DETAILED ACTION
This office action is in response to the application and claims filed on March 12, 2024. Claims 1-10 are pending, with claim 1 as the sole independent claim.
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 October 6, 2025 and March 12, 2024, have been considered and made of record (note attached copy of forms PTO-1449).
Drawings
The original drawings (five (5) pages) were received on March 12, 2024. These drawings are acknowledged.
Claim Objections
Claim 1 is objected to because of the following informalities: regarding the preamble of claim 1, the opening “An hybrid package chip” should read “A hybrid package chip” / “An optical and electrical hybrid package chip” to correct this typo. Further regarding claim 1, the terms “at least one first/second electrode” should not be later shortened to “a first/second electrode” because this causes claim confusion and a lack of proper antecedent basis (note the 35 U.S.C. 112(b) rejections below). Applicant may claim “a first electrode of the at least one first electrode of the first sub-chip” / “a second electrode of the at least one second electrode of the second sub-chip”, but removing the “at least one” feature entirely for the 1st / 2nd electrode is improper. Consequently, the later phrase “by means of the first waveguide, the at least one first electrode modulates…” is not improper and vague / indefinite. Finally in claim 1, the term “through coupling” (in “the first sub-chip is configured” section) should read “through optical coupling.” Appropriate correction is required.
Further regarding dependent claims (3 and 7-9): in dependent claim 3, the term “through coupling” should read “through optical coupling.” Regarding dependent claim 7, there are four (4) instances of “the first electrode” (three) and “the second electrode” (one) which must be corrected akin to claim 1. Note also these features lack proper antecedent basis (35 U.S.C. 112(b) rejections below). Regarding dependent claim 8, the terms “a third electrode” and “the third electrode” should be reviewed because there is confusion with the “at least one second electrode” of the 2nd sub-chip. Is “at least one second electrode” actually a “third electrode if there is more than one second electrode? Regarding dependent claim 9, the term “the second electrode” (one instance) must be corrected akin to claim 1. Note also these features (claims 8-9) lack proper antecedent basis (35 U.S.C. 112(b) rejections below).
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 1 and 7-9 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.
Regarding independent claim 1, with further dependent claims 7-9, these claims lack proper antecedent basis for the terms “at least one first/second electrode” and then the shortened version of “a first/second electrode.” The terms should be consistent throughout the independent claim. There is insufficient antecedent basis for this limitation in the claim. Consistency is required in terminology to avoid these issues and indefiniteness. Further regarding claims 7-9, the terms “first/second/third” electrodes are all later recited. Applicant’s care is requested to clearly claim such electrode features with all necessary identifiers to make evident which electrode or electrodes are being referred thereto. Any instance of “the first electrode”, “the second electrode”, and the “third electrode” in either claim 1 or claims 7-9 must be corrected.
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, 5, and 7-10 are rejected under 35 U.S.C. 103 as being unpatentable over University Shanghai JiaoTong CN 111 722 316 A, and further in view of Shi et al. CN 108 225 297 A and Cai et al. WO 2019/218385 A1.
Regarding sole examined independent claim 1, Univ Shanghai CN ‘316 teaches (ABS; Figs. 1-4; corresponding text, in particular paragraphs [0025] – [0032]; Claims) teaches an (“a”) hybrid package chip (Figs. 1-4; paras [0025] – [0032]) comprising: a first sub-chip 4 including a first waveguide and at least one first electrode (at top of Fig. 1; upper “chip” feature), and a second sub-chip 1 including a second waveguide and at least one second electrode (at bottom of Fig. 1; lower “chip” feature; see Fig. 3 which shows Si and silicon germanium layer(s) 6 (6-1, 6-2, 6-3, 6-4, etc.)); a first electrode (“of the at least one first electrode”) of the first sub-chip and a corresponding second electrode (“of the at least one second electrode”) of the second sub-chip are electrically connected to one another by means of a first conductive structure, so as to receive a modulation signal (see Fig. 4, sequence of electrical through contact 8 / 9; also at TSV’s as holes 10 in Fig. 1; electrode layering ABS), the first sub-chip is configured to receive external input light and output the light by means of the first waveguide (in the lithium niobate waveguide layer 4 in a trapezoidal waveguide 7), the at least one first electrode modulates the input light so as to output the modulated light (controllable / modulated waveguides in LiNbO3), and the second waveguide receives a portion of light from a similar optical signal and that functions in silicon optical waveguide formation (Fig. 2), and in that the first sub-chip is a lithium niobate thin film (layer 4; ABS) based optoelectronic sub-chip, and the second sub-chip is a silicon based photonic sub-chip (optical coupling and function, Fig. 2).
