DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The Applicant's amendment filed on June 22, 2026 was received. Claims 1, 14 and 22 were amended. Claims 3, 7, 11 and 23 were canceled. Claim 24 was added.
The text of those sections of Title 35. U.S.C. code not included in this action can be found in the prior Office Action Issued March 24, 2026.
Claim Rejections - 35 USC § 112
The claim rejection under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, on claim 22 was withdrawn, because the claim has been amended.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-2, 4-6, 8-10, 12-22 and 24 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 1, the limitations “to fill at least one trench defined between adjacent features of the plurality of features and to create a uniform surface along a horizontal plane” renders the claim indefinite as it is unclear it doesn’t specify what is filling the trench (it can be the first layer, the second layer, or something else). The claim also doesn’t specify what is the uniform surface being created on (it can be the first layer, second layer or something else) or what is the horizontal plane being associated with. For purpose of examination, the claim is interpreted as filing at least one trench with the first layer to create a uniform surface of the first layer along a horizontal plane of the component or ridge. However, Applicant should clarify what is intended, without adding new matter.
Claims 14 and 24 recite limitation “the uniform surface of the first layer”. There is insufficient antecedent basis for this limitation in the claim. However, it would be self-corrected if claim 1 clarify “a uniform surface” is directed to the first layer (see rejection of claim 1 above).
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, 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.
Claims 1-2, 5-6, 8-10. 12-22 and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Tsai (US20230417993) in view of O (KR20090105655A) and Fields (US-20230002887).
Regarding claim 1, Tsai teaches a method of making an electronic package including both optical (photonic) dies and electronic dies (paragraph 0002). Tsai teaches to provide a grating coupler 107 (structure array) formed by patterning openings with photoresist on layer 102A and etching (paragraph 0013, 0016. See figures 1 and 2), thus, Tsai teaches the structure array has a plurality of features. Tsai teaches each of the plurality of features 107 defining a ridge (see figures 2-3). Tsai figures 2-3 shows the height of 107 is bigger than any of distance between the lines in 107 (see figures 2-3), which indicates the features have a height to width aspect ratio of at least 1:1. In addition, changes in size/proportion have no patentable significance unless a new and unexpected result is provided (MPEP 2144.04 VI). Thus, it would be obvious to one of ordinary skill in the art to change the height to width the aspect ratio of the features to at least 1:1 in light of the teaching of Tsai. Tsai teaches to form a dielectric layer 108 (first layer) on the structure array (paragraph 0017, figure 3), wherein the first layer has a first thickness defined perpendicularly from the ridge of at least one of the features (see figure 3). Tsai teaches the first layer is applied by atomic layer deposition (ALD) (paragraphs 0017, 0031 and 0042). Tsai the dielectric layer 108 may be formed having a thickness over the oxide layer 102B between about 50 nm and about 500 nm, or may be formed having a thickness over the waveguides 104 between about 10 nm and about 200 nm (first thickness) in some embodiments (paragraph 0017), since the height of the feature is the thickness over the oxide layer 102B minus the thickness over the waveguides 104 (see figure 4), Tsai teaches the height of the feature is around 40 to 300nm, the Tsai teaches the ratio (0.25:1 to 0.666:1) between the first thickness and the height of the features overlaps with the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exist. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler,116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP 2144.05. Tsai teaches a second layer of dielectric 117 is formed on the first layer (paragraph 0022, figure 5), wherein the second thickness is greater than the first thickness (paragraphs 0022 and 0017). Tsai teaches to form the second layer by evaporation deposition process, PVD or CVD (paragraphs 0017 and 0022). Tsai teaches the thickness of the redistribution structure 120 which includes the dielectric layers 117 (second layer, 120 has the same thickness as 117, see figure 5 and paragraph 0022) is between about 4 and 8 µm in some embodiments, other thickness are possible (paragraph 0022). Since Tsai teaches the redistribution structure is an interconnect structure that intended for providing interconnections and electrical routing (paragraph 0022) therefore, it would have been within the skill of the ordinary artisan to adjust and optimize the thickness of the redistributing structure/second layer in the process to yield the desired functional interconnect structure. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F. 2d 272, 205 USPQ215. In addition, it is well settled that where the only difference between the prior art and the claims was 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 was not patentably distinct from the prior art device (see MPEP 2144.04 IV. A.). Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date, to change the thickness of the second dielectric layer to the claimed thickness, especially Tsai teaches other thickness is possible paragraph 0022) and applicant has not established criticality of the claimed range.
