DETAILED ACTION – FINAL REJECTION
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 .
Response to Amendment
This action is responsive to the amendment and remarks received April 06, 2026. Claim 1 is amended. No claims are canceled or newly added. Claims 1-10 are pending in the application.
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, 2, 4-8 and 10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kondou (US Patent Application Publication 2015/0277156, hereinafter referred to as “Kondou”). Kondou anticipates claims:
1. An optical waveguide device (see Kondou figure 18, included below) comprising:
an optical waveguide (waveguide, see figure 18) formed on a substrate (holding substrate, see figure 18) having an electro-optic effect (the optical waveguide is formed in an LN substrate, which has an electro-optic effect; see paragraph 0069); and
an electrode (electrode, see figure 18) disposed on the substrate,
wherein a first underlayer (metal, see figure 18, is interpreted as the first underlayer) of a first material (titanium, see paragraph 0107) formed on an upper surface of the substrate (the top surface of the holding substrate in the orientation shown in figure 18 is interpreted as the upper surface of the substrate) and a second underlayer (LN substrate is interpreted as the second underlayer) of a second material (LN) different from the first material (Ti and LN are different materials) formed on an upper surface of the first underlayer (the top surface of the metal layer in the orientation shown in figure 18 is interpreted as the upper surface of the first underlayer) are disposed in at least a part of a region (see figure 18, the region shown in the figure is interpreted as the part of a region) on the substrate in which the electrode is formed (see figure 18, the electrode is present in the part of a region meeting this limitation), and the electrode is formed on an upper side of the second underlayer (the top surface of the LN substrate in the orientation shown in figure 18 is interpreted as the upper side of the second underlayer).
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2. The optical waveguide device according to claim 1,
wherein an optical absorption coefficient of the first material is higher than an optical absorption coefficient of the second material (Ti has an optical absorption coefficient higher than niobium as disclosed in the instant application).
4. The optical waveguide device according to claim 1,
wherein the electrode is provided with a modulation electrode (the electrode is interpreted as a modulation electrode) including an action portion (the electrode is interpreted as an action portion) that applies an electric field of a high-frequency signal to the optical waveguide (this is an intended use of the claimed structure and is a function of the previously claimed structures; the patentability of an apparatus depends only on the claimed structural limitations and since Kondou teaches a structure that is substantially identical to that of the claimed invention, the claimed properties or functions are presumed to be inherent - the burden is on the applicant to show that the Kondou device does not possess these functional characteristics - see MPEP 2112.01.), in the action portion, the second underlayer is disposed on the upper surface of the substrate under the modulation electrode closest to the optical waveguide (see figure 18), and the upper surface of the substrate is sequentially laminated with the first underlayer and the second underlayer under the modulation electrode separated by more than a predetermined distance from the optical waveguide (see figure 18).
5. The optical waveguide device according to claim 1,
wherein the substrate is sequentially laminated with the first underlayer and the second underlayer under the electrode (see figure 18) formed in at least a part of a region in which unnecessary light propagates through the substrate (see figure 18, any light can be interpreted as unnecessary and any region a part of a region, so the claim limitation is necessarily met).
6. The optical waveguide device according to claim 1,
wherein the second underlayer is disposed on an upper surface of the optical waveguide under the electrode disposed on an upper side of the optical waveguide (see figure 18, all the components of the device are interpreted as being disposed “on” all the other components).
7. The optical waveguide device according to claim 1,
wherein the first material is titanium (see paragraph 0107), and the second material is niobium (see figure 18).
8. An optical modulation device comprising:
the optical waveguide device according to claim 1;
a case (conductive film is interpreted as a case, see figure 18) accommodating the optical waveguide device (see figure 18); and
an optical fiber (optical fiber) through which a light wave is input into the optical waveguide or output from the optical waveguide (see figure 11).
10. An optical transmission apparatus comprising:
the optical modulation device according to claim 8; and
an electronic circuit that outputs a modulation signal causing the optical modulation device to perform a modulation operation (see paragraph 0109-0111; the device is an optical modulator and therefore has an electronic circuit to output a modulation signal causing the modulation).
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.
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.
Claim(s) 3 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kondou, as previously applied to claims 1 and 8 above.
With respect to claim 3, Kondou discloses the limitations of claim 1 as previously stated. Kondou is silent to the thickness of the first underlayer is 10 nm or less. However, Kondou further discloses various thicknesses for the first underlayer and discloses the importance of the relationship between the thickness of the titanium film and a propagation loss of the slab-propagated light (see paragraph 0026 and figure 6). Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to form the thickness of the first underlayer to be 10 nm or less, motivated by a desire to find the best thickness for the titanium film in the device of Kondou to try and optimize the thickness of the titanium layer with respect to the propagation loss of light in the device, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
With respect to claim 9, Kondou discloses the limitations of claim 8 as previously stated. Kondou further discloses modulation electrodes for modulating the light wave propagating through the optical waveguide (the device is a modulator so it has modulation electrodes; see paragraph 0109-0111). Kondou is silent to an electronic circuit that amplifies a modulation signal to be input into the modulation electrode of the optical waveguide device is provided inside the case. However, the examiner takes official notice that an electronic circuit that amplifies a modulation signal to be input into the modulation electrode of the optical waveguide device is a well-known electronic circuit component in the optical modulator arts for use in optical modulators and are beneficially used to create modulation signals of an appropriate strength to effectively modulate the light. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to include in the case of Kondou an electronic circuit that amplifies a modulation signal to be input into the modulation electrode of the optical waveguide device, to create modulation signals of an appropriate strength for optical modulation.
