DETAILED ACTION
This office action is in response to the application and claims filed on March 4, 2024. Claims 1-16 are pending, with claims 1 and 13 in independent form.
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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The prior art documents submitted by Applicant in the Information Disclosure Statements filed on December 13, 2024 and August 20, 2024, have been considered and made of record (note attached copy of forms PTO-1449).
Drawings
The original drawings (nine (9) pages) were received on March 4, 2024. These drawings are acknowledged.
Claim Objections
Claims 1-16 are objected to because of the following informalities: regarding independent claim 1, the term “optical coupler” should be consistently claimed as “optical edge coupler” without being shortened. Similarly, the terms “photonic chip” should not be shortened to “chip” (two instances in claim 1) and “the first and second dielectric layers” should not be shortened to “the first and second layers.” All such terminology should be consistent throughout the claim(s). Regarding second independent (method) claim 13, the term “at least three dielectric layers” should not be shortened to “the dielectric layers” and should be consistent. Claims 2-12 and 14-16 are also objected to at least as being dependent from claims 1 and 13, respectively. Appropriate correction is required.
Also regarding objectionable features found within the dependent claims:
-Claim 4: the term “each first layer” should read “each first dielectric layer.”
-Claim 5: the term “each first layer” should read “each first dielectric layer.”
-Claim 6: the terms “each first layer” and “each second layer” should read “each first dielectric layer” and “each second dielectric layer.”
-Claim 8: the term “the surface” should be consistent as “the facing surface.
-Claims 9 and 10: the term “the layers” should read “the first and second dielectric layers” for consistency with claim 1.
-Claim 12: the term “the package” should be consistently claimed as “the non-hermetic package.”
-Claim 15: the term “the layers” should read “the at least three dielectric layers.”
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 9, 10, 12, and 15 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.
Claims 9, 10, and 15 recite the limitation "the layers" in the claim body of each dependent claim. There is insufficient antecedent basis for this/these limitation(s) in the claim. Notably, the independent claim 1 / 13 recite either “first and second dielectric layers” (claim 1) and “at least three dielectric layers” (claim 13). Therefore, the exact scope (metes-and-bounds) of the term “the layers” in a dependent claim is not immediately apparent or clear. For these reasons, dependent claims 9, 10, and 15 are rejected under 35 U.S.C. 112(b) as lacking proper antecedent basis (indefinite).
Regarding claim 12, the termed phrase “the coating substantially protecting” the optical edge coupler (from ambient moisture) is not readily apparent in scope, being a relative term/phrase which renders the claim indefinite. The term “substantially protecting” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. In particular, it is not immediately clear what type of coating would be (NON) substantially protecting. Therefore, claim 12 is rejected herein under 35 U.S.C. 112(b) for being vague and indefinite.
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.
Claims 1-4, 8-14, and 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lebby et al. US 2022/0187638 A1 (which has matured into U.S. Patent No. 11,506,918 B2).
Lebby et al. US 2022/0187638 A1 teaches (ABS; Figs. 5, 6, and 10; corresponding text, in particular paragraphs [0014], [0034] – [0036]; Claims) an apparatus (as in Figs. 5 and 10, for example) comprising: a photonic chip 20 comprising an optical edge coupler for end-coupling an external optical waveguide to the photonic chip (see Fig. 10 of Lebby, the photonic chip can be coupled through an edge to an external fiber/waveguide 100/102, which meets all structure and function of “optical edge coupler/coupling”), the optical edge coupler having one end at an edge of the chip (Fig. 10); and a coating 72 on, at least, a part of the edge of the photonic chip over the one end of the optical edge coupler, the coating being a stack interleaving first and second dielectric layers (stack of an encapsulation layer 72 of interleaved layers of dielectrics (such as “ALD” deposition), see Fig. 5 and paras [0034] – [0035] and [0040]) of different material composition, the stack including at least 2 interfaces between adjacent ones of the first and second dielectric layers (differences in composition at least shown in Fig. 5 and paragraphs cited, with interfaces between layer(s)), which clearly, fully meets Applicant’s claimed structural limitations for independent claim 1.
Regarding the second independent (method) claim 13, Lebby US ‘638, the atomic layer deposition is cited in Lebby (para [0035], “ALD”), and the numerous interleaved configuration of the stack in coating 72 (Fig. 5; paras [0034] – [0036]) teach that the alternative layers, at least immediately adjacent, have different material compositions of the adjacent dielectric layer(s). Therefore, all method steps (for formation of the device in claim 1) are also anticipated by Lebby, rendering independent claim 13 rejected herein.
Regarding dependent claim 2, the coating 72 covers at least half of a surface of the photonic chip 20 (Fig. 10).
Regarding claims 3 and 14, the external waveguide in Lebby Fig. 10 is a fiber 100 and/or 102, which meets both structure and method.
Regarding claim 4, see Lebby paras [0034] – [0036], which team at least one of silicon nitride, aluminum oxide, and/or hafnium oxide for the coating 72 interleaves (at least “aluminum oxide”, para [0034]).
