DETAILED ACTION
This office action is in response to the preliminary amendment to the claims on September 11, 2023. Claims 1-22 are presented for review, with claim 1 as the sole independent claim.
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 prior art documents submitted by Applicant in the Information Disclosure Statements filed on November 15, 2023 and September 11, 2023 (two documents), have been considered and made of record (note attached copy of forms PTO-1449).
Drawings
The original drawings (nine (9) pages) were received on September 11, 2023. These drawings are acknowledged.
Claim Objections
Claims 1-22 are objected to because of the following informalities: regarding independent claim 1, the claim should begin with “An electrically tunable…” instead of “Electrically tunable…” Noting dependent claims 2-18 and 22, these claims should begin with “The electrically tunable photonic resonator device”. Noting dependent claim 19, the term “an photonic resonator device according to claim 1” should read “the electrically tunable photonic resonator device according to claim 1.” Also in claim 1, 4, 10, and 19 in the claim body the term(s) “the electrically tunable photonic resonator device” should be updated (twice in claim 19). Appropriate correction is required for the preambles.
Further regarding objectionable features found in the claims:
-Claim 1: the term “a waveguide” (in the “at least one optical resonator” section) should be labeled with “an optical resonator waveguide” for clarity and consistency. Please note that there are multiple different “waveguide” features found within different claims. The term “Si3N4” should be updated to read “Si3N4” for the proper chemical formula. Note that many dependent claims (5, 19, and 22) include the optical resonator “waveguide” (and “Si3N4”) and thus should be amended akin to claim 1. The term “AC” in claim 1 should be written out fully once before abbreviation.
-Claims 6-7: the features “wherein the outer piezo actuator structure one of”, and “wherein the gap one of” are awkward to define the later group. See claim 5 for an example of clearer claiming (“the planar inner piezo actuator structure is one of”). Also noting claim 6, the term “the optical circulator” should be reviewed as this language is not found in claim 1.
-Claim 14: the terms “the flexural modes” and “the bulk modes” should read simply “flexural modes” and “bulk modes” because this is the first instance of each claiming. When using “the” in a claim such feature normally refers to a prior version.
-Claim 17: the conditional language with “may comprise” should be updated to claim positive features. Conditional language (using “if” or “may”) is not recommend and positively claimed features should be recited in US PTO claims.
-Claim 22: the term “the first and second optical resonator have different…” should read “the first and second optical resonators have different…”.
The following are merely Examiner’s comments and not formal claim objection(s). In independent claim 1, Applicant may consider reviewing the term “means” (in the “mechanical mode suppression” section) as this term is uncommon in current US PTO claims. The “means” term is also found in claims 10, 13-16, and 22. Additionally, in dependent claims 10 and 12, Applicant may consider reviewing the relative phrase “lateral displaced / displacement” as better terminology may be found.
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 1-22 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. Sole independent claim 1 is rejected below for numerous reason (as being vague/indefinite). Claims 2-22 are also rejected at least as being in dependent form, however, there are further issues listed with dependent claims as well.
Regarding independent claim 1, the phrase “having a fast and flat actuation response” in claim preamble is a relative phrasing which renders the claim indefinite. The terms “fast and flat” are 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. There is no clear metes-and-bounds outlined in the current application for “fast”, “flat”, and more notably “fast and flat” to define the actuation response in claim 1.
Also regarding independent claim 1, a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 1 recites the broad recitation “being made of an optical resonator material”, and the claim also recites “particularly Si3N4” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
For these combined reasons, in sections (9)-(10) above, independent claim 1 is found vague and indefinite under the meaning of 35 U.S.C. 112(b). Claims 2-22 are also inherently rejected as being dependent upon claim 1.
Further noting dependent claims:
-Claim 2: This claim is found vague and indefinite under the meaning of 35 U.S.C. 112(b) and 35 U.S.C. 101 because Applicant attempts to mix statutory classes into one claim. It is unclear if infringement occurs when the method (with steps, as in claim 2) is performed, or if just having the structural elements of claim 1 is enough. Additionally, a dependent claim cannot change the statutory class of an independent claim upon which it depends. Therefore, it is unclear if claim 2 is intended to be read as a “method” or “process” claim or if it is still an apparatus / device claim. Therefore, claim 2 is rejected as being vague and indefinite for those reasons. For the purpose of examination, if the structural features found in claim 1 / claim 2 are capable of the method language in claim 2, this claim will be anticipated. Also noting claim 2, the term “particularly using” (two instances) for “thin-film deposition” is vague and indefinite as being a narrower statement of the range (see also claim 1 above). Finally, the features “the piezo actuator” and “the optical resonator” lack proper antecedent basis in this claim, because the terms are defined at “at least one” in claim 1. Therefore, it is not immediately clear which “the” piezo actuator or “the” optical resonator refers. Claim 2 is thus rejected under 35 U.S.C. 112(b) for indefiniteness.
