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 .
Summary of the Claims
The present application (18/582,916) was filed on February 21, 2024 and claims priority to provisional application 63/447,440 filed on February 22, 2023. Claims 1-20 are pending. Claims 1, 13, and 20 are the independent claims.
References and Documents Cited in this Action
Huang (US 2023/0168563 A1)
Reano (US 2016/0011438 A1)
Shi (US 2022/0345220 A1)
Summary of Rejections and Objections in this Action
Examiner objects to claim 16 for minor informalities.
Claims 2, 3, 5, and 13-19 are rejected under 35 U.S.C. 112(b) as being indefinite.
Claims 13, 14, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Huang in view of Reano.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Huang in view of Reano and Shi.
Claims 13, 14, and 18 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 6 of U.S. Patent No. US 12,259,635 B2 in view of Reano.
Claims 1, 4, 6-12, and 20 are allowed. Claims 2, 3, 5, and 15-17 may contain allowable subject matter.
Claim Objections
Examiner objects to claim 16 for minor informalities. The claim should end with a period (“.”) instead of a comma (“,”).
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 2, 3, 5, and 13-19 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.
Claim 2 is indefinite because including the limitations of parent claim 1, claim 2 recites first, second, and third color light, i.e., three colors of light, but claim 4 further recites “the coherent second color light and the coherent third color light is a different color than the first color light.” Assuming that claim 4 is further limiting, it is unclear whether the scope of claim 2 would somehow include three colors that are not different. Claims 3 and 5 depend on claim 2 and are indefinite for the same reason as claim 2.
Claim 13 is indefinite because the claim recites “A device configured to generate a coherent second color light and a coherent third color light” but does not recite a “first” color light in the claim. It is unclear whether the scope of claim 13 includes two colors of light, or three (i.e., a “third” color light). Claims 14-19 depend on claim 13 and are indefinite for the same reason as claim 13.
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.
Claims 13, 14, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Huang in view of Reano.
Regarding independent claim 13, as well as the claim may be understood with respect to 35 U.S.C. 112(b) as discussed above, Huang discloses a device configured to generate a coherent second color light and a coherent third color light (Figure 1), the device comprising:
a waveguide 12 configured to couple to a light source (i.e., pump light from a laser; paragraphs [0031] and [0037]); and
a microring resonator 10 coupled to the light source via the waveguide, the microring resonator configured to generate a coherent second color light and a coherent third color light (i.e., Huang discloses “new color of light” and “new frequencies of light”; paragraphs [0031] ad [0053]).
Further regarding claim 13, Huang does not specifically disclose that the microring resonator 10 includes unit cells. However, Reano teaches a device that is related to the one disclosed by Huang, including a microring resonator 1006 (Figure 10A). Reano further teaches that the microring resonator 1006 includes unit cells 1006A (paragraphs [0070-[0072]). Regarding claim 13, it would have been obvious to a person of ordinary skill in the art to include unit cells as taught by Reano in the device disclosed by Huang in order to advantageously control polarization of the light (Reano, paragraphs [0003]-[0006]).
Regarding claim 14, in the device taught by Huang in view of Reano, Huang discloses that the generation of the coherent second color light and the coherent third color light is based on optical parametric oscillation (paragraphs [0031] and [0053]).
Regarding claim 18, in the device taught by Huang in view of Reano, Huang discloses that the microring resonator 10 and the waveguide 12 are on a common substrate (Figure 1; paragraphs [0031] and [0055]).
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Huang in view of Reano as applied to claim 13 above, and further in view of Shi.
Regarding claim 19, Huang in view of Reano teaches a device as discussed above with regard to claim 13 including a microring resonator that includes a photonic crystal structure (i.e., crystalline lithium niobate; Huang, paragraph [0031]) but does not specifically disclose a grating.
However, Shi teaches a device that is related to the one taught by Huang in view of Reano including a microring resonator 910 (Figures 9A and 9B). Shi further teaches that the microring resonator includes a grating (paragraph [0114]). Regarding claim 19, it would have been obvious to a person of ordinary skill in the art to include a grating as taught by Shi in the device taught by Huang in view of Reano in order to advantageously couple light out of the resonator (Shi, paragraph [0114]).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 13, 14, and 18 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 6 of U.S. Patent No. US 12,259,635 B2 in view of Reano.
