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 February 24, 2026 was received. Claims 1, 9 and 21 were amended. Claims 3 and 11 were canceled. Claims 22-23 were 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 December 16, 2025.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 February 24, 2026 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 22 was rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 22, while the specification teaches the he height H of each of the plurality of features 220 is at least 100 nanometers (nm) and up to 500 nm, such as at least 150 nm and up to 300 nm, such as at least 200 nm and up to 250 nm; the specification does not provide support the height is at least 200nanometers (open ended).
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, 5-10 and 12-23 are rejected under 35 U.S.C. 103 as being unpatentable over Tsai (US20230417993) in view of O (KR20090105655A).
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 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.
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 7, Tsai teaches to form conductive features 114 (first electrode) formed the first layer (paragraph 0022, see figure 5).
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).
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 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, 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 23, Tsai teaches the first thickness as 10-200nm (paragraph 0017) and the height as 100-150nm(paragraph 0012), thus Tsai teaches the ratio 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.
Claims 4 is rejected under 35 U.S.C. 103 as being unpatentable over Tsai (US20230417993) and O (KR20090105655A) as applied to claims 1-2, 5-10 and 12-23 above, and further in view of Lim (WO2021006811A1).
Regarding claim 4, Tsai in view of O 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 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, 4-10 and 12-23 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) and O (KR20090105655A). 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 and the second thickness, 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) and the second thickness (see rejection above).
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant's arguments filed on February 24, 2026 have been fully considered but they are not persuasive.
Applicant’s principal arguments are:
Tsai does not teach the second thickness as claimed (claim 1).
Tsai’s first thickness is outside of the claimed range (claim 21).
Tsai does not teach the claimed height (claim 22).
In response to Applicant’s arguments, please consider the following comments:
While 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, Tsai also teaches 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.
While Tsai teaches the first thickness is about 10 to about 200nm, in some embodiments (paragraph 0017), Tsai also teaches 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.
Tsai teaches the claim height (see rejections above).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Yu (US20190162901A1).
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