CTNF 18/549,471 CTNF 99537 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Priority Acknowledgment is made of applicant's claim for foreign priority based on the PCT 371 of international PCT/JP2021/010038 filed in Japan on 03/12/2021. Inventorship 07-20-02-aia AIA 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. Information Disclosure Statement The prior art document(s) submitted by applicant in the Information Disclosure Statement filed on 09/07/2023 have all been considered and made of record (Note the attached copy of form PTO-892). Claim Rejections - 35 USC § 112 07-30-02 AIA 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. 07-34-01 Claims 17 and 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. It is unclear how “the optical fiber comprises a plurality of fibers.” How is a single optical fiber made up of a plurality of fibers? The examiner assumes “the optical fiber” must refer to an optical fiber cable in order to comprise a plurality of fibers and the ”plurality of fibers” are really a plurality of optical fibers in the optical fiber cable and not some other fibrous material. This results in the “optical fiber” of claim 14 being changed to “optical fiber cable” in order to make sense of claim 17. 07-34-03 AIA The term “ substantially ” in claim 19 is a relative term which renders the claim indefinite. The term “ substantially ” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear where the boundary between "in the plane" and "out of the plane" due to the use of the word "substantially" . Claim Rejections - 35 USC § 103 07-06 AIA 15-10-15 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. 07-20-aia AIA 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. 07-21-aia AIA Claim (s) 14-18 and 20-33 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ishii et al. in US 20160246019 A1 (hereinafter "Ishii") in view of Yamashita et al. in US 20200003969 A1 (hereinafter "Yamashita") . Regarding claims 14, 23, and 33, Ishii discloses an optical connecting structure (and a method of manufacturing said structure) in a package structure (see Fig. 2-4 of transceiver 1) connected to an optical fiber cable (fibers 11 is interpreted as an optical fiber cable) and comprising a first electric wiring board (circuit board 2 is interpreted as a first electric wiring board) and a second electric wiring board facing the first electric wiring board (assembly substrate 9 is interpreted as a second electric wiring board facing the interpreted first electric wiring board 2 since it has electrical components such as LD 9c, mPD 9e, and driver 9f which necessarily require electrical connections, i.e., electric wiring), the optical connecting structure comprising: an optical element arranged on the second electric wiring board (laser diode LD 9c is interpreted as the optical element arranged on the interpreted second electric wiring board 9); and a lens (lens block 10) arranged on a surface of the second electric wiring board facing the first electric wiring board (10 is on surface 9b of 9 as shown in Fig. 4B; surface 9b faces 2 as shown in Fig. 3), wherein a first end surface of the lens faces an end surface of the optical element (the surface of lens 10 facing 9c in Fig. 4B is interpreted as the first end surface of lens 10, this surface includes lens elements 10c facing LD 9c). Ishii does not teach that the lens is a gradient index (GRIN) lens. Yamashita teaches a GRIN lens (GI lens 20). Accordingly, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have the GRIN lens of Yamashita in the device of Ishii for the purpose of efficiently coupling, collimating, and/or focusing light with a compact flat-surface package thereby achieving reduced loss, increased assembly durability, eliminating alignment drift, and/or increasing compactness. While claim 23 is broader than claim 14, the examiner notes that all structure and structural relationships of claim 23 is in claim 14. PNG media_image1.png 827 1430 media_image1.png Greyscale Regarding claims 15 and 25, Ishii/Yamashita discloses the optical connecting structure according to claims 14 and 23, further comprising a reflective surface on a second end surface of the GRIN lens (reflecting surface 10a of lens block 10 is interpreted as a reflective surface on a second end surface of the GRIN lens). Ishii does not teach that the reflecting surface is a reflective film. Yamashita teaches both beam splitter films (40) and mirror films (50) may be applied to lens blocks (see Fig. 1) to provide specific reflection capabilities (see Para. 31-32). Accordingly, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have the reflective film of Yamashita in the device of Ishii/Yamashita for the purpose of redirecting light in a desirable direction thereby achieving multiple output destinations and/or reducing the size of a light-directing element. Regarding claims 16 and 26, Ishii/Yamashita discloses the optical connecting structure according to claims 14 and 23, further comprising an adapter detachably connected to the optical fiber (MT ferrule 11b is interpreted as an adapter detachably connected to the optical fiber 11), wherein light is input and output between the GRIN lens and the adapter (necessarily present in a desirable and functioning system). Regarding claims 17 and 27, Ishii/Yamashita discloses optical connecting structure according to claims 16 and 26, wherein: the optical fiber cable comprises a plurality of optical fibers (11 is specifically referenced as “inner fibers” 11, see Para. 24); the light input from a first optical fiber of the plurality of fibers sequentially propagates through the adapter and the GRIN lens and is input to the optical