-Claim 3: The features “the piezo actuator” and “the optical resonator” lack proper antecedent basis in this claim, because the terms are defined at “at least one” in claim 1. Therefore, it is not immediately clear which “the” piezo actuator or “the” optical resonator refers. Also in claim 3, the term “such as” is the narrower statement of the range defined (the “circular resonator”), while “or any resonator” is also indefinite as being open ended and unclear. For these reasons, claim 3 is rejected under 35 U.S.C. 112(b) for indefiniteness.
-Claim 4: The feature “the piezo actuator” lacks proper antecedent basis in this claim, because the term is defined at “at least one” in claim 1. Therefore, it is not immediately clear which “the” piezo actuator refers. For this reason, claim 4 is rejected under 35 U.S.C. 112(b) for indefiniteness.
-Claim 5: The feature “the optical resonator” (two instances) lacks proper antecedent basis in this claim, because the term is defined at “at least one” in claim 1. Therefore, it is not immediately clear which “the” optical resonator refers. For this reason, claim 5 is rejected under 35 U.S.C. 112(b) for indefiniteness.
-Claim 6: The features “the optical resonator”, “the piezo actuator”, and “the optical circulator” lack proper antecedent basis in this claim, because these terms are defined at “at least one” in claim 1 (and note the feature “optical circulator” is not found in claim 1). Therefore, it is not immediately clear which “the” optical resonator or piezo actuator refers. For these reasons, claim 6 is rejected under 35 U.S.C. 112(b) for indefiniteness.
-Claim 7: The feature “the optical resonator” (two instances) lacks proper antecedent basis in this claim, because the term is defined at “at least one” in claim 1. Therefore, it is not immediately clear which “the” optical resonator refers. For this reason, claim 7 is rejected under 35 U.S.C. 112(b) for indefiniteness.
-Claim 8: The feature “the piezo actuator” lacks proper antecedent basis in this claim, because the term is defined at “at least one” in claim 1. Therefore, it is not immediately clear which “the” piezo actuator refers. Also noting claim 8, there are three narrower instances of the broader group, using “particularly formed of…” All such instances must be corrected and are indefinite for similar reasons to claim 1 (“particularly” language). For these reasons, claim 8 is rejected under 35 U.S.C. 112(b) for indefiniteness.
-Claim 9: The feature “the optical resonator” lacks proper antecedent basis in this claim, because the term is defined at “at least one” in claim 1. Therefore, it is not immediately clear which “the” optical resonator refers. Also, the term “a resonator material” lacks proper antecedent basis because it is unclear if this is the same “resonator material” of claim 1, or if this is a new/different “resonator material.” For these reasons, claim 9 is rejected under 35 U.S.C. 112(b) for indefiniteness.
-Claim 10-12: The feature “the piezo actuator” lacks proper antecedent basis in this claim, because the term is defined at “at least one” in claim 1. Therefore, it is not immediately clear which “the” piezo actuator refers. For this reason, claims 10, 11, and 12 are rejected under 35 U.S.C. 112(b) for indefiniteness.
-Claims 13-14, the term “particularly” leaves unclear if the narrower version of the broader range is required, or is merely optional (“wherein particularly the common substrate…”; “particularly is below 2mm.”). For these reasons, claims 13-14 are rejected under 35 U.S.C. 112(b) for indefiniteness.
-Claim 18: The feature “the piezo actuator” lacks proper antecedent basis in this claim, because the term is defined at “at least one” in claim 1 (with intervening claim 10). Therefore, it is not immediately clear which “the” piezo actuator refers. Also noting claim 18, there are narrower instances of the broader group, using “particularly in counterphase.” All such instances must be corrected and are indefinite for similar reasons to claim 1 (“particularly” language). For these reasons, claim 18 is rejected under 35 U.S.C. 112(b) for indefiniteness.
