DETAILED ACTION
This office action is in response to the application and claims filed on November 7, 2023. Claims 1-15 are pending, with claims 1 and 9 in independent claim form.
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 .
Information Disclosure Statement
The prior art documents submitted by Applicant in the Information Disclosure Statements filed on November 8, 2023, have NOT been considered and/or made of record (note attached copy of forms PTO-1449). See the attached lined-through version of the PTO-1449. First, the Examiner respectfully notes that copies of such NPL documents (#1 - #3; pg. 2) were either not filed, or have not been received into the current record. Also, it is respectfully noted that the date (at least a Year; but preferably Month/Year) should be listed on all NPL documents. The only NPL document with a Year – Date is #3 to Leiran Wang. Correction is required.
Drawings
The original drawings (six (6) pages) were received on November 7, 2023. These drawings are acknowledged.
Claim Objections
Claims 7, 8, 14, and 15 are objected to because of the following informalities: regarding claims 7, 8, and 15, the identifier before “the core” (claims 7 and 15), “the cladding” (claims 8 and 15), and “the waveguide” (claim 15) should be listed as “a core”, “a cladding”, and “a waveguide” because this is the 1st instance of such term(s). The independent claim 1 / 9 does not include such terminology and should not be referred to with a “the” identifier. Note also the 35 U.S.C. 112(b) rejections below for lack of proper antecedent basis of term(s). Regarding claim 14, the term “the couplers” is not found in claim 9; instead the term is “first, second and third coupler structures”, and must be corrected. Appropriate correction is required.
Claim Rejections - 35 USC § 112
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 7, 8, and 15 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.
Claims 7, 8, 14, and 15 recite the limitations “the core” (claims 7 and 15), “the cladding” (claims 8 and 15), “the couplers” (claim 14), and “the waveguide” (claim 15) in the claim body of those claim(s). There is insufficient antecedent basis for these limitations in the claims. Such terms should be listed with an “a” identifier because those instances are the first time in which these claimed structural features are recited in any claim. Note claim 14 is not the proper term from claim 9. Correction is required.
Claims 2-5 and 10-13 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. Claims 1 and 9 are system / device / apparatus claims, but added dependent claims 2-5 and 10-13 are attempting to add method steps (for “operating” or “manufacturing” or “assembling” or “using”) into the independent system claim. Accordingly, claim features from two statutory classes are included in one claim (also note how dependent claims 3-5 and 11-13 are now using the preamble “The method of claim…”). A single claim that includes both an apparatus and a method of manufacturing / assembling / using the apparatus is indefinite (see MPEP 2173.05(p)(II)). It may be unclear if infringement occurs when the method is performed, or if just having the structure of the device / apparatus is enough for infringement. For these reasons, claims 2-5 and 10-13 are rejected under 35 U.S.C. 112(b) as being vague / indefinite in terms of scope (metes-and-bounds of the actual claim(s)). The rejection may be overcome by deleting the method step(s) for performing. For examination purposes, the step limitation will be treated as an intended result limitation and rejected if the structure of the prior art device is capable of such intention.
Allowable Subject Matter
Claims 1 and 9 are allowed. Claims 1 and 9 are in independent claim form and have been presented in condition for allowance in the originally filed claim set on November 7, 2023.
The following is an examiner’s statement of reasons for allowance: the closest prior art of record (see attached PTO-892 form references A-E) does not expressly teach or reasonably suggest, in combination, such claimed particulars as a whole for either independent claim. In particular, the Examiner must consider the context of such claims in view of the original specification and drawings (most notably Figs. 2 and 4). For these reasons, and based on a careful review of the closest “Prior Art”, the Examiner is unable to present either an anticipation rejection (under 35 U.S.C. 102) or a prima facie case of obviousness (under 35 U.S.C. 103). Claims 6-8, 14, and 15 would be allowable as dependent claim, but noting that claims 7, 8, and 15 include “Claim Objections” and “Claim Rejections – 35 U.S.C. 112(b)”.
Key features of independent claim 1 include (note that independent claim 9 includes substantially similar features to claim 1, with more limitations):
-A device (see Figs. 2 and 4) comprising: an input port configured to receive as a device input a fundamental optical mode characterized by an input wavelength and a corresponding fundamental frequency; an output port configured to provide as a device output an Nth harmonic mode characterized by a Nth harmonic frequency relative to the fundamental frequency, where N > 1; and a resonator with first and second coupler structures and first and second tuner elements; wherein the first coupler structure is optimized for operation at the fundamental frequency, and the second coupler structure is optimized for operation at the Nth harmonic frequency; wherein the first tuner element can change a refractive index experienced by each of the fundamental and Nth harmonic optical modes; and wherein the second tuner element can change a refractive index experienced by the fundamental optical mode but cannot change a refractive index experienced by the Nth harmonic optical mode (see Fig. 2).
The Examiner also respectfully notes that featured terms such as “is optimized”, “cannot change”, “to maximize”, and “has no significant tuning effect” are known (in scope – metes and bounds) either by one having ordinary skill in the art at a time of the effective filing date, or are expressly defined by the specification (note para [0026]).
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Inventorship
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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: PTO-892 form references A-E, which pertain to the state of the art of nonlinear optical frequency / wavelength conversion, using resonators and distinct tuning elements for the change of refractive index of an optical medium.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Daniel Petkovsek whose telephone number is (571) 272-4174. The examiner can normally be reached M-F 7:30 - 6 PM.
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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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/DANIEL PETKOVSEK/Primary Examiner, Art Unit 2874 June 3, 2026
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