DETAILED ACTION
This office action is in response to the amendment filed on February 27, 2026. In accordance with this amendment, claims 1-3, 9, 10, and 13 have been amended. The amendments to the specification are acknowledged. Claims 1-20 remain pending (with claims 15-20 being “Withdrawn” from consideration as related to a non-elected Group).
Claims 1-14 remain examined, with independent claims 1 and 9 in allowable form but-for the omission of a Terminal Disclaimer (TD) (note there has been no TD received into the file as of the submission date of this Final Rejection).
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 .
Election/Restrictions
Applicant is reminded that upon the cancelation of claims to a non-elected invention (claims 15-20 should be formally canceled in response to this office action), the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
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, 7, and 9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of U.S. Patent No. 12,442,994 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the following comments regarding this document (same Assignee “Molex”): Both independent claims 1 and 9 (and dependent claim 7) are rejected under NS-DP for the following reasons:
-Hsu et al. U.S. Patent No. 12,442,994 B2 presents claims geared toward package structure (Ind. claim 1 “package”), comprising: a substrate (claim 1 “substrate”) having a recessed portion (dep. Claim 5 “recess”); an optical waveguide connection assembly (dep. Claim 4 “optical waveguide connection assembly”) separate from the substrate (“suspended” feature in claim 4); and a chip (claim 1 “first/second chip”) connected with the optical waveguide connection assembly (claim 4), wherein the optical waveguide connection assembly extends into the recessed portion (claim 4), and wherein the optical waveguide connection assembly is connected with the chip in form of being suspended (claim 4 “suspended” form). Therefore, the combination of features as presented by current independent claim 1 are made obvious by those allowed by Hsu ‘994 within features of independent claim 1 in view of dependent claims 4-5. Regarding 2nd independent claim 9, see Hsu ‘994 allowed patent dependent claim 3 for the light source and lens (dep. claim 3 “light source and lens”). Therefore, independent claim 9 would also be obvious based on Hsu ‘994, standing alone. The tenets of KSR and rationales must be considered, with combination of features.
Regarding Applicant’s dependent claim 7, the chip in Hsu can be flip-chip type PIC (see dep. Claim 6).
In order to obviate these non-statutory double patenting rejections to claims 1, 7, and 9, Applicant may file a timely terminal disclaimer in regards to the Hsu ‘994 patent.
Allowable Subject Matter
Other than the omission of a timely TD, claims 1-14 would otherwise be allowable over the closest prior art of the current record. Claims 1 and 9 are in independent claim form and have been amended to obviate the prior art rejections as mailed on December 2, 2025.
The following is a statement of reasons for the indication of allowable subject matter: the closest prior art of record (Liu US ‘047; Doany US ‘426; Kishima US ‘808; Yim US ‘368) does not expressly teach or reasonably suggest, in combination, each claim limitation as amended into the independent claims 1 and/or 9 in the amendment dated February 27, 2026. In particular, the Examiner must consider the context of such amended features in view of the original specification and drawings (notably Figs. 5A, 5B, and 10F). The key feature now claimed pertains to the further defined “optical waveguide connection assembly” being separate from the substrate and “suspended over, and extending into, the recessed portion” of the substrate. For these reasons, and based on careful consideration of all prior art found in the current record, the Examiner is unable to present a prima facie case of obviousness as required under 35 U.S.C. 103. Claims 2-8 and 10-14 would also be allowable (over prior art) based on their dependency from claims 1 and 9, respectively.
Response to Arguments
Applicant's arguments filed on February 27, 2026 (page 8) have been fully considered but they are not persuasive. Applicant asserts that an electronic terminal disclaimer (TD) has been filed (pg. 8). Respectfully, the Examiner cannot locate any electronic terminal disclaimer in the current file. Correction is required and the filing of a TD for US Patent ‘994 is requested.
Applicant’s arguments, see amendment with remarks (pages 8-12), filed February 27, 2026, with respect to the narrowing amendments to independent claims 1 and 9 (in view of the prior art rejections from the non-final rejection mailed on Decmeber 2, 2025) have been fully considered and are persuasive. Based on these narrowing amendments, all prior art rejections (to Liu US ‘047; Doany US ‘426; Liu and further in view of Kishima US ‘808) have been withdrawn. Claims 1-14 now serve to create a patentable distinction over the closest prior art found in the current record.
Inventorship
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Conclusion
Group II claims 15-20 should be formally canceled in response to this office action. Claims 15-20 were withdrawn without traverse in the election dated on September 19, 2025.
THIS ACTION IS MADE FINAL. Applicant has not filed a timely Terminal Disclaimer in relation to the ‘994 parent patent claims. 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.
PTO-892 form reference A to Yim US ‘368 is cited herein, being pertinent to an overhang of a sub-component in an opto-electronic device (with interposer).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Daniel Petkovsek whose telephone number is (571) 272-4174. The examiner can normally be reached M-F 7:30 - 6 PM.
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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.
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/DANIEL PETKOVSEK/Primary Examiner, Art Unit 2874 March 9, 2026