Regarding the limitation of the ratio between the first thickness and the distance between the plurality of features, Tsai further teaches to first thickness governs the efficiency of optical coupling between the grating coupler and the vertically mounted photonic component or optical coupling between the waveguides and overlaying waveguides (paragraph 0017). But Tsai does not explicitly teach the ratio between the first thickness and the distance between the features. However, O teaches a method of forming optical waveguide grating coupler (abstract). O teaches the distance between the features on the grating coupler governs the optical signal diffracted angle (paragraphs 6-13, figure 1). Therefore, it would have been within the skill of the ordinary artisan to adjust and optimize the first thickness and the distance of the features (which also affect the ratio of the first thickness and distance between the features) in the process to yield the desired efficiency of optical coupling between the grating coupler and the vertically mounted photonic component or optical coupling between the waveguides and overlaying waveguides, while providing the desired optical signal diffracted angle. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F. 2d 272, 205 USPQ215.
Tsia in view of O does not explicitly teach the first layer is conformal deposited (by ALD), and the first layer is deposited to fill at least one trench defined between adjacent features of the plurality of the features and to create a uniform surface along a horizontal plane. However, Fields teaches a method of filling gaps with dielectric material (abstract). Fields teaches to first fill the gap with the first layer of dielectric material by depositing conformally by ALD so that the gouge vortex (top surface of the first layer) is above the top surface (ridge), wherein a first thickness is defined on the top surface (abstract, paragraphs 0022-0023, figure 2), and a uniform surface of the first layer is created along the ridge (see figure 2). Fields teaches to then form a cap layer (second layer) of dielectric material on the first layer by CVD (paragraph 0024, figure 3).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to form the first layer conformally by ALD to completely fill the trench above the ridge to create a uniform surface along a horizontal plane of the ridge as suggested by Fields in method of Tsia in view of O because such first layer with the thickness ensure that during the subsequent planarization (second layer), the gap remains filled and the cap layer (second layer) can be produced by the high throughput process (CVD) with high uniformity (paragraphs 0021 and 0023).
Regarding claim 2, O teaches the distance (width) of the features on the grating coupler governs the optical singal diffracted angle (paragraphs 6-13, figure 1). Therefore, it would have been within the skill of the ordinary artisan to adjust and optimize the distance of the features (which governs the aspect ratio with a given height) in the process to yield the desired optical signal diffracted angle. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F. 2d 272, 205 USPQ215.
Regarding claim 5, Tsai teaches the structure array is silicon (paragraph 0013).
Regarding claim 6, Tsai teaches the first thickness is 50 to 500 nm (paragraphs 0017 and 0022), which overlaps the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exist. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler,116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP 2144.05.
Regarding claim 8, Tsai teaches the first layer is formed by the same material throughout the first layer, and has a refractive index (pargraph 0018). Thus, it is reasonably expected that the refractive index is uniform with no difference throughout the layer.
Regarding claim 9, Tsai teaches a second layer of dielectric 117 is formed on the first layer (paragraph 0022, figure 5), wherein the second thickness is greater than the first thickness (paragraphs 0022 and 0017). Tsai teaches to form the second layer by evaporation deposition process, PVD or CVD (paragraphs 0017 and 0022). Tsai teaches the first and second dielectric material can be different materials from each other, and comprises silicon oxide or silicon nitride (paragraphs 0022 and 0017). Since different materials would result in different refractive index (one greater than the other), for example, silicon nitride has higher refractive index than silicon oxide, Tsai teaches the claimed limitations.
Regarding claim 10, Tsai teaches at least one of the first dielectric material or the second dielectric materials comprises silicon dioxide (paragraphs 0017 and 0022).
Regarding claim 12, Tsai teaches the first and second dielectric material are the same (paragraph 0022).
Regarding claim 13, Tsai teaches the first and second dielectric material can be different materials from each other (paragraphs 0022 and 0017).