Response to Arguments
Applicant's arguments filed April 06, 2026 have been fully considered but they are not persuasive. The examiner has thoroughly reviewed applicant’s arguments but believes the cited reference(s) fully meet the requirements of the claims as detailed above.
Applicant first argues, see the bottom half of page 4, that Kondou fails to “a substrate having an electro-optic effect” as required in claim 1, that the “substrate” of the subject invention is a substrate on which an optical waveguide is formed, and the “substrate” has an “electro-optic effect”, and therefore the “LN substrate” of Kondou is the “substrate” that corresponds to the substrate as recited in the claims.
The examiner respectfully disagrees. The claim does not require “a substrate having an electro-optic effect” as applicant argues. The portion of the claim quoted by applicant is just a portion of the limitation in claim 1. The full limitation is “an optical waveguide formed on a substrate having an electro-optic effect;” The subject of this limitation is “an optical waveguide” not “a substrate.” That is to say, it appears to the examiner that the claim requires the optical waveguide as “having an electro-optic effect” and not the “substrate.” Either way, the examiner believes either interpretation is fair in view of the breadth and ambiguity in the claim language used. To applicant’s next point, looking at figure 18 of Kondou, every single element shown in the figure is on the holding substrate. Therefore, the holding substrate of Kondou is in fact a substrate “on which an optical waveguide is formed” since every element is formed on the holding substrate. As such, Kondou meets the requirements of the claim, as written, and reasonably interpreted, and there does not appear to be any reason the examiner should be forced to match the elements of Kondou to the claim limitations as applicant argues, as the claims are not specific enough to require such an interpretation.
Applicant’s last arguments, see page 5, state “[w]ith respect to the rejections of Claims 3 and 9, and in accordance with MPEP 717.02(c)(1)(D) and MPEP 2144.03(B), Applicant respectfully requests the Examiner provide the best written reference in support of the Office Action statements…” And lastly, Applicant respectfully suggests that a secondary reference disclosing the subject matter thereof is essential in evaluating the prior art and the proposed combination in order to properly respond and to formulate a proper response.
The examiner does not find these arguments persuasive. MPEP 717, including 717.02(c)(1)(D) is directed to prior art exceptions as they apply to rejections under 35 USC 102(b)(2). This is not relevant to the matter at hand.
The rejection of claim 3 relies upon case law, and the examiner maintains that no secondary reference is required for the finding of obviousness. MPEP 2144.05 specifically discusses the basis used for the examiner’s finding that the claimed range is obvious.
MPEP 2144.03(B), the section mentioned by applicant, states that “[t]he applicant should be presented with the explicit basis on which the examiner regards the matter as subject to official notice so as to allow the applicant an opportunity to adequately traverse the rejection in the next reply after the Office action in which the "common knowledge" statement was made.” The explicit basis, that is to say the factual findings which were predicated on sound technical and scientific reasoning to support the conclusion of common knowledge, were included in the official notice as it was taken by the examiner. Therefor, applicant’s request that the examiner provide the best written reference is not in accordance with MPEP 2144.03(B) as applicant suggests. The equivalent of the “secondary reference” in the rejection required from the examiner for the official notice was given in the official notice as the examiner’s statement. Electronic circuits that “amplifies a modulation signal,” that is to say the electrical components known as an “amplifier” are so incredibly well-known, the examiner maintains that a separate secondary reference is not required.
Furthermore, the next section of the MPEP, MPEP 2144.03(C) is directly related to this argument by applicant. Among other things, this section states “To adequately traverse a finding based on official notice, an applicant must specifically point out the supposed errors in the examiner’s action, which would include stating why the noticed fact is not considered to be common knowledge or well-known in the art. A mere request by the applicant that the examiner provide documentary evidence in support of an officially-noticed fact is not a proper traversal.” Later in this very same section, the MPEP states: “If applicant does not traverse the examiner’s assertion of official notice or applicant’s traverse is not adequate, the examiner should clearly indicate in the next Office action that the common knowledge or well-known in the art statement is taken to be admitted prior art because applicant either failed to traverse the examiner’s assertion of official notice or that the traverse was inadequate. See Ahlert, 424 F.2d at 1091, 165 USPQ at 420. If the traverse was inadequate, the examiner should include an explanation as to why it was inadequate.”
In accordance with MPEP 2144.03(c), since applicant’s traverse is not adequate as it is a mere request by the applicant that the examiner provide documentary evidence in support of an officially-noticed fact, the common knowledge or well-known in the art statement, that is to say the examiner’s position in the rejection of claim 9 taking official notice, is taken to be admitted prior art.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN M BEDTELYON whose telephone number is (571)270-1290. The examiner can normally be reached 8:00am - 4:30pm.
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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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/John Bedtelyon/Primary Examiner, Art Unit 2874
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