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 .
Information Disclosure Statement
Information disclosure statement filed 3/25/2024 has been considered by the examiner.
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) 1-10, 12-16, is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US Patent No. 8,750,651 B2 to Chen.
Regarding claim 1, Chen discloses a device comprising a device comprising: a substrate (22 in Fig. 1A-1B); a first optical waveguide (24 in Fig. 1A-1B) disposed in the substrate at a first layer, the first optical waveguide having a substantially rectangular shape and longitudinally arranged between a first end of the first optical waveguide and a second end of the first optical waveguide (Fig. 1A); and a second optical waveguide (26 in Fig. 1A-1B), disposed in the substrate at a second layer, vertically, in cross- section, above the first layer (Fig. 1B), and arranged to partially overlap the first optical waveguide (Fig. 1A), wherein the first optical waveguide and the second optical waveguide are separated by a vertical gap (28 in Fig. 1B).
Regarding claim 2, Chen discloses wherein the vertical gap is approximately 100nm (col. 7, ll. 42).
Regarding claims 3-4, Chen discloses wherein the vertical gap is comprised of a same material as the substrate which is silicon dioxide (i.e. SOI substrate- col. 7, ll. 30-34; Veritcal gap- Col. 7, ll. 42-43).
Regarding claim 5, Chen discloses that the first and the second optical waveguides are comprised of silicon nitride (col. 9, ll. 31-47).
Regarding claim 6, Chen discloses wherein the second optical waveguide includes a first edge of the second optical waveguide and a second edge of the second optical waveguide, and the first edge of the second optical waveguide remains fixed and parallel to a first side of the first optical waveguide and to a second side of the first optical waveguide over a predetermined length of the first optical waveguide (see annotated Fig. 4C below).
[AltContent: arrow][AltContent: arrow][AltContent: textbox (Second side of 1st WG)][AltContent: arrow][AltContent: oval][AltContent: textbox (First side of 1st WG)][AltContent: textbox (First edge of 2nd WG)][AltContent: textbox (Second edge of 2nd WG)][AltContent: oval][AltContent: arrow][AltContent: oval][AltContent: oval]
PNG
media_image1.png
667
863
media_image1.png
Greyscale
Regarding claim 7, Chen discloses wherein the second edge of the second optical waveguide translates away from the first edge of the second optical waveguide (See annotated Fig 4C above).
Regarding claim 8, Chen discloses wherein the first end of the first optical waveguide and the second end of the first optical waveguide are tapered (12, 16 in Fig. 4C).
Regarding claim 9, Chen discloses an optical input at the first end of the first optical waveguide (i.e. optical energy is input at 12 of Fig. 4C), a first optical output at the end of the first optical waveguide (i.e. optical energy is output at 16 of Fig. 4C), and a second optical output at one end of the second optical waveguide (i.e. residual optical energy that remains within 26 is necessarily output at one end of the second optical waveguide 26).
Regarding claim 10, Chen discloses wherein end of the second optical waveguide translates away from the first optical waveguide (i.e. away from 24 as shown in Fig. 4C).
Regarding claim 12, Chen discloses a device comprising: a first optical waveguide (24) extending along a longitudinal axis; and a second optical waveguide (26), separated from the first optical waveguide by a gap (28 in Fig. 4B), the second optical waveguide having a first edge that translates away from a second edge of the second optical waveguide, and the second optical waveguide partially overlaps, vertically, in cross section, with the first optical waveguide (see an alternative annotation of Fig. 4C below).
[AltContent: textbox (Second edge of 2nd WG)][AltContent: arrow][AltContent: arrow][AltContent: textbox (Second side of 1st WG)][AltContent: arrow][AltContent: oval][AltContent: textbox (First side of 1st WG)][AltContent: textbox (First edge of 2nd WG)][AltContent: oval][AltContent: arrow][AltContent: oval][AltContent: oval]
PNG
media_image1.png
667
863
media_image1.png
Greyscale
Regarding claim 13, Chen discloses wherein at least a portion of the second edge of the second optical waveguide is substantially parallel with a longitudinal side of the fist optical waveguide (see alternative annotation of Fig. 4C above).
Regarding claim 14, Chen discloses wherein the second optical waveguide, towards one end of the first optical waveguide, translates fully away from overlapping with the first optical waveguide (see Fig. 4C above).
Regarding claim 15, Chen discloses wherein the first optical waveguide is substantially rectangular (i.e. 24 in Fig. 4C).
Regarding claim 16, Chen discloses wherein the first optical waveguide and the second optical waveguide are comprised of silicon nitride (col. 9, ll. 31-47).
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.
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.
Claim(s) 11, 17, 18-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chen.