Regarding claim 14, Tsai teaches to perform chemical mechanical planarization on the first layer prior to applying the second layer of the second dielectric material on the first layer (paragraph 0017), wherein Fields teaches the first layer has a uniform surface along the ridge (see figure 2).
Regarding claim 15, Tsai teaches the second thickness is 4 to 8 µm and the first thickness is 50 to 500 nm (paragraphs 0017 and 0022), thus, both thickness ranges overlap the claimed ranges. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exist. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler,116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP 2144.05.
Regarding claim 16, Tsai teaches the second thickness is 4 to 8 µm and the first thickness is 50 to 500 nm (paragraphs 0017 and 0022), thus, the ratio overlaps with claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exist. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler,116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP 2144.05.
Regarding claim 17, Tsai teaches to form conductive features 114 (first electrode) formed the first layer (paragraph 0022, see figure 5), and additional conductive features 114 (second electrode) on the second layer (paragraph 0022, see figures 5-6).
Regarding claim 18, Tsai teaches the dielectric layer 117 comprises multiple layers (paragraph 0022 and figure 5), wherein the bottom layer closest to the dielectric layer 108 reads on the limitation of the second layer with conductive features 114 (first electrode) formed on it (paragraph 0022, see figure 5), the middle layer in 117 reads on the third layer of a third dielectric material formed on the second layer, and the conductive features 114 formed on such middle layer reads on the second electrode (paragraph 0022, see figure 5). Tsai teaches all layers on dielectric layer 117 are applied by PVD process or CVD (paragraphs 0017 and 0022).
Regarding claim 19, Tsai teaches the second layer is applied on the first layer with PECVD process (paragraphs 0017 and 0022).
Regarding claim 20, Tsai teaches the first and second dielectric materials are the same (paragraph 0022), thus, the refractive indexes of the two materials would be the same (0 percent difference), which is inside the claimed range of less than 0.5 percent difference.
Regarding claim 21, Tsai teaches the first thickness is about 10 to about 200nm, in some embodiments (paragraph 0017). And the thickness governs the optical coupling between the grating coupler and a vertically mounted photonic component, or between the waveguides and overly waveguides (paragraph 0013). Therefore, it would have been within the skill of the ordinary artisan to adjust and optimize the thickness of the first layer in the process to yield the desired optical coupling between the grating coupler and a vertically mounted photonic component, or between the waveguides and overly waveguides. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F. 2d 272, 205 USPQ215. In addition, it is well settled that where the only difference between the prior art and the claims was 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 was not patentably distinct from the prior art device (see MPEP 2144.04 IV. A.). Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date, to change the thickness of the first dielectric layer to the claimed thickness, especially applicant has not established criticality of the claimed range.
Regarding claim 22, Tsai teaches the dielectric layer 108 may be formed having a thickness over the oxide layer 102B between about 50 nm and about 500 nm, or may be formed having a thickness over the waveguides 104 between about 10 nm and about 200 nm, in some embodiments (paragraph 0017), since the height of the feature is the thickness over the oxide layer 102B minus the thickness over the waveguides 104 (see figure 4), Tsai teaches the height of the feature is around 40 to 300nm, which overlaps with the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exist. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler,116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP 2144.05.
Regarding claim 24, Fields teaches the second layer of the second dielectric material is applied on the uniform surface of the first layer along the ridge (paragraph 0024, figure 3).
Claims 4 is rejected under 35 U.S.C. 103 as being unpatentable over Tsai (US20230417993) and O (KR20090105655A) and Fields (US-20230002887) as applied to claims 1-2, 5-6, 8-10. 12-22 and 24 above, and further in view of Lim (WO2021006811A1).
