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 § 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 1-20 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.
There are no connections of the first-level asymmetric wavelength multiplexing and demultiplexing units to the second-level symmetric wavelength multiplexing and demultiplexing units in claim 1. It is unclear what the relationship of “a plurality of output waveguides” of the first-level asymmetric wavelength multiplexing and demultiplexing units to the “second input waveguide” of each of the second-level symmetric wavelength multiplexing and demultiplexing units is. Without connections of elements, the scope of the claims is unclear. If this is not corrected and the applicant argues that it is not required, there may be 112(a) scope of enablement issues because the applicant’s claims cover a broader scope than the applicant has disclosed. As an example, the outputs of the plurality of first output waveguides have “set of optical signals with different wavelengths but different transmittance” and the second input waveguides receive a “set of optical signals with different wavelengths but SAME transmittance” (emphasis added). From this, it does not appear that there is any relationship between the waveguides of the first and second units. If these units have no relationship to each other, what is the scope of the claims?
This problem is exemplified by issues of claim 2 in which the outputs of the “relay output waveguides output a set of optical signals with different wavelengths but DIFFERENT transmittance, wherein the plurality of first relay output waveguides are adapted to be the second input waveguides of the second level symmetric wavelength multiplexing and demultiplexing units”. Since the outputs of the first output waveguides have different transmittance and these are the second input waveguides which have the same transmittance of claim 1, this does not appear possible. How can waveguides with different transmittance be input as the same transmittance? How do the “plurality of relay output waveguides” of claim 2 relate to the “plurality of output waveguides” of claim 1? Are they the same? Are they different? Are they a subset? This needs to be clear from the claims.
In regard to claim 1, it is unclear what the importance of the “sub-wavelength units” are. For example, do they include specific structure that provide the functions of the first-level asymmetric wavelength multiplexing and demultiplexing units and second-level symmetric wavelength multiplexing and demultiplexing units? If not, what is the importance of the materials and area?
How is the “material type” determined by a FOM evaluation? How does determining an FOM relate to the type of material? What is the criteria of electing a material based on FOM evaluations? It is unclear how the material is determined based on the FOM. Does the applicant feel that this is so well known they do not have to disclose it?
Is the randomly setting of material types of Sub-wavelength units changed for each iterative transversal of all sub-wavelength units repeatedly (changed for each repeat)? Or are the randomly set material types kept the same for repeatedly transversal of all sub wavelength units? How does iterating and repeatedly transversing Sub-wavelength units determine the material type? What is the criteria for determining the material type using the FOM evaluation function (at the top of page 3 of amended claim 1)? What is “the preset value”? This lacks antecedent basis since there has not been a preset value previously mentioned. What is meant by “the material types with the preset value of the FOM evaluation function are selectively retained”? What is the criteria for “selectively retaining” materials? Which material types is this referring to? What is the criteria for selectively retaining? How does determining a material type using repeated transversal of all sub wavelength unit provide an optimal structure of the functional area? How does a material type obtain an optimal structure of a functional area? Merely having a specific type of material and/or determining a specific type of material does not provide “an optimal structure of the functional area”. How do the equations of claim 4 provide an optimal structure of the functional area? There are no specifics of how the results of these equations are used to determine the functional area or material type. How are the difference between the actual output optical loss and the target optical loss of each output waveguide help to determine the material type and functional area? What is the criteria for selecting material type and functional area based on this?
The last wherein clause of claim 1 says that a material of each of the sub-wavelength units in a functional area is silicon dioxide or silicon. Is the determination of the “material type” (top of page 3 of the amended claim) determined between silicon dioxide or silicon? If so, what is the criteria for determining this?
What is the criteria for adjusting “C, m, p, q, r, s, t, w” in claim 5? What is the scope of how this is done? Are they all changed at once? Is so, this would have a drastic effect on the FOM. Isn’t it important how each of these would be changed to the output of the equation? Does each variable have a different criterion? If so, what are each of the criteria? What are the changes based on?
In claims 6 and 9-12; “is received with” does not appear to be correct. The first level asymmetric wavelength multiplexing and demultiplexing unit does not “receive with”. It transmits, not receives.
In claim 13, “are all arranged” is incorrect since there is only one input. It appears that this should be “is” instead of “are”.
In claims 17-20 there is contradiction with claim 1. The top of page 4 says silicon dioxide or silicon, while claims 17-20 claim that can be InP, GaAs, polymer, LN, diamond and chalcogenide system.
On page 10 of amended claim 4, “the plurality of third level symmetric wavelength multiplexing and demultiplexing units” and “The last one of the plurality of third level symmetric wavelength multiplexing and demultiplexing units” lack antecedent basis because claims 1-2 do not mention third level…units. “The penultimate and the second to last” lack antecedent basis.
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-10 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
In regard to claim 1, it is unclear what the importance of the “sub-wavelength units” are. For example, do they include specific structure that provide the functions of the first-level asymmetric wavelength multiplexing and demultiplexing units and second-level symmetric wavelength multiplexing and demultiplexing units? If not, what is the importance of the materials and area?
