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 .
Response to Arguments
Applicant's arguments filed January 2, 2026, have been fully considered but they are not persuasive. First, Examiner submits that paragraph [0067] of previously cited US 2007/0201784 (“KISSA”) teaches a variable optical attenuator (“VOA”) that comprises material in which an optical phase has changed, thus leading to an optical phase difference. Examiner maintains that such a material reasonably reads on Applicants phase change material (“PCM”).
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., specifics regarding Applicant’s PCM) are not recited in the rejected claims. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Specifically, while the PCM of previously cited US 2019/0250435 (“MAZED”) is not part of the VOA, this limitation has already been set forth as being taught by KISSA. MAZED is being supplied for its teaching and rationale for disposing a PCM on the optical waveguide, as previously set forth.
As such, Examiner maintains the validity of the outstanding claim rejections.
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.
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.
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 1-3, 6, 9-16, 18, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over KISSA in view of MAZED.
Regarding claim 1, KISSA teaches a VOA (30), comprising: an optical waveguide (32, 34); and electrodes (36, 38) configured to change a state of a PCM in order to change an attenuation of optical power in the optical waveguide (pars. [0024], [0067]). KISSA does not teach that the PCM is disposed on the optical waveguide.
MAZED teaches a PCM disposed on an optical waveguide (pars. [0278]-[0280]). It would have been obvious to one of ordinary skill in the art at the effective filing date to modify the VOA of KISSA such that the PCM is disposed on the optical waveguide, as taught by MAZED. The motivation would have been to directly induce a phase change on the light propagated by the waveguide (pars. [0278]-[0280]).
Regarding claim 14, KISSA teaches a method, comprising: receiving a desired attenuation for a VOA (30) comprising changing an attenuation of optical power in an optical waveguide (32, 34) depending on a state of a PCM (pars. [0024], [0067]); changing the state of the PCM based on the desired attenuation; and transmitting an optical signal through the optical waveguide to achieve the desired attenuation (pars. [0024], [0067]). KISSA does not explicitly teach a PCM that changes the attenuation of optical power in the optical waveguide.
MAZED teaches PCM disposed on an optical waveguide that changes the attenuation of optical power in the optical waveguide (pars. [0278]-[02880]). It would have been obvious to one of ordinary skill in the art at the effective filing date to modify the method of KISSA such that the PCM changes the attenuation of optical power in the optical waveguide, as taught by MAZED. The motivation would have been to directly induce a phase change on the light propagated by the waveguide (pars. [0278]-[0280]).
Regarding claims 12 and 13, KISSA teaches a VOA (30), comprising: an optical waveguide (32, 34); wherein the VOA does not consume power in order to maintain the material in the attenuation state or the transmission state (par. [0024]). KISSA does not teach a plurality of segments comprising a PCM that is configured to switch between an attenuation state and a transmission state to change an attenuation of optical power in the optical waveguide.
MAZED teaches a plurality of segments comprising a PCM that is configured to switch between an attenuation state and a transmission state to change an attenuation of optical power in an optical waveguide (pars. [0257], [0283]). It would have been obvious to one of ordinary skill in the art at the effective filing date to modify the VOA of KISSA with the plurality of segments comprising PCM, as taught by MAZED. The motivation would have been to allow for separate electrical biasing of each individual segment (par. [0283]).
Regarding claims 2 and 15, MAZED further teaches that the optical waveguide comprises: a first segment comprising a first portion of the PCM, wherein the first segment provides a first attenuation of an optical signal depending on a state of the first portion of the PCM; and a second segment comprising a second portion of the PCM, wherein the second segment provides a second attenuation of the optical signal depending on a state of the second portion of the PCM (pars. [0257], [0283]).
Regarding claims 3 and 16, KISSA further teaches a first pair of electrodes (36A, 38A) to control the state of the first portion of the PCM; and a second pair of electrodes (36B, 38B) to control the state of the second portion of the PCM.
Regarding claims 6 and 18, KISSA further teaches that the electrodes and the VOA consume power only when changing the state of the PCM (par. [0024]).
Regarding claims 9 and 20, MAZED further teaches that the optical waveguide comprises a plurality of segments each comprising a portion of the PCM, wherein the plurality of segments provide a different amount of binary optical attenuation (pars. [0257], [0283]).
Regarding claim 10, KISSA in view of MOZED renders obvious the limitations of the base claim 9. The additional limitation appears to involve mere changes in dimensions.
It has been held that where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device, and where a device having the claimed relative dimensions would not perform differently than that of the prior art device, the claimed device is not patentably distinct from the prior art device. In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
Regarding claim 11, KISSA in view of MOZED renders obvious the limitations of the base claim 9. The additional limitation appears to involve mere duplication of parts.
It has been held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced. In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over KISSA in view of MAZED as applied to claim 3 above, and further in view of US 2014/0193938 (“FIFE”).
KISSA in view of MAZED renders obvious the limitations of the base claim 3. KISSA does not teach that the first pair of electrodes are doped with opposite type dopants, and the second pair of electrodes are doped with opposite type dopants.
FIFE teaches pairs of electrodes doped with opposite type electrodes (pars. [0020]-[0026]). It would have been obvious to one of ordinary skill in the art at the effective filing date to modify the pairs of electrodes of KISSA in view of MAZED so as to be doped with opposite type dopants, as taught by FIFE. The motivation would have been to allow for regulation of electrical current.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over KISSA in view of MAZED as applied to claim 1 above, and further in view of US 2023/0104033 (“PLEROS”).
KISSA in view of MAZED renders obvious the limitations of the base claim 1. KISSA does not teach that the PCM comprises at least one of: germanium- antimony-tellurium or Germanium-antimony-selenium-tellurium.
PLEROS teaches a PCM comprising at least one of: germanium- antimony-tellurium or Germanium-antimony-selenium-tellurium (par. [0072]). It would have been obvious to one of ordinary skill in the art at the effective filing date to modify the PCM of KISSA in view of MAZED so as to comprise at least one of: germanium- antimony-tellurium or Germanium-antimony-selenium-tellurium, as taught by PLEROS. The motivation would have been to allow for gradual phase change (par. [0072]).
Allowable Subject Matter
Claims 5, 7, 17, and 19 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claims 5 and 17, the prior art of record, whether taken individually or in combination, when considered in light of the claimed subject matter as a whole as interpreted in light of the present Specification, fails to disclose or render obvious that a voltage between the first pair of electrodes is controlled by a first bit in a digital control signal and a voltage between the second pair of electrodes is controlled by a second bit in the digital control signal.
Regarding claims 7 and 19, the prior art of record, whether taken individually or in combination, when considered in light of the claimed subject matter as a whole as interpreted in light of the present Specification, fails to disclose or render obvious that the VOA does not require calibration.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JERRY M BLEVINS whose telephone number is (571)272-8581. The examiner can normally be reached 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, Thomas Hollweg can be reached at 571-270-1739. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JERRY M BLEVINS/Primary Examiner, Art Unit 2874
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