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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 7/01/2026 has been entered.
Response to Amendment
Applicant's Amendment filed 7/01/2026 has been fully considered and entered.
The original objections to the claims, which were set forth in the Office Action mailed 7/01/2026, have been withdrawn in view of Applicant’s Amendment.
The rejection under 35 U.S.C. 112(b) set forth in the Office Action mailed 4/02/2026 is withdrawn in view of Applicant’s Amendment.
Response to Arguments
Applicant’s arguments with respect to the claim(s) have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Claim Objections
Claim 1 is objected to because of the following informalities:
Claim 1, lines 3-5: “the glass substrate being made of glass, the via hole having a thermal conductivity larger than a thermal conductivity of a glass material of the glass substrate” should instead state “the glass substrate being made of a glass material, the via hole having a thermal conductivity larger than a thermal conductivity of the glass material of the glass substrate”
Appropriate correction is required.
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.
Claim(s) 1-4, 6-8, and 12-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Verdiell in US Patent 6,252,726 (hereinafter "Verdiell") in view of Shen et al. in US 20230268249 A1 (hereinafter "Shen") which claims foreign priority to EP 4235244 B1 filed on February 24, 2022 in English and appears substantially similar to Shen and in further view of Kohda et al. in US 20060029114 A1 (hereinafter "Kohda").
Regarding claim 1, Verdiell discloses an optical module comprising:
a substrate (mid-piece 240) having a first surface (the surface of 240 facing 255 in Fig. 2), a second surface opposite to the first surface (the surface of 240 facing 225 in Fig. 2), and a via hole connecting the first surface and the second surface to each other (see Col. 5 lines 31-43);
an optical element (optical component 255 is interpreted as the optical element) mounted on the first surface of the substrate (the surface of 240 facing 255 in Fig. 2) and joined to the via hole of the substrate (optical element 255 is joined to mid-piece 240, and the vias, by heat spreader 250), the optical element being configured to consume an electricity (optical element 255 necessarily requires consumption of electricity, in order to function as a laser diode for example; see Col. 5 lines 17-18) and perform at least one of an input and an output of an optical signal (optical element 255 necessarily outputs a light signal, in order to function as the exemplary laser diode; see Col. 5 lines 17-18);
a temperature control element (Peltier cooler 225 in Fig. 2 is interpreted as the temperature control element; see also Col. 5 lines 9-10 and 48-49) mounted on the second surface of the substrate (225 is joined to the surface of 240 facing 225 via ) and joined to the via hole of the substrate (the vias and the Peltier cooler 225 are at least thermally joined; see also Col. 5 lines 60-61), the temperature control element being configured to regulate a temperature of the optical element (Peltier cooler 225 necessarily forces a temperature change which in turn necessarily regulates the temperature of the optical element 255; see Col. 5 lines 51-53); and
a first housing (the combination of 230, 242, 270, and 275 as seen in Fig. 2 is interpreted as the first housing) attached to the first surface (the upper enclosure is attached to mid-piece 240 facing 255; see Fig. 2; note that hermeticity would necessarily rely upon the housing walls being attached to mid-piece 240), the first housing being configured to hermetically seal the optical element (see Col. 5 lines 24-30; note that the first housing/”upper enclosure” surrounds optical element 255).
Verdiell suggests the mid-piece 240 may be ceramic which is a non-conductive, low expansion substrate (see Col. 6 lines 5-6), but fails to explicitly disclose that the substrate (mid-piece 240) is, or may be, a glass substrate, the glass substrate being made of glass.
Shen disclose a similar device with a first substrate made of glass (see claim 1 and Para. 10 and 46).
Accordingly, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have the glass substrate of Shen in the device of Verdiell for the purpose of using a cost-effective, simple, common material, and since 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. In re Leshin, 125 USPQ 416.
Verdiell further discloses hermetically sealed vias (see Col. 5 line 38), but fails to teach that the via hole is made of a particular material having a thermal conductivity larger that the thermal conductivity of the mid-piece 240. Verdiell suggests that the via may be made of electrically conductive material (see Col. 5 lines 43-45), but fails to specifically identify the thermal conductivity of said material.
