Notice of Pre-AIA or AIA Status
The present application, filed after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Specification Objections
The specification is objected to for the following issues:
The description does not mention part number 6547 which appears in figure 68 (Step 5 and Step 6).
In [787], line 3, "pints" should be replaced with "pins".
Claim Objection
Claim 54 is objected to because line 8 is missing "of" between "array" and "optical fibers".
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 54 and 58-60 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of U.S. Patent No. 12461321 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because each listed pending claim is rendered obvious by patented claim 3.
Pending claim 54 would have been obvious in view of '321 claim 3 (which includes all the limitations of its parent claims 1 and 2), since practicing the method of '321 claim 3 would have produced an apparatus which meets all the limitations of pending claim 54. The resultant apparatus would also meet all the limitations of pending claims 58-60 (by inheritance from '321 claim 1).
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.
Claim 58-65 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claims 58 and 62 are indefinite because there is insufficient antecedent basis for "the ferrule module". It appears that "module" should be replaced with "frame" in each of those claims. Claims 59-61 and 63-65 are indefinite by dependence from claims 58 or 62.
Claim Rejections - 35 USC § 102
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 54 and 70-71 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 10795103 B2 (already of record via information disclosure statement).
Claim 54: '103 discloses an apparatus comprising:
a photonic integrated circuit 112 including a plurality of vertical-coupling elements (vertical cavity surface emitting lasers, col. 4 lns. 42-54) disposed along a main surface of the photonic integrated circuit;
an optical subassembly 116 attached to the photonic integrated circuit;
a ferrule frame 114 that is configured to enable a fiber connector 110 to be removably connected to the ferrule frame and aligned with the optical subassembly;
wherein the fiber connector is connected to an array of optical fibers 108, and the optical subassembly is configured to transfer light between the array of optical fibers and the vertical-coupling elements on the photonic integrated circuit;
wherein the ferrule frame 114 is aligned to the optical subassembly 116 using an active alignment process (col. 8 lns. 25-53) in which light is transferred between at least one optical fiber in the array of optical fibers and the photonic integrated circuit through the optical subassembly and at least one of the vertical-coupling elements, and a position of the ferrule frame relative to the optical subassembly is adjusted based on at least one characteristic of the light transferred between the at least one optical fiber and the photonic integrated circuit; and
wherein the ferrule frame is securely connected to the optical subassembly after the active alignment process (col. 5 ln. 66 - col. 6 ln. 4; col. 8 lns. 49-53).
Claim 70: Each of the vertical-coupling elements comprises at least one of a single-polarization vertical grating coupler, a turning mirror, a polarization-diversity vertical grating coupler, a vertical cavity surface emitting laser, a surface- normal modulator, or a photodiode (at least a vertical cavity surface emitting laser, col. 4 lns. 42-54).
Claim 71: The ferrule frame 114 comprises at least one of glass, metal, or plastic (at least plastic, col. 2 lns. 39-41).
Claim Rejections - 35 USC § 103
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.
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 55-57 and 72 are rejected under 35 U.S.C. 103 as being unpatentable over US 10795103 B2 (applied above).
Claims 55-57: '103 does not specifically mention that the ferrule frame enables the array of optical fibers to be aligned with the optical subassembly with a precision of at least 10 µm, 1 µm, or 0.1 µm. Official notice is taken of the fact that active alignment processes capable of precisions down to 0.1 µm were known in the art before the effective filing date of claims 55-57. Thus in order to ensure the required optical coupling efficiency for a given application of the '103 device, it would have been obvious to a person of ordinary skill in the art to use any available active alignment process which provides the necessary precision.
Claim 72: '103 discloses that the ferrule frame 114 can be attached to the optical subassembly 116 by curable adhesive (col. 5 ln. 66 - col. 6 ln. 1) but does not expressly mention UV-curing adhesive. Official notice is taken of the fact that it was well known in the art before the effective filing date of claim 72 to use UV-curing adhesive for bonding optical components. Accordingly it would have been obvious to a person of ordinary skill in the art to do so with the parts in '103, and by extension to construct ferrule frame 114 from a material that is transparent or semi-transparent to UV light so as to provide sufficient access for the curing light.
Allowable Subject Matter
Claims 58-69 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 claim 54 and all applicable intervening claims (and for claims 58-65, if the pertinent double patenting and indefiniteness rejections above are overcome).
Conclusion
The additional references listed on the attached 892 form are considered generally relevant to the subject matter of this application. For the most part they disclose other examples of interfaces between fiber connectors and integrated devices.
Contact Information
Examiner: 571-272-2360
Examiner's direct supervisor: 571-272-2397
Official correspondence by fax: 571-273-8300
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/Michael Stahl/Primary Examiner, Art Unit 2874