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 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.
DETAILED ACTION
This is an AIA application filed February 15, 2024.
The earliest effective filing date of this AIA application is seen as August 18, 2021, the date of the earliest priority application (CHINA 202110949495.2) for any claims which are fully supported under 35 U.S.C. 112(a) by the parent application.
The effective filing date of this AIA application is seen as February 15, 2024, the actual filing date, for any claims that are not fully supported by the foregoing provisional or non-provisional application(s) or the application(s) listed below.
The present application also claims priority to and is also related to:
PCT international application number PCT/CN2022/103685 filed July 4, 2022.
The present application is also related to the applications giving rise to the following patent publication(s):
Office
Application
App. Date
Pub. #
Pub. Date
CN
202110949495
08/18/2021
CN 115903282 A
04/04/2023
JP
2024509345
07/04/2022
JP 2024529174 A
JP 7729696 B2
08/01/2024
08/26/2025
EP
22857456
07/04/2022
EP 4365670 A1
EP 4365670 A4
05/08/2024
11/06/2024
CN
PCT/CN2022/103685
07/04/2022
WO 2023020143 A1
02/23/2023
The claims filed July 9, 2026 are entered, currently outstanding, and subject to examination.
This action is in response to the information disclosure statement/IDS filing of July 30, 2026.
The current status and history of the claims are summarized below:
Last Amendment/Response
Previously
Amended:
none
N/A
Cancelled:
none
N/A
Withdrawn:
none
N/A
Added:
none
N/A
No changes were made to the claims.
Claims 1-20 are currently pending and outstanding.
No claims have been amended, cancelled, withdrawn, or added.
Claims 1-20 are currently outstanding and subject to examination.
As no changes were made to the claims, the Response to Arguments section, below, primarily contains new portions to the examination of the instant application.
This is a final action and is the second action on the merits.
Allowable subject matter is not indicated below.
Often, in the substance of the action below, formal matters are addressed first, claim rejections second, and any response to arguments third.
Special Definitions for Claim Language - MPEP § 2111.01(IV)
No special definitions are seen as present in the specification regarding the language used in the claims. Consequently, the words and phrases of the claims are given their plain meaning. MPEP §§ 2173.01, 2173.05(a), and 2111.01.
If special definitions are present, Applicant should bring those to the attention of the examiner and the prosecution history with its next response in a manner both specific and particular. In doing so, there will be no mistake, confusion, and/or ambiguity as to what constitutes the special definition(s).
To date, Applicant has provided no indication of special definitions.
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 1-5, 11, 12, 14-18, and 20 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by Chinese patent publication number 110609399 of GNST/Guangzhou Niobium Semiconductor Technology Co., Ltd published December 24, 2019 (GNST, cited by Applicant).
With respect to claim 1, GNST discloses an optical waveguide device (the figures, particularly Figs. 3 and 6 and the listing of method steps s1-s8 in Applicant’s English translation, pages 2, 5, and 9) comprising:
a substrate (Fig. 3, C-C’ cross section, upper right corner of Fig. 3, the bottom black layer);
a target structure (the middle layer with the two dark/black waveguides 302 and 312); and
an electro-optic crystal structure (the top layer per s3, p. 2 of Applicant’s English translation, "s3, sticking the lithium niobate thin film on the substrate in the S2 through a bonding technology to obtain a silicon-lithium niobate combined substrate;"), wherein:
the target structure comprises an insulation layer (silicon dioxide, s6) and a first optical waveguide (s1/s5);
the insulation layer includes a bonding region having a first groove (Fig. 6b with grooves for the waveguides; the media adjoining the waveguides is seen as an insulator to prevent short circuits for the later-made electrodes),
the first optical waveguide is embedded in the first groove (Fig. 6b), and
a surface of the first optical waveguide positioned away from the substrate is flush with a surface of the bonding region and positioned away from the substrate (Fig. 6b); and
the electro-optic crystal structure is bonded to a side of the target structure positioned away from the substrate (Fig. 6c; s3, "sticking the lithium niobate thin film on the substrate in the S2 through a bonding technology to obtain a silicon-lithium niobate combined substrate").
the electro-optic crystal structure is bonded to a side of the target structure positioned away from the substrate (Fig. 6c; s3, "sticking the lithium niobate thin film on the substrate in the S2 through a bonding technology to obtain a silicon-lithium niobate combined substrate").
