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 .
Information Disclosure Statement
The information disclosure statements received have been placed in the application file, and the information referred to therein has been considered as to the merits. See the attached forms PTO-1449.
The numerous references and materials listed on the submitted 49 sheets of the IDS's make it difficult to determine whether or not any of the references, or parts of the references, are material to applicants' claimed invention. It is noted that applicants, in their several IDS submissions, do not indicate any particular reference or parts of references which they deem "material" to the patentability of the pending claims under 37 CFR 1.56(b).
Applicants are reminded of the standard set forth in the leading inequitable conduct case of J.P. Stevens & Co. v. Lex Tex Ltd., 747 F.2d 1553, 223 USPQ 1089 (Nov. 9, 1984), cert. denied, 106 S.Ct. 73 (1985): Where none of the prior art cited during prosecution teaches a key element of the claim(s) and where a reference known to the applicants does, the applicants should know that reference is material. Thus, if applicants are aware of any cited reference from among the information disclosure(s) of the 49 pages of IDS that are "material," applicants should make that reference known to the examiner.
It is also noted that a "misrepresentation is material if it makes it impossible for the Patent Office fairly to assess [the patent] application against the prevailing statutory criteria." In re Multidistrict-Litig. Involving Forst Patent, 540 F.2d 601, 604, 191 USPQ 241, 243 (3d Cir. 1976); see also Monsanto Co. v. Rohm & Haas Co., 456 F.2d 592, 600, 172 USPQ 323, 329 (3d Cir.), ce.rt. denied, 40'7 U.S. 934, 174 USPQ 129 (1972). And, the submission of voluminous documents in the instant information disclosure statements (here, in excess of 100 documents) make it difficult, and likely impossible, for the Patent Office to fairly assess applicants' application against the prevailing statutory criteria.
Response to Arguments
Applicant’s arguments with respect to claim 1 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 1 – 9 and 11 – 18 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 1 recites “such that the actuator does not appreciably affect a waveguide loss or a resonator quality factor (Q)”. However it is unclear to the examiner the amount of loss or quality factor that that is affected as the term appreciably has no metes or bounds. For examining purposes examiner shall interpret any loss to be “not appreciably”.
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 4, 7 – 9, 11, 12, 14 – 16 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Kippenberg et al. (U.S. PG Pub. # 2024/0302682 A1).
In Re claims 1, 14 and 15, ‘682 teaches a high contrast optical filter comprising: a first ring resonator (FSR1) coupled with a first waveguide (210); and a second ring resonator (FSR2) coupled with a second waveguide (521), wherein the first waveguide directs a light in and the second waveguide directs the light out (fig. 13a); wherein each of the ring resonators is integrated with an actuator (251, 252), wherein the actuator has a circular shape (25 of figs. 1 and 2, 25b of fig. 4a, 25b or 25c of fig. 6a), wherein the actuator is laterally and vertically offset from a core of each of the ring resonators (as seen in abovementioned figures).
Furthermore, an apparatus claim must be structurally distinguishable from the prior art. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function (In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997); See MPEP 2114 [R-1]). A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus if the prior art apparatus teaches all of the structural limitations of the claim (Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987); See MPEP 2114 [R-1]).
In Re claim 4, ‘682 teaches a stress actuator as claimed (par. 0128).
In Re claim 7, the patentability of an apparatus depends only on the claimed structural limitations. ‘682 teaches a structure that is substantially identical to that of the claimed invention, therefore the claimed properties or functions are presumed to be inherent. The burden is on the applicant to show that the ‘682 device does not possess these functional characteristics. See MPEP 2112.01.
In Re claim 8, ‘682 teaches wherein the actuator is a ring actuator or a phase actuator (figs. 6a, 6b).
In claim 9, ‘682 teaches circular shaped resonators (fig. 13a).
In Re claim 11, ‘682 teaches wherein the core of each of the ring resonator comprises a material selected from the group consisting of: silicon nitride, tantalum pentoxide, alumina oxide, and aluminum nitride (par. 0128).
