DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election
Applicant’s election without traverse of group I (claims 1-15) in the reply filed on 1/5/2026 is acknowledged. Claims 16-20 will be treated as belonging to group I due to the amendment to claim 16.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 120 as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 17/684377, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application.
Claim 2 recites that a center of curvature of the concave surface is outside the semiconductor carrier. The term "center of curvature" implies a particular geometry (the concave surface is part of a spherical surface or otherwise coincides with a circular arc) which was not described. The center of curvature being "outside the semiconductor carrier" was also not described. To the extent that this was derived from figs. 4G or 4H, the specification states that the drawings are not to scale at least at [0035].
Claims 4-6 each refer to a radius of curvature of the concave surface and/or a concave of a lateral side. Similar to the situation for claim 2, the term "radius of curvature" implies a geometry for the concave regions which was not described.
Claims 7 and 17 recite that the semiconductor carrier has a waveguide. This was not described or illustrated. Although the specification at [0025]-[0026] mentions a waveguide, it does not state that the waveguide is part of the semiconductor carrier. It merely states that a fiber or fiber array unit accommodated in the trench could be coupled with a waveguide and does not identify where the waveguide itself is located (e.g. it could be at a remote end of the fiber).
Claim 9 recites that a roughness of the first lateral side is different from a roughness of the second lateral side. This was not described or illustrated. Claims 10-20 ultimately depend from claim 9 and thus were also not described.
Claim 10 recites that a profile of the first lateral side is different from a profile of the second lateral side. This was not described or illustrated.
Accordingly, claims 2, 4-7, and 9-20 are not entitled to the benefit of the prior application.
Drawings
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, if claims 9 and 10 are maintained then an embodiment including first and second lateral sides with different roughnesses (claim 9) or different profiles (claim 10) must be shown or the feature(s) canceled from the claim(s). No new matter may 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.
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.
Claims 2, 4-7, and 9-20 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claims contain 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, at the time the application was filed, had possession of the claimed invention. See the "Priority" section above for identification of claimed subject matter which was not described in the specification sufficiently to show possession at the time of filing.
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 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2013/0336614 A1.
Claim 1: '614 discloses an optical device, comprising (see mainly fig. 5(a)):
a semiconductor carrier 1011 having a first surface (horizontal surface facing downward as oriented in fig. 5(a)) and a second surface (curved surface having a height of T5, [0043]) different in elevation from the first surface,
wherein the second surface comprises a concave surface facing toward the first surface, and the semiconductor carrier is configured to be optically coupled to a fiber 20.
Claim 2: A center of curvature of the concave surface is outside the semiconductor carrier (fig. 5(a)). Note the center of curvature of the fiber itself is nearly outside the semiconductor carrier, and the concave surface has a much larger radius of curvature than the fiber as shown in fig. 5(a).
Claim 3: The semiconductor carrier has a first lateral side and a second lateral side (left and right vertical sidewalls of groove 106), both of the first lateral side and the second lateral side are extending between the first surface and the second surface, and a length of the concave surface is greater than that of the first lateral side or the second lateral side (fig. 5(a)).
Claims 1 and 4-6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2020/0313070 A1.
Claim 1: '070 discloses an optical device, comprising (see mainly figs. 5-7):
a semiconductor carrier 3 (made of semiconductor according to [0030]) having a first surface 31 and a second surface (bottom surface of 35) different in elevation from the first surface,
wherein the second surface comprises a concave surface 353 facing toward the first surface, and the semiconductor carrier is configured to be optically coupled to a fiber (it can receive light emitted from a fiber).
Claim 4: The semiconductor carrier has a first lateral side 351 (left instance in fig. 5) extending between the first surface and the second surface, the first lateral side has a concave SC (fig. 7), and a radius of curvature r4 of the concave of the first lateral side is less than a radius of curvature r1 of the concave surface of the second surface ([0048]).
Claim 5: The semiconductor carrier has a second lateral side 351 (right instance in fig. 5), the second lateral side has a concave SC (fig. 7), and the radius of curvature r4 of the concave of the first lateral side is substantially equal to a radius of curvature r4 of the concave of the second lateral side.
Claim 6: The semiconductor carrier has a second lateral side 351 (right instance in fig. 5), the second lateral side has a concave SC, and a radius of curvature r4 of the concave of the second lateral side is less than the radius of curvature r1 of the concave surface of the second surface ([0048]).
Claims 1 and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP 2012-98411 A.
Claim 1: '411 discloses an optical device, comprising (see mainly figs. 1-4):
a semiconductor carrier 1 ([0020]-[0021]) having a first surface (uppermost surface of 1 in figs. 1-4) and a second surface (bottom surface of groove 1b) different in elevation from the first surface,
wherein the second surface comprises a concave surface facing toward the first surface, and the semiconductor carrier is configured to be optically coupled to a fiber 2.
Claim 7: The semiconductor carrier 1 comprises a waveguide 16 configured to be coupled with the fiber.
Claims 1 and 8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2020/0057201 A1 (already of record via information disclosure statement).
Claim 1: '201 discloses an optical device, comprising (see mainly fig. 1E):
a semiconductor carrier 10 having a first surface 101 and a second surface 102 different in elevation from the first surface,
wherein the second surface comprises a concave surface facing toward the first surface, and the semiconductor carrier is configured to be optically coupled to a fiber 20.
Claim 8: The semiconductor carrier comprises a profile 103 connecting the first surface to the second surface, and a roughness of the profile is greater than a roughness of the second surface ([0029]).
Conclusion
US 2016/0246002 A1 is cited on the attached 892 form for its demonstration of asymmetric trench sidewalls (e.g. figs. 10 and 14).
Contact Information
Examiner: 571-272-2360
Examiner's direct supervisor: 571-272-2397
Official correspondence by fax: 571-273-8300
Information regarding the status of an application may be obtained from Patent Center. Should you have questions about Patent Center, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
/Michael Stahl/Primary Examiner, Art Unit 2874
1 Reference number 101 is not in the description, but corresponds to silicon substrate 10 of earlier figures.
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