With respect to claim 2, GNST as set forth above discloses the optical waveguide device according to claim 1, including one wherein
a cross section of the first optical waveguide in a direction perpendicular to the first optical waveguide comprises a first side and a second side that are opposite to each other (Fig. 6),
the first side is positioned in closer proximity to the substrate than is the second side (Fig. 6), and
a length of the first side is less than a length of the second side (variations during the etching process would create all manner of relative lengths).
With respect to claim 3, GNST as set forth above discloses the optical waveguide device according to claim 2, including one wherein
the cross section of the first optical waveguide further comprises a third side (Fig. 6),
the third side is connected to the first side and to the second side (Fig. 6), and
a range of an included angle between the third side and the second side is [60°, 80° ] (variations during the etching process would create all manner of relative lengths and angles).
With respect to claim 4, GNST as set forth above discloses the optical waveguide device according to claim 1, including one wherein
a cross section of the first optical waveguide in a direction perpendicular to the first optical waveguide comprises a first side and a second side that are opposite to each other (Fig. 6),
the first side is positioned in closer proximity to the substrate than is the second (Fig. 6), and
a length of the first side is equal to a length of the second side (variations during the etching process would create all manner of relative lengths).
With respect to claim 5, GNST as set forth above discloses the optical waveguide device according to claim 1, including one wherein
the electro-optic crystal structure comprises a support layer and an electro-optic crystal thin film that are superposed (s2/s3 where the lithium niobate thin film is stuck to the spin-coated bonding layer), and
the side of the target structure positioned away from the substrate is bonded to a side of the electro-optic crystal structure on which the electro-optic crystal thin film in the electro-optic crystal structure is located (per Fig. 6).
With respect to claim 11, GNST as set forth above discloses the optical waveguide device according to claim 1, including one wherein
the optical waveguide device further comprises a second optical waveguide positioned between the substrate and the insulation layer,
the first optical waveguide being coupled to the second optical waveguide.
GNST Fig. 6 and coupler 60 with its overcross of Fig. 3.
With respect to claim 12, GNST as set forth above discloses the optical waveguide device according to claim 11, including one wherein:
an orthographic projection of the first optical waveguide on the substrate and an orthographic projection of the second optical waveguide on the substrate at least partially overlap; and
an orthographic projection of an end of the first optical waveguide positioned in close proximity to the second optical waveguide on the substrate is wedge-shaped; and
an orthographic projection of an end of the second optical waveguide positioned in close to the first optical waveguide on the substrate is wedge-shaped.
Per claim 2, above, variations during the etching process would create all manner of relative lengths and shapes.
With respect to claim 14, GNST as set forth above discloses an optical chip, comprising:
an optical waveguide device (Fig. 6);
a substrate (Fig. 3, C-C’ cross section, upper right corner of Fig. 3, the bottom black layer);
a target structure (the middle layer with the two dark/black waveguides 302 and 312); and
an electro-optic crystal structure (the top layer per s3, p. 2 of Applicant’s English translation, "s3, sticking the lithium niobate thin film on the substrate in the S2 through a bonding technology to obtain a silicon-lithium niobate combined substrate;"), wherein:
the target structure comprises an insulation layer (silicon dioxide, s6) and a first optical waveguide (s1/s5);
a bonding region of the insulation layer includes a first groove (Fig. 6b with grooves for the waveguides);
the first optical waveguide is embedded into the first groove (Fig. 6);
a surface of the first optical waveguide positioned away from the substrate (Fig. 6b); and
the electro-optic crystal structure is bonded to a side of the target structure positioned away from the substrate (Fig. 6c; s3, "sticking the lithium niobate thin film on the substrate in the S2 through a bonding technology to obtain a silicon-lithium niobate combined substrate").