Claim 13 essentially recites a subset of the limitations recited in claim 1 of US 12,259,635 B2 as shown in the table below. Claim 14 recites further limitations that are also further recited in claim 1 of US 12,259,635 B2.
Claims 1 and 6 of US 12,259,635 B2
Claims 13, 14, and 18
1. A system for generating a coherent laser light, comprising:
a light source configured to pump a first color laser light; and
a device configured to generate a coherent second color light and a coherent third color light, the device including:
13. A device configured to generate a coherent second color light and a coherent third color light, the device comprising:
a waveguide configured to couple to the light source; and
a waveguide configured to couple to a light source; and
a microring resonator coupled to the light source via the waveguide, the microring resonator configured to generate a coherent second color light and a coherent third color light,
a microring resonator coupled to the light source via the waveguide, the microring resonator configured to generate a coherent second color light and a coherent third color light,
wherein the generation of the coherent second color light and the coherent third color light is based on hybrid-mode optical parametric oscillation.
(Not in claim 1 of US 12,259,635 B2 but obvious in view of Reano; see discussion below.)
the microring resonator including unit cells.
(See corresponding limitation in claim 1 of US 12,259,635 B2 above.)
14. The device of claim 13, wherein the generation of the coherent second color light and the coherent third color light is based on optical parametric oscillation.
6. The system of claim 1, wherein the microring resonator and the waveguide are on a common substrate.
18. The device of claim 13, wherein the microring resonator and the waveguide are on a common substrate.
Claims 13 and 14 differ from claim 1 of US 12,259,635 B2 in that claim 13 further recites “the microring resonator including unit cells,” which is not recited in claim 1 of US 12,259,635 B2. However, Reano teaches a related device including a microring resonator 1006 (Figure 10A). Reano further teaches that the microring resonator 1006 includes unit cells 1006A (paragraphs [0070]-[0072]). Given claim 1 of US 12,259,635 B2, it would have been obvious to a person of ordinary skill in the art to create claims 13 and 14 simply by removing limitations and including unit cells as taught by Reano in order to advantageously control polarization of the light (Reano, paragraphs [0003]-[0006]).
Claim 18, which depends on claim 13, recites limitations that correspond to claim 6 of US 12,259,635 B2, which depends on claim 1 of US 12,259,635 B2. Therefore, claim 18 is patentably indistinct from claim 6 of US 12,259,635 B2 for the same reason given for parent claim 13 above.
Allowable Subject Matter
Claims 1, 4, 6-12, and 20 are allowed. Claims 2, 3, and 5 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action. Claims 15-17 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The prior art does not specifically disclose or fairly suggest a device including the combination of all of the elements, steps, and limitations recited in claims 1-12, 15-17, and 20 (including all of the limitations of any respective parent claims and as well as some of these claims may be understood with respect to 35 U.S.C. 112(b)), particularly including:
a microring resonator wherein the microring resonator is a photonic crystal ring configured to enable injection locking, and wherein the microring resonator is configured to operate at a bandgap closing point, where reflection at a single frequency occurs (e.g., claim 1);
a microring resonator wherein the microring resonator is configured for injection locking and to operate at a bandgap closing point, where reflection at a single frequency occurs (e.g., claim 15);
a microring resonator wherein the microring resonator includes: a substrate comprised of silicon dioxide disposed on a second side of the unit cells; and a cladding comprised of air disposed on a first side of the unit cells (e.g., claim 16); or
a photonic crystal ring configured to enable injection locking, the photonic crystal ring coupled to a light source via the waveguide, wherein the photonic crystal ring is configured to operate at a bandgap closing point, where reflection at a single frequency occurs (e.g., claim 20).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Christina Leung at telephone number (571) 272-3023. If attempts to reach the examiner are unsuccessful, the examiner’s supervisor, Patricia Engle can be reached at (571) 272-6660.
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/CHRISTINA Y. LEUNG/ Primary Examiner, Art Unit 3991
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