CTNF 18/610,011 CTNF 77881 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Specification 07-29 AIA The disclosure is objected to because of the following informalities: Paragraph [0049], “620, 630, 640” should be “610, 620, 630” as shown in fig. 6 . Appropriate correction is required. Claim Rejections - 35 USC § 112 07-30-02 AIA 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. 07-34-01 Claims 8-9 and 20 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 7 and 9 recite the limitation "the mode converter." There is insufficient antecedent basis for this limitation in the claim. Since claim 1 requires a spot size converter and/or a mode converter, the system of claim 1 can be interpreted as only requires a spot size converter OR a mode converter. As such, when claim 1 includes only a mode converter, “the spot size converter ” recited in claims 7 and 9 renders the claims indefinite. In this instance, claims 7 and 9 are interpreted as the system of claim 1 further comprising " a spot size converter." Claims 8-9 and 20 recite the limitation "the mode converter." There is insufficient antecedent basis for this limitation in the claim. Since claim 1 requires a spot size converter and/or a mode converter, the system of claim 1 can be interpreted as only requires a spot size converter OR a mode converter. As such, when claim 1 includes only a spot size converter, "the mode converter" recited in claims 8-9 and 20 renders the claims indefinite. In this instance, for examination purpose, claims 8-9 and 20 are interpreted as the system of claim 1 further comprising " a mode converter;" “the first optical mode… and the second optical mode” should be “ a first optical mode… and a second optical mode.” Claim Rejections - 35 USC § 102 07-07-aia AIA 07-07 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 – 07-08-aia AIA (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. 07-15-aia AIA Claim(s) 1-3, 7, 10-12, 14 and 17 is/are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Bian (US 20230314708 A1) . Re claims 1-3: Bian discloses a system, comprising: a hybrid waveguide (fig. 3A) including a first optical waveguide layer (102) and a second optical waveguide layer (132), wherein the first optical waveguide layer (102) is formed of a x (2) nonlinear optical material (III-V semiconductor material; par. [0030]), wherein the second optical waveguide layer (132) is formed of a non-x (2) optical material (silicon nitride; par. [0044]), wherein a width (W6) of the first optical waveguide layer is substantially equal to a width of the second optical waveguide layer (fig. 3A; par. [0042]), wherein an index of refraction of the first optical waveguide layer is within fifteen percent of an index of refraction of the second optical waveguide layer (III-V semiconductor material’s refractive index vs. silicon nitride’s refractive index); wherein the system further comprises: an edge coupler (100) configured to be optically coupled to an optical fiber (par. [0022]) and match a mode field size of the optical fiber, wherein the edge coupler includes at least the first optical waveguide layer (102), wherein the first optical waveguide layer is tapered (fig. 3A); a spot size converter ( the taper region serves as a spot size converter ) configured to convert between an optical mode size of the hybrid waveguide and the optical mode size of the optical fiber or an optical mode size of the edge coupler, wherein the spot size converter includes both the first optical waveguide layer (102) and the second optical waveguide layer (132), wherein the second optical waveguide layer is tapered (fig. 3A); and/or (since the claim is reciting “and/or,” the “ or ” is taken in this instance, the following mode converter limitation is considered as not present in the claimed invention of claim 1, and therefore will not be addressed) a mode converter configured to convert between a first optical mode and a second optical mode, wherein the mode converter includes a first section with only the first optical waveguide layer and a second section with the first optical waveguide layer and the second optical waveguide layer, wherein the first section is proximate the second section. Examiner notes that the limitations “match a mode field size…” and “convert an optical mode size…” are intended use limitations. It has been held that “apparatus claims cover what a device is, not what a device does” (Hewlett-Packard Co. v. Bausch & Lomb Inc. 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990)); that a claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all of the structural limitations of the claim (Ex parte Masham, 2 USPQ 2d 1647 (Bd. Pat. App. & Inter. 1987)); and that if a prior art structure is capable of performing the intended use as recited in the preamble, then it meets the claim (In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997)). See MPEP § 2111.02, II and MPEP § 2114, II.) Re claim 7: Bian discloses the system of claim 1, wherein the system further comprises the a spot size converter, wherein the spot size converter is optically coupled to the hybrid waveguide, which includes taper portion of first optical waveguide layer (102) and the second optical waveguide layer (132). Re claims 10-12: Bian discloses a hybrid waveguide, comprising: a waveguide core including: a first optical waveguide layer (102), wherein the first optical waveguide layer (102) is formed of a x (2) nonlinear optical material (III-V semiconductor material; par. [0030]); and a second optical waveguide layer (132) disposed on top of the first optical waveguide layer (102) (par. [0037]), wherein the second optical waveguide layer (132) is formed of a non-x (2) optical material (silicon nitride; par. [0044]); and a cladding material surrounding the waveguide core (dielectric layers 128, 142); wherein a width (W6) of the first optical waveguide layer is substantially equal to a width of the second optical waveguide layer (fig. 3A); wherein an index of refraction of the first