With respect to claim 15, GNST as set forth above discloses the optical chip according to claim 14, including one wherein
a cross section of the first optical waveguide in a longitudinal direction perpendicular to the first optical waveguide comprises a first side and a second side that are opposite to each other (Fig. 6),
the first side is positioned in close proximity to the substrate (Fig. 6),
the second side is positioned away from the substrate (Fig. 6), and
a length of the first side is less than a length of the second side (variations during the etching process would create all manner of relative lengths).
See claim 2, above.
With respect to claim 16, GNST as set forth above discloses the optical chip according to claim 15, including one wherein
the cross section of the first optical waveguide further comprises a third side (Fig. 6),
the third side is connected to the first side and to the second side (Fig. 6), and
a range of an included angle between the third side and the second side is [60°, 80° ] (variations during the etching process would create all manner of relative lengths and angles).
See claim 3, above.
With respect to claim 17, GNST as set forth above discloses the optical chip according to claim 14, including one wherein
a cross section of the first optical waveguide in a longitudinal direction perpendicular to the first optical waveguide comprises a first side and a second side that are opposite to each other (Fig. 6),
the first side is positioned in close proximity to the substrate (Fig. 6),
the second side is positioned away from the substrate (Fig. 6), and
a length of the first side is equal to a length of the second side (variations during the etching process would create all manner of relative lengths).
See claim 4, above.
With respect to claim 18, GNST as set forth above discloses the optical chip according to claim 14, including one wherein
the electro-optic crystal structure comprises a support layer and the electro-optic crystal thin film that are superposed (s2/s3 where the lithium niobate thin film is stuck to the spin-coated bonding layer),
the side of the target structure positioned away from the substrate is bonded to a side on which is positioned the electro-optic crystal thin film in the electro-optic crystal structure (per Fig. 6).
See claim 5, above.
With respect to claim 20, GNST as set forth above discloses a communication device (Technical Field "The invention belongs to the technical field of optical communication and modulation in integrated optics, and relates to a folding silicon-lithium niobate hybrid integrated electro-optical modulator and a preparation method thereof."), comprising:
an optical chip including an optical waveguide device (Fig. 6),
wherein the optical waveguide device comprises a substrate (Fig. 3, C-C’ cross section, upper right corner of Fig. 3, the bottom black layer);,
a target structure (the middle layer with the two dark/black waveguides 302 and 312); and
an electro-optic crystal structure (the top layer per s3, p. 2 of Applicant’s English translation, "s3, sticking the lithium niobate thin film on the substrate in the S2 through a bonding technology to obtain a silicon-lithium niobate combined substrate;");
the target structure comprises an insulation layer (silicon dioxide, s6) and a first optical waveguide (s1/s5);a bonding region of the insulation layer includes a first groove,
the first optical waveguide is embedded in the first groove (Fig. 6b), and
a surface of the first optical waveguide positioned away from the substrate is flush with a surface of the bonding region and positioned away from the substrate (Fig. 6b); and
the electro-optic crystal structure is bonded to a side of the target structure positioned away from the substrate (Fig. 6c; s3, "sticking the lithium niobate thin film on the substrate in the S2 through a bonding technology to obtain a silicon-lithium niobate combined substrate").
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 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.
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 6 and 7 are rejected under 35 U.S.C. § 103 as being unpatentable over GNST as set forth above.
