DETAILED ACTION
This office action is in response to the continuation (CON) application and claims. This application is a CON of U.S. Application Number 17/320,228, which has matured into U.S. Patent No. 11,953,740 B2.
Claims 1-20 are pending, with claims 1, 11, and 15 in independent claim 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 .
Information Disclosure Statement
It is noted that Applicant has not filed an Information Disclosure Statement. If Applicant becomes aware of any prior art that may be pertinent to the examination and analysis of the claimed subject matter, a PTO-1449 form should be filed.
Drawings
The original drawings (twenty-four (24) pages) were received on March 5, 2024. These drawings are acknowledged.
Specification
The disclosure is objected to because of the following informalities: the 1st paragraphs of the specification must include the most-recent US PTO data. For example, the patent number of the parent application (11,955,740 B2) must be updated for the U.S. Application number. Appropriate correction is required.
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 1-20 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,953,740 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the current application are either anticipated by, or made reasonably obvious, by the allowed claims 1-20 of the parent ‘740. Therefore, and although not literally identical (verbatim), these claims are rejected under non-statutory double patenting. Applicant should file a terminal disclaimer in relation to the parent ‘740 patent.
In particular, the parent ‘740 claim 1 anticipates current independent claim 1; the parent ‘740 claim 11 and dependent claim 12 anticipates current independent claim 11; and the parent ‘740 claim 15 anticipates current independent claim 15. All dependent claims 2-10, 12-14, and 16-20 are found directly within features of claims 1-20 (notably dependent claims 2-10, 12-14, and 16-20 of the parent ‘740), or would have been simple and obvious design choice (for “combinations” of optical and/or electrical features). Therefore, all such claims are rejected herein under non-statutory double patenting to the parent (11,953,740 B2) patent.
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 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Chang et al. U.S. Patent No. 10,930,628 B2 (which was published as early as January 2, 2020 as PG Pub ‘304), and further in view of Ding et al. U.S. Patent No. 10,001,611 B2 and Nakanishi et al. U.S. Patent No. 7,136,594 B2, further in view of Giziewicz et al. DE 10 2011 113 212 A1 (see attached document PTO-892 reference N with English translation as reference U.).
The effective filing date of the current application is May 14, 2021.
Regarding independent claims 1, 11, and 15, Chang et al. U.S. Patent No. 10,930,628 B2 teaches (ABS; Figs. 3M, 4, 5A, 5C, 7I; corresponding text, see columns 2-14; Claims) a package structure (most fully shown as Fig. 7I) comprising: a photonic die 102 comprising an optical coupler (in coupled at 121; see also Fig. 4); and an optical guiding region (as in Figs. 3M (at 326, where optics are input), 4, 5A, 7I) which is disposed at the optical in-coupling area to connect to an optical fiber 124, wherein the optical guiding region comprises a first end portion that can be coupled to the optical coupler feature in the photonic die 102 as well as having a second end that include grooved features that are formed in order to have an optical fiber disposed in the groove(s) 126 in order to align the fiber to the optical guiding region (Figs. 3M, 5A and 5C most clearly showing the grooves 126 for the fiber).
Regarding independent claims 1, 11, and 15, Chang ‘628 does not expressly and exactly teach missing limitation (1) an encapsulant material, one which is lateral (or on the side) of the photonic die and the electronic die, for encapsulating in a lateral fashion the two dies, and in which the optical coupling region is disposed over the encapsulant area, or missing limitation (2) in which the optical guiding region is a “waveguide” in which the waveguide has additional coupling features and the groove itself is part of a distinct “waveguide” pattern (see Applicant’s Figs. 15A-15C, 20A, 20B, 21, 22 for examples of the “fiber” in a “groove” of the waveguide itself).
Regarding missing limitation (1), Ding et al. U.S. Patent No. 10,001,611 B2 (ABS; Figs. 1, 3, 5D; corresponding text; Claims) and Nakanishi et al. U.S. Patent No. 7,136,594 B2 (ABS; Figs. 1, 2, 13; corresponding text; Claims) teach package structures that may include photonic / optical die and electronic die integrated into one device, and in which encapsulant is used (see Fig. 1 Ding ‘611, encapsulant of the mold for 110; Fig 13 Nakanishi ‘594 resin 50 can encapsulate the elements above in Embodiment 4), and in which both Ding and Nakanishi teaches that an optical fiber is coupled through a in-coupler or waveguide area and is on top of the encapsulant feature (fiber of Ding in Fig. 3 and 5D is on top of 110; fiber of Nakanishi in Figs. 1, 2, and 13 is on top of the resin area at 50 to in-couple). Using an encapsulant in a side or lateral area of the O-E package is thus known via the teachings of Ding/Nakanishi in order to house and functionally protect the internal components but allow optical signals to still be coupled to the optical features through a coupler and/or waveguide. Noting claim 11, the redistribution layer(s) is shown in Chang.