How is the “material type” determined by a FOM evaluation? How does determining an FOM relate to the type of material? What is the criteria of electing a material based on FOM evaluations? It is unclear how the material is determined based on the FOM. Does the applicant feel that this is so well known they do not have to disclose it?
Is the randomly setting of material types of Sub-wavelength units changed for each iterative transversal of all sub-wavelength units repeatedly (changed for each repeat)? Or are the randomly set material types kept the same for repeatedly transversal of all sub wavelength units? How does iterating and repeatedly transversing Sub-wavelength units determine the material type? What is the criteria for determining the material type using the FOM evaluation function (at the top of page 3 of amended claim 1)? What is “the preset value”? This lacks antecedent basis since there has not been a preset value previously mentioned. What is meant by “the material types with the preset value of the FOM evaluation function are selectively retained”? what is the criteria for “selectively retaining” materials? Which material types is this referring to? How does determining a material type using repeated transversal of all sub wavelength unit provide an optimal structure of the functional area? How does a material type obtain an optimal structure of a functional area? Merely having a specific type of material and/or determining a specific type of material does not provide “an optimal structure of the functional area”. How do the equations of claim 4 provide an optimal structure of the functional area? There are no specifics of how the results of these equations are used to determine the functional area or material type. How are the difference between the actual output optical loss and the target optical loss of each output waveguide help to determine the material type and functional area? What is the criteria for selecting material type and functional area based on this?
The last wherein clause of claim 1 says that a material of each of the sub-wavelength units in a functional area is silicon dioxide or silicon. Is the determination of the “material type” (top of page 3 of the amended claim) determined between silicon dioxide or silicon? If so, what is the criteria for determining this?
What is the criteria for adjusting “C, m, p, q, r, s, t, w” in claim 5? What is the scope of how this is done? Are they all changed at once? If so, this would have a drastic effect on the FOM. Isn’t it important how each of these would be changed to the output of the equation? Does each variable have a different critiera? If so, what are each of the criteria? What are the changes based on?
In claims 17-20 there is contradiction with claim 1. The top of page 4 says silicon dioxide or silicon, while claims 17-20 claim that it can be InP, GaAs, polymer, LN, diamond and chalcogenide system. It is confusing how this could be.
Response to Arguments
Applicant’s arguments with respect to the claims have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Because the amendments add confusion, the above 112 rejections should be addressed.
The applicant argues the claimed invention identifies chip layouts that provide favorable FOM quality parameters. The amended claims are so confusing that it is unclear how this is done. For example, the applicant argues that “the FOM function is calculated for each layout”, yet the claims never clearly say that the FOM is calculated for each layout. Merely “randomly set the material types” does not indicate that there are plural layouts and that each one is tested. Nor does transversing each subwavelength unit provide testing different material types. Nor do the claims make clear that this is done.
While the applicant argues that the FOM is compared to a threshold. This is also not in the claims. Nor does it appear to be in the specification.
The process of designing components and devices often tries numerous different arrangements/materials and tests or calculates which arrangement provides the best outcome in order to determine how to arrange components/materials. How does applicants’ trial and error method differ from what is well known?
Conclusion with no art
That art is not used against the claims is not an indication that the claims are allowable. The 112 problems cause a great deal of confusion and uncertainty as to the proper interpretation of the limitation of the claims. It is difficult for the examiner to ascertain what the applicant feels is the claimed invention.
The scope of the claims is unclear as discussed above. As a result, a meaningful formulation of art rejections cannot be done at this time. See MPEP 2173.06 II, 2nd paragraph:
… where there is a great deal of confusion and uncertainty as to the proper interpretation of the limitations of a claim, it would not be proper to reject such a claim on the basis of prior art. … a rejection under 35 U.S.C. 103 should not be based on considerable speculation about the meaning of terms employed in a claim or assumptions that must be made as to the scope of the claims.
See also Ex Parte Timothy J.O. Catlin and Kevin T. Rowney, the appeal of 09/167,315, Appeal No. 2007-3072, decided Feb. 3, 2009, page 12:
… A rejection of a claim, which is so indefinite that "considerable speculation as to meaning of the terms employed and assumptions as to the scope of such claims" is needed, is likely imprudent. See In re Steele, 305 F.2d 859, 862 (CCPA 1962) (holding that the examiner and the board were wrong in relying on what at best were speculative assumptions as to the meaning of the claims and basing a rejection under 35 U.S.C. §103 thereon.) …
(https://www.uspto.gov/sites/default/files/ip/boards/bpai/decisions/prec/fd073072.pdf).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LESLIE C PASCAL whose telephone number is (571)272-3032. The examiner is presently working a part time schedule. On the days that the examiner is not in the office, voicemail and email will be checked and the examiner will make an attempt to respond within one business day.
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, THOMAS A HOLLWEG can be reached at 571-270-1739. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/LESLIE C PASCAL/Primary Examiner
Art Unit 2874