With respect to claim 6, GNST as set forth above discloses the optical waveguide device according to claim 1, including one wherein the bonding region further includes
a plurality of second grooves (Fig. 6 g/h shows grooves for the electrodes), and
the target structure further includes a plurality of electrodes embedded in the plurality of second grooves in a one-to-one correspondence (Fig. 6 g/h),
the first optical waveguide is positioned between the plurality of electrodes (Fig. 6 g/h), and
the electrodes and a plurality of first optical waveguides in the optical waveguide device are arranged one to one at spaced intervals (Fig. 6 g/h).
GNST as set forth above does not disclose:
wherein a surface of at least one electrode positioned away from the substrate is flush with the surface of the bonding region that is positioned away from the substrate
GNST shows waveguide construction with such flush surfaces.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide electrodes with the waveguides along the lines of GNST in a system according to GNST as set forth above in order to provide more linear disposition of circuit and optical elements. This provides one rationale to combine the references.
Another completely independent and separately sufficient rationale arises as follows. In making the combination (above), the combining of prior art elements (listed above) according to known methods (per the reference) to yield predictable results (an electro-optic device) would occur as each element merely performs the same function in combination as it does separately. MPEP § 2141(III). This additional rationale is a sufficient, a complete, and an explicitly-recognized rationale to combine the references and conclude that the claim is obvious both under the controlling KSR Supreme Court case and MPEP § 2141(III)(A). Current Office policy regarding the determination of obviousness is set forth in the Federal Register notice at 89 Fed. Reg. 14449 (Feb. 27, 2024).
Further, the combination would then provide:
wherein a surface of at least one electrode positioned away from the substrate is flush with the surface of the bonding region that is positioned away from the substrate
With respect to claim 7, GNST as set forth above discloses the optical waveguide device according to claim 5, including one wherein the optical waveguide device further comprises
an electrode positioned between the substrate and the insulation layer (per clam 6, above); and
the electro-optic crystal structure comprises the support layer and the electro-optic crystal thin film that are superposed (s2/s3 where the lithium niobate thin film is stuck to the spin-coated bonding layer),
the support layer comprises a conductive material (the silicon is seen as at least slightly conductive), and
the side of the target structure positioned away from the substrate is bonded to the side on which the electro-optic crystal thin film in the electro-optic crystal structure is located (Fig. 6).
Claims 8-10, 13, and 19 are rejected under 35 U.S.C. § 103 as being unpatentable over GNST as set forth above and further in view of Chinese patent publication number 1100525 of Fujitsu Ltd. published March 22, 1995 (Fujitsu, cited by Applicant).
With respect to claim 8, GNST as set forth above discloses the optical waveguide device according to claim 1, but not one wherein the target structure further comprises
a dielectric layer, the dielectric layer is located between the bonding region of the insulation layer and the electro-optic crystal structure and is configured to prevent metal ions on a side on which the insulation layer is located from diffusing to the electro-optic crystal structure.
Fujitsu provides (p.6 towards the bottom of Applicant’s English translation):
"According to this preferred embodiment, dielectric film 6 is placed in semiconductive thin film 5 and this is between the electrode 3."
See Fig. 1.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use a dielectric or other film along the lines of Fujitsu in a system according to GNST as set forth above in order to prevent ion migration. This provides one rationale to combine the references.
Another completely independent and separately sufficient rationale arises as follows. In making the combination (above), the combining of prior art elements (listed above) according to known methods (per the references) to yield predictable results (an electro-optic device) would occur. MPEP § 2141(III). This additional rationale is a sufficient, a complete, and an explicitly-recognized rationale to combine the references and conclude that the claim is obvious both under the controlling KSR Supreme Court case and MPEP § 2141(III)(A). Current Office policy regarding the determination of obviousness is set forth in the Federal Register notice at 89 Fed. Reg. 14449 (Feb. 27, 2024).
Further, the combination would then provide:
a dielectric layer, the dielectric layer is located between the bonding region of the insulation layer and the electro-optic crystal structure and is configured to prevent metal ions on a side on which the insulation layer is located from diffusing to the electro-optic crystal structure.
