Prosecution Insights
Last updated: April 19, 2026
Application No. 18/457,819

PHOTONIC ASSEMBLY

Non-Final OA §102§103
Filed
Aug 29, 2023
Examiner
TAVLYKAEV, ROBERT FUATOVICH
Art Unit
2896
Tech Center
2800 — Semiconductors & Electrical Systems
Assignee
Kabushiki Kaisha Toshiba
OA Round
1 (Non-Final)
60%
Grant Probability
Moderate
1-2
OA Rounds
2y 4m
To Grant
72%
With Interview

Examiner Intelligence

Grants 60% of resolved cases
60%
Career Allow Rate
529 granted / 875 resolved
-7.5% vs TC avg
Moderate +12% lift
Without
With
+11.9%
Interview Lift
resolved cases with interview
Typical timeline
2y 4m
Avg Prosecution
34 currently pending
Career history
909
Total Applications
across all art units

Statute-Specific Performance

§101
0.1%
-39.9% vs TC avg
§103
70.2%
+30.2% vs TC avg
§102
13.0%
-27.0% vs TC avg
§112
11.1%
-28.9% vs TC avg
Black line = Tech Center average estimate • Based on career data from 875 resolved cases

Office Action

§102 §103
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 Claim Objections Claim 20 is objected to because of the following informalities: Claim 20 recites the limitation “A quantum communication system comprising a quantum state encoder a quantum state decoder” which has a typographical error/omission. For the purposes of this Action, the limitation is interpreted as “A quantum communication system comprising a quantum state encoder and a quantum state decoder”. Appropriate corrections are required. 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. (a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention. Claims 1 – 3, 10, 13, 14, and 16 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Kambe et al (US 2003/0128905 A1). Regarding claim 1, Kambe discloses (Fig. 2; Abstract; para. 0045 – 0053) a photonic assembly comprising: a first section 20,30, the first section 20,30 comprising a first substrate (comprising silicon and silicon oxide; para. 0049); and a second section 10, the second section 10 comprising a second substrate (comprising lithium niobate; para. 0046); wherein the photonic assembly comprises an interferometer 40-1,40-2,40-3 (para. 0045), the interferometer 40-1,40-2,40-3 comprising a plurality of passive photonic elements 22,32 (Y-junction branching and combining circuits; para. 0045) and a phase modulator (comprising electrode on waveguide 40-2; para. 0046); wherein the phase modulator is provided on the second section 10 (para. 0046); and wherein the plurality of passive photonic elements 22,32 are provided on the first section 20,30. Regarding claim 2, Kambe teaches (para. 0046, 0047, and 0052) that the phase modulator is an electro-optic phase modulator. Regarding claim 3, Kambe teaches (para. 0046, 0047, and 0052) that the plurality of passive photonic components 22,32 comprises one or more waveguides 40-1,40-3 (para. 00045) and, that the interferometer 40-1,40-2,40-3 further comprises one or more additional waveguides 40-2 provided on the second section 10, wherein at least one of the one or more waveguides 40-1,40-3 is coupled to at least one of the one or more additional waveguides 40-2 (to form a continuous Mach-Zehnder interferometer, as seen in Fig. 2). Regarding claims 10 and 13, Kambe teaches (Fig. 2) that the interferometer 40-1,40-2,40-3 comprises a first optical path (upper interferometer arm) and a second (lower interferometer arm) optical path; wherein plurality of passive elements 22,32 comprises a first coupler 22 (input Y-branch) and a second coupler 32 (output Y-branch); wherein the first coupler 22 couples an input of the interferometer 40-1,40-2,40-3 to the input of the first (upper) optical path and to the input of the second (lower) optical path, wherein the second coupler 32 couples the output of the first (upper) optical path and the output of the second (lower) optical path (as seen in Fig. 2), and wherein the phase modulator is provided in the first (upper) optical path (as seen in Fig. 2). Regarding claims 14 and 16, Kambe teaches that the first substrate is a substrate of passive material (comprising silicon and silicon oxide; para. 0049), and the second substrate is a substrate of (electro-optically) active material (comprising lithium niobate; para. 0046). Claims 1, 2, 4, 10, and 13 – 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kono et al (JP 2014/112171 A). Regarding claim 1, Kono discloses (Figs. 1 and 5; para. 0024 – 0027, 0031 – 0034, and 0056) a photonic assembly comprising: a first section 13,13’, the first section 13,13’comprising a first substrate (comprising quartz; para. 0056); and a second section 1, the second section 1 comprising a second substrate (comprising lithium niobate; para. 0056); wherein the photonic assembly comprises an interferometer (nested Mach-Zehnder (MZ) interferometer; para. 0004 and 0024 – 0027), the interferometer comprising a plurality of passive photonic elements (arms for branching 15,16,19,20/21,22,23,24,25,26,31,32; length adjustment regions 70a,70b,70c,70d,70e, and U-shaped waveguides 17,18/27,28,29,30; Figs. 1 and 5; para. 0056) and a phase modulator (comprising electrodes 4’,5’,6’,10’,11’,12’; para. 0024 and 0032); wherein the phase modulator is provided on the second section 1 (Figs. 1 and 5); and wherein the plurality of passive photonic elements are provided on the first section 13,13’ (as seen in Figs. 1 and 5). Regarding claim 2, Kono teaches (para. 0012 and 0021) that the phase modulator is an electro-optic phase modulator. Regarding claim 4, Kono teaches