Regarding claim 8, the overall carrier feature is shown in Lebby Fig. 10 as 54 (under the fibers as an integrated larger device), and the coating 72 is disposed at least partially over a surface (left or right side of the ridge/rib) as a facing surface (for fiber(s)).
Regarding claim 9, the stack in Lebby Fig. 5 has at least four layers.
Regarding claim 10, the thickness of the encapsulation is recited in the range of 1 nm to 200 nm (para [0035]), which meets the smaller end of the range of the claimed 25 nm or less as an example, which meets all structure.
Regarding claim 11, the thickness of the encapsulation is recited in the range of 1 nm to 200 nm (para [0035]), which meets the smaller end of the range of the claimed 100 nm or less as an example, which meets all structure.
Regarding claim 12, the overall design and package in Lebby Fig. 10 can be considered “non-hermetic” and will functionally “substantially protect” the optical edge coupler from ambient moisture, which meets all structure claimed.
Regarding claim 16, the ALD step in Lebby can be performed after the “soldering” step of connecting the photonic chip to the carrier (as in Fig. 10), and the atomic layer deposition occurs after to provide such encapsulation (see para [0014], the connected soldering must occur before the encapsulant formation).
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.
The factual inquiries 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.
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.
Claims 5-7 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Lebby et al. US 2022/0187638 A1 (which has matured into U.S. Patent No. 11,506,918 B2), based on independent claims 1 and 13 (and intervening dependent claim 4).
Regarding independent claim 1, Lebby et al. US 2022/0187638 A1 teaches (ABS; Figs. 5, 6, and 10; corresponding text, in particular paragraphs [0014], [0034] – [0036]; Claims) an apparatus (as in Figs. 5 and 10, for example) comprising: a photonic chip 20 comprising an optical edge coupler for end-coupling an external optical waveguide to the photonic chip (see Fig. 10 of Lebby, the photonic chip can be coupled through an edge to an external fiber/waveguide 100/102, which meets all structure and function of “optical edge coupler/coupling”), the optical edge coupler having one end at an edge of the chip (Fig. 10); and a coating 72 on, at least, a part of the edge of the photonic chip over the one end of the optical edge coupler, the coating being a stack interleaving first and second dielectric layers (stack of an encapsulation layer 72 of interleaved layers of dielectrics (such as “ALD” deposition), see Fig. 5 and paras [0034] – [0035] and [0040]) of different material composition, the stack including at least 2 interfaces between adjacent ones of the first and second dielectric layers (differences in composition at least shown in Fig. 5 and paragraphs cited, with interfaces between layer(s)). Regarding the second independent (method) claim 13, Lebby US ‘638, the atomic layer deposition is cited in Lebby (para [0035], “ALD”), and the numerous interleaved configuration of the stack in coating 72 (Fig. 5; paras [0034] – [0036]) teach that the alternative layers, at least immediately adjacent, have different material compositions of the adjacent dielectric layer(s). Therefore, all method steps (for formation of the device in claim 1) are also anticipated by Lebby, rendering independent claim 13 rejected herein. Regarding intervening dependent claim 4, see Lebby paras [0034] – [0036], see the selectable materials for the coating / stack (encapsulant 72).
Further regarding dependent claims 5-6 (from claim 4), 7, and 15, there is no express and exact recitation using silicon oxide for the first dielectric layer (claim 5), for thinner or alternating thickness of the layers (claims 6 and 15), or for the stack to start and end with a silicon-dioxide layer (claim 7). However, at a time before the effective filing date of the current application, it would have been an obvious matter of common skill and design choice to a person of ordinary skill in the art to use features such the selectable designs of the materials chosen, the thicknesses thereof, or the ordering of such oxides because Applicant has not disclosed that using such features provides an advantage, is used for a particular purpose, or solves a stated problem. One of ordinary skill in the art, furthermore, would have expected Lebby to perform equally well with such features as the selected choice of type of oxide, thickness, or ordering, based on the disclosure of paragraphs [0034] – [0036] and [0040], with known types of oxides using ALD in the art, because these claim terms would have been easily integrated and would have also been recognized by one with common skill in the art to improve the resultant moisture / water barrier functionality for an edge-coupler. It would have required no undue burden or unnecessary experimentation to arrive at those features with an apparatus such as Lebby. Further, the base structure of the independent claim 1 (and the method steps of claim 13) are clearly anticipated by Lebby as discussed prior to this section. Therefore, it would have been an obvious matter of common skill and design choice to modify (and/or update) Lebby to obtain the invention as specified in claims 5-7 and 15. See KSR v. Teleflex, 127 S.Ct. 1727 (2007).
Inventorship
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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: PTO-892 form references A and B (to Bian US ‘423 and Zhou US ‘339), which pertain to the state of the of optical couplers (edge coupling particularly in Bian), with the use of layering formations that may improve barriers to moisture. Note in particular Bian has a structural moisture barrier 34 for the edge-coupler design.
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/DANIEL PETKOVSEK/Primary Examiner, Art Unit 2874 March 3, 2026