With respect to claim 9, GNST in view of Fujitsu as set forth above discloses the optical waveguide device according to claim 8, but not one wherein
a thickness of the dielectric layer is less than or equal to 10 nanometers.
Where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device. Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984). MPEP § 2144.04(IV)(A).
As the scope of claim 9 departs from that of claim 8 only with regards to the relative dimensions, the claimed device is not patentably distinct from the prior art device of GNST in view of Fujitsu as set forth above as set forth above.
Generally, the layer size is consistent with monolithic fabrication and the ability to operate as an ion barrier.
Herein, this analysis is referred to as “relative dimensions/size”.
With respect to claim 10, GNST in view of Fujitsu as set forth above discloses the optical waveguide device according to claim 8, but not one wherein
a melting point of the dielectric layer is lower than a melting point of the target structure and a melting point of the electro-optic crystal structure.
The selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination.
Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (Claims to a printing ink comprising a solvent having the vapor pressure characteristics of butyl carbitol so that the ink would not dry at room temperature but would dry quickly upon heating were held invalid over a reference teaching a printing ink made with a different solvent that was nonvolatile at room temperature but highly volatile when heated in view of an article which taught the desired boiling point and vapor pressure characteristics of a solvent for printing inks and a catalog teaching the boiling point and vapor pressure characteristics of butyl carbitol. “Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” 325 U.S. at 335, 65 USPQ at 301.).
See also In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious); Ryco, Inc. v. Ag-Bag Corp., 857 F.2d 1418, 8 USPQ2d 1323 (Fed. Cir. 1988) (Claimed agricultural bagging machine, which differed from a prior art machine only in that the brake means were hydraulically operated rather than mechanically operated, was held to be obvious over the prior art machine in view of references which disclosed hydraulic brakes for performing the same function, albeit in a different environment.). MPEP § 2144.07.
Consequently, the recitation of specific materials (here, a dielectric with a lower melting) is seen as obvious. Here, the dielectric acts as a solder. Solders are well-known to perform best when the parts they connect are not melted with them.
With respect to claim 13, GNST as set forth above discloses the optical waveguide device according to claim 1, but not one wherein:
the first optical waveguide comprises hydrogenated amorphous silicon,
the electro-optic crystal structure comprises a lithium niobate thin film, and
vπ.math.lπ is less than 2.3 volt.math.centimeters,
wherein vπ indicates a half-wave voltage of the optical waveguide device, and
lπ indicates a length of the electro-optic crystal structure in the longitudinal direction of the first optical waveguide;
the first optical waveguide comprises silicon nitride,
the electro-optic crystal structure comprises a lithium niobate thin film, and
vπ.math.lπ is less than 6.7 volt.math.centimeters,
wherein vπ indicates a half-wave voltage of the optical waveguide device, and
lπ indicates a length of the electro-optic crystal structure in the longitudinal direction of the first optical waveguide; or
the first optical waveguide comprises hydrogenated amorphous silicon,
the electro-optic crystal structure comprises bulk barium titanate, and
vπ.math.lπ is less than 0.2 volt.math.centimeters,
wherein vπ indicates a half-wave voltage of the optical waveguide device, and
lπ indicates a length of the electro-optic crystal structure in the longitudinal direction of the first optical waveguide.
The selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination.
Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (Claims to a printing ink comprising a solvent having the vapor pressure characteristics of butyl carbitol so that the ink would not dry at room temperature but would dry quickly upon heating were held invalid over a reference teaching a printing ink made with a different solvent that was nonvolatile at room temperature but highly volatile when heated in view of an article which taught the desired boiling point and vapor pressure characteristics of a solvent for printing inks and a catalog teaching the boiling point and vapor pressure characteristics of butyl carbitol. “Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” 325 U.S. at 335, 65 USPQ at 301.).
