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 § 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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-2, 9-12, 18 and 19 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Wu et al. (2023/0006114).
Re claims 1 and 11, Wu et al. discloses a bonding structure for forming at least one electrical connection between a photonic substrate (20) and an optoelectronic component (10), the bonding structure comprising:
- an electroconductive pad (11/21/50) between the photonic substrate (20) and the optoelectronic component (10), which wherein the electroconductive pad comprises at least two separated portions (Fig. 1A), and
- a bond layer (50) between the electroconductive pad (11/21) and the optoelectronic component (10), and between the at least two portions of the electroconductive pad (11/21).
Re claim 2, Wu et al. discloses wherein the bond layer (21) comprises a solder alloy ([0020]).
Re claims 9 and 18, Wu et al. discloses wherein the photonic substrate (20) is silicon photonic chip ([0018]).
Re claims 10 and 19, Wu et al. discloses wherein the optoelectronic component is a photodiode (electronic die [0018]).
Re claim 12, Wu et al. discloses further providing a first bonding material layer on the surface of the photonic substrate (Fig. 6A).
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.
Claim(s) 3-5 and 13-15 are rejected under 35 U.S.C. 103 as being unpatentable over Wu et al. as applied to claims 1-2, 9-12, 18 and 19 above, and further in view of the following comments.
Re claim 3, Wu et al. does not specifically disclose wherein the electroconductive pad has a height of 0.2 to 1 µm.
One of ordinary skill in the art would have been led to the recited height through routine experimentation to achieve a desired device dimension, device associated characteristics and device density on the finished wafer.
In addition, the selection of height, it's obvious because it is a matter of determining optimum process conditions by routine experimentation with a limited number of species of result effective variables. These claims are prima facie obvious without showing that the claimed ranges achieve unexpected results relative to the prior art range. In re Woodruff, 16 USPQ2d 1935, 1937 (Fed. Cir. 1990). See also In re Huang, 40 USPQ2d 1685, 1688 (Fed. Cir. 1996)(claimed ranges or a result effective variable, which do not overlap the prior art ranges, are unpatentable unless they produce a new and unexpected result which is different in kind and not merely in degree from the results of the prior art). See also In re Boesch, 205 USPQ 215 (CCPA) (discovery of optimum value of result effective variable in known process is ordinarily within skill or art) and In re Aller, 105 USPQ 233 (CCPA 1995) (selection of optimum ranges within prior art general conditions is obvious).
Note that the specification contains no disclosure of either the critical nature of the claimed height or any unexpected results arising therefrom. Where patentability is said to be based upon particular chosen height or upon another variable recited in a claim, the Applicant must show that the chosen height is critical. In re Woodruf, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990).
Re claim 4, Wu et al. does not specifically disclose further comprising an optical connection between the photonic substrate and the optoelectronic component.
However, Wu et al. implicitly disclose an optical connection between the photonic substrate and the optoelectronic component ([0005]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to use the implicit teaching to make an optical connection.
Re claims 5 and 13, it was well known in the art before the effective filing date of the invention to provide a passivation layer on the substrate to provide protection to respective device’s parts.
Re claim 14, Wu et al. implicitly disclose wherein a bonding temperature for bonding the first bonding material layer with the second bonding material layer is lower than a melting temperature of the electroconductive pad (Wu et al. disclose a solder alloy in [0020]).
Re claim 15, Wu et al. implicitly disclose wherein bonding of the first bonding material layer with the second bonding material layer is provided by solder bonding ([0020]).
Allowable Subject Matter
Claims 6, 7, 16, 17 and 21 are 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.
Pending the correction of issues outlined in the rejection above, the following is a statement of reasons for the indication of allowable subject matter: the prior art does not disclose or fairly suggest the following in combination the remaining limitations called for in each claim:
wherein the optoelectronic component comprises at least one groove and the photonic substrate comprises at least one protrusion configured to the at least one groove for aligning the optoelectronic component with the photonic substrate, as recited in claim 6;
wherein the bond layer extends on the at least one protrusion and/or on the at least one groove, as recited in claim 7;
further comprising: providing at least one groove in the optoelectronic component, and providing at least one protrusion on the photonic substrate for aligning the optoelectronic component with the photonic substrate, as recited in claim 16;
which method comprises further comprising providing the first bonding material layer on the at least one protrusion and/or the second bonding material layer on the at least one groove, as recited in claim 17;
wherein the electroconductive pad further comprises at least one gap between the at least two separated portions, and wherein the bond layer is further disposed in the at least one gap, as recited in claim 21.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHELLE MANDALA whose telephone number is (571)272-1858. The examiner can normally be reached 8:00-5:00 PM.
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, Sue Purvis can be reached at 571-272-1236. 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.
/MICHELLE MANDALA/Primary Examiner, Art Unit 2893 July 14, 2026
Prosecution Insights