optical waveguide layer is within fifteen percent of an index of refraction of the second optical waveguide layer (III-V semiconductor material’s refractive index vs. silicon nitride’s refractive index). Re claim 14: Bian discloses a component of an integrated photonics chip, comprising: a first optical waveguide layer (102), wherein the first optical waveguide layer is formed of a x (2) nonlinear optical material (III-V semiconductor material; par. [0030]); and a second optical waveguide layer (152) disposed on top of the first optical waveguide layer (102) (figs. 5A-6B), wherein the second optical waveguide layer (132) is formed of a non-x(2) optical material (silicon nitride; par. [0057]); and a cladding material surrounding the waveguide core (dielectric layers 116, 128, 146, 162); wherein a width of the first optical waveguide layer is substantially equal to a width of the second optical waveguide layer for at least a first portion of a length of the component (fig. 5A, better seen in figs. 7C-D); wherein an index of refraction of the first optical waveguide layer is within fifteen percent of an index of refraction of the second optical waveguide layer (III-V semiconductor material’s refractive index vs. silicon nitride’s refractive index). Re claim 17: Bian discloses the component of the integrated photonics chip of claim 14, wherein the component of the integrated photonics chip comprises an edge coupler configured to be optically coupled to an optical fiber (par. [0022]) and match a mode field size of the optical fiber, wherein the width of the first optical waveguide layer (102) is tapered over the length of the component (figs. 5A-B), wherein the second optical waveguide layer is removed over at least a majority portion of the length of the component (Applicant is claiming the product including the process of making the light guide device, and therefore are of "product-by-process" nature. The courts have been holding for quite some time that: the determination of the patentability of product-by-process claim is based on the product itself rather than on the process by which the product is made. In re Thrope, 777 F. 2d 695, 227 USPQ 964 (Fed. Cir. 1985); and patentability of claim to a product does not rest merely on a difference in the method by which that product is made. Rather, it is the product itself which must be new and unobvious. Applicant has chosen to claim the invention in the product form. Thus, a prior art product which possesses the claimed product characteristics can anticipate or render obvious the claim subject matter regardless of the manner in which it is fabricated. A rejection based on 35 U.S.C. section 102 or alternatively on 35 U.S.C. section 103 of the status is eminently fair and acceptable. In re Brown and Saffer, 173 USPQ 685 and 688; In re Pilkington, 162 USPQ 147. As such no patentable weight is given to the removal of the second optical waveguide layer). Examiner also notes that the limitation “match a mode field size…” is intended use limitation. It has been held that “apparatus claims cover what a device is, not what a device does” (Hewlett-Packard Co. v. Bausch & Lomb Inc. 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990)); that a claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all of the structural limitations of the claim (Ex parte Masham, 2 USPQ 2d 1647 (Bd. Pat. App. & Inter. 1987)); and that if a prior art structure is capable of performing the intended use as recited in the preamble, then it meets the claim (In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997)). See MPEP § 2111.02, II and MPEP § 2114, II.) Claim Rejections - 35 USC § 103 07-20-aia AIA 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. 07-21-aia AIA Claim (s) 4, 13 and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bian (US 20230314708 A1) in view of Krueger et al (US 11204469 B1) . Re claims 4, 13 and 15: Bian discloses the system of claim 1, wherein the non-x (2) optical material is silicon nitride (par. [0044]), but fails to teach the x (2) nonlinear optical material is lithium niobate. Krueger et al teaches first and second waveguide layers (210, 220) can be composed of silicon, lithium niobate (LiNbO.sub.3), or combinations thereof (col. 4, lines 24-31). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use lithium niobate as an alternative material in forming a waveguide to achieve a desired high index in transmitting optical signals. Such modification would have been an obvious design variation, well within the ordinary skill in the art, since it has been held that the selection of a known material based on its suitability for its intended use. In re Leshin, 125 USPQ 146 . 07-21-aia AIA Claim (s) 5, 16 and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bian (US 20230314708 A1) in view of Ma et al (US 9829632 B2) . Re claims 5, 16 and 18: Bian discloses the system of claim 1 and the component of the integrated photonics chip of claim 14 above, wherein the system comprises the edge coupler configured to be optically coupled to an optical fiber (par. [0022]) and match a mode field size of the optical fiber, wherein a tip of the edge coupler includes the first optical waveguide layer (102) and the second optical waveguide layer (132). Bian, however, is silent with respect to the width of the first optical waveguide layer and the width of the second optical waveguide layer are tapered equally over a length of the edge coupler. Ma et al discloses an optical waveguide component, used for mode-size conversion, edge coupling, and mode conversion, comprising a first optical waveguide layer (410) and the second optical waveguide layer (420), wherein the width of the first optical waveguide layer and the width of the second optical waveguide layer are tapered equally over a length of the edge coupler (col. 5, lines 10-57), OR the width of the first optical waveguide layer is equal to the width of the second optical waveguide layer for all of the length of the component (col. 5, lines 37-57). