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 .
Drawings
Ten (10) sheets of drawings were filed on December 23, 2023.
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “resonant optical mode cavity” and “optical gain medium” of claim 5 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
Applicant’s cooperation is requested in correcting any errors of which applicant may become
aware in the specification.
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.
Election/Restrictions
Applicant’s election without traverse Invention I, claims 1-14, in the reply filed June 22, 2026 is acknowledged. Applicants have cancelled remaining claims 15-20 corresponding to invention II.
Claim Objections
Claims 5 and 10 are objected to because of the following informalities:
Claim 5, line 2: replace “the waveguides comprises” with -- the waveguides comprise --.
Claim 10 uses the term “hybrid silicon lasers” and “laser” interchangeably. If these are distinct features, the latter lacks antecedent basis. If they are the same feature, the terminology must remain consistent throughout the claims. For the purposes of examination, they will be interpreted as the same feature.
Appropriate correction is required.
Allowable Subject Matter
Claims 5-8 and 13-14 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in dependent form including all the limitation of the base claim and any intervening claims.
Regarding claim 5, the following 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 ender obvious: “the waveguides comprise a resonant optical mode cavity within the first longitudinal length; an optical gain medium is over the resonant optical mode cavity; and the second longitudinal length is external of the resonant cavity and the optical gain medium.”
Regarding claim 6, the following 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 ender obvious: “the insulator layer has the second thickness within a trench in the silicon layer; a depth of the trench varies periodically in a direction substantially orthogonal to the second longitudinal length; and the insulator layer has the first thickness around a perimeter of the trench.”
Regarding claim 7, the following 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 ender obvious: “an interface of the insulator layer and the trench comprises corrugations over the second longitudinal length, the second thickness varying within the corrugations.”
Regarding claim 8, the following 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 ender obvious: “the corrugations extend over the second longitudinal length and the interface of the insulator layer and the trench is substantially planar in a direction orthogonal to the second longitudinal length.”
Regarding claim 13, the following 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 ender obvious: “an interface between the silicon layer and the second thickness of material comprising silicon and oxygen is corrugated over the second optical waveguide length.”
Regarding claim 14, the following 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 ender obvious: “a depth of corrugations within the silicon layer is at least 100 nm and less than 1 pm.”
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 10-14 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 10 recites “A photonic integrated circuit (PIC), comprising: a plurality of hybrid silicon lasers, each laser comprising a first optical waveguide length over a first area of a silicon substrate.” This is inconsistent with the specification. Paragraph [52] recites “Hybrid silicon laser 1000 includes another length L3 of optical waveguide 860, which extends over a substrate region,” and paragraph [54] recites “a P-i-N laser diode material stack 1090 comprising non-silicon (e.g., III-V) materials, which is bonded to the underlying PIC substrate comprising waveguide 860.” Accordingly, paragraph [52] contradicts paragraph [54] and because the Paragraphs 52 and 54 are contradicted regarding the structural relationship of the waveguide to the PIC and the laser, a person skilled in the art cannot practice the claimed combination without excessive trial and error. Therefore, the specification does not provide adequate written description for the claimed hybrid laser, failing to show possession of the invention.
Claims 11-14 inherit the deficiencies of claim 10 of which they depend.
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 10-14 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.
Claim 10 recites “A photonic integrated circuit (PIC), comprising: a plurality of hybrid silicon lasers, each laser comprising a first optical waveguide length over a first area of a silicon substrate”. This renders the claim indefinite because the claim requires a laser comprising a first optical waveguide, but waveguide 860 is shown/disclosed as part of the PIC 900 and is coupling the laser 1000 to a second waveguide 870 of the PIC (figs. 10B-11 and paragraphs [54] and [57]).
For the purposes of examination, the claimed limitation will be interpreted as the hybrid silicon lasers coupled to the PIC wherein the PIC comprises the first optical waveguide as shown in the drawings (10A and 10B) and disclosed in paragraph 54 of the specification.
Claim 11-14 inherit the deficiencies of claim 10 of which they depend.
Claim Rejections - 35 USC § 102
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 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 and 4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Heck et al. (US20200192026A1), hereafter Heck et al.
The applied reference has a common applicant and inventors with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
Regarding claim 1, Heck discloses an apparatus (FIG. 1 and 3 photonic transceiver) , comprising: one or more optical waveguides (Silicon waveguide 125 and SiN waveguide 105) ; and a substrate under the optical waveguides (FIG. 1), wherein the substrate comprises a silicon layer (Substrate 115) and an insulator layer between the optical waveguides and the silicon layer (Dielectric layer 110 and BOX layer 120) , and wherein the insulator layer has a first thickness under a first longitudinal length of the waveguides and a second, greater, thickness under a second longitudinal length of the waveguides (See annotated FIG. 1).
Regarding claim 4, Heck discloses the device of claim 1. Heck further discloses the optical waveguides comprise substantially pure silicon within the first longitudinal length (Silicon waveguide 125 Par. [0034]) and the optical waveguides comprises predominantly silicon and nitrogen within the second longitudinal length (SiN waveguide 105 Par. [0025]).
