DETAILED ACTION
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 .
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.
Claim 21 recites the limitation "the first displacement unit" in line 6. There is insufficient antecedent basis for this limitation in the claim. Claim 21 depends upon claim 20, which discloses “a first displacement portion”. For purposes of examination, “the first displacement unit” of claim 21 will be interpreted to be referring to the “displacement portion” of claim 20.
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.
Claim(s) 1-6 and 9 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 2021/006214 Suzuki (herein, “Suzuki”, cited on the attached PTO-892).
Regarding claim 1, Suzuki discloses in Fig. 6, a photoelectric composite transmission module comprising:
a photoelectric hybrid substrate including:
a substrate (8);
a photoelectric conversion unit (5) provided on a first surface of the substrate; and
an optical waveguide (7) provided on a second surface of the substrate (7 shown opposite to 5 on substrate 8);
a first housing (41) that protects one surface side of the photoelectric hybrid substrate (8), the one surface side corresponding to a surface of the photoelectric hybrid substrate (8) on which the photoelectric conversion unit (5) is provided;
a second housing (42) that protects the other surface side of the photoelectric hybrid substrate (8), the other surface side corresponding to a surface of the photoelectric hybrid substrate (8) on which the optical waveguide (7) is provided; and
a heat-transfer member (46) provided between the surface of the photoelectric hybrid substrate (8) on which the photoelectric conversion unit (5) is provided and the first housing (41), wherein
the photoelectric conversion unit (5) provided on the first surface of the substrate (8) is covered with resin (63), and
a surface of the resin (63) facing the first housing (41) and the first housing (41) are in contact with the heat-transfer member (46).
Regarding claim 2, Suzuki discloses in Fig. 3, the photoelectric hybrid substrate further includes a wiring pattern (4 – 53, 31, shown in Fig. 3) that transmits an electric signal from the photoelectric conversion unit (5) or transmits an electric signal to the photoelectric conversion unit (5), and the heat-transfer member (46) is also in contact with at least part of the wiring pattern (4 – 53, 31). Examiner notes that even though a space is shown between wiring pattern and heat transfer member – likely for clarity and simplicity of the figures – the heat transfer member is in thermal contact, if not direct physical contact (not required by the claim language) with the wiring pattern; that is to say, the heat-transfer member is capable of transferring heat with the wiring pattern.
Regarding claim 3, Suzuki discloses in Fig. 6, the heat-transfer member (46) is in contact with a whole of the surface of the resin (63) facing the first housing (41) (see English translation, description of Fig. 6, wherein, “The first heat radiating layer 63 is arranged on the entire surface of the other surface of the first heat transfer member 46 in the thickness direction.”).
Regarding claim 4, Suzuki discloses in Fig. 6, a surface of the first housing (41) facing the photoelectric hybrid substrate (8) is formed as a flat surface (see English translation, wherein 41 is part of housing 6, “the housing 6 has a flat substantially box shape that extends in the longitudinal direction and has a length in the thickness direction smaller than a length in the width direction.”).
Regarding claim 5, Suzuki discloses in Fig. 7, the photoelectric conversion unit (5) on the photoelectric hybrid substrate (8) includes a combination of a light-emitting element (35) and a drive integrated circuit (37) that drives the light-emitting element and/or a combination of a light-receiving element (36) and a trans impedance amplifier (38).
Regarding claim 6, Suzuki discloses the heat-transfer member is made of a material with heat conductivity of 20 W/mk or less (wherein Suzuki discloses an epoxy resin which has a conductivity of 20 W/mk or less, in accordance with para [0028] of the instant Specification).
Regarding claim 9, Suzuki discloses each of the first housing and the second housing is made of metal (see English translation, wherein 41 and 42 are part of housing 6, “The housing 6 is made of metal.”).
Claim Rejections - 35 USC § 103
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.
Claim(s) 7, 8, and 10-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO 2021/006214 Suzuki (herein, “Suzuki”, cited on the attached PTO-892).
Regarding claims 7, 8, and 15 Suzuki is silent as to the heat transfer member (46) having an Asker C hardness of 40 or less and the relationship of the Asker C hardness relationship between the hardness of the heat-transfer member, the Asker C hardness of the resin, and the Asker C hardness of the photoelectric conversion unit. However, Suzuki discusses how the heat transfer member (46) and the resin (63) are in contact with one another (see English translation, description of Fig. 6, wherein, “heat radiating layer 63 comes into contact with one surface of the photoelectric conversion unit 5 in the thickness direction and the other surface of the first heat transfer member 46”). A person of ordinary skill in the art at the effective filing date of the invention would understand the necessity of using materials with the appropriate thermal and physical properties, including Asker C hardness, so as not to interfere with one another (e.g. melt, change properties, burn, etc.) when in direct contact, otherwise the device would be destroyed when in use.
Regarding claim 10, Suzuki discloses an optical communication cable using the photoelectric composite transmission module according to claim 1 (see rejection of claim 1), the optical communication cable comprising:
the photoelectric composite transmission module (2); and a cable (51) connected to the photoelectric composite transmission module (2).
Suzuki is silent as to the cable (51) specifically being a hybrid cable. However, it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention to use a hybrid cable, since the module is a hybrid module and can process both optical and electrical signals. Providing a hybrid cable requires only routine skill in the art and is not considered novel.