that the plurality of passive photonic components comprises one or more waveguides (passive Y-branches and U-shaped waveguides disposed in 13,13’) and, that the interferometer further comprises one or more additional waveguides (modulated parallel interferometer arms) provided on the second section 1, wherein at least one of the one or more (passive) waveguides is coupled to at least one of the one or more additional (active/modulated) waveguides (to form a continuous Mach-Zehnder interferometer, as seen in Fig. 2). Regarding claims 10 and 13, Kono teaches (Figs. 1 and 5) that the interferometer comprises a first optical path (upper interferometer arm) and a second (lower interferometer arm) optical path; wherein plurality of passive elements comprises a first coupler (input Y-branch) and a second coupler (output Y-branch); wherein the first coupler couples an input of the interferometer to the input of the first (upper) optical path and to the input of the second (lower) optical path, wherein the second coupler couples the output of the first (upper) optical path and the output of the second (lower) optical path (as seen in Figs. 1 and 5), and wherein the phase modulator is provided in the first (upper) optical path (as seen in Figs. 1 and 5). Regarding claims 14 and 16, Kono teaches that the first substrate (of 13,13’) is a substrate of passive material (comprising quartz; para. 0056), and the second substrate (of 1) is a substrate of (electro-optically) active material (comprising lithium niobate; para. 0056). Regarding claim 15, Kono teaches (e.g., para. 0021) the passive material (quartz) is optically passive for light having a wavelength within a first wavelength range, and the active material (lithium niobate) is optically active for light having a wavelength within the first wavelength range. Claims 1, 2, 4 – 6, 10, 13 – 16, 18, and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ren et al (CN 112558221 A). Regarding claim 1, Ren discloses (Fig. 3; para. 0006 – 0009) a photonic assembly comprising (see annotated Fig. 3 below): a first section (the coding chip disposed between the laser and the PMA in Fig. 3; para. 0008), the first section comprising a first substrate (comprising silicon dioxide; “Background” para. 0015); and a second section PMA, the second section PMA comprising a second substrate (comprising lithium niobate; para. 0007 – 0009); wherein the photonic assembly comprises an interferometer AMZI (an asymmetric Mach-Zehnder interferometer (AMZI) formed in the coding chip, as detailed in Figs. 2 and 3; para. 0003 and 0004), the interferometer comprising a plurality of passive photonic elements (a 2x2 splitter, a 2x2 combiner, a pair of parallel interferometer arms therebetween, and a delay line (Dt); para. 0003, 0004, and 0009) and a phase modulator (PM) PMA (para. 0007); wherein the phase modulator PMA is provided on the second section (the modulator chip in Fig. 3); and wherein the plurality of passive photonic elements (within AMZI) are provided on the first section (as seen in Fig. 3). PNG media_image1.png 664 1172 media_image1.png Greyscale Annotated Fig. 3 of Ren. Regarding claim 2, Ren teaches (para. 0005 and 0008) that the phase modulator is an electro-optic phase modulator. Regarding claim 4, Ren teaches (see annotated Fig. 3 above) that the interferometer comprises a first optical path (the lower interferometer arm) and a second (the upper path with a delay line Dt) optical path; wherein the plurality of passive elements comprises a first (left/input 2x2) coupler, a second (right/output 2x2) coupler, and a delay line (introducing a delay Dt); wherein the first (left) coupler couples (splits) an input of the interferometer (light from the laser) to the input of the first (lower) optical path and to the input of the second (upper) optical path, wherein the second (right) coupler couples the output of the first (lower) optical path and the output of the second (upper) optical path; and wherein the delay line (Dt) is provided the second (upper) optical path. Regarding claim 5, Ren teaches (see annotated Fig. 3 above) that the phase modulator PMA is provided at an (lower) output of the second (right) coupler. Regarding claim 6, Ren teaches (see annotated Fig. 3 above) that the phase modulator (comprising a phase modulator portion disposed on the lower interferometer arm for setting a phase bias of the interferometer and the separate phase modulator portion PMA) is provided in the first (lower) optical path (Fig. 3; “the phase modulation electrode on the short arm (examiner’s note: lower interferometer arm) can be used for correcting the phase. then the two pulses coincident in time and the same polarization state are interfered on the 50/50 directional coupler” at para. 0005). Regarding claims 10 and 13, Ren teaches (see annotated Fig. 3 above) that the interferometer comprises a first (lower) optical path and a second (upper) optical path; wherein plurality of passive elements comprises a first coupler (left/input 2x2) and a second coupler (right/output 2x2); wherein the first (input) coupler couples (splits) an input of the interferometer (light from the laser) to the input of the first (lower) optical path and to the input of the second (upper) optical path, wherein the second (output) coupler couples the output of the first (lower) optical path and the output of the second (upper) optical path (as seen in Fig. 3), and wherein the phase modulator (comprising a phase modulator