DETAILED ACTION
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 9 is 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. Claim 9 recites the optical signal is input to and output from an outside through the first lens, the second lens, and the first waveguide. It is unclear what “an outside” refers to, i.e., outside of what recited (e.g., the substrate, the module, the optical element) or not-yet recited element.
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, 7, 8 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. PGPub 2003/0021550 A1 by Korenaga.
Regarding claim 1, Korenaga teaches an optical module comprising: a substrate made of glass (glass substrate 17 of a first embodiment, Fig. 1) and having a first surface (top surface), a second surface (bottom surface) opposite to the first surface, a via (via holes 12 for connection wire or heat radiation, Abstract) penetrating between the first surface and the second surface (it is noted the claim language does not require the vias to actually reach the first and second surface, only that it needs to be between planes established by the surfaces), and a first waveguide (optical fiber disposed in an alignment V-groove 13) provided between the first surface and the second surface; an optical element (plate glass member 15 and optical devices such as a laser and a photodiode 110) that is mounted on the first surface (an alternative arrangement in which the optical devices 110 are mounted on the plate glass member 110 instead of directly on the substrate 17 is described in ¶[0168]), and that inputs and outputs an optical signal (i.e., the laser diode and photodiode, respectively); a thermally conductive member mounted on the second surface and thermally connected to the optical element through the via (in the case where the via holes 12 are used for heat radiation, a heat radiation member such as 52b illustrated in Figs. 4 & 5 is implemented); and a second waveguide (11) provided on the first surface, wherein the optical signal is input to and output from an outside through the second waveguide and the first waveguide (the waveguide 11 is coupled to the optical fiber in the groove 13, and inputs/outputs optical signals sent/received by the laser diode/photo diode 110).
Regarding claim 7, Korenaga further teaches an optical fiber, wherein the first waveguide is optically coupled between the second waveguide and the optical fiber (an alternate interpretation of Fig. 1a can include an optical fiber (in the groove 13), a first waveguide to the left of the Y-shaped coupler, and two second waveguides to the right of the Y-shaped coupler).
Regarding claim 8, Korenaga further teaches the first waveguide penetrates (the V-groove 13) between the first surface and the second surface. It is noted the claimed language does not require a penetration from the first surface to the second surface, nor what the first waveguide penetrates.
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) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Korenaga et al. in view of U.S. PGPub 2015/0370015 A1 by Aoki.
Regarding claim 9, Korenaga teaches an optical module comprising: a substrate made of glass (glass substrate 17 of a first embodiment, Fig. 1) and having a first surface (top surface), a second surface (bottom surface) opposite to the first surface, a via (via holes 12 for connection wire or heat radiation, Abstract) penetrating between the first surface and the second surface (it is noted the claim language does not require the vias to actually reach the first and second surface, only that it needs to be between planes established by the surfaces), and a first waveguide (inside optical waveguide groove 24, Fig. 2) provided between the first surface and the second surface; an optical element (plate glass member 15 and optical devices such as a laser and a photodiode 110) that is mounted on the first surface (an alternate arrangement in which the optical devices 110 are mounted on a back face of the plate glass member 15 is described in ¶[0168]), and that inputs and outputs an optical signal (i.e., the laser diode and photodiode, respectively); a thermally conductive member mounted on the second surface and thermally connected to the optical element through the via (in the case where the via holes 12 are used for heat radiation, a heat radiation member such as 52b illustrated in Figs. 4 & 5 is implemented); and wherein the substrate extends in a first direction (substantially along the propagation axis of the waveguide 11, or horizontal direction in Fig. 1a) and a second direction (vertical direction in Fig. 1a) intersecting the first direction, and has a thickness in a third direction (vertical direction in Fig. 1b) intersecting both the first direction and the second direction.
Korenaga does not specify using lenses with the optical element and the substrate. Aoki teaches an optical module (Figs. 4A, 4B) comprising an optical transceiver (40A, inherently both inputs and outputs optical signals) having a spherical lens (46), an optical waveguide (fiber 50) on a substrate (20), wherein the substrate includes a second lens (51a) optically coupled to the first lens such that an optical signal is input to and output from an outside optical device through the first lens (46), the second lens (51a) and the first waveguide (50). (See at least ¶[0048]).
Allowable Subject Matter
Claims 2-5 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 the base claim and any intervening claims. Korenaga currently is the only available prior art that reads on independent claim 1 and it is the examiner’s position that a modification to dispose both the optical element and the second waveguide in a same recessed portion is not obvious, nor reasonable, to a person of ordinary skill in the art, when considered in view of the rest of the limitations of the claimed invention.
Claim 6 is 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 the base claim and any intervening claims. Korenaga currently is the only available prior art that reads on independent claim 1 and it is the examiner’s position that there lacks any compelling reason or motivation for an ordinary artisan to convert end coupling between the fiber and the integrated waveguide to an evanescent coupling as claimed, when considered in view of the rest of the limitations of the claimed invention.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. USPub 20050230795 discloses optical module having thermal vias 417.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHARLIE PENG whose telephone number is (571)272-2177. The examiner can normally be reached 9AM - 6PM.
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/CHARLIE Y PENG/Primary Examiner, Art Unit 2874