifically stating the at least one guide pin is connected to the receiving feature using adhesive. However, various methods of connecting guide pins including using adhesive are well-known and commonly used in the art in the art of optical devices and as such, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to use an adhesive for the purpose of securely attaching the guide pins.
Regarding claims 6-8, 19 and 20, Saito further discloses ferrule 216 being a connector plug and the substrate 206 comprising a spring (232) configured to urge an end-face of fibers 204 forward. Saito teaches the claimed invention except for specifically stating the connector further comprises a ferrule and a spring. However, ferrules, particularly connector plugs, used in conjunction with a connector and a spring urging the ferrule forward are ubiquitous in the art of optical devices and as such, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to use a connector comprising a ferrule and a spring, wherein the ferrule is positioned between the substrate and the spring, wherein the spring generates a force against the ferrule to urge the ferrule towards the one or more optical waveguides in the substrate in order to enhance the optical connection. Further, it would be obvious to have the spring push the locking feature away from the at least one guide pin when the connector is unlocked or released to facilitate separation of the components.
Regarding claims 9-11, Saito further discloses the optical fiber in physical contact with the one or more optical waveguides in Fig. 14. Saito teaches the claimed invention except for specifically stating the force generated by the spring. However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to arrive at the claimed force in order to enhance the optical connection, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. Further, anti-reflection coatings are well-known and commonly used in the art of optical devices and one of ordinary skill would find it obvious to use an anti-reflection coating in a gap between the end-face of the optical fiber and the one or more optical waveguides of the substrate in order to reduce back reflections.
Claims 12, 13 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Saito et al. (KR 0153548 B1) in view of Rolston et al. (US 2012/0099820 A1).
Regarding claims 12 and 15, Saito teaches the claimed invention except for specifically stating the receiving feature is a trench. Rolston discloses a guide pin (26 in Fig. 12) receiving feature which is a trench (28), wherein the trench comprises two side edges and a bottom surface, wherein the trench is configured so that the at least one guide pin rests against the two side edges without contacting the bottom surface in paragraphs 0024 and 0057. Rolston further discloses one or more optical waveguides are surface optical waveguides (08; paragraph 0038). Since both inventions relate to optical devices, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to use a receiving feature which is a trench as disclosed by Rolston in the system of Saito for the purpose of facilitating alignment of waveguides in silicon chips.
Regarding claim 13, Applicant is claiming the product including the process of making the trench, and therefore are of "product-by-process" nature. The courts have been holding for quite some time that: the determination of the patentability of product-by-process claim is based on the product itself rather than on the process by which the product is made. In re Thrope, 777 F. 2d 695, 227 USPQ 964 (Fed. Cir. 1985); and patentability of claim to a product does not rest merely on a difference in the method by which that product is made. Rather, it is the product itself which must be new and unobvious. Applicant has chosen to claim the invention in the product form. Thus a prior art product which possesses the claimed product characteristics can anticipate or render obvious the claim subject matter regardless of the manner in which it is fabricated. A rejection based on 35 U.S.C. section 102 or alternatively on 35 U.S.C. section 103 of the status is eminently fair and acceptable. In re Brown and Saffer, 173 USPQ 685 and 688; In re Pilkington, 162 USPQ 147. As such no weight is given to the process steps recited in claim 13.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRIS H CHU whose telephone number is (571)272-8655. The examiner can normally be reached on Mon-Fri 9AM-5PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Uyen-Chau Le can be reached on 571-272-239797. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Any inquiry of a general or clerical nature should be directed to the Technology Center 2800 receptionist at telephone number (571) 272-1562.
Chris H. Chu
/CHRIS H CHU/ Primary Examiner, Art Unit 2874 April 10, 2026
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