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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.
Claims 2-3 and 9-12 are rejected under 35 U.S.C. 103 as being obvious over Heck et al. (US20200192026A1).
The applied reference has a common applicant and inventor with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2).
This rejection under 35 U.S.C. 103 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C.102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02.
Regarding claim 2, Heck discloses the device of claim 1. Heck further discloses the insulator layer comprises predominantly silicon and oxygen (Par. [0029] and [0033]); and the second thickness (Z1) is at least twice the first thickness (Z2) (FIG. 1. Z1 may be 1 micrometer or three microns Par. [0031] and Z2 may be one micrometer Par. [0033]. If Z1 is three micrometers and Z2 is one micrometer the limitation is met). MPEP 2144.05 I states “in the case where the claimed ranges” overlap or lie inside ranges disclosed by prior art a prima facie case of obviousness exists.
Before the effective filing date of the present invention, it would have been obvious to a person of ordinary skill in the art to modify the device with the claimed dimensions since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 3, Heck discloses the device of claim 2. Barlow further discloses the first thickness (Z2) is less than 4 micrometers (Par. [0033]. Z2 may be 1 micrometer), but fails to disclose the second thickness (Z1) is greater than 4 micrometers.
Before the effective filing date of the present invention, it would have been obvious to a person of ordinary skill in the art to modify the device of Barlow with a second thickness greater than 4 micrometers since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 9, Heck discloses the device of claim 1. Heck further discloses the waveguides have a transverse width less than 1 micrometer (Par. [0038]), but fails to disclose the second longitudinal length is at least 30 micrometers.
Before the effective filing date of the present invention, it would have been obvious to a person of ordinary skill in the art to modify the device of Barlow with a second longitudinal length of at least 30 micrometers since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 10, A photonic integrated circuit (PIC) (FIG.1 and FIG. 9), comprising: a plurality of lasers (Par. [0035] Component 130 may be a laser. It is shown as one part, but it can be more than one. If there is more than one laser 130, we assume there are also more matching optical parts linked to them), each laser coupled to a first optical waveguide (Silicon waveguide 125) length over a first area of a silicon substrate (Substrate layer 115. see annotated FIG. 1 above); a plurality of output couplers (SiN waveguide 105), each coupler comprising a second optical waveguide length over a second area of the silicon substrate (See annotated FIG. 1 above); and a third optical waveguide length extending over a third area of the silicon substrate (Par. [0032]: 105 may be coupled with an additional silicon waveguide 545 and FIG. 9) and optically coupling the lasers (component 130) with the output couplers (Par. [0032]), wherein: the first area of the silicon substrate comprises a silicon layer (BOX layer 120) separated from the first optical waveguide length by a first thickness of material comprising silicon and oxygen (FIG 1. Par. [0033]); and the second area of the silicon substrate comprises the silicon layer (dielectric material 110) separated from the second optical waveguide length by a second thickness of material comprising silicon and oxygen (FIG. 1 Par. [0029]); and the second thickness is at least twice the first thickness (FIG. 1. Z1 may be 1 micrometer or 3 microns Par. [0031] and Z2 may be 1 micrometer Par. [0033]). MPEP 2144.05 I states “in the case where the claimed ranges” overlap or lie inside ranges disclosed by prior art a prima facie case of obviousness exists.
Before the effective filing date of the present invention, it would have been obvious to a person of ordinary skill in the art to modify the device with the claimed dimensions since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Heck discloses fails to disclose the laser (component 130) are hybrid silicon lasers.
Before the effective filing date of the present invention, it would have been obvious to a person of ordinary skill in the art to modify the laser of Heck with a hybrid silicon laser because , whereas hybrid integration with III-V semiconductor materials was a well-established technique to achieve on-chip lasing while maintaining compatibility with standard silicon fabrication infrastructure.
Regarding claim 11, Heck disclose the device of claim 10. Heck further discloses the second thickness is at least three times the first thickness (FIG. 1. Z1 may be 1 micrometer or three microns Par. [0031] and Z2 may be one micrometer Par. [0033]. If Z1 is three micrometers and Z2 is one micrometer the limitation is met). MPEP 2144.05 I states “in the case where the claimed ranges” overlap or lie inside ranges disclosed by prior art a prima facie case of obviousness exists.
Before the effective filing date of the present invention, it would have been obvious to a person of ordinary skill in the art to modify the device with the claimed dimensions since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 12, Heck discloses the device of claim 10. Heck further discloses an optical waveguide (SiN waveguide 105) over the second optical waveguide length comprises predominantly silicon and nitrogen.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant’s
disclosure:
➢ Frish et al. (US20220413213A1) see the entire disclosure.
➢ Na et al. (US20130279844A1) see the entire disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TAJANAE N GREEN whose telephone number is (571)272-2188. The examiner can normally be reached Tues-Fri. 5:30a-3:30p.
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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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/TAJANAE NICOLE GREEN/Examiner, Art Unit 2874
/UYEN CHAU N LE/Supervisory Patent Examiner, Art Unit 2874
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