See also In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious); Ryco, Inc. v. Ag-Bag Corp., 857 F.2d 1418, 8 USPQ2d 1323 (Fed. Cir. 1988) (Claimed agricultural bagging machine, which differed from a prior art machine only in that the brake means were hydraulically operated rather than mechanically operated, was held to be obvious over the prior art machine in view of references which disclosed hydraulic brakes for performing the same function, albeit in a different environment.). MPEP § 2144.07.
Consequently, the recitation of specific materials (here, ones with electro-optic characteristics) is seen as obvious. Any known and equivalent materials could be used for the elements set forth in claim 13.
With respect to claim 19, GNST as set forth above discloses the optical chip according to claim 14, including one wherein the bonding region further includes
a plurality of second grooves, and
the target structure further comprises a plurality of electrodes embedded into the plurality of second grooves in a one-to-one correspondence,
wherein a surface of at least one electrode positioned away from the substrate is flush with the surface of the bonding region and that is positioned away from the substrate,
the first optical waveguide is located between the plurality of electrodes, and
the electrodes and a plurality of first optical waveguides in the optical waveguide device are arranged one to one at spaced intervals.
See claim 6, above.
Response to Arguments
Applicant's arguments filed July 9, 2026 have been fully considered but they are not persuasive and the claim rejections are not rebutted.
Applicant argues that:
Independent claim 1 recites, in pertinent part, an optical waveguide device comprising a substrate, a target structure, and an electro-optic crystal structure, wherein "the target structure comprises an insulation layer and a first optical waveguide," "the insulation layer includes a bonding region having a first groove, the first optical waveguide is embedded in the first groove, and a surface of the first optical waveguide positioned away from the substrate is flush with a surface of the bonding region and positioned away from the substrate," and "the electro-optic crystal structure is bonded to a side of the target structure positioned away from the substrate.” These structural requirements define a specific architecture in which the first optical waveguide is embedded within a groove formed in the insulation layer, with the waveguide surface flush with the bonding region surface, so that no insulation layer material is interposed between the first optical waveguide and the electro-optic crystal structure'. Independent claims 14 and 20 recite substantially similar limitations requiring the first optical waveguide to be "embedded into the first groove" with the waveguide surface "flush with" the bonding region surface. The features of claim
Examiner response: From the foregoing, examiner understands that Applicant sees GNST to have to following shortcomings/flaws/gaps/absences and the like as the following are missing from GNST:
"the target structure comprises an insulation layer and a first optical waveguide,"
"the insulation layer includes a bonding region having a first groove, the first optical waveguide is embedded in the first groove, and a surface of the first optical waveguide positioned away from the substrate is flush with a surface of the bonding region and positioned away from the substrate," and
"the electro-optic crystal structure is bonded to a side of the target structure positioned away from the substrate.”
Examiner addresses these issues individually below along the lines of Applicant’s presentation in its reply of July 9, 2026 (“reply”)
The Office Action contends that GNST anticipates claim 1, mapping the silicon dioxide deposited at step S6 as claim l's "insulation layer," the silicon waveguides formed at steps S1/S5 as claim l's "first optical waveguide," and Figure 6(b) as showing "grooves for the waveguides" in which the first optical waveguide is allegedly embedded with a flush surface2. The Applicant respectfully submits that this mapping is based on a misunderstanding of GNSTs device structure and fabrication process, and that GNST fails to disclose at least three features of claim 1: (i) an insulation layer including a bonding region having a first groove, (ii) a first optical waveguide embedded in the first groove, and (iii) a surface of the first optical waveguide positioned away from the substrate being flush with a surface of the bonding region positioned away from the substrate.
Examiner response: Examiner sees Applicant’s three points here as being a restatement of those above.