Shen discloses a similar optical module wherein the via hole has a thermal conductivity (see claim 1 where the metal via is interpreted as the via hole; The examiner considers the thermal conductivity of metals as an intrinsic property whereby the thermal conductivity ranges from 8.4 to 400+ W/m*K as evidenced in Table 1.4 of pages 7-8 of Thermophysical Properties of Materials For Nuclear Engineering: A Tutorial and Collection of Data, IAEA-THPH, IAEA, Vienna, 2008) larger than a thermal conductivity of a glass material of the glass substrate (the thermal conductivity of various glasses range from 0.037 to 1.40 W/m*K in Table 1.4; all of the metals and metal alloys have a thermal conductivity that is larger than the thermal conductivity of glass materials, thus the examiner is interpreting a metal via as necessarily having a larger thermal conductivity than a glass substrate).
Accordingly, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have the selected the material of the via of Verdiell/Shen/Kohda as suggested by Shen for the purpose of a cheap and simple means of transferring heat thereby achieving an easily-manufactured, more desirable device, and since 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. In re Leshin, 125 USPQ 416. Additionally, the examiner notes that there are only three options to select from when choosing the thermal conductivities relative to each other: the material of the via hole has a larger thermal conductivity than the material of the glass substrate, the two materials are equal, or the material of the via hole has a smaller thermal conductivity than the material of the glass substrate. The person having ordinary skill in the art would have known how to test all three scenarios and would be capable of selecting the scenario best suited to the device. Additionally, the person having ordinary skill in the art would have recognized that a larger thermal conductivity of the via hole than of the glass substrate would have resulted in the heat moving through the via holes rather than through the glass allowing hot spots to be dissipated.
Verdiell/Shen do not teach that the housing is made of glass.
Kohda suggests using a housing made of glass in a similar device (see Para. 46).
Accordingly, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have the housing material made of glass as taught by Kohda in the device of Verdiell/Shen for the purpose of providing a transparent material thereby achieving a device that can be checked for unwanted condensation, and since 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. In re Leshin, 125 USPQ 416.
Regarding claim 2, Verdiell/Shen/Kohda but fails to teach that the first housing is transparent at a wavelength of the optical signal input or output from the optical element.
However, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have the first housing be transparent at a wavelength of the optical signal input or output from the optical element in the device of Verdiell/Shen/Kohda for the purpose of allowing the light signal to leave or enter the device thereby achieving a device capable of functioning as a receiver and/or transmitter.
Regarding claims 3 and 6, Verdiell/Shen/Kohda discloses the optical module according to claim 1 as discussed above, wherein the first surface of the glass substrate (the surface of 240 facing 255) has an electrical terminal (electric components 220 are interpreted as an electric terminal) configured to be connected to an external circuit board for surface mounting of the optical module (Verdiell, see Col. 5 lines 39-45, note also Col. 4 lines 2-22 whose use can also be applied to the embodiment of Fig. 2 such that Verdiell is capable of being connected to any external connection, such as an external circuit board for surface mounting of the optical module; also note previously cited Bockstaele which discloses a more extensively described external connection wherein wire bond 40 is interpreted as the electrical terminal and electronic interface 4 is interpreted as the external circuit board; the examiner considers 4 to be external to PCB 2).
Regarding claims 4 and 7-8, Verdiell/Shen/Kohda discloses the optical module according to claims 1-3, respectively, as discussed above, further comprising:
a second housing (the combination of 210, 212, and 214 as seen in Fig. 2 is interpreted as the second housing) attached to the second surface of the glass substrate (the upper enclosure is attached to mid-piece 240 facing 225; see Fig. 2; note that hermeticity would necessarily rely upon the housing walls being attached to mid-piece 240) and configured to hermetically seal the temperature control element (see Col. 5 lines 65-68; note that the first housing/”upper enclosure” surrounds Peltier cooler 225),
wherein the second housing includes a heat radiation member (“heat sink” is interpreted as a heat radiation member) thermally coupled to the temperature control element for heat radiation to an outside (see Col. 2 lines 48-53; see Col. 5 lines 60-62).
