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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Response to Amendment
The Amendment filed on 13 July, 2026 has been fully considered and entered. In response to the claim amendments, the previously raised drawings objection is withdrawn and the previously raised rejections under 35 U.S.C. 112(b) are withdrawn.
Response to Arguments
Applicant's arguments filed 13 July, 2026 have been fully considered but they are not persuasive.
In response to applicant's argument that Kwang Bae does not disclose “the straight section is configured to stabilize each waveguide modes from the first tapered section, output the stabilized modes to the second tapered section, and radiates a radiation mode generated in the first tapered section”, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Kwang Bae discloses the claimed structure, and the claimed properties/functions are presumed to be inherent. In particular, the straight section is understood to inherently provide the advantage of stabilizing each waveguide mode from the first tapered section, output the stabilized modes to the second tapered section, and radiate a radiation mode generated in the first tapered section. Therefore, the rejection of claim 1 is maintained. However, new rejections of claims 4-5 and 7-8 are provided below in view of the amendments.
Claim Objections
Claims 1 and 8 are objected to because of the following informalities:
Regarding claims 1 and 8: “the straight section is configured to stabilize each waveguide modes from the first tapered section, output the stabilized waveguide modes to the second tapered section, and radiates a radiation mode generated in the first tapered section” has several grammatical issues. “each waveguide modes” should be “each waveguide mode” and “radiates” should be “radiate”.
Regarding claim 8: claim 8 recites an optical attenuator section and an attenuator section. As the attenuator section is also an optical waveguide, these terms should be more distinct from each other to prevent confusion.
Appropriate correction is required.
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 1 and 6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kwang Bae (US Patent No. 6,728,438; hereinafter Kwang Bae).
Regarding claim 1: Kwang Bae disclosesAn optical device comprising: an optical waveguide (waveguide structures of Figs. 1, 2, and 4; see col. 3, lines 33-37) that includes a cladding (best represented in Figs. 1-2, upper cladding layer 2) and a core (best represented in Figs. 1-2, core layer 1) formed on a substrate (best represented in Figs. 1-2, lower cladding layer 3 is an underlying layer, considered to be a substrate), whereinthe optical waveguide includesan input section (Fig. 4, input waveguide 6); an attenuator section that is connected to the input section (Fig. 4, tapered region 7 and left half of multimode generator region 5, considering the left and right halves to be divided by the heater 4); a removing section that is connected to the attenuator section (Fig. 4, right half of multimode generator 5, considering the left and right halves to be divided by heater 4, and tapered region 8); and an output section that is connected to the removing section (Fig. 4, output waveguide 9), wherein the attenuator section includes a first tapered section in which a core width becomes wider toward the removing section from the input section (Fig. 4, tapered section 7) and is configured to have more waveguide modes that are guided on a cross section perpendicular to a traveling direction of light in a connecting portion connected to the removing section compared to a connecting portion connected to the input section (col. 3, lines 53-64), the removing section includes a straight section (Fig. 4, right half of multimode generator 5, considering the left and right halves to be divided by heater 4) that is connected to the first tapered section (they are connected via the left half of multimode generator 5), and a second tapered section (Fig. 4, tapered section 8) that is connected to the straight section and in which a core width becomes narrower toward the output section from the attenuator section, the removing section being configured to have less waveguide modes that are guided on a cross section perpendicular to a traveling direction of light in a connecting portion connected to the output section compared to a connecting portion connected to the attenuator section (see col. 3, lines 53-64).
Regarding the limitation “the straight section is configured to stabilize each waveguide modes from the first tapered section, output the stabilized waveguide modes to the second tapered section, and radiates a radiation mode generated in the first tapered section”: When a structure recited in a reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. See MPEP 2112.01. Kwang Bae teaches an optical device that is substantially identical to that of the claimed invention, therefore the claimed property of “the straight section is configured to stabilize each waveguide modes from the first tapered section, output the stabilized waveguide modes to the second tapered section, and radiates a radiation mode generated in the first tapered section” is presumed to be inherent. The burden is on the applicant to show that the prior art device does not inherently possess the claimed properties. See MPEP 2112.01.