With reference to Figure 6 and the text associated with Example 3, at step S1, silicon waveguides are manufactured on an insulator silicon thin film (SOI) substrate using photolithography and etching. The silicon waveguides are thus formed by etching the silicon layer of the SOI substrate, the waveguides protruding upward from the substrate surface, as shown in Fig. 6(a); they are not "embedded" in a groove, as recited in claim 1 of the subject application. At step S2, a bonding medium-specifically, benzocyclobutene (BCB) - is spin- coated over the substrate on which the silicon waveguides have already been formed. As shown in Fig. 6(b), the BCB bonding medium covers the protruding silicon waveguides. At step S3, a lithium niobate thin film is bonded on top of the BCB-coated substrate. The silicon dioxide buffer layer that the Office Action maps as the "insulation layer" is not deposited until step S6 (see, for example, Fig. 6(f)), which occurs after the lithium niobate substrate is removed (S4) and the lithium niobate waveguides are formed (S5). This silicon dioxide buffer layer is deposited on top of the lithium niobate waveguides, not around or below the silicon waveguides.
Examiner response: Regarding “embedment”, Applicant is arguing a product by process limitation to the claims. Such is not allowed by the MPEP. See MPEP § 2113.
Only the resulting structure achieved by the steps is considered part of the claim and examined.
From Applicant’s translation, waveguides are achieved and are embedded in the adjoining media/medium. As electrodes are placed adjacent the waveguides, the adjoining media is seen as being insulating to prevent a short circuit between electrodes.
Furthermore, GNST fails to disclose that "a surface of the first optical waveguide positioned away from the substrate is flush with a surface of the bonding region and positioned away from the substrate," as recited by claim 1. In GNST, the BCB bonding medium is spin-coated over the silicon waveguides, meaning the BCB covers the waveguides. The top surfaces of the silicon waveguides are not flush with any bonding region surface; instead, the BCB layer interposes between the silicon waveguides and the lithium niobate thin film bonded above. Such a structure is precisely the prior art architecture that the as-filed specification identifies as problematic, explaining that "after the electro-optic crystal and the side that is of the insulation layer and that is away from the substrate are bonded, due to the insulation layer, there is a spacing between the optical waveguide and the electro-optic crystal" which "affects light modulation efficiency of the optical waveguide device.3" The structure recited in, for example, claim 1 solves this problem by embedding the waveguide in a groove of the insulation layer so that the waveguide surface is flush with the bonding region, ensuring "there is no insulation layer between the first optical waveguide and the electro-optic crystal structure.4"
Examiner response: Examiner sees GNST Fig. 6c showing a flush surface between the bonding layer and the waveguides. That continues to be true for Figs. 6d-h.
Per MPEP § 2145(VI), the specification is not read into the claims.
The Office Action's reliance on Fig. 6(b) of GNST as allegedly showing "grooves for the waveguides" is misplaced. Office Action, page 3. Fig. 6(b) of GNST corresponds to step S2, which is the spin-coating of the BCB bonding medium over the substrate. The dark shapes visible in Fig. 6(b) are the silicon waveguides that were previously formed on the SOI substrate at step S1 and that protrude upward from the substrate; these are not grooves formed in an insulation layer. Fig. 6(b) shows the BCB bonding medium deposited over and around these protruding waveguides, which is fundamentally different from the claimed structure in which a first optical waveguide is embedded in a first groove of an insulation layer with a flush surface.
Examiner response: The waveguides exist in grooves otherwise there would be no space for them. That the grooves are formed at a certain time and a certain way goes to the product by process approach that Applicant is trying to assert and that the MPEP denies.
Applicant's arguments with regards to the remaining claims all rely upon the arguments set forth above. Consequently, these remaining arguments as seen as being addressed by the examiner's corresponding remarks.
Applicant’s remaining arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references. As such, the examiner makes no remarks regarding them.
Conclusion
Applicant’s publication US 20240192531 A1 published June 13, 2024 was previously cited.
No new art is cited.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/Andrew Jordan/
Primary Examiner, Art Unit 2874
V: (571) 270-1571 (Pacific time)
F: (571) 270-2571
September 8, 2026
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