-Claim 20: The feature “the piezo actuator” lacks proper antecedent basis in this claim, because the term is defined at “at least one” in claim 1. Therefore, it is not immediately clear which “the” piezo actuator refers. For this reason, claim 20 is rejected under 35 U.S.C. 112(b) for indefiniteness.
-Claim 22: The terms “at least one optical waveguide” lacks proper antecedent basis because it is unclear which “optical waveguide” is being referred to from claim 1, or if these are entirely new “optical waveguide(s)”. The same lack of antecedent basis exists for “a first optical resonator”, “the waveguide”, “the second optical resonator”, “a mechanical mode suppression means”, etc. Also, the term “particularly Si3N4” (two instances) is rejected for the same reasons as a narrower statement of a broader range. The features “a first and second piezo actuator”, “the at least one piezo actuator”, and “the first and second optical resonators” lacks proper antecedent basis in this claim, because these terms are defined in claim 1 and claim 22 (more than a 1st and 2nd optical resonator exists). Therefore, it is not immediately clear which “the” piezo actuator(s) and/or “the” optical resonators, “a” (new?) mechanical mode suppression refers. For these reasons, claim 22 is rejected under 35 U.S.C. 112(b) for indefiniteness. Claim 22 should be carefully reviewed.
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 1-6, 8, 9, and 15-17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tian et al. NPL “Hybrid integrated photonics using bulk acoustic resonators.”
Regarding sole pending independent claim 1, Tian et al. NPL teaches (ABS; Figs. 1-4, notable Figs 4(a) – 4(e); corresponding text, see pages 1-7, notably Fig. 4(d)) an electrically tunable photonic resonator device for a laser component, which is capable of a “fast and flat” actuation response (there is acousto-optic modulation of Tian’s microring resonator, note Fig. 2g and Fig. 4 with high-speed actuation), comprising: at least one optical waveguide with at least one optical interface for coupling in laser light (Fig. 1a with a waveguide); at least one optical resonator (microring resonator of Tian) including a (an optical resonator) waveguide being made of an optical resonator material, which could be Si3N4 (note 35 U.S.C. 112(b), but also “Si3N4” photonics is discussed in “Discussion” for particular language of this composition on pg. 7), wherein laser light coupled via the at least one optical waveguide is coupled into the at least one optical resonator (method of in-coupling in Tian’s microring resonator from a light/laser source); at least one piezo actuator (Fig. 4(c), at least three AIN piezoelectric actuators) to apply mechanical stress at least partially onto the at least one optical resonator, wherein the at least one optical resonator, the at least one piezo actuator and the at least one optical waveguide are monolithically integrated on a common substrate of the electrically tunable photonic resonator device (note integrated of components, Fig. 4(c) and 1(a) – 1(c)); and a mechanical mode suppression means configured to attenuate one or more mechanical modes of oscillation caused by an AC operation of the at least one piezo actuator (Fig. 4(c) and 4(d), pages 6-7; the acoustic modes of Tian’s device are dampened by roughening and/or coating the substrate surface(s), which “suppresses” the mechanical modes in operation), which clearly, fully meets Applicant’s claimed structural limitations of sole independent claim 1.
Further, the Examiner fully incorporates, and agrees with, the logic and rationale found in the Written Opinion of the ISA from the corresponding PCT document (with substantially similar claims) EP 2021 / 056338.
Noting further dependent claims 2-6, 8, 9, and 15-17, all such features are found anticipated by Tian et al. NPL in Fig. 1b (claim 2); all shapes and formations of the PZ elements in Figs. 1b and 4c (for claims 3-6); the formation of piezo actuator with upper/lower electrodes layers in Fig. 1b (for claim 8); the resonator is made from SiN (the “resonator material”) which can have Kerr nonlinearity (claim 9); and the functional means language with corrugated backside of Figs 4a-4e (for claims 15-17), which meets all structural features claimed. Therefore, claims 2-6, 8, 9, and 15-17 are also anticipated and outlined by features within Tian NPL.
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.
Claims 7, 10-14, and 19-22 are rejected under 35 U.S.C. 103 as being unpatentable over Tian et al. NPL “Hybrid integrated photonics using bulk acoustic resonators”, based on independent claim 1, standing alone.
