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 .
DETAILED ACTION
Information Disclosure Statement
The information disclosure statement (IDS) submitted on October 19, 2023 has been considered by the examiner.
Drawings
Six sheets for formal drawings were filed October 19, 2023 and have been accepted by the Examiner.
Specification
Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Objections
The claims are objected to for the following reasons(s):
Regarding claim 7, “said dammed volume” does not have sufficient antecedent basis. For the purposes of examination, claim 7 will be examined as depending from claim 6 which recites “a dammed volume”.
Appropriate correction is required.
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 3-7 and 9-17 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.
Regarding claims 3-7 and 9-17 include exemplary language “preferably” which renders the claim unclear. See MPEP 2173.05(d). Description of examples or preferences is properly set forth in the specification rather than the claims. The use of “preferably” renders claims 3-7 and 9-17 indefinite because the intended scope of the claims are unclear.
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 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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1-5, 8-15, 17 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Shen et al. (US 9,641,254 B1 from Applicant’s Information Disclosure Statement) in view of Koga (JP H05121589 A).
Regarding claim 1, Shen discloses an optoelectronic device (Fig. 2A), comprising: a printed circuit board, PCB (228), comprising a planar PCB surface; a photonic integrated circuit, PIC (202) comprising a fiber attach region for attachment to a fiber array, FA (214), and an electronic interface for connecting to the PCB; wherein said PIC is mounted on a portion of said PCB surface being an integral part of the PCB surface; wherein said PCB comprises an opening (232 in Fig. 2B; microvias are openings) circumferentially surrounded by portions of said PCB (remainder of circuit board 228 surrounding 232), at least one wire bond (see column 11 disclosing the driver circuit 204 wire bonded to the light source 202), said wire bond being comprised in the optoelectronic device; and wherein the PCB further comprises one or more thermal vias (232) for temperature exchange extending from said PIC through the PCB.
Still regarding claim 1, Shen teaches the claimed invention except for an opening for thermally insulating a first region and said second region from one another. Koga discloses a PCB (1) comprising an opening (1a in Fig. 2) circumferentially surrounded by portions of said PCB and dividing said PCB surface in a first and second region for thermally insulating said first region and said second region from one another (paragraph 0009); wherein the portion of said PCB surface on which a PIC (5) is mounted belongs to the first region; and wherein said connecting of the electronic interface to the PCB relates to at least one wire bond (7a, 7b) extending to the second region (region in which 2, 4 are disposed). Since both inventions relate to semiconductor devices, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to use an opening as disclosed by Koga in the optoelectronic device of Shen for the purpose of having a high heat dissipation effect and high frequency characteristics.
Regarding claim 2, the proposed combination of Shen and Koga teaches the claimed invention except for the material of the substrate. However, it would have been obvious to one having ordinary skill in the art at the time of the invention to form the substrate from the claimed glass epoxy, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. Further, it would have been obvious to one having ordinary skill in the art at the time of the invention to arrive at the claimed thermal conductivity in order to simplify the manufacturing process, and since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claims 3 and 5, the proposed combination of Shen and Koga teaches the claimed invention except for the dimensions of the opening. However, it would have been obvious to one having ordinary skill in the art at the time of the invention to arrive at the claimed dimensions in order to provide thermal insulation while maintain a compact size, and since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 4, Shen discloses one or more thermal vias are metal vias, preferably copper vias, wherein preferably said one or more vias extend orthogonally through the PCB in Figs. 2A-2C.
Regarding claim 8, Shen discloses said wire bond being surrounded circumferentially by an encapsulant in column 6, lines 3-5.