Regarding independent claim 1, CN ‘316 does not expressly and exactly teach that the first waveguide (of the first sub-chip 4) is optically coupled to the second waveguide (of the second sub-chip 1; with features 6-1…), that a portion of the optical signal is coupled from/to the 1st sub-chip to the 2nd sub-chip, in different layers. The first layer being LiNbO3 while the second layer is silicon based.
However, when different optical functional layers are stacked on top of each other in a package chip formation, it is known in the art to couple optical signals between layers using optical coupling formations. For example, both Shi et al. CN 108 225 297 A and Cai et al. WO 2019/218385 A1 teach formations in which a lithium niobate waveguide layer is stacked in relation to a lower/upper silicon-based waveguide layer, and in that the two layers are optically coupled to each other. Shi et al. CN 108 225 297 A teaches (ABS; Figs. 1-5; paras [0030] – [0062]; Claims) a silicon dioxide waveguide (parts 1 / 2 / 3 / 4) coupled to a lithium niobate waveguide 6 (phase shifting at 7), for formation of an opto-electronic device (with electrode(s) 8), in that optical signals are coupled between the different / stacked layers of the package, so that optical features can be coupled between waveguides, and still maintain the modulation features based on the electrode control. Also, Cai et al. WO 2019/218385 A1 teaches (ABS; Fig. 1-2; corresponding text; Claims) teaches an optical layer of lithium niobate as a waveguide and also a silicon-based photonic layer in which optical signals are coupled therebetween (Figs. 1-2), in that the silicon wedge couples optical signals between the lithium niobate waveguide and silicon waveguide. Coupling optical signals between two different waveguide sections / layers allows for improved modulation variability and efficiency in the art, because lithium niobate material film layers allow for certain improved operation, while other optical function may be employed best in silicon-based waveguide layers. For these reasons, using stacked packages that employ optics in both LiNbO3 and silicon is shown in the prior art of Shi CN and Cai CN as an improved operation of a hybrid integration, and optical signals can be coupled therebetween.
Since Univ Shanghai CN ‘316 and Shi CN / Cai CN are all both from the same field of endeavor, the purpose disclosed by Shi CN / Cai CN would have been recognized in the pertinent art of Univ Shanghai CN ‘316.
A person having ordinary skill in the art at a time before the effective filing date of the current application would have recognized the teaching of Shi CN / Cai CN, to couple optical signals between distinct optical layers (one being lithium niobate; the other being silicon-based), as used in the package of the base design of the hybrid integrated design of Univ Shanghai CN ‘316, to allow for improved coupling in the system and recognize the need for a shared source of optical data / input for the same purpose. Further, it would have required no undue burden or unnecessary experimentation to arrive at such feature of combining “optical coupling” between the waveguide layers. See KSR v. Teleflex, 127 S.Ct. 1727 (2007). For these reasons, independent claim 1 is found obvious over Univ Shanghai CN ‘316 and further in view of Okazaki (henceforth “COMBO”).
Regarding dependent claim 5, and based on the hypothetical COMBO device in claim 1 above, it would have been obvious for such formation, as the separating silicon dioxide layer 2 in at least the primary reference of CN ‘316 meets the structure of a “filler layer” in structure alone, because this layer is capable of filling space between the sub-chips as well as create durable fixed connection. For these reasons, claim 5 is found obvious over COMBO. KSR.
Regarding claims 7-9 (which depend from claim 5), such features are an obvious formation of the electrodes (1st, 2nd, and/or 3rd) and coupling with an external substrate for transmitting optical and/or electrical signals. 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 as the first and second electrode positioning, with external substrate, and the electrical control and optical coupling formations claimed, 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 COMBO to perform equally well with such features as the optical and/or electrical formations, and with external substrate connectivity (selectable design choices) 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 signal propagation and the resultant electrical modulation / control via multiple electrodes. It would have required no undue burden or unnecessary experimentation to arrive at those features with a hybrid package chip such as in COMBO. Further, the base structure of the sole independent claim 1 / intervening claim 5 is found obvious over COMBO as discussed prior in this section. Therefore, it would have been an obvious matter of common skill and design choice to modify (and/or update) COMBO to obtain the invention as specified in claims 7-9. See KSR v. Teleflex, 127 S.Ct. 1727 (2007).