Regarding sole pending independent claim 1, Tian et al. NPL teaches (ABS; Figs. 1-4, notable Figs 4(a) – 4(e); corresponding text, see pages 1-7, notably Fig. 4(d)) an electrically tunable photonic resonator device for a laser component, which is capable of a “fast and flat” actuation response (there is acousto-optic modulation of Tian’s microring resonator, note Fig. 2g and Fig. 4 with high-speed actuation), comprising: at least one optical waveguide with at least one optical interface for coupling in laser light (Fig. 1a with a waveguide); at least one optical resonator (microring resonator of Tian) including a (an optical resonator) waveguide being made of an optical resonator material, which could be Si3N4 (note 35 U.S.C. 112(b), but also “Si3N4” photonics is discussed in “Discussion” for particular language of this composition on pg. 7), wherein laser light coupled via the at least one optical waveguide is coupled into the at least one optical resonator (method of in-coupling in Tian’s microring resonator from a light/laser source); at least one piezo actuator (Fig. 4(c), at least three AIN piezoelectric actuators) to apply mechanical stress at least partially onto the at least one optical resonator, wherein the at least one optical resonator, the at least one piezo actuator and the at least one optical waveguide are monolithically integrated on a common substrate of the electrically tunable photonic resonator device (note integrated of components, Fig. 4(c) and 1(a) – 1(c)); and a mechanical mode suppression means configured to attenuate one or more mechanical modes of oscillation caused by an AC operation of the at least one piezo actuator (Fig. 4(c) and 4(d), pages 6-7; the acoustic modes of Tian’s device are dampened by roughening and/or coating the substrate surface(s), which “suppresses” the mechanical modes in operation).
Regarding further dependent claims 7, 10-14, and 19-22, Tian NPL does not expressly and exactly teach each and every structural limitation found within these dependencies. However, at a time before the effective filing date of the current application, it would have been an obvious matter of common skill and design choice to a person of ordinary skill in the art to use features such as the inner/outer piezo structure with a gap (claim 7), the dummy piezo features (claims 10-12), the apodization with at least two non-parallel edges (claim 13), eigen frequency with flexural/bulk modes (claim 14), laser and self-injection locking (claims 19-21), or the Vernier filter formation (claim 22), because Applicant has not disclosed that using such features provides an advantage, is used for a particular purpose, or solves a stated problem. One of ordinary skill in the art, furthermore, would have expected Tian NPL to perform equally well with such features as the optical dependencies (integrated tunable photonic resonator circuit and further uses in dependent claims) because these claim terms would have been easily integrated and would have also been recognized by one with common skill in the art to improve the overall tunability and operability of the controllable resonator for desired output(s). It would have required no undue burden or unnecessary experimentation to arrive at those features with an electrically tunable photonic resonator device / laser such as in Tian NPL. Further, the base structure of the sole independent claim 1 is fully and clearly anticipated by Tian NPL as discussed prior in this section. Therefore, it would have been an obvious matter of common skill and design choice to modify (and/or update) Tian NPL to obtain the invention as specified in claims 7, 10-14, and 19-22. See KSR v. Teleflex, 127 S.Ct. 1727 (2007).
Further, the Examiner fully incorporates, and agrees with, the logic and rationale found in the Written Opinion of the ISA from the corresponding PCT document (with substantially similar claims) EP 2021 / 056338, in particular these dependent claims as outlined herein. Note Sections 3, 3.1 – 3.4 in PCT EP ‘338.
Allowable Subject Matter
Claim 18 is 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. Regarding the features of claim 18 (which depend from intervening claim 10), there is no clear teaching or reasonable suggestion the closest prior art of record (Tian NPL) for such combination, in that “a tuning unit is provided on the common substrate (S) or separate thereof, wherein the tuning unit is configured to drive the piezo actuator and the dummy piezo actuator in an out of phase manner”, notably counterphase (features of claim 18). The features of claim 18 should be formally canceled, along with intervening claim 10, and all amended into independent claim 1, in order to place this application in condition for allowance. Note however that claim 18 is rejected above under 35 U.S.C. 112(b) for indefiniteness.
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
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure, attached PTO-892 form references A-C, which pertain to the state of the art of optical resonators using microrings, suppression of mode features, and integrated design of optics on chip.
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/DANIEL PETKOVSEK/Primary Examiner, Art Unit 2874 January 2, 2026