Regarding claims 11, 17, Chen discloses a device according to claim 1 and claim 12 as already discussed above. Although Chen discloses that the transition regions 12 and 16 of Fig. 1A are each about 50 microns long, it does not explicitly disclose that the length of the device as a whole is between 400 to 500 microns as claimed in the present application. On the other hand, a polarization rotation waveguide device that is 400-500 microns in length is well known and common in the art. One of ordinary skill in the art would readily recognize 400-500 microns length of polarization rotator as advantageous and desirable since it allows for effective optical polarization rotation while maintaining a compact overall footprint. Therefore, it would have been obvious to a person of ordinary skill in the art before the filing date of the present application to modify the device of Chen to have the device length of 400-500 microns, as claimed in the present application.
Regarding claim 18, Chen discloses a device according to claim 1 and 12 as already discussed above. Therefore, Chen necessarily anticipates the steps of using such a device, comprising the steps of inputting light, from an optical waveguide, at a first end of a first optical waveguide (24 in Fig. 1A); causing the light to interact with a second optical waveguide that is disposed, vertically, in cross-section, above the first optical waveguide (Fig. 1B), and arranged to partially overlap the first optical waveguide (Fig. 1A), wherein the first optical waveguide and the second optical waveguide are separated by a vertical gap (28 in Fig. 1B); outputting a first optical signal at an output of the first optical waveguide (16 in Fig. 1A); and outputting a second optical signal at an output of the second optical waveguide (i.e. residual optical energy that remains within 26 is necessarily output at one end of the second optical waveguide 26).
However, Chen does not explicitly disclose that the input light is from an optical fiber as claimed in the present application. On the other hand, the use of an optical fiber is well known and common in the art. One of ordinary skill in the art would readily recognize the advantage of using an optical fiber, since fibers are cost-effectively used in the art and they are capable of transmitting optical signals in longer distance compared to optical waveguides. Therefore, it would have been obvious to a person of ordinary skill in the art before the filing date of the present application to modify the device of Chen to have an optical fiber for inputting the optical energy in the manner claimed in the present application.
Regarding claim 19, Chen discloses wherein the light comprises a TE and TM optical mode signal (col. 5, ll. 10-47).
Regarding claim 20, Chen discloses wherein the first optical signal comprises the transverse electric optical mode signal, and the second optical signal comprises a transverse magnetic optical mode signal generated by rotating and mode-muxing the transverse magnetic optical mode signal via interaction between the first optical waveguide and the second optical waveguide (col. 5, ll. 48- col. 6, ll. 18).
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 1, 5-7, 9-13, 16, 18-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 6, 7, 11, 13, 15, 16, 17-19 of U.S. Patent No. 11,988,870 B2 (hereinafter “the ‘870 patent”). Although the claims at issue are not identical, they are not patentably distinct from each other because pending claimed limitations of the present application are obvious in view of the patented claims of the ‘870 patent.
Specifically regarding claim 1, the ‘870 patent claims, a device comprising: a substrate; a first optical waveguide disposed in the substrate at a first layer, the first optical waveguide having a substantially rectangular shape and longitudinally arranged between a first end of the first optical waveguide and a second end of the first optical waveguide; and a second optical waveguide, disposed in the substrate at a second layer, vertically, in cross- section, above the first layer, and arranged to partially overlap the first optical waveguide (col. 11, ll. 5-16).
However, the ‘870 patent does not explicitly claim that the first optical waveguide and the second optical waveguide are separated by a vertical gap as claimed in the present application. On the other hand, such a gap between the first and second optical waveguides is well known and common in the optical waveguide art. One of ordinary skill in the art would readily recognize the advantage of having such a gap since it would allow for direct control over the mode coupling and polarization separation by control over the evanescent field overlap of optical energy transmitted therein. Therefore, it would have been obvious to a person of ordinary skill in the art before the filing date of the present application to modify the claimed limitations of the ‘870 patent to claim that the first optical waveguide and the second optical waveguide are separated by a vertical gap as claimed in the present application.
Regarding claim 5, the’870 patent claims wherein at least one of the first optical waveguide and the second optical waveguide is comprised of silicon nitride (claim 6 of the ‘870 patent). However, it does not explicitly disclose both the first and the second optical waveguide are comprised of silicon nitride as claimed. Nevertheless, one of ordinary skill in the art would readily recognize the advantage of having silicon nitride first and second optical waveguides since the same materials would prevent light leak during the optical energy propagation within the device. Therefore, it would have been obvious to a person of ordinary skill in the art before the filing date of the present application to modify the claims of the ‘870 patent to claim both the first and the second optical waveguide being comprised of silicon nitride as claimed.