portion disposed on the lower interferometer arm for setting a phase bias of the interferometer and the separate phase modulator portion PMA) is provided in the first (lower) optical path (as seen in Fig. 3). Regarding claims 14 and 16, Ren teaches that the first substrate is a substrate of passive material (comprising silicon dioxide; “Background” para. 0015), and the second substrate (of 1) is a substrate of (electro-optically) active material (comprising lithium niobate; para. 0007 – 0009). Regarding claim 15, Ren teaches (e.g., para. 0009) the passive material (silicon dioxide) is optically passive for light having a wavelength (1,550 nm) within a first wavelength range (modulated light has a broader spectrum) and the active material (lithium niobate) is (electro) optically active for light having a wavelength within the first wavelength range. Regarding claim 18, Ren teaches (para. 0006 and 0009) a quantum state encoder (at Alice’s site) comprising the disclosed photonic assembly. Regarding claim 20, Ren teaches (Fig. 3; para. 0006 – 0009) a quantum communication system comprising a quantum state encoder (Alice’s encoder) and a quantum state decoder (Bob’s decoder), wherein the quantum state encoder comprises (see annotated Fig. 3 provided above for claim 1 and a detailed explanation/mapping provide for it) a first photonic assembly comprising a first section, the first section comprising a first substrate (comprising silicon dioxide; “Background” para. 0015); and a second section, the second section comprising a second substrate; wherein the first photonic assembly comprises a first interferometer, the first interferometer comprising a first plurality of passive photonic elements and a first phase modulator; wherein the first phase modulator is provided on the second section; and wherein the first plurality of passive photonic elements are provided on the first section, wherein the first interferometer comprises a first optical path and a second optical path; wherein the first plurality of passive elements comprises a first coupler, a second coupler, and a first delay line; wherein the first coupler couples an input of the first interferometer to the input of the first optical path and to the input of the second optical path, wherein the second coupler couples the output of the first optical path and the output of the second optical path; and wherein the first delay line is provided the first optical path or is provided in the second optical path, wherein the first phase modulator is provided at an output of the second coupler; and wherein the quantum state decoder (at Bob’s site) has a structure similar to that of the encoder (as seen in Fig. 3) and comprises a second photonic assembly comprising: a third section, the third section comprising a third substrate (comprising silicon dioxide; “Background” para. 0015); and a fourth section PMB, the fourth section comprising a fourth substrate (comprising lithium niobate; para. 0007 – 0009); wherein the second photonic assembly comprises a second interferometer, the second interferometer comprising a second plurality of passive photonic elements and a second phase modulator; wherein the second phase modulator is provided on the fourth section; and wherein the second plurality of passive photonic elements are provided on the third section, wherein the second interferometer comprises a third optical path and a fourth optical path; wherein the second plurality of passive elements comprises a third coupler, a fourth coupler, and a second delay line; wherein the third coupler couples an input of the second interferometer to the input of the third optical path and to the input of the fourth optical path, wherein the fourth coupler couples the output of the third optical path and the output of the fourth optical path; and wherein the second delay line is provided the third optical path or is provided in the fourth optical path, wherein the second phase modulator PMB is provided at an input of the third coupler. 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. The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 3 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Ren in view of Sugiyama (US 2022/0179277 A1). Regarding claim 3, Ren generally renders obvious that the (high-speed) phase modulator PMA (for encoding) can be formed using an optical waveguide(s), but does not detail such embodiment. However, Sugiyama discloses (Figs. 2 and 3; para. 0033 – 0052) a hybrid photonic assembly comprising a plurality of passive photonic elements (splitters/combiners 21,42) in silicon waveguides and a (high-speed) phase modulator formed in a lithium niobate substrate 12 using optical waveguides 31 (para. 0033). It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention that the (high-speed) phase modulator PMA (for encoding) in Ren can be formed using an optical waveguide(s), as generally rendered obvious by Ren and explicitly illustrated by Sugiyama, so that an integrated photonic assembly comprising both the interferometer and the phase modulator can be implemented (instead of two separate components that are lined by an optical fiber, as in Fig. 3 of Ren). Regarding claim 11, the Ren – Sugiyama combination considers the use of both (TE and TM) polarizations by using a polarization splitter and a polarization rotator (para. 0005 and 0009) and renders obvious that the second coupler can a polarization splitter/combiner PBC (as PBC 45 in Fig. 2 of Sugiyama), wherein