Regarding claim 4, Tsai in view of O and Fields teaches all limitations of this claim, except the electrical device is an ion trap. However, Lim teaches a method of making a device for trapping an ion (ion trap) (abstract, paragraph 0004) and discloses to realize fabrication of quantum computing devices using CMOS-compatible techniques, integration of photonics structures (e.g., grating couplers and waveguide) into the ion trap is needed. Since Tsai teaches to make a photonic component (paragraphs 0002, 0011 and 0013-0014), it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to form make an ion trap with a photonic structure as suggested by Lim in the method of Tsai in view of O and Fields because Lim teaches the photonic structures (e.g. grating couplers and waveguide) is needed to be integrated into the ion trap for fabrication of quantum computing devices using CMOS-compatible techniques (paragraph 0004).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-2, 4-6, 8-10,12-22 and 24 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 5-15 and 17-21 of copending Application No. 18/498493 in view of Tsai (US20230417993), O (KR20090105655A) and Fields (US20230002887). Claim 1 of the instant application completely over overlaps with claims 1 and 5 of 18/498493, expect the first dielectric material is formed by ALD conformally, the ratio between the first and height of the features, the second thickness and filling of the trench to form a uniform surface, such features are disclosed by Tsai, which discloses spin-on cladding and ALD are functionally equivalent method to form dielectric layer (paragraphs 0017, 0031 and 0042), the ratio between the first and height of the features and the second thickness (see rejection above); and Fields, which discloses the first film is formed conformally and filling of the trench by the first film to form a uniform surface (see rejections above).
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant's arguments filed on June 22, 2026 have been fully considered but they are not persuasive.
Applicant’s principal arguments are:
The first thickness to height of the feature ratio disclosed by Tsai is too big, thus, Tsai does not teach the claimed ratio (claim 1)
Tsai does not teach conformal deposition of the first layer (claim 1)
Tsai teaches the thickness of the waveguide is 0.1 μm and about 1.5 μm (10 to 150nm (paragraph 0012), which is different from 40-300nm calculated by the examiner (claim 22)
The present claim requires the ration to be less than 1:1 wherein ‘493 requires the ratio to be at least 1:1 as discloses in the specification, thus present claims are directed to fundamentally different structure and operation approach than the allowed claims of the ‘493 application (double patenting).
In response to Applicant’s arguments, please consider the following comments:
As discussed above, Tsai teaches the dielectric layer 108 may be formed having a thickness over the oxide layer 102B between about 50 nm and about 500 nm, or may be formed having a thickness over the waveguides 104 between about 10 nm and about 200 nm (first thickness) in some embodiments (paragraph 0017), since the height of the feature is the thickness over the oxide layer 102B minus the thickness over the waveguides 104 (see figure 4), Tsai teaches the height of the feature is around 40 to 300nm, thus Tsai teaches the ratio is 10:40 to 200:300 (which is 0.25:1 to 0.666:1) between the first thickness and the height of the features overlaps with the claimed range. The ratio of 0.25:1 to 0.666:1 overlaps with the claimed range and does not appear encompasses a large number of possible values.
Such new limitation is addressed by new reference Fields.
While Tsai teaches the feature (associated with the thickness of silicon layer 102A) might have a height of 0.1 μm and about 1.5 μm (see paragraph 0012), Tsai explicitly teaches other thickness are possible (paragraph 0012). Thus, the calculated height 40-300nm based on dielectric layer 108 having a thickness over the oxide layer 102B between about 50 nm and about 500 nm, or may be formed having a thickness over the waveguides 104 between about 10 nm and about 200 nm (first thickness) in some embodiments (paragraph 0017), with the height of the feature is the thickness over the oxide layer 102B minus the thickness over the waveguides 104 (see figure 4) does not teach contract with the paragraph 0012 teaching when Tsai explicitly teaches other thickness is possible. The claim 1 (previous claim 23) rejections over the ratio is updated to make consistency with claim 22 since claim 22 is now newly depending on such claim 1 feature.
Double patenting rejection focuses on the claims being overlapping in scope, thus, ‘493 specification teaching of the different ratio of the T1:H does not render the rejections invalid. As discussed above in the rejection, Claim 1 of the instant application completely over overlaps with claims 1 and 5 of 18/498493, expect the first dielectric material is formed by ALD conformally, the ratio between the first and height of the features, the second thickness and filling of the trench to form a uniform surface, such features are disclosed by Tsai, which discloses spin-on cladding and ALD are functionally equivalent method to form dielectric layer (paragraphs 0017, 0031 and 0042), the ratio between the first and height of the features and the second thickness (see rejection above); and Fields, which discloses the first film is formed conformally and filling of the trench by the first film to form a uniform surface (see rejections above).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Yu (US20190162901A1).
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 nonprovisional extension fee (37 CFR 1.17(a)) 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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/NGA LEUNG V LAW/Examiner, Art Unit 1717