Regarding claims 9 and 17, Shen further discloses the PIC comprises a width along a width direction and a length along a length direction, wherein said PIC comprises, at the fiber attach region (region in which optical fibers 216 connect), an edge coupler (206) comprising a sidewall for coupling in light from said FA (214), said sidewall extending along said width direction. The proposed combination of Shen and Koga teaches the claimed invention except for the ratio. However, it would have been obvious to one having ordinary skill in the art at the time of the invention to arrive at the claimed ratio, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claims 10 and 18, the proposed combination of Shen and Koga teaches the claimed invention except for a trench for reducing stray light. However, trenches for reducing stray light are ubiquitous in the art of optoelectronic devices and as such, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to dispose a trench at the location of the optical connection, at a surface of the PIC facing away from the PCB, in order to confine the light. Further, it would have been obvious to one having ordinary skill in the art at the time of the invention to arrive at the claimed ratio, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 11, Shen further discloses said PIC (202) comprises, at the fiber attach region, an edge coupler (206) for coupling in light from said FA (214) in Fig. 2A. The proposed combination of Shen and Koga teaches the claimed invention except for the PIC sticks out with respect to the PCB. However, components sticking out with respect to a PCB are ubiquitous in the art of optoelectronic devices and as such, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to dispose the PIC sticking out with respect to the PCB in order to facilitate connection. Further, it would have been obvious to one having ordinary skill in the art at the time of the invention to arrive at the claimed distance, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 12, Shen further discloses said edge coupler (206) comprises a sidewall extending along a lateral surface of said PIC in Fig. 2A. The proposed combination of Shen and Koga teaches the claimed invention except for the sidewall sticks out. However, a sidewall sticking out to form a step are ubiquitous in the art of optoelectronic devices and as such, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to have the sidewall stick out with respect to further portions of said lateral surface of said PIC in order to facilitate connection. Further, it would have been obvious to one having ordinary skill in the art at the time of the invention to arrive at the claimed distance, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 13, Shen further discloses a temperature control element (260), wherein the respective thermal vias extending from said PIC (202) through the PCB (228) are configured for temperature exchange with said temperature control element. The proposed combination of Shen and Koga teaches the claimed invention except for the temperature control element being a Peltier element and the PIC comprises first and second photonic circuits provided with respective first and second temperature sensors. However, Peltier elements are ubiquitous in the art of optoelectronic devices and as such, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to use a Peltier element in conjunction with first and second photonic circuits provided with respective first and second temperature sensors in order to actively control heat dissipation.
Regarding claims 14 and 15, Applicant is claiming the product including the process of making the light guide device, and therefore are of "product-by-process" nature. The courts have been holding for quite some time that: the determination of the patentability of product-by-process claim is based on the product itself rather than on the process by which the product is made. In re Thrope, 777 F. 2d 695, 227 USPQ 964 (Fed. Cir. 1985); and patentability of claim to a product does not rest merely on a difference in the method by which that product is made. Rather, it is the product itself which must be new and unobvious. Applicant has chosen to claim the invention in the product form. Thus a prior art product which possesses the claimed product characteristics can anticipate or render obvious the claim subject matter regardless of the manner in which it is fabricated. A rejection based on 35 U.S.C. section 102 or alternatively on 35 U.S.C. section 103 of the status is eminently fair and acceptable. In re Brown and Saffer, 173 USPQ 685 and 688; In re Pilkington, 162 USPQ 147. As such no weight is given to the process steps recited in claims 14 and 15. Further, the process steps are a matter of obvious design variation known to a person of ordinary skill in the art.
Claims 6, 7 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Shen et al. (US 9,641,254 B1 from Applicant’s Information Disclosure Statement) in view of Koga (JP H05121589 A), further in view of Rolston et al. (US 7,178,235 B2 from Applicant’s Information Disclosure Statement).
Regarding claims 6, 7 and 16, the proposed combination of Shen and Koga teaches the claimed invention except for a dam. Rolston discloses a dam (22 in Figs. 6a-8b) for preventing an adhesive from flowing beyond an attachment region; wherein preferably said dam comprises a longitudinal section extending along a length direction of said PIC (10) and a transversal section extending along a width direction of said PIC. Rolston further discloses a reinforcing member (prongs of 22 on both sides of 10), preferably a glass block (22 is disclosed as a protection plate which could be made of glass), for reinforcing a fiber attach adhesive connection (34); said reinforcing member preferably at least partially extending within said dammed volume. Since both inventions relate to optoelectronic devices, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to use a dam as disclosed by Rolston in the optoelectronic device of the proposed combination of Shen and Koga for the purpose of confining the adhesive. Since Shen discloses a fiber attach region at a surface of the PIC facing away from the PCB, in the proposed combination one of ordinary skill would find it obvious to dispose the dam there to define a dammed volume above said fiber attach region.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRIS H CHU whose telephone number is (571)272-8655. The examiner can normally be reached on Mon-Fri 9AM-5PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Uyen-Chau Le can be reached on 571-272-239797. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Any inquiry of a general or clerical nature should be directed to the Technology Center 2800 receptionist at telephone number (571) 272-1562.
Chris H. Chu
/CHRIS H CHU/ Primary Examiner, Art Unit 2874 April 28, 2026
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