The examiner notes that if the claimed structure does not inherently possess the claimed properties, then the claims would be incomplete for omitting essential structural cooperative relationships of elements, such omission amounting to a gap between the necessary structural connections necessary to clearly and precisely define the invention, wherein the structure necessary to provide the claimed properties is essential.
Regarding claim 6: Kwang Bae disclosesThe optical device according to claim 1 (as applied above), wherein the optical waveguide is constituted of waveguides having a uniform thickness in cores of the input section, the attenuator section, the removing section, and the output section (see Figs. 1 and 2, the thickness of the cores are shown to be uniform; additionally, examiner notes that “is constituted of’ is not a typical transitional phrase, and based on the disclosure not defining “is constituted of” as a closed set, it is interpreted as an open-ended phrase similar to “comprising” wherein the optical waveguide can have additional elements without a uniform thickness).
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 4 is rejected under 35 U.S.C. 103 as being unpatentable over Kwang Bae (US Patent No. 6,728,438; hereinafter Kwang Bae) in view of Iida et al. (US 2019/0004342; hereinafter Iida). Regarding claim 4: Kwang-Bae discloses the optical device according to claim 1, as applied above, wherein the cladding is formed with a material including SiO2 (see claim 2). Kwang-Bae fails to disclose that the thermo-optic waveguide core is formed with a material including silicon. However, Iida, also related to thermo-optic waveguides (see Fig. 3, waveguides CR1 have a thermo-optic effect and are controlled by heaters MH1) teaches that silicon is a suitable material for waveguides having a thermo-optic effect wherein temperature changes affect the refractive index. It has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. In order to provide waveguides with CMOS-compatible fabrication methods and better compatibility with other silicon photonic structures, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the Kwang-Bae device by using silicon for the core material, since it was a known suitable material for providing a waveguide with a thermo-optic effect.
Claims 5 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Kwang Bae (US Patent No. 6,728,438; hereinafter Kwang Bae) in view of Nishihara et al. (US 2010/0178065; hereinafter Nishihara).
Regarding claim 5: Kwang Bae discloses the optical device according to claim 1, as applied above. Kwang Bae fails to disclose that the optical device further includes a light receiver that is connected to the output section. However, the device is a variable optical attenuator, which is conventionally paired with a light receiver that is connected to its output section. Nishihara, for example, teaches an optical receiver including variable optical attenuators which output light to photodetectors (see Fig. 20, VOA 113I and 113Q and PDs 5I and 5Q). In order to utilize the light attenuated by the variable optical attenuator such as by detecting it, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the Kwang Bae device by adding a light receiver that is connected to the output section, such as the photodetector taught by Nishihara.
Regarding claim 8: Kwang Bae disclosesAn optical device comprising: an optical waveguide (waveguide structures of Figs. 1, 2, and 4; see col. 3, lines 33-37) that includes a cladding (best represented in Figs. 1-2, upper cladding layer 2) and a core (best represented in Figs. 1-2, core layer 1) formed on a substrate (best represented in Figs. 1-2, lower cladding layer 3 is an underlying layer, considered to be a substrate), whereinthe optical waveguide includesan input section (Fig. 4, input waveguide 6); an attenuator section that is connected to the input section (Fig. 4, tapered region 7 and left half of multimode generator region 5, considering the left and right halves to be divided by the heater 4); a removing section that is connected to the attenuator section (Fig. 4, right half of multimode generator 5, considering the left and right halves to be divided by heater 4, and tapered region 8); and an output section that is connected to the removing section (Fig. 4, output waveguide 9), wherein the attenuator section includes a first tapered section in which a core width becomes wider toward the removing section from the input section (Fig. 4, tapered section 7) and is configured to have more waveguide modes that are guided on a cross section perpendicular to a traveling direction of light in a connecting portion connected to the removing section compared to a connecting portion connected to the input section (col. 3, lines 53-64), the removing section includes a straight section (Fig. 4, right half of multimode generator 5, considering the left and right halves to be divided by heater 4) that is connected to the first tapered section (they are connected via the left half of multimode generator 5), and a second tapered section (Fig. 4, tapered section 8) that is connected to the straight section and in which a core width becomes narrower toward the output section from the attenuator section, the removing section being configured to have less waveguide modes that are guided on a cross section perpendicular to a traveling direction of light in a connecting portion connected to the output section compared to a connecting portion connected to the attenuator section (see col. 3, lines 53-64).
