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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 7/24/26 has been entered.
Response to Arguments
Applicant’s arguments, see pages 6-11, filed 6/29/26, with respect to the rejection(s) of claim(s) 1-3, 6-9, and 11 under 35 U.S.C. 103 as being unpatentable over Tamanuki (US 2012/0148190 A1) and Stegmueller (US 5,195,150), the rejection(s) of claims 4, 5, and 12-14 under 35 U.S.C. 103 as unpatentable over Tamanuki and Stegmueller in further view of Matsuoka et al. (US 2011/0299808 A1), the rejection(s) of claims 10 under 35 U.S.C. 103 as unpatentable over Tamanuki and Stegmueller in further view of Kropp (US 2002/0071639 A1), rejection(s) of claims 15, 16, and 20 under 35 U.S.C. 103 as unpatentable over Tamanuki, the rejection(s) of claim 17 under 35 U.S.C. 103 as unpatentable over Tamanuki and Kropp, and the rejection(s) of claims 18 and 19 under 35 U.S.C. 103 as unpatentable over Tamanuki and Matsuoka, have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Palen et al. (US 2006/0239605 A1).
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 18-19 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.
Claim 18 recites the limitation “a third lens” in line 2. However, the parent claim (claim 15) also recites “a third lens” in line 7. It is unclear whether the third lens of claim 15 corresponds to the third lens of claim 18, or refers to a different lens within the system. Similarly, claim 19 recites “the third lens” in line 4, and it is unclear whether this refers to the third lens of claim 18, the third lens of claim 15, or both.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1, 3, and 6-10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Palen et al. (US 2006/0239605 A1).
Re. Claim 1, Palen et al. discloses an optical device comprising:
a first substrate 10 (Fig. 1; [0036]);
a first lens 20 on a first side of the first substrate, the first lens having a first radius of curvature (Fig. 1; [0036]);
a second lens 24 on the first side of the first substrate, the second lens having a second radius of curvature different from the first radius of curvature (Fig. 1; [0037] and [0083]); and
a first material (e.g. air) located on the first side of the first substrate and directly between and extending from the first lens to the second lens (e.g., within cavity 39; Fig. 1; [0039]).
Re. Claim 3, Palen et al. discloses a first die attached 70 to the first substrate; and a second die 70 attached to the first substrate (Figs. 1 and 12; [0092] and [0135]).
Re. Claim 6, Palen et al. discloses first optical components 38 adjacent to the first side of the first substrate (Fig. 1; [0037], [0089], and [0132]).
Re. Claim 7, Palen et al. discloses first optical components 16 adjacent to a second side of the first substrate opposite the first side of the first substrate (e.g., buried waveguides; [0089]).
Re. Claim 8, Palen et al. discloses an optical device comprising (Fig. 14):
a first substrate with an optical receiving region (e.g. right-side of Fig. 14) and an optical transmission region (e.g., left side of Fig. 14) on a first side of the first substrate (Figs. 1 and 14; [0149]-[0150]):
a first lens 724 within the optical receiving region (Figs. 1 and 14; [0150]);
a second lens 20 within the optical transmission region, the second lens having a different radius of curvature from the first lens (Figs. 1 and 14; [0037] and [0083]);
a first anti-reflective layer interfacing the first lens (Figs. 1 and 14; [0044], [0082], [0137]);
a second anti-reflective layer interfacing the second lens (Figs. 1 and 14; [0137]); and
a first material (e.g., air) on the first side and interfacing both the first anti-reflective layer and the second anti-reflective layer (Figs. 1 and 14; [0039] and [0150]).
Re. Claim 9, Palen et al. discloses a first active layer of first optical components adjacent to the first lens and the second lens (e.g., elements 716, 752, etc., Fig. 14; [0149]-[0150]).
Re. Claim 10, Palen et al. discloses a first active layer of first optical components on an opposite side of the first substrate from the first lens and the second lens (e.g., buried components; Fig. 14; [0088]-[0089]).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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.
Claim(s) 15-17 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Palen et al. (US 2006/0239605 A1).
Re. Claim 15-17, Palen et al. discloses the optical device as discussed above. Also, the same reasoning applied in the rejection of apparatus claim, mutatis mutandis, applies to the subject-matter of method claim 15, given the apparatus is considered inseparable from the method of (making/using) the apparatus. Palen et al. also discloses placing a fiber array unit over the first lens ([0132]), but fails to disclose the fiber array unit comprising a third lens different from the first lens and the second lens.
Inclusion of a lens at the end of an optical fiber in an optical connector is well known in the art, and one of ordinary skill would have found the claimed arrangement obvious before the effective filing date of the claimed invention for the purpose of reducing loss in the system. “A person of ordinary skill is also a person of ordinary creativity, not an automaton” – ‘[w]hen there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.” KSR International Co. v. Teleflex Inc., 550 USPQ2d 1385 (2007).
Re. Claim 20, Palen et al. renders obvious the method as discussed above, and further discloses forming the first lens and the forming the second lens are performed using a single patterning process ([0093]-[0094]).
Allowable Subject Matter
Claims 2, 4-5, and 11-14 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:
Re. Claim 2, the prior art does not disclose or reasonably suggest an optical device as required by the claim, and further comprising: a third lens on a second side of the first substrate, the third lens having a third radius of curvature; and a fourth lens on the second side of the first substrate, the fourth lens having a fourth radius of curvature different from the third radius of curvature.
Re. Claims 4-5, the prior art does not disclose or reasonably suggest an optical device as required by the claim, and further comprising: a third lens on the first die, the third lens having a third radius of curvature; and a fourth lens on the second die, the fourth lens having a fourth radius of curvature different from the third radius of curvature.
Re. Claims 11-14, the prior art does not disclose or reasonably suggest an optical device as required by the claim, and further comprising: a third lens within the optical receiving region on an opposite side of the first substrate than the first lens; and a fourth lens within the optical transmission region on the opposite side of the first substrate than the second lens, the fourth lens having a different radius of curvature from the third lens.
The most applicable prior art, Palen et al. (US 2006/0239605 A1), addressed above, fails to disclose or reasonably suggest the claimed invention, specifically those portions highlighted above in combination with the remaining limitations of the claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to R. PEACE whose telephone number is (571)272-8580. The examiner can normally be reached 9-5 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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/RHONDA S PEACE/Primary Examiner, Art Unit 2874 8/27/26
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