the interferometer further comprises a polarization rotator PR (which is described by Ren at para. 0009 and corresponds to PR 44 in Fig. 2 of Sugiyama), wherein the polarization rotator is provided in the first optical path or the second optical path. Claims 8, 17, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Ren. Regarding claim 8, Ren renders obvious that a (high-speed) phase modulation (encoding) can be imposed/encoded on input light (from the laser in Fig. 3) either after/down-stream the interferometer (as in Fig. 3) or before/upstream the interferometer without changing the principle of operation of the photonic assembly and a quantum communication system comprising thereof. Regarding claim 17, while Ren lists, by way of example but not limitation, lithium niobate as a suitable/workable electro-optic material for the second substrate, the Examiner takes official notice that a wide verity of other electro-optic materials, including III-V semiconductors (e.g., InP) and II-VI semiconductors, are well known in the art. Such materials would be obvious to a person of ordinary skill in the art as suitable material choices for the second substrate with the electro-optic phase modulator. It is also noted that it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. See In re Leshin, 125 USPQ 416. Regarding claim 19, Ren considers a quantum state decoder (at Bob’s site in Fig. 3) comprising the disclosed photonic assembly (as detailed above for claims 1 and 20). Claims 7 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Ren in view of Sugiyama, and further in view of Challener et al (US 2023/0393335 A1). Regarding claim 9, the teachings of Ren and Sugiyama combine (see the arguments and motivation for combining, as provided above for claim 3) to consider a hybrid photonic assembly wherein passive waveguides (e.g., in silicon or silicon dioxide) and electro-optic modulator (e.g., in lithium niobate) are integrated on a common support (as in Figs. 2 and 3 of Sugiyama). While the Ren – Sugiyama combination does not illustrate that the laser light source and a photodetector APD (in Fig. 3 of Ren) can also be integrated, Challener discloses (Figs. 3 and 27; para. 0050 – 0055, 0186, 0219, 0220, and 0227) an encoder/decoder of a quantum communication system that has at least one photo-detector (Ge photodiode in Fig. 27), wherein the at least one photodetector is coupled to an output of an interferometer (formed by two 2x2 couplers and comprising a delay line), wherein the at least one photo detector is provided on an electro-optically active second section (e.g. formed of III-V semiconductor materials; para. 0227) and integrated with a phase modulator(s) (as shown in Fig. 3). It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention that the at least one photo-detector coupled to the output of the interferometer, as considered by the Ren – Sugiyama combination, can be provided/integrated on the second (electro-optic) section, as illustrated by Challener, in order to enable a mechanically rugged module of compact footprint. Regarding claim 7, the Ren – Sugiyama – Challener combination renders obvious that the light source whose output of the light source is coupled to the input of the interferometer, can also be provided/integrated on the second section (e.g., formed on a III-V material which is a material suitable for making laser diode sources; “Steady progress is being made to integrate III-V components with Si chips because it also enables the presence of other active components light laser diodes” at para. 0227 of Challener). Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Ren in view of Sugiyama, and further in view of Wooten et al (US 2006/0056002 A1). Regarding claim 12, the Ren – Sugiyama combination considers a Mach-Zehnder interferometer with a bent/folded topology (as in Figs. 2 and 3 of Sugiyama) and illustrates that such topology can be formed by waveguide U-turns. While the Ren – Sugiyama combination does not illustrate reflectors as an alternative means of folding optical paths, Wooten discloses (Figs. 3, 11, 20, and 32) Mach-Zehnder interferometers with a bent/folded topology and illustrates an embodiment with waveguide U-turns 3260a,3260b (Fig. 32; para. 0167 and 0168) and an embodiment with reflectors 1160a,1160b (Fig. 11; 0107 – 0110). It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention that the plurality of passive photonic elements of the Ren – Sugiyama combination can additionally or alternatively comprise a first light reflector in the first optical path (one interferometer arm) and a second light reflector in the second optical path (the interferometer arm) as a suitable means for folding a Mach-Zehnder interferometer which is explicitly illustrated by Wooten. Conclusion The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 2019/0013878 A1 CN 105865433 A CN 110417550 A Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT TAVLYKAEV whose telephone number is (571)270-5634. The examiner can normally be reached 10:00 am - 6:00 pm, Monday - Friday. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, William Kraig can be reached on (571)272-8660. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /ROBERT TAVLYKAEV/Primary Examiner, Art Unit 2896
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Prosecution Timeline

Aug 29, 2023
Application Filed
Jan 23, 2026
Non-Final Rejection — §102, §103 (current)

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