DETAILED ACTION
This Office action is responsive to Applicant’s response submitted 29 December 2025.
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 .
Election/Restrictions
Applicant’s election without traverse of Species I, directed to claims 1-5, 12, 13, 15-18, 25 and 26 in the reply filed on 29 December 2025 is acknowledged.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1, 2, 3, 4, 14, 15, 16 and 17 and provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4, 5, 6, 13, 16, 17 and 18 respectively of copending Application No. 18/542,868 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the current application recites “an electro-optic material” and the copending application recites “a piezoelectric material” Both applications teach the electro-optic and piezoelectric properties to be physical characteristics of a ferroelectric perovskite or barium titanate (BTO). Each of these materials are recited in the claims and throughout the specification as the electro-optic material and the piezoelectric material. Therefore, it would have been obvious before the effective filing date to a person having ordinary skill in the art for the electro-optical material and piezoelectric material to be the same material, ferroelectric perovskite or barium titanate (BTO).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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, 5, 14-16 and 18 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent Application Publication 2021/0018767 to Peng et al.
In regards to claims 1 and 14, Peng recites an optoelectronic device and a method for optical control, comprising: a substrate (102); an optical waveguide disposed on the substrate; a pair of Bragg reflectors (112 & 116) formed in the optical waveguide to define a resonant cavity between the Bragg reflectors; an electro-optical material (114) disposed on the substrate in proximity to the optical waveguide; and electrodes (120) configured to apply an electric field to the electro-optical material so as to tune a resonant wavelength of the cavity. [0065-0066]
In regards to claims 2 and 15, Peng recites the electro-optical material (114) is configured as a membrane, which extends across the resonant cavity.
In regards to claims 3 and 16, Peng recites the electro-optical material comprises barium titanate (BTO). Since barium titanate is an example of a ferroelectric perovskite, Peng also recites the electro-optical material is a ferroelectric perovskite.
In regards to claims 5 and 18, Peng recites a further waveguide formed on the membrane from the electro-optical material, wherein the electrodes are configured to apply a further electric field to the electro-optical material so as to switch light from the resonant cavity into the further waveguide. (Figure 1B shows an array)
Claim Rejections - 35 USC § 103
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.
Claim(s) 4, 12, 13, 25 and 26 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication 2021/0018767 to Peng et al.
In regards to claims 4 and 17, Peng recites the electro-optical material comprises barium titanate (BTO). But Peng fails to expressly recite the optical waveguide comprises diamond. However, choosing optical waveguides comprising diamonds would be advantageous since diamonds provide an exception combination of high refractive indices and superior thermal conductivity which allowed for efficient, low-loss photonics. Since optical waveguides formed of diamonds are commercially and readily available in the art, it would have been obvious before the effective filing date to a person having ordinary skill in the art to have provided the optical waveguide to comprise diamond.
In regards to claims 12, 13, 25 and 26, Peng recites an optical input (101; [0065]) Although Peng does not expressly recite comprising an input waveguide, which is disposed on the substrate, the use of an input waveguide to device an optical signal would have been an obvious matter of common skill and design choice to a person having ordinary skill in the art. The use of features, such as input optical waveguides, to deliver an optical input is well known and would have been easily manufactured on the substrate of Peng. Therefore, it would have been obvious before the effective filing date to a person having ordinary skill in the art to have provided an input waveguide, which is disposed on the substrate. Furthermore, it would have been an obvious matter of common skill and design choice to a person having ordinary skill in the art for the input waveguide to be coupled to inject one or more excitation beams into the resonant cavity and wherein the input waveguide is configured to inject the one or more excitation beams through a side of the optical waveguide in the resonant cavity by free propagation through a gap between the input waveguide and the side of the optical waveguide since the use of such features in order to provide the desired resonant wavelength of the cavity for the purpose of tuning the optoelectronic device. Therefore, it would have been obvious before the effective filing date to a person having ordinary skill in the art to have provided the input waveguide to be coupled to inject one or more excitation beams into the resonant cavity and wherein the input waveguide is configured to inject the one or more excitation beams through a side of the optical waveguide in the resonant cavity by free propagation through a gap between the input waveguide and the side of the optical waveguide.
References Cited
The references cited made of record and not relied upon is considered pertinent to applicant’s disclosure.
The documents submitted by applicant in the Information Disclosure Statements have been considered and made of record. Note attached copy of forms PTO-1449.
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
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TINA M WONG whose telephone number is (571)272-2352. The examiner can normally be reached M-F 8:30-5:30.
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 (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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/TINA WONG/Primary Examiner, Art Unit 2874
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