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 .
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.
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.
Claim(s) 1-11, 13-17 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. PGPub 2010/0322631 A1 by Nagarajan et al.
Regarding claim 1, Nagarajan teaches a photonic integrate circuit (Fig. 14c), comprising: a substrate (e.g., same substrate as 110 in Fig. 1, ¶[0058]); a local oscillator laser (LOλ1) supplying an optical signal; a splitter (coupler C) having a first output that provides a first portion of the optical signal (toward VOA/FL 1494) and a second output that provides a second portion of the optical signal (toward VOA/FL 1496); a first waveguide (connecting the coupler C and a first MMI coupler 1498); a second waveguide (connecting the coupler C and a second MMI coupler 1499); first optical hybrid circuitry (the first MMI coupler 1498) operable to receive the first portion of the optical signal and a first portion of a modulated optical signal carried by the first waveguide (as illustrated in Fig. 14c); second optical hybrid circuitry (the second MMI coupler 1499) operable to receive the second portion of the optical signal and a second portion of a modulated optical signal carried by the second waveguide (as illustrated in Fig. 14c); first photodiode circuitry operable to receive a first plurality of mixing products output from the first optical hybrid circuitry (a plurality of PD connected to the first MMI coupler 1498, Fig. 14c); second photodiode circuitry (a plurality of PDs connected to the second MMI 1499, Fig. 14c) operable to receive a second plurality of mixing products output from the second optical hybrid circuitry; and a semiconductor optical amplifier (VOA/FL may include a forward biased semiconductor optical amplifier, ¶[0058]) optically coupled between the local oscillator laser and the splitter, wherein the local oscillator laser, the first and second waveguides, the first and second optical hybrid circuitry, the first and second photodiode circuitry, and the semiconductor optical amplifier are monolithically integrated on the substrate (¶[0058]).
Regarding claim 2, Nagarajan teaches an apparatus, comprising: a substrate (110); a local oscillator laser (LOλ1) supplying an optical signal; a splitter (C) having a first output that provides a first portion of the optical signal and a second output that provides a second portion of the optical signal (two outputs of the splitter C); a first waveguide (connecting the coupler C and a first MMI coupler 1498); a second waveguide (connecting the coupler C and a second MMI coupler 1499); first optical hybrid circuitry (the first MMI coupler 1498) operable to receive the first portion of the optical signal and a first portion of a modulated optical signal carried by the first waveguide (as illustrated in Fig. 14c); second optical hybrid circuitry (the second MMI coupler 1499) operable to receive the second portion of the optical signal and a second portion of a modulated optical signal carried by the second waveguide (as illustrated in Fig. 14c); first photodiode circuitry operable to receive a first plurality of mixing products output from the first optical hybrid circuitry (a plurality of PD connected to the first MMI coupler 1498, Fig. 14c); second photodiode circuitry plurality of photodiodes (a plurality of PDs connected to the second MMI 1499, Fig. 14c) operable to receive a second plurality of mixing products output from the second optical hybrid circuitry; and a semiconductor optical amplifier (VOA/FL may include a forward biased semiconductor optical amplifier, ¶[0058]) optically coupled between the local oscillator laser and the splitter; and wherein the first output of the splitter, the first waveguide and the first optical hybrid circuitry define a first optical path that terminates at the first photodiode circuitry, the second output of the splitter, the second waveguide and the second optical hybrid circuitry define a second optical path that terminates at the second photodiode circuitry (the first and second MMI coupler 1498, 1499 output to separate plurality of PDs, at which location the optical path is terminated and optical signals are converted to electrical signals that are supplied to TIAs, as illustrated in Fig. 14c), the semiconductor optical amplifier being optically coupled to the first optical path, and the local oscillator laser, the first and second waveguides, the first and second optical hybrid circuitry, the first and second photodiode circuitry, and the semiconductor optical amplifier are monolithically integrated on the substrate (110, ¶[0058]).
Regarding claim 3, Nagarajan further teaches including a polarization beam splitter (PBS, Fig. 14c) operable to receive the modulated optical signal (TM WDM and TE WDM), wherein the modulated optical signal includes a first component having a first polarization (i.e., TM) and a second component having a second polarization (i.e. TE), the polarization beam splitter having a first splitter output operable to provide the first component as the first modulated optical signal and a second splitter output operable to provide the second component; a polarization rotator operable to receive the second component and output the second component with the first polarization, the second component with the first polarization being the second modulated optical signal (the optical signals TM WDM and TE WDM are output from first and second outputs, respectively, from the PBS, as illustrated in Fig. 14c).
