DETAILED ACTION
This office action is in response to the election filed on January 20, 2026. Claims 1-18 are pending (claims 12-18 are withdrawn from consideration as being related to a non-elected Group).
Claims 1-11 are rejected herein in a 1st office action on the merits, with claims 1 and 7 being in independent claim form.
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
Applicant’s election without traverse of Group I, claims 1-11, in the reply filed on January 20, 2026 is acknowledged. Claims 12-18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group, there being no allowable generic or linking claim.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The prior art documents submitted by Applicant in the Information Disclosure Statements filed on January 17, 2024, have been considered and made of record (note attached copy of forms PTO-1449).
Drawings
The original drawings (fourteen (14) pages) were received on January 17, 2024. These drawings are acknowledged.
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.
The factual inquiries 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.
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 1-11 are rejected under 35 U.S.C. 103 as being unpatentable over Zheng et al. US 2012/0207424 A1 (which has matured into U.S. Patent No. 8,401,345 B2), and further in Ono et al. U.S. Patent No. 9,335,475 B2.
Regarding independent claims 1 and 7, Zheng et al. US 2012/0207424 A1 teaches (ABS; Figs. 1-3, 5; paragraphs [0025] – [0044]; Claims) an optical element array 100 / 300 (as in Figs. 1-3) comprising: a substrate 132 / 130; an optical passive element layer 110 provided on the substrate and comprising at least one waveguide 112 (“Optical Waveguide” is defined in the semiconductor layer; paras [0023] – [0026]); and at least one optical active element 114 (see para [0031] for “active” example at least in electro-optic and electro-absorption) provided on the optical passive layer (see Figs. 1 and 3 for positioning of 114), wherein an input 124-1 and output 124-2 region of the at least one optical active element comprises a tapered region having at least one incline in the areas leading to, and leading away, from the at least one optical active element, wherein the z-direction can be defined as a height direction of the substrate, and the x-direction / y-direction are defined perpendicular to the z-direction and to each other (for this frame-of-reference, see Applicant’s Fig. 2).
Regarding independent claim 1, Zheng US ‘424 does teach three-dimensional (“3D”) tapering of this “tapered region” at 124-1 and 124-2 (note ABS; para [0003], [0023]), but there is no express and exact discussion in that these tapering region(s) comprise an incline in all of the x, y, and z directions.
However, such tapering regions and formations are common and known in the art to improve optical coupling, for the purposes and motivations of making such tapering of optical signals more efficient and more directed to the continued optical propagation of signals. For example, among many other prior art references found in the record (see also PTO-892 attached references D-H), the prior art of Ono et al. U.S. Patent No. 9,335,475 B2 teaches (ABS; Figs. 1A-1E, 2, 4, 5, 10; corresponding text, most notably column 8, line 55 through column 9, line 7; Claims) a tapered region in which the tapering comprises inclines in each of the x, y, and z directions (using the same frame-of-reference of Applicant’s Fig. 2). Ono ‘475 teaches that this type of optical tapering coupling region is used to improved performance between optical sub-elements in a chip/substrate design. Column 8, line 55 through column 9, line 55 of Ono ‘475 specifically describes how such inclined tapering occurs in all three directions, akin to Applicant’s claimed recitation.
Since Zheng and Ono are both from the same field of endeavor, the purpose disclosed by Ono would have been recognized in the pertinent art of Zheng.
A person having ordinary skill in the art at a time before the effective filing date of the current application would have recognized the teaching of Ono, to use a 3 dimension taper that is inclined in each of the x-direction, y-direction, and z-direction, into the base design of the tapering coupler to optical active element to tapering coupler in Zheng, to allow for improved efficiency and improved optical coupling to an active element on a substrate/chip, to decrease unwanted sources of optical errors. Further, it would have required no undue burden or unnecessary experimentation to arrive at such feature of a inclined taper / coupling in x, y, and z directions (note Zheng is silent to all three directions with their tapering coupling). See KSR v. Teleflex, 127 S.Ct. 1727 (2007). For these reasons, independent claim 1 is found obvious over Zheng and further in view of Ono (henceforth “COMBO”).
Regarding dependent claim 3, the angle between the tapering and substrate is between 5 and 50 degrees in Ono (Figs. 1A-1E, 2), based on the 111 surfaces.
Regarding claim 4, because a mask 32 is used to form the taper (columns 5-7), the structure of a “mask material” and a semiconductor material (Si, GaAs, or InP, Fig. 9A; column 18, lines 50-52) is met by the Ono reference. Also, semiconductors are used in Zheng as the base material. Therefore, dependent claim 4 is found obvious over COMBO. KSR.
Regarding claim 5, examples are given as III-V semiconductors (column 18, lines 50-52 as GaAs and InP).
Regarding claim 6, at least SiN (silicon nitride) is disclosed as an example mask, which meets all structure of the large group.
Regarding second independent claim 7, because COMBO is used in integrated optics, and although not express shown as an “array” of optical elements directing light toward an object, with a receiver / processor, such overall combination of features in claim 1, would have been recognized by a person having ordinary skill at the time of the effective filing date of the current application, to be used as a plural / multiple larger “optical element array.” KSR. Using the singular combination of COMBO as multiple features would only required common skill and the ability to integrated more optical waveguides -> 3D tapers -> active optical element(s) -> 3D tapers -> off-substrate for the intended uses of generating light and adjusting a traveling direction of light toward an object. Therefore, the features of independent claim 7 are also found as obvious over COMBO. KSR. Such implementation as a plurality optical device would not have required undue burden or unnecessary experimentation by POSITA.
Regarding dependent claim 9, the angle between the tapering and substrate is between 5 and 50 degrees in Ono (Figs. 1A-1E, 2), based on the 111 surfaces.
Regarding claim 10, because a mask 32 is used to form the taper (columns 5-7), the structure of a “mask material” and a semiconductor material (Si, GaAs, or InP, Fig. 9A; column 18, lines 50-52) is met by the Ono reference. Also, semiconductors are used in Zheng as the base material. Therefore, dependent claim 10 is found obvious over COMBO. KSR.
Regarding claim 11, examples are given as III-V semiconductors (column 18, lines 50-52 as GaAs and InP).
As to dependent claims 2 and 8, the references within COMBO fail to exactly and expressly disclose such exact “width”, “length”, and “height” of the tapering features. Notably 5 to 20 um (for width), 5 to 30 um (length), and 1 to 3 um (height).
However, and considering the basic level or ordinary skill by POSITA in integrated opto-electronic design, it would have been obvious at the time of the invention to arrive at optimum and selectable design choices for the three (x, y, and z) dimensions for the taper, 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), and since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art (in re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980)). For these reasons, and without undue burden or unnecessary experimentation, POSITA could easily have arrived at the “micron” levels of design, because such features would have been recognized in micron measurements, with Ono (and also other tapering features in PTO-892 form references D-H). See KSR v. Teleflex, 127 S.Ct. 1727 (2007). For these reasons, dependent claims 2 and 8 would have been obvious over COMBO as design choices.
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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: PTO-892 form references B, D-H, and N, which pertain to the state of the art of integrated opto-electronic with an emphasis on 3-D tapering.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Daniel Petkovsek whose telephone number is (571) 272-4174. The examiner can normally be reached M-F 7:30 - 6 PM.
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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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/DANIEL PETKOVSEK/Primary Examiner, Art Unit 2874 May 11, 2026
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