Regarding missing limitation (2), Giziewicz et al. DE 10 2011 113 212 A1 teaches (ABS; Figs. 1, 2, 8-10; corresponding text from English translation; Claims) an input coupling feature to introduce / extract optical signals on / off an optical chip, in which the coupling feature includes a waveguide 30 / 300 which is disposed over the optical “coupling” element, in that the waveguide includes a first portion (at left of cited Figs.) and a second portion (at right of cited Figs.), the first portion coupled to the desired optical element (the one below) and the second portion has a groove on an upper surface of the waveguide element itself, in which an optical fiber 12 can be placed in the groove. Such configuration is used and known to allow direct fiber coupling to the waveguide and to the chip itself, to improve coupling performance.
Since Chang, Ding/Nakanishi, and Giziewicz are all from the same field of endeavor, the purposes disclosed by Ding, Nakanishi, and Giziewicz would have been recognized in the pertinent art of Chang.
A person having ordinary skill in the art at the time of the effective filing of the current application would have recognized the teachings of Giziewicz, Ding, and Nakanishi, to use an encapsulation (insulating) layer and encapsulant on the lateral or side areas of the photonic and electronic dies, as a way to protect and house the internal components, and also to employ the type of waveguide (with a groove for the input put), and also allow the input optical fiber (fibers shown in all references Chang, Ding, Nakanishi, and Giziewicz) to a waveguide and in-coupler element to the photonic chip, using grooves to attach the fiber(s) thereto, into the base design of the package of Change, to allow for improved protection and elimination of optical error signals due to external stimuli affecting the input fiber-to-waveguide-coupler area, with direct coupling of a fiber to a waveguide (as in Giziewicz). Further, it would have required no undue burden or unnecessary experimentation to arrive at such features of a laterally encapsulant or insulating layer, or the waveguide / groove / fiber configuration, with the appropriate features of the waveguide above / on top of for the grooved optical fiber(s) and being encapsulated. See KSR v. Teleflex, 127 S.Ct. 1727 (2007). Particular of note in independent claim 15, the feature of “reflective” in-coupling in the waveguide is shown by Giziewicz (at 11 / 32 Figs.). For these reasons, independent claims 1, 11, and 15 are found obvious over Chang and further in view of Ding/Nakanishi and Giziewicz (henceforth “COMBO”).
Regarding dependent claim 2, the fiber is shown at input in each reference of COMBO reference, and would have been obvious in the combined hypothetical device.
Regarding further dependent claims 3-10, 12-14, and 16-20, the overall combination of the independent claims (“COMBO”) to Chang and further in view of Ding/Nakanishi and Giziewicz either expressly teaches those further features, or makes reasonably obvious such structure in a device.
Noting the COMBO, and the recited dependent features (claims 3-10, 12-14, and 16-20), it would have been an obvious matter of common skill and design choice to a person of ordinary skill in the art such as to use different features of the optical fiber, the groove, the surfaces of the photonic die, redistribution layers, adhesives, coverings, sidewalls, reflectors to reflect the optical waveguide signal into the coupler element, etc. 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 the COMBO (of any independent claim 1, 11, or 15) to perform equally well with such features (as in claims 3-10, 12-14, and/or 16-20) 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 optical signals propagation by making the package adjustable and having improved groove and layering features for optimal design and an integrated PIC. It would have required no undue burden or unnecessary experimentation to arrive at these features with a package such as that in the COMBO. Further, the base structure of the independent claims are found obvious over COMBO (see above for claims 1, 11, and 15). Therefore, it would have been an obvious matter of common skill and design choice to modify COMBO to obtain the invention as specified in claims 3-10, 12-14, and 16-20. See KSR v. Teleflex, 127 S.Ct. 1727 (2007). There is no special design or operation included when considering all prior art such as found within features of Chang / Ding / Nakanishi / Giziewicz.
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 used in the above 35 U.S.C. 103 rejections is pertinent to applicant's inventive concept: PTO-892 form references A-D, N, and U.
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/DANIEL PETKOVSEK/Primary Examiner, Art Unit 2874 July 30, 2026
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