Regarding claim 11, Suzuki discloses in Fig. 6, a photoelectric composite transmission module comprising:
a photoelectric hybrid substrate including:
a substrate (8);
a photoelectric conversion unit (5) provided on a first surface of the substrate; and
an optical waveguide (7) provided on a second surface of the substrate (7 shown opposite to 5 on substrate 8);
a first housing (41) that protects one surface side of the photoelectric hybrid substrate (8), the one surface side corresponding to a surface of the photoelectric hybrid substrate (8) on which the photoelectric conversion unit (5) is provided;
a second housing (42) that protects the other surface side of the photoelectric hybrid substrate (8), the other surface side corresponding to a surface of the photoelectric hybrid substrate (8) on which the optical waveguide (7) is provided; and
a heat-transfer member (46) provided between the surface of the photoelectric hybrid substrate (8) on which the photoelectric conversion unit (5) is provided and the first housing (41), wherein
the photoelectric conversion unit (5) provided on the first surface of the substrate (8) is covered with resin (63), and
a surface of the resin (63) facing the first housing (41) is in contact with the first housing (41) via the heat-transfer member (46).
Suzuki discloses an opening (50) to guide heat transfer member (46), which protrudes from first housing (41), but is silent as to having a frame wall that serves as an installation guide for the heat-transfer member provided on an internal surface of the first housing, the heat-transfer member being installed in a region surrounded by the frame wall. The heat transfer member (46) of Suzuki is shown as being integral with housing (41). However, it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention to include a separate frame to ensure proper guidance of the heat transfer member, as this is an engineering choice. Suzuki acknowledges and discusses the importance of proper placement and guidance of the heat-transfer member (46) so as to have excellent dissipation and a smooth entrance into its position (see English translation).
Regarding claims 12-14, Suzuki is silent as to specifically, a height A of the frame wall and a distance B from the internal surface of the first housing in the region surrounded by the frame wall to the surface of the resin facing the first housing are designed to satisfy the following Expression (4) 0.2 ≤ (A/B) ≤ 0.7 … (4), wherein a height A of the frame wall and a distance D from the internal surface of the first housing in the region surrounded by the frame wall to the substrate are designed to satisfy the following Expression (2) 0.1 ≤ (A/D) ≤ 0.5 ... (2) and, wherein a distance B from the internal surface of the first housing in the region surrounded by the frame wall to the surface of the resin facing the first housing and a distance C from the substrate to the surface of the resin facing the first housing are designed to satisfy the following Expression (3) 2 ≤ (B/C) ≤ 3 ... (3).
However, it would have been obvious to one having ordinary skill in the art at the effective filing date of the invention to satisfy Expressions (1), (2), and (3), since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. Determining the appropriate height and surface spacing of the frame walls to ensure the elements are protected while being mindful of the overall size of the device would require only routine skill in the art.
Regarding claim 16, Suzuki discloses in Fig. 7, the photoelectric conversion unit (5) includes a light-emitting element (35) and a drive integrated circuit (37). Suzuki is silent as to the region surrounded by the frame wall on the internal surface of the first housing is provided in a portion of the photoelectric conversion unit facing at least the drive integrated circuit. However, it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention to provide the frame walls wherever needed in order to protect the elements from being damaged.
Regarding claims 17 and 19, Suzuki is silent as to specifically, an area of the region surrounded by the frame wall on the internal surface of the first housing is designed to be 95% or more of an area when viewed from vertically above the drive integrated circuit in the photoelectric conversion unit and designed to be 110% or less of an area when viewed from vertically above the photoelectric hybrid substrate.
However, it would have been obvious to one having ordinary skill in the art at the effective filing date of the invention to optimize the area, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. Determining the appropriate area of the frame walls to ensure the elements are properly spaced would require only routine skill in the art.
Regarding claim 18, Suzuki discloses that drives the light-emitting element and/or a combination of a light-receiving element (36) and a trans impedance amplifier (38). Suzuki is silent as to the region surrounded by the frame wall on the internal surface of the first housing is provided in a portion of the photoelectric conversion unit facing at least the trans impedance amplifier. However, it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention to provide the frame walls wherever needed in order to protect the elements from being damaged.
Regarding claims 20 and 21, Suzuki is silent as to specifically, an external thickness of a housing formed of the first housing (41) and the second housing (42) is designed to be different between a first end side and a second end side, the first housing is provided with a first displacement portion to change a facing distance, and the heat-transfer member is installed in the first displacement portion, and wherein the second housing is provided with a second displacement unit to change a facing distance, and the second displacement unit is provided at a position facing the first displacement unit provided in the first housing. However, Suzuki discloses in Fig. 8, notch 57 and the omission of portion 27. This notch would result in a change in the facing distance. Furthermore, providing a tapered or angled surface, Applicant’s claimed “displacement unit”, is by Applicant’s own admission a matter of design choice (see instant Specification, para [0085]). Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention to include displacement units (tapered surfaces) as a design choice, or as a way of optimizing the overall shape of the device to be smaller by having tapered surfaces where space does not need to be occupied.
Examiner notes that the claimed facing distance has not defined which surface it is being measured from (external or internal), but only the overall external thickness is discussed.
Regarding claim 22, Suzuki discloses an optical communication cable using the photoelectric composite transmission module according to claim 1 (see rejection of claim 1), the optical communication cable comprising:
the photoelectric composite transmission module (2); and a cable (51) connected to the photoelectric composite transmission module (2).
Suzuki is silent as to the cable (51) specifically being a hybrid cable. However, it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention to use a hybrid cable, since the module is a hybrid module and can process both optical and electrical signals. Providing a hybrid cable requires only routine skill in the art and is not considered novel.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARY A EL-SHAMMAA whose telephone number is (571)272-2469. The examiner can normally be reached Mon-Fri, 9am-6pm (flexible schedule).
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/MARY A EL-SHAMMAA/Examiner, Art Unit 2874
/THOMAS A HOLLWEG/Supervisory Patent Examiner, Art Unit 2874
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