Kwang-Bae fails to disclose “An optical receiver comprising: a light source that emits light; an optical hybrid circuit that obtains reception light using the light from the light source; an optical attenuator section that attenuates the reception light obtained by the optical hybrid circuit; and a light receiver that performs electric conversion on the reception light attenuated by the optical attenuator section.”, wherein the optical attenuator section includes the optical device described above (which is the optical device of claim 1).
However, Nishihara teaches An optical receiver (Fig. 20) comprising: a light source that emits light (Fig. 20, LO 3a); an optical hybrid circuit (Fig. 20, 90-degree hybrid circuit 4) that obtains reception light using the light from the light source; an optical attenuator section (Fig. 20, VOAs 113I and 113Q) that attenuates the reception light obtained by the optical hybrid circuit; and a light receiver (Fig. 20, twin PDs 5I and 5Q) that performs electric conversion on the reception light attenuated by the optical attenuator section.
In order to utilize the Kwang-Bae variable optical attenuator in a device that receives and detects optical signals containing communications data, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to utilize the Kwang-Bae optical attenuator in a coherent receiver such as the one taught by Nishihara.
Regarding the limitation “the straight section is configured to stabilize each waveguide modes from the first tapered section, output the stabilized waveguide modes to the second tapered section, and radiates a radiation mode generated in the first tapered section”: When a structure recited in a reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. See MPEP 2112.01. Kwang Bae teaches an optical device that is substantially identical to that of the claimed invention, therefore the claimed property of “the straight section is configured to stabilize each waveguide modes from the first tapered section, output the stabilized waveguide modes to the second tapered section, and radiates a radiation mode generated in the first tapered section” is presumed to be inherent. The burden is on the applicant to show that the prior art device does not inherently possess the claimed properties. See MPEP 2112.01.
The examiner notes that if the claimed structure does not inherently possess the claimed properties, then the claims would be incomplete for omitting essential structural cooperative relationships of elements, such omission amounting to a gap between the necessary structural connections necessary to clearly and precisely define the invention, wherein the structure necessary to provide the claimed properties is essential.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Kwang Bae (US Patent No. 6,728,438; hereinafter Kwang Bae) in view of Ma et al. (US 2020/0150343; hereinafter Ma).
Kwang Bae discloses the optical device according to claim 1, as applied above. Kwang Bae fails to disclose that the optical waveguide is constituted of a rib waveguide. However, Ma, also related to devices that attenuate and convert modes using tapered waveguides (see abstract and Figs. 1, 5, and 6), teaches that rib waveguides and ridge waveguides are each suitable waveguide structures for such purposes (see paragraph 0054). In order to obtain the known advantages of rib waveguides, including lower sidewall scattering losses and better integration with electrical connection, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to substitute the tapered ridge waveguide of Kwang Bae for a tapered rib waveguide, since both geometries were known in the art.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kirsten D Endresen whose telephone number is (703)756-1533. The examiner can normally be reached Monday to Thursday.
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/KIRSTEN D. ENDRESEN/Examiner, Art Unit 2874
/THOMAS A HOLLWEG/Supervisory Patent Examiner, Art Unit 2874
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