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the tapered width of the first optical waveguide layer and the second optical waveguide layer of Bian as taught by Ma et al. for a higher efficiency device with lower loss, lower back-reflection, higher optical bandwidth (Ma et al: col. 1, lines 34-36 and col.4, lines 19-21) . 07-21-aia AIA Claim (s) 6 and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bian (US 20230314708 A1) in view of Jiang et al (US 10345524 B2) . Re claims 6 and 19: Bian discloses the system of claim 1 and the component of the integrated photonics chip of claim 14 above, and further discloses a spot size converter configured to convert between an optical mode size of a hybrid waveguide and an optical mode size of an optical fiber or edge coupler (par. [0022]), but fails to teach a tip of the edge coupler includes only the first optical waveguide layer, OR the width of the second optical waveguide layer is tapered over a second portion of the length of the component and the width of the first optical waveguide layer is not tapered over the second portion of the length of the component. Jiang et al teaches a tip of the edge coupler (105) includes only the first optical waveguide layer (115) (fig. 2A; col. 7, lines 47-55), the width of the second optical waveguide layer (110) is tapered over a second portion of the length of the component and the width of the first optical waveguide layer (115) is not tapered over the second portion of the length of the component (see annotated fig. 2A below). PNG media_image1.png 246 412 media_image1.png Greyscale It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the tapered width of the first optical waveguide layer and the second optical waveguide layer of Bian as taught by Jiang et al. in order to optimize the optical coupling between fiber and chip by reducing optical coupling losses . 07-21-aia AIA Claim (s) 8-9 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bian (US 20230314708 A1) in view of Guan et al (US 10873173 B1) . Re claims 8 and 9: Bian discloses the system of claim 1, but is silent with respect to a mode converter, wherein the mode converter is optically to the hybrid waveguide, wherein the first optical mode is a higher-order mode of the hybrid waveguide and the second optical mode is a fundamental mode; OR a mode converter; wherein the spot size converter is optically coupled to the edge coupler and a first end of the hybrid waveguide, wherein the spot size converter is configured to convert between the optical mode size of the edge coupler and the optical mode size of the hybrid waveguide; wherein the mode converter is optically to a second end of the hybrid waveguide, wherein the first optical mode is a higher-order mode of the hybrid waveguide and the second optical mode is a fundamental mode (claim 9). Guan et al teaches an edge coupler (3) includes a spot size converter (col. 2, lines 63-67), and a mode converter 4 includes a higher-order mode, which is optically to the hybrid waveguide (fig. 3B; col. 3, lines 13-21; and col. 4, lines 18-37). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to implement an on-chip mode converter to reduce the accumulated back reflection as light travels back-and-forth within the PIC chip (Guan et al: col. 1, lines 28-30). Examiner notes that the limitation “convert the optical mode size…” is an intended use limitations. It has been held that “apparatus claims cover what a device is, not what a device does” (Hewlett-Packard Co. v. Bausch & Lomb Inc. 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990)); that a claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all of the structural limitations of the claim (Ex parte Masham, 2 USPQ 2d 1647 (Bd. Pat. App. & Inter. 1987)); and that if a prior art structure is capable of performing the intended use as recited in the preamble, then it meets the claim (In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997)). See MPEP § 2111.02, II and MPEP § 2114, II.) Re claim 20: Bian/Guan et al discloses the component of the integrated photonics chip of claim 14, wherein the component of the integrated photonics chip comprises a mode converter configured to convert between a fundamental optical mode and a higher-order optical mode. Bian further teaches the mode converter includes a first section with only the first optical waveguide layer (102) and a second section with the first optical waveguide layer (102) and the second optical waveguide layer (152), wherein the first section is proximate the second section (figs. 5A-B) . Conclusion 07-96 AIA The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Liu (US 7643710 B1) and Taillaert et al (US 20120093456 A1) disclose a silicon photonic chip having a first tapered optical waveguide and a second tapered optical waveguide. Zou (US 20220100048 A1) discloses a lithium niobate-silicon hybrid waveguide. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Uyen-Chau N. Le whose telephone number is (571)272-2397. The examiner can normally be reached Monday-Friday, 9:00am-5:30pm. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kiesha R. Bryant can be reached at (571) 272-3606. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /UYEN CHAU N LE/Supervisory Patent Examiner, Art Unit 2874 Application/Control Number: 18/610,011 Page 2 Art Unit: 2874 Application/Control Number: 18/610,011 Page 3 Art Unit: 2874 Application/Control Number: 18/610,011 Page 4 Art Unit: 2874 Application/Control Number: 18/610,011 Page 5 Art Unit: 2874 Application/Control Number: 18/610,011 Page 6 Art Unit: 2874 Application/Control Number: 18/610,011 Page 7 Art Unit: 2874 Application/Control Number: 18/610,011 Page 8 Art Unit: 2874 Application/Control Number: 18/610,011 Page 9 Art Unit: 2874 Application/Control Number: 18/610,011 Page 10 Art Unit: 2874 Application/Control Number: 18/610,011 Page 11 Art Unit: 2874 Application/Control Number: 18/610,011 Page 12 Art Unit: 2874
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