Regarding claims 12-14, Verdiell/Shen/Kohda discloses the optical module according to claim 1 as discussed above, but fail to explicitly teach or suggest specific glass substrates:
wherein the glass substrate is made of at least one of soda lime glass, borosilicate glass, crystallized glass, or quartz glass (claim 12);
wherein the glass substrate includes silicon dioxide (SiO2) as a main component of the glass (claim 13); and
wherein the glass substrate has a composition containing at least one of sodium (Na) or calcium (Ca) (claim 14).
However, a person having ordinary skill in the art before the effective filing date of the claimed invention would understand that "glass" is a broad term that encompasses many different variations of glass materials, and an ordinarily skilled artisan would not need to see every variation of glass materials to understand that different varieties of glass exist. It would require only routine skill in the art to choose the optimal material depending on the desired outcome. Furthermore, the Applicant’s specification discloses these materials, but has not identified any special benefit or properties. Without such identification, the Applicant has not indicated that they believe the materials are special either. Accordingly, it would have been obvious to one having ordinary skill in the art at the effective filing date of the invention to select a glass substrate made of at least one of soda lime glass, borosilicate glass, crystallized glass, or quartz glass, or includes silicon dioxide (SiO2) as a main component of the glass, or has a composition containing at least one of sodium (Na) or calcium (Ca) for the device of Verdiell/Shen, and since 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. In re Leshin, 125 USPQ 416.
Claim(s) 5 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Verdiell in US Patent 6,252,726 (hereinafter "Verdiell") in view of Shen et al. in US 20230268249 A1 (hereinafter "Shen"), which claims foreign priority to EP 4235244 B1 filed on February 24, 2022 in English and appears substantially similar to Shen, and in further view of Kohda et al. in US 20060029114 A1 (hereinafter "Kohda") and in still further view of Lin et al. in US 20200251879 A1 (hereinafter "Lin").
Regarding claims 5 and 16, Verdiell/Shen/Kohda discloses the optical module according to claims 4 and 1, respectively, as discussed above, but fails to explicitly disclose that:
the first housing (the combination of 230, 242, 270, and 275) has an inner volume smaller than an inner volume of the second housing (the combination of 210, 212, and 214) (claim 5); or
the glass substrate has a cavity recessed from the first surface, the optical element being mounted in the cavity (claim 16).
Lin teaches that hermetically sealed packages can include specifically designed cavities to house components in ways that optimize space constraints and promote thermal communication (see Para. 15).
Since Verdiell also suggests that the height of the enclosure containing the optical components can be reduced (see Col. 6 lines 20-31), then it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have the inner volume of the first housing be smaller than the inner volume of the second housing in the optical module of Verdiell/Shen for the purpose of reducing the profile, optimizing space, and promoting thermal communication thereby achieving a more desirable optical module.
Additionally, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have mounted the optical element in a cavity of the glass substrate as suggested by Lin in the optical module of Verdiell/Shen/Kohda for the purpose of reducing the overall profile and/or shortening the thermal path thereby achieving a slimmer device and/or improving thermal management, and 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), 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)), and since such a modification would have involved a mere change in the size of a component and it has been held that a change in size is generally recognized in as being within the level of ordinary skill in the art (In re Rose, 105 USPQ 237 (CCPA 1955)) and that, 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 (In re 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)).
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Verdiell in US Patent 6,252,726 (hereinafter "Verdiell") in view of Shen et al. in US 20230268249 A1 (hereinafter "Shen"), which claims foreign priority to EP 4235244 B1 filed on February 24, 2022 in English and appears substantially similar to Shen, and in further view of Kohda et al. in US 20060029114 A1 (hereinafter "Kohda") and in still further view of Laakso et al., Through-Glass Vias for Glass Interposers and MEMS Packaging Applications Fabricated Using Magnetic Assembly of Microscale Metal Wires, IEEE Access, 2018, pp. 1-11 (hereinafter "Laakso").