element; and the light is output from the optical element, sequentially propagates through the GRIN lens and the adapter, and is input to a second optical fiber of the plurality of optical fibers (necessarily present in a functioning transceiver; 1 is a transceiver and inputs/outputs light is the aforementioned order; see Para. 4 and 33). Regarding claims 18 and 28, Ishii/Yamashita discloses the optical connecting structure according to claims 16 and 26, further comprising a reflection structure (mirror 16 is interpreted as a reflection structure) arranged on a surface of the first electric wiring board (16 is interpreted as arranged on a surface of the interpreted first electric wiring board 2) opposite to the second electric wiring board (9) and between the GRIN lens and the adapter (reflection structure 16 is interpreted as optically between 10 and 11b since light passes between LD 9c then lens 10 then mirror 16 then ferrule 11b into fiber 11). Regarding claims 20 and 29, Ishii/Yamashita discloses the optical connecting structure according to claims 14 and 24, wherein the optical element is arranged between the first electric wiring board and the second electric wiring board (the interpreted optical element 9c is arranged between the interpreted first electric wiring board 2 and the interpreted second electric wiring board 9). Regarding claims 21 and 30, Ishii/Yamashita discloses the optical connecting structure according to claims 14 and 24, wherein the optical element is arranged on a surface of the first electric wiring board facing the second electric wiring board (the interpreted optical element 9c is arranged on a surface of the interpreted first electric wiring board 2 facing the second electric wiring board 9; note that the optical element is not required to be directly on the first electric wiring board and since 9c is between 2 and 9, it is interpreted as being arranged on both of the surfaces of 2 and 9 facing each other). Regarding claims 22 and 31, Ishii/Yamashita discloses the optical connecting structure according to claims 14 and 24, wherein the optical element comprises a waveguide through which light for alignment propagates (interpreted optical element 9c is a laser diode which necessarily comprises a waveguide for light propagation). The claim also contains the following functional limitations that are an intended use of the positively recited structures: “for alignment”. However, it has been held that “apparatus claims cover what a device is, not what a device does” (Hewlett-Packard Co. v. Bausch & Lomb Inc. 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990)); that 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 USPQ 2d 1647 (Bd. Pat. App. & Inter. 1987)); and that if a prior art structure is capable of performing the intended use as recited in the preamble, then it meets the claim ( In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997)). See MPEP § 2111.02, II and MPEP § 2114, II. Regarding claim 24, Ishii/Yamashita discloses the package structure according to claim 23, further comprising a molding resin between the first electric wiring board and the second electric wiring board (lens holder 12 is made of resin, which requires molding, and is between the interpreted first electric wiring board 2 and second electric wiring board 9; see Fig. 2 and Para. 38). Regarding claim 32, Ishii/Yamashita discloses an optical module comprising: the package structure according to claim 23; an optical fiber (fiber 11) connected to the optical connecting structure; and a ferrule (MT ferrule 11b) . 07-21-aia AIA Claim (s) 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ishii et al. in US 20160246019 A1 (hereinafter "Ishii") in view of Steinberg et al. in U.S. Patent 6,839,474 B2 (hereinafter "Steinberg") . Regarding claim 19, Ishii/Yamashita discloses the optical connecting structure according to claim 14, but fails to teach wherein a center axis of the GRIN lens is in substantially the same plane as the first electric wiring board (as defined by Applicant’s Para. 88). However, having a center axis of the GRIN lens in substantially the same plane as the first electric wiring board is well-known in the art as evidenced by Steinberg, Fig. 1, where a center axis of GRIN lens 56 is substantially in the same plane as the upper surface 31 of substrate 30. Accordingly, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have the height difference created by having the center axis of the GRIN lens in substantially the same plane as the first electric wiring board as taught by Steinberg in the structure of Ishii/Yamashita for the purpose of reducing the overall profile of the device thereby achieving a slimmer device. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to DARBY M THOMASON whose telephone number is (703)756-5817. The examiner can normally be reached Mon.-Fri. 8am-5pm. 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. 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. /DARBY M. THOMASON/ Examiner, Art Unit 2874 /UYEN CHAU N LE/ Supervisory Patent Examiner, Art Unit 2874 Application/Control Number: 18/549,471 Page 2 Art Unit: 2874 Application/Control Number: 18/549,471 Page 3 Art Unit: 2874 Application/Control Number: 18/549,471 Page 4 Art Unit: 2874 Application/Control Number: 18/549,471 Page 5 Art Unit: 2874 Application/Control Number: 18/549,471 Page 6 Art Unit: 2874 Application/Control Number: 18/549,471 Page 7 Art Unit: 2874 Application/Control Number: 18/549,471 Page 8 Art Unit: 2874 Application/Control Number: 18/549,471 Page 9 Art Unit: 2874 Application/Control Number: 18/549,471 Page 10 Art Unit: 2874
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