Regarding claim 4, Nagarajan further teaches the optical amplifier is a first semiconductor optical amplifier, the apparatus further including a second semiconductor optical amplifier optically coupled to the second optical path (first and second VOA/FL 1494, 1496 optically coupled to two outputs of the splitter C).
Regarding claim 5, Nagarajan further teaches the first semiconductor optical amplifiers is coupled between the local oscillator laser and the first optical hybrid circuit and the second semiconductor optical amplifier is coupled between the local oscillator laser and the second optical hybrid circuit ((first and second VOA/FL 1494, 1496 optically coupled between two output of the splitter C and two MMI coupler 1498, 1499, respectively).
Regarding claim 6, Nagarajan further teaches the first semiconductor optical amplifier operates as a first variable optical attenuator and the second semiconductor optical amplifier operates as a second variable optical attenuator (i.e., two VOA/FL in Fig. 14c).
Regarding claims 7-9, 14-17, Nagarajan further teaches wherein the semiconductor optical amplifiers operate as optical attenuators (VOA or variable optical attenuator).
Regarding claim 10, Nagarajan further teaches the semiconductor optical amplifier amplifies the optical signal output from the local oscillator laser (inherent function of the forward biased semiconductor optical amplifiers taught by Nagarajan).
Regarding claim 11, Nagarajan further teaches the semiconductor optical amplifier is a first semiconductor optical amplifier, the apparatus further including a second semiconductor optical amplifier optically coupled to the second waveguide to amplify the second modulated optical signal (first and second VOA/FL 1494, 1496 including forward biased SOA).
Regarding claim 13, Nagajaran further teaches an input waveguide (e.g., to receive an input light from LOλ1) provided on the substrate; a polarization beam splitter (PBS, Fig. 14c), the polarization beam splitter receiving an input composite signal including the first modulated optical signal having the first polarization and the second modulated optical signal having the second polarization, the polarization beam splitter supplying the first modulated optical signal at a first splitter output and the second modulated optical signal at a second splitter output (i.e., two signals labeled as TM WDM and TE WDM).
Claim Rejections - 35 USC § 103
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) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nagajaran et al.
Regarding claim 12, Nagarajan teaches the apparatus in accordance with claim 11, but does not specify whether the first and second semiconductor optical amplifiers are provided on or off the substrate. In describing the VOA as illustrated in Fig. 14d, Nagajaran states “(a)lthough VOA 1605 is configured such that a substantial part of the input signal is output on waveguide 1640, a relatively small part of the input signal may be output on waveguide 1620 due to process variations and/or other non-idealities. Such residual or extraneous light may interfere with light in waveguide 1640, especially if VOA 1605 is integrated on substrate.” While the VOA is preferably provided on the substrate, it would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to seek or consider alternate solutions including placing the VOA off the substrate to avoid optical interference as stated by Nagajaran, with reasonable expectation of success.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claim 1 is provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 17 of copending Application No. 18/400,542 (reference application). The claims are identical. This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
Claim 2 is provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 18 of copending Application No. 18/400,542 (reference application). The claims are identical. This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
Claims 4, 5, 10-12 are provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 20, 21, 26-28 of copending Application No. 18/400,542 (reference application). The corresponding claims are identical. This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
Claims 3, 6-9, 13-17 are provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 19, 22-25, 29-33 of copending Application No. 18/400,542 (reference application). The corresponding claims are reproduced essentially verbatim with no substantive differences between the claimed inventions of the two applications. This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/400,572 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of the ‘572 reference application discloses all the limitations of claim 1 of the instant application and further recites “a control circuit operable to control a gain of the semiconductor optical amplifier”.
Claim 2 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of copending Application No. 18/400,572 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 2 of the ‘572 reference application discloses all the limitations of claim 1 of the instant application and further recites “a control circuit operable to control a gain of the semiconductor optical amplifier”.
Dependent claim 3-17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over dependent claims 3-17 of copending Application No. 18/400,572 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 3-17 of the ‘572 reference application discloses all the limitations of claims 3-17 of the instant application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. An optical apparatus disclosed by USPub20100178065.
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/CHARLIE Y PENG/Primary Examiner, Art Unit 2874