Regarding claim 15, Verdiell/Shen/Kohda discloses the optical module according to claim 1 as discussed above, but fails to explicitly teach that the glass substrate has a linear expansion coefficient less than 10 [ppm/K].
Laakso teaches a variety of material options for a glass substrate with through-glass-vias with coefficients of thermal expansion less than 10 [ppm/K] (see the dashed lines and the description of Fig. 9).
Accordingly, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have the linear expansion coefficient of the glass substrate less than 10 [ppm/K] in the device of Verdiell/Shen for the purpose of reducing thermal expansion mismatch in TGVs thereby achieving improved device lifespan.
Claim(s) 17-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Verdiell in US Patent 6,252,726 (hereinafter "Verdiell") in view of Shen et al. in US 20230268249 A1 (hereinafter "Shen") which claims foreign priority to EP 4235244 B1 filed on February 24, 2022 in English and appears substantially similar to Shen and in further view of Kohda et al. in US 20060029114 A1 (hereinafter "Kohda") and in still further view of Ishigami in US 20080013959 A1 (hereinafter "Ishigami").
Regarding claims 17-18, Verdiell/Shen/Kohda discloses the optical module according to claim 1 as discussed above, but fails to teach that:
the first housing is bonded to the glass substrate with an adhesive made of gold tin (claim 17); or
the optical module includes an airtight space defined by the first housing and the glass substrate and the airtight space provides a leak amount less than 1.0 × 10-9 [Pa ∙ m3/s] in a fine leak test (claim 18).
Ishigami teaches that gold tin may be used as the solder for hermetically sealing a similar package such that the level of hermetically sealing is less than 1.0 × 10-9 [Pa ∙ m3/s] in a (fine) leak test (see Para. 78; “Au--Sn" represents a mix of gold and tin).
Accordingly, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have the gold tin solder of Ishigami in the optical module of Verdiell/Shen/Kohda for the purpose of providing a fine hermetic seal in the package thereby achieving acceptable levels of hermeticity.
Additionally, with regards to claim 18, even should a different solder be used, the device recited in the references is substantially identical to that of the claims, thus claimed properties and/or functions are presumed to be inherent. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP § 2112.01(I).
Claim(s) 19-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Verdiell in US Patent 6,252,726 (hereinafter "Verdiell") in view of Shen et al. in US 20230268249 A1 (hereinafter "Shen") which claims foreign priority to EP 4235244 B1 filed on February 24, 2022 in English and appears substantially similar to Shen and in further view of Kohda et al. in US 20060029114 A1 (hereinafter "Kohda") and in still further view of Albright in Albright, Hybrid Bonding Basics: What is Hybrid Bonding?, Semiconductor Engineering, pages 1-4, August 18th, 2022 (hereinafter "Albright").
Regarding claims 19 and 20, Verdiell/Shen/Kohda discloses the optical module according to claim 1 as discussed above, but fails to teach that:
the first housing has an oxide film on a top surface, the oxide film being directly bonded to the glass substrate (claim 19); or
the first housing has a first oxide film and a first metal film on a top surface and the glass substrate has a second oxide film and a second metal film on the first surface, the first oxide film being bonded to the second oxide film and the first metal film being bonded to the second metal film (claim 20).
The applicant defines this as “hybrid bonding” (see Para. 32 and 36 of the Applicant’s Specification).
Albright discusses the benefits and uses of this hybrid bonding, especially as it applies to semiconductor packages.
Accordingly, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have the hybrid bonding as suggested by Albright in the optical module of Verdiell/Shen/Kohda for the purpose of providing superior interconnect density thereby achieving enhanced device performance. (Other benefits include better bandwidth, better memory density, increased power, and improved speed efficiency.)
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DARBY M THOMASON whose telephone number is (703)756-5817. The examiner can normally be reached Mon.-Fri. 8am-5pm.
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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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/DARBY M. THOMASON/Examiner, Art Unit 2874
/UYEN CHAU N LE/Supervisory Patent Examiner, Art Unit 2874
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