Regarding dependent claim 10, it is obvious to use the overall features of the hypothetical COMBO device in an optical transmitter, because electrode modulation and control can occur in the waveguides, thus imparting the desired optical property on the signal. KSR. Therefore, an intended use of claim 10 is for a transmitter (of the base claim 1’s hybrid package chip).
Claims 2-4 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over COMBO (as listed above in section (14), and further in view of Zou et al. US 2020/0363693 A1 (which has matured into U.S. Patent No. 11,204,535 B2)
Regarding sole examined independent claim 1, COMBO makes such claim obvious, as is fully addressed in section (14) above.
Regarding further features of dependent claims 2 (3 and 4 are further from claim 2) and 6, the close prior art features of COMBO do not expressly and exactly teach a grating coupler between optical layers (between the lithium niobate and the silicon-based films/layers), and in that the grating coupler(s) optically couple signals between those layers. Noting claims 3, 4, and 6, the additional features of the plural grating couplers, monitor photodiodes with external substrate, and the filler materials (for placing the grating coupler(s)) are not exactly taught by COMBO references.
However, using grating couplers as the optical coupler function between a waveguide layer based on lithium niobate and a 2nd waveguide layer being silicon-based is taught by Zou et al. US 2020/0363693 A1. See Zou US ‘693 Figs. 2A, 2B, 2C, 3A, 3B, and 4, and the corresponding text. Notably, and although the overall package design shows multiple layers (as in Fig. 2A), the base teaching of Zou is that the grating coupler (at 42, Fig. 4) is used as the means for optical coupling between these two layers (the LiNbO3 and Si-based). Such coupling is used and known so that optical signals can be used in both the lithium niobate waveguide (layer 6, Fig. 4) and the silicon-based waveguide (layer 5, Fig. 4). Such features allow for a shared optical input that can be used in both portions of the package.
Since COMBO and Zou US ’693 are all both from the same field of endeavor, the purpose disclosed by Zou US ‘693 would have been recognized in the pertinent art of COMBO.
A person having ordinary skill in the art at a time before the effective filing date of the current application would have recognized the teaching of Zou US ‘693, to use a grating coupler to optical couple between a stacked / package formation of lithium niobate optics and a photonic silicon based layer, as used in the package of the base design of the hybrid integrated design of COMBO, to allow for improved coupling in the system and recognize the need for a grating coupled to couple up/down in the package with ease of design and needing only this componentry. Further, it would have required no undue burden or unnecessary experimentation to arrive at such feature of combining “grating coupler” between the waveguide layers in COMBO. See KSR v. Teleflex, 127 S.Ct. 1727 (2007). Additionally, regarding claim 6, having this grating coupler in the filling layer would be an obvious design choice for placement and location of the grating coupler, with additional protection by this filler layer. For these reasons, dependent claims 2 and 6 are found obvious over COMBO and further in view of Zou US ‘693.
Regarding claims 3-4 (which depend from claim 2), such features are an obvious formation of the grating coupler to have a second grating coupler for coupling optical signals between layers (instead of using only 1 grating coupler as an example in Zou), with use of a monitor photodiode to measure optical / electrical signals and outputting them to an external substrate. Such features would have been obvious based on claims 1 and 2 in COMBO + Zou for features to allow for improved optical coupling and feedback / sensing based on optical to electrical conversion. 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 as the second grating coupler and the monitor photodiode / external substrate, 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 COMBO and Zou to perform equally well with such features as the second grating coupler (in each layer) and the monitor photodiode / external substrate connectivity (selectable design choices) 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 signal propagation and the resultant electrical modulation / control via monitoring and feedback. It would have required no undue burden or unnecessary experimentation to arrive at those features with a hybrid package chip such as in COMBO and Zou. Further, the base structure of the sole independent claim 1 / intervening claim 2 is found obvious over COMBO and Zou as discussed immediately above. Therefore, it would have been an obvious matter of common skill and design choice to modify (and/or update) COMBO and Zou to obtain the invention as specified in claims 3-4. 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 B-D, which pertain to the state of the art of hybrid integrated optical chip / package design that use multiple optical / photonic layering film, such as lithium niobate and silicon-based semiconductors.
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/DANIEL PETKOVSEK/Primary Examiner, Art Unit 2874 February 5, 2026