Regarding claim 6, the ‘870 patent claims wherein the second optical waveguide includes a first edge of the second optical waveguide and a second edge of the second optical waveguide, and the first edge of the second optical waveguide remains fixed and parallel to a first side of the first optical waveguide and to a second side of the first optical waveguide over a predetermined length of the first optical waveguide (col. 11, ll. 30-36).
Regarding claim 7, the ‘870 patent claims wherein the second edge of the second optical waveguide translates away from the first edge of the second optical waveguide (col. 11, ll. 18-21).
Regarding claim 9, the ‘870 patent claims further comprising an optical input at the first end of the first optical waveguide, a first optical output at the second end of the first optical waveguide, and a second optical output at one end of the second optical waveguide (col. 11, ll. 47-51).
Regarding claim 10, the ‘870 patent claims wherein ends of the second optical waveguide translate away from the first optical waveguide (col. 11, ll. 18-21).
Regarding claim 11, the ‘870 patent claims, wherein the device is 400-500 microns long (col. 11, ll. 61-62).
Regarding claim 12, the ‘870 patent claims a device comprising: a first optical waveguide extending along a longitudinal axis; and a second optical waveguide, the second optical waveguide having a first edge that translates away from a second edge of the second optical waveguide, and the second optical waveguide partially overlaps, vertically, in cross section, with the first optical waveguide (col. 11, 63- col. 12, ll. 6).
However, the ‘870 patent does not explicitly claim that the first optical waveguide and the second optical waveguide are separated by a vertical gap as claimed in the present application. On the other hand, such a gap between the first and second optical waveguides is well known and common in the optical waveguide art. One of ordinary skill in the art would readily recognize the advantage of having such a gap since it would allow for direct control over the mode coupling and polarization separation by control over the evanescent field overlap of optical energy transmitted therein. Therefore, it would have been obvious to a person of ordinary skill in the art before the filing date of the present application to modify the claimed limitations of the ‘870 patent to claim that the first optical waveguide and the second optical waveguide are separated by a vertical gap as claimed in the present application.
Regarding claim 13, the ‘870 patent claims wherein at least a portion of the second edge of the second optical waveguide is substantially parallel with a longitudinal side of the first optical waveguide (col. 12, ll. 18-21).
Regarding claim 16, the’870 patent claims wherein at least one of the first optical waveguide and the second optical waveguide is comprised of silicon nitride (claim 15 of the ‘870 patent). However, it does not explicitly disclose both the first and the second optical waveguide are comprised of silicon nitride as claimed. Nevertheless, one of ordinary skill in the art would readily recognize the advantage of having silicon nitride first and second optical waveguides since the same materials would prevent light leak during the optical energy propagation within the device. Therefore, it would have been obvious to a person of ordinary skill in the art before the filing date of the present application to modify the claims of the ‘870 patent to claim both the first and the second optical waveguide being comprised of silicon nitride as claimed.
Regarding claim 16, the ‘870 patent claims wherein the device is 400-500 microns long (col. 12, ll. 29-30).
Regarding claim 18, the ‘870 patent claims a method comprising: inputting light, from an optical fiber, at a first end of a first optical waveguide; causing the light to interact with a second optical waveguide that is disposed, vertically, in cross-section, above the first optical waveguide, and arranged to partially overlap the first optical waveguide; outputting a first optical signal at an output of the first optical waveguide; and outputting a second optical signal at an output of the second optical waveguide (col. 12, ll. 31-50).
However, the ‘870 patent does not explicitly claim that the first optical waveguide and the second optical waveguide are separated by a vertical gap as claimed in the present application. On the other hand, such a gap between the first and second optical waveguides is well known and common in the optical waveguide art. One of ordinary skill in the art would readily recognize the advantage of having such a gap since it would allow for direct control over the mode coupling and polarization separation by control over the evanescent field overlap of optical energy transmitted therein. Therefore, it would have been obvious to a person of ordinary skill in the art before the filing date of the present application to modify the claimed limitations of the ‘870 patent to claim that the first optical waveguide and the second optical waveguide are separated by a vertical gap as claimed in the present application.
Regarding claim 19, the ‘870 patent claims wherein the light comprises a transverse electric optical mode signal and a transverse magnetic optical mode signal (col. 17, ll. 51-53).
Regarding claim 20, the ‘870 patent claims wherein the first optical signal comprises the transverse electric optical mode signal, and the second optical signal comprises a transverse magnetic optical mode signal generated by rotating and modemuxing the transverse magnetic optical mode signal via interaction between the first optical waveguide and the second optical waveguide (col. 17, ll. 54-60).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SUNG H PAK whose telephone number is (571)272-2353. The examiner can normally be reached M-F: 7AM- 5PM.
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, Uyen-Chau Le can be reached at 571-272-2397. 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.
/SUNG H PAK/Primary Examiner, Art Unit 2874
Prosecution Insights