In Re claim 12, ‘682 teaches PZT and SiN as claimed (pars. 0081, 0128).
Furthermore, an apparatus claim must be structurally distinguishable from the prior art. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function (In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997); See MPEP 2114 [R-1]). A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus if the prior art apparatus teaches all of the structural limitations of the claim (Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987); See MPEP 2114 [R-1]).
In Re claim 16, The patentability of an apparatus depends only on the claimed structural limitations. ‘682 teaches a structure that is substantially identical to that of the claimed invention, therefore the claimed properties or functions are presumed to be inherent. The burden is on the applicant to show that the ‘682 device does not possess these functional characteristics. See MPEP 2112.01.
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.
Claims 1 – 5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Akiyama (U.S. PG Pub. # 2015/0261061).
In Re claims 1, 4 and 5, ‘061 teaches a high contrast optical filter comprising: a first ring resonator (42 of RD1) coupled with a first waveguide (41); and a second ring resonator (42 of RD2 or RDN) coupled with a second waveguide (44), wherein the first waveguide directs a light in and the second waveguide directs the light out (to 45 of RD2); wherein each of the ring resonators is integrated with an actuator (43, par. 0037, thermo-optic actuator), wherein the actuator has a circular shape (par. 0037), wherein the actuator is laterally and vertically offset (par. 0037) from a core of each of the ring resonators.
Furthermore, an apparatus claim must be structurally distinguishable from the prior art. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function (In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997); See MPEP 2114 [R-1]). A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus if the prior art apparatus teaches all of the structural limitations of the claim (Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987); See MPEP 2114 [R-1]).
In Re claims 2 and 3, ‘061 teaches the ring resonator and actuator in a pattern as claimed (42 of RD2 and its 43, fig. 1).
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.
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.
Claims 6, 17 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Akiyama (U.S. PG Pub. # 2015/0261061).
In Re claims 6, 17 and 18, ‘061 teaches the actuator and filter of claims 1 and 5, and three ring resonators and heaters (32 and 34 of RM1 - MRN) but is silent to wherein the heater comprises a thermally conductive metal.
However, it is well known in the art to use a thermally conductive metal as a heater as it allows for minimal voltage to generate adequate heat in the heater to adjust the temperature of the surrounding material and is a cost efficient way to do so.
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a thermally conductive metal as the heater since thermally conductive metal allows for minimal voltage to generate adequate heat in the heater to adjust the temperature of the surrounding material and is a cost efficient way to do so as a person with ordinary skill has good reason to pursue the known options within his or her technical grasp.
Furthermore, an apparatus claim must be structurally distinguishable from the prior art. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function (In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997); See MPEP 2114 [R-1]). A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus if the prior art apparatus teaches all of the structural limitations of the claim (Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987); See MPEP 2114 [R-1]).
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Kippenberg et al. (U.S. PG Pub. # 2024/0302682 A1).
‘682 teaches wherein the actuator comprises PZT (par. 0081), but is silent to the ring resonator comprising tantalum pentoxide, alumina oxide, or aluminum nitride.
However, it is well known in the art to use tantalum pentoxide, alumina oxide, or aluminum nitride as a material of ring resonators so as to allow for desired wavelengths to be tuned to the resonator.
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the aforementioned material as the makeup of the ring resonator to achieve a desired wavelength range for coupling as a person with ordinary skill has good reason to pursue the known options within his or her technical grasp.
Furthermore, an apparatus claim must be structurally distinguishable from the prior art. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function (In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997); See MPEP 2114 [R-1]). A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus if the prior art apparatus teaches all of the structural limitations of the claim (Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987); See MPEP 2114 [R-1]).
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHAD SMITH whose telephone number is (571)270-1294. The examiner can normally be reached M-F 7:30 - 5.
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, Uyen-Chau Le can be reached at 1-571-272-2397. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/CHAD H SMITH/ Primary Examiner, Art Unit 2874
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