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 .
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.
Claims 1 – 5, 7 – 9, 14 – 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Scheuer (U.S. PG Pub. # 2004/0202430 A1).
In Re claim 1, ‘430 teaches a high contrast optical filter comprising: a first ring resonator (R1) coupled with a first waveguide (W1); and a second ring resonator (R3) coupled with a second waveguide (W2), wherein the first waveguide directs a light in and the second waveguide directs the light out (Fig. 3A); wherein each of the ring resonator is integrated with an actuator (par. 0061).
Furthermore, as stated in MPEP §2114, “[w]hile 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). 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 the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). As such, while the functional language limitations are not ignored, such limitations are not given patentable weight, and the claimed limitations are anticipated if a prior art apparatus is capable of performing the claimed function. MPEP §2114. Claim 1 contains a functional limitation (wherein the optical filter switches at a bandwidth greater than 1 kHz with a switch time less than 100 ns). Since the disclosed apparatus of ‘430 is fully capable of performing the recited function, and contains all recited structural elements, the claim rejection based on ‘430 is proper.
In addition, it is respectfully noted that it would be improper to import specific structural limitations (which are not actually claimed and recited in the claims) from the specification into the claims when interpreting functional language limitations. See MPEP §2111. Thus, the pending claims will be given their broadest reasonable interpretation consistent with the specification, without importing limitations from the specification into the claims.
In Re claims 2 – 5, ‘430 teaches at least one more ring resonator (R2), wherein the at least one more ring resonator is coupled in between the first and the second ring resonators, wherein each of the at least one more ring resonator is coupled with an actuator (heater, thermos-optical, par. 0061) and a pattern as claimed (figs.3A or 3B).
In Re claim 7, the patentability of an apparatus depends only on the claimed structural limitations. ‘430 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 ‘430 device does not possess these functional characteristics. See MPEP 2112.01.
In Re claim 8, ‘430 teaches that the resonators are rings (figs. 3A, 3B), thus the actuator actuating (par. 0061) is a ring actuator as the claim does not recite that the shape of the actuator is a ring shape merely what is actuates.
In Re claim 9, ‘430 teaches a circular shape as claimed (Figs. 3A, 3B).
In Re claims 14 and 15, as stated in MPEP §2114, “[w]hile 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). 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 the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). As such, while the functional language limitations are not ignored, such limitations are not given patentable weight, and the claimed limitations are anticipated if a prior art apparatus is capable of performing the claimed function. MPEP §2114. Claim 15 contains a functional limitation (a Q of at least 40 million). Since the disclosed apparatus of ‘430 is fully capable of performing the recited function, and contains all recited structural elements, the claim rejection based on ‘430 is proper.
In addition, it is respectfully noted that it would be improper to import specific structural limitations (which are not actually claimed and recited in the claims) from the specification into the claims when interpreting functional language limitations. See MPEP §2111. Thus, the pending claims will be given their broadest reasonable interpretation consistent with the specification, without importing limitations from the specification into the claims.
In Re claim 16, The patentability of an apparatus depends only on the claimed structural limitations. ‘430 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 ‘430 device does not possess these functional characteristics. See MPEP 2112.01.
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 1, 2 and 10 – 12 is rejected under 35 U.S.C. 103 as being unpatentable over Scheuer (U.S. PG Pub. # 2004/0202430 A1) in view of HANDANHAL RAMACHANDRA et al. (U.S. PG Pub. # 20230145261 A1).
Alternatively, In Re claim 1, ‘430 teaches a high contrast optical filter comprising: a first ring resonator (R1) coupled with a first waveguide (W1); and a second ring resonator (R3) coupled with a second waveguide (W2), wherein the first waveguide directs a light in and the second waveguide directs the light out (Fig. 3A); and using heating to change the refractive index of the resonator (par. 0061).
‘430 appears to be expressly silent to an actuator integrated with the ring resonator.
‘261 teaches actuators (piezo electric 610a,b and heater 150a-c) integrated with a ring resonator (120).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the filter of ‘430 to include actuators (610a,b and 150a-c) as taught by ‘261 so as to allow for optimum optical coupling between the resonators and waveguides by controlling the spacing between the waveguides and to tune the resonator with the heater thus allowing for a better control over resonant coupling as a person with ordinary skill has good reason to pursue the known options within his or her technical grasp.
In Re claims 2 and 10 – 12, ‘430 teaches the filter of claim 1 but is silent to an actuator integrated with a resonator, wherein each of the actuator is laterally and vertically offset from a core of each of the ring resonator and from an optical mode profile of the ring resonator such that the actuator does not appreciably affect a waveguide loss or a resonator quality factor (Q), 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; wherein the actuator comprises lead zirconate titanate (PZT) and the ring resonator comprises silicon nitride.
‘261 teaches an actuator made of PZT (150, par. 0024, fig. 5A), that is laterally and vertically offset from a core of the resonator (120) that couples to a ring resonator made of silicon nitride (par. 0030) to adjust coupling strength between a waveguide and the ring resonator. ‘261 further teaches an additional actuator as a metal heater (par. 0045) to change the refractive index of the resonator.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the filter of ‘430 to make the ring of silicon nitride as a means for optical confinement, and to include a PZT actuator as taught by ‘261 so as to allow for optimum optical coupling between the resonators and waveguides by controlling the spacing between the waveguides and to tune the resonator with the metal heater thus allowing for a better control over resonant coupling.
Furthermore, the patentability of an apparatus depends only on the claimed structural limitations. The combination 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 ‘430 device does not possess these functional characteristics. See MPEP 2112.01.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Scheuer (U.S. PG Pub. # 2004/0202430 A1) in view of Kim et al. (KR 20110030213 A).
In Re claim 13, ‘430 teaches the filter of claim 1 but is silent to wherein the actuator comprises lead zirconate titanate (PZT) and the ring resonator comprises tantalum pentoxide, alumina oxide, or aluminum nitride.
Furthermore, the patentability of an apparatus depends only on the claimed structural limitations. ‘430 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 ‘430 device does not possess these functional characteristics. See MPEP 2112.01.
‘213 teaches an actuator made up of PZT (220, pg. 5 of translation) and a ring resonator made up of aluminum nitride (pg. 5 of translation).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the filter of ‘430 to make the ring of aluminum nitride, and a piezoelectric actuator made up of PZT as taught by ‘213 so as to allow for use of ‘430 as a sensor thus enhancing the capabilities of the filter of ‘430 as a person with ordinary skill has good reason to pursue the known options within his or her technical grasp.
Claims 6, 17 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Scheuer (U.S. PG Pub. # 2004/0202430 A1).
‘430 teaches the optical filter of claim 1 and three ring resonators (figs. 3A or 3B), and heating the resonator to tune the filter (par. 0061), but is expressly silent to metal heaters as claimed. However, it is well known in the art to use metal heaters that are electrically controlled in the vicinity of ring resonators to adjust the refractive index of the rings thus allowing tuning of the coupling resonance. Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the filter of ‘430 to use metal heaters as the heating means for the resonators since they are a well known cost efficient means for achieving the heating of resonators as a person with ordinary skill has good reason to pursue the known options within his or her technical grasp.
Furthermore, the patentability of an apparatus depends only on the claimed structural limitations. ‘430 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 ‘430 device does not possess these functional characteristics. See MPEP 2112.01.
Conclusion
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.
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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 1-571-272-2397. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHAD H SMITH/Primary Examiner, Art Unit 2874