CTNF 18/665,619 CTNF 77830 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia 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 2. The prior art documents submitted by applicant in the Information Disclosure Statement filed on 08/01/24, have all been considered and made of record (note the attached copy of form PTO/SB/08a). Specification 3. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification. Claim Rejections - 35 USC § 102 07-06 AIA 15-10-15 4. 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. 07-07-aia AIA 07-07 5. 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 – 07-08-aia AIA (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. 07-15 AIA 6. Claim s 1, 3 and 5-6 are rejected under 35 U.S.C. 102( a)(1 ) as being anticipated by Aoki (JP 2016053679 A) . With respect to claim 1, Aoki (figures 3B, 5C and 7) discloses a method for connecting an optical waveguide, the method comprising: providing a substrate (7) including a spacer (19) having a frame shape (figure 7) surrounding a light input part (16), holding an optical fiber block (15) and bringing the optical fiber block (15) into contact with the spacer (19), and then releasing the optical fiber block (see figure 5A); supplying an adhesive on an outer side of the spacer on the substrate (optical fiber holder 15 is fixed to the subpackage substrate 7 with an adhesive); aligning the optical fiber block (15) holding an optical fiber (8), with respect to the light input part (16), to maximize intensity of light output from the substrate (the tip end portion of the optical fiber 8 a is made to the optical input / output portion 16 with high accuracy); compressing the spacer (19) by pushing the optical fiber block (15), toward the substrate (7); and curing the adhesive, with the spacer compressed (a force is applied to the optical fiber holder 15 due to the heat shrinkage of the adhesive at the time of curing). With respect to claim 3, Aoki (figures 3B, 5C and 7) discloses the method, wherein, the compressing the spacer includes applying a force to the light input part in a direction of an optical axis of the optical fiber block (the elastic adhesive is an adhesive that allows the optical fiber 8a to buckle in the optical fiber holder 15 when a force along the longitudinal direction acts on the optical fiber 8a). With respect to claim 5, Aoki (figures 3B, 5C and 7) discloses the method, wherein, the optical fiber block (15) includes a through passage (22) that connects an internal space to an external space (figures 4C, 5C), the internal space being surrounded by the spacer (19), the optical fiber block (15), and the substrate (7) to an external space via the through-passage provided in the optical fiber block (15). With respect to claim 6, Aoki (figures 3B, 5C and 7) discloses an optical waveguide connection structure (12) that uses an adhesive (adhesive, silica) to connect a substrate (7) including at least one optical waveguide (13) and a light input part (16), to an optical fiber block (15) holding an optical fiber (8), the optical waveguide connection structure (12) comprising a spacer (19) having a frame shape (figure 7) and provided between the substrate (7) and the optical fiber block (15) in a manner surrounding the light input part (16) provided on the substrate (7) . PNG media_image1.png 434 436 media_image1.png Greyscale Claim Rejections - 35 USC § 103 07-06 AIA 15-10-15 7. 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. 07-20-02-aia AIA 8. 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. 07-20-aia AIA 9. The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action: (a) 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. 07-21 AIA 10. Claim s 2 and 7-9 are rejected under 35 U.S.C. 103(a) as being unpatentable over Aoki (as cited above) . With respect to claim 2, Aoki substantially discloses all the limitations of the claimed invention except the supplying adhesive includes applying the adhesive on the outer side of the spacer by a size smaller in a Z direction than a size of the spacer in the Z direction. However, the supplying adhesive including applying the adhesive on the outer side of the spacer by a size smaller in a Z direction than a size of the spacer in the Z direction are considered to be obvious to obtain higher efficiency of optical signal transmission. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Aoki to include the above features for the purpose of obtaining higher efficiency of optical signal transmission, and it also has been held that discovering an optimum value of a result effective variable involves only routine skill in the art and it is noted that the applicant does not disclose criticality in the value claimed. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05). With respect to claim 7, Aoki (figure 4C) discloses the face (at the element 18) facing the substrate (7), and the spacer is disposed on an outer side with respect to a through-passage (22) that is on the face of the optical fiber block (15) facing the substrate (7). Aoki does not explicitly disclose the spacer has an external dimension smaller than an external dimension of a face of the optical fiber block. However, the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. In Gardner v. TEC Systems, Inc., 725 F. 2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984). Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Aoki to form the spacer having an external dimension smaller than an external dimension of a face of the optical fiber block as claimed, because the dimensions can be varied depending upon the device in a particular application. With respect to claims 8-9, Aoki substantially discloses all the limitations of the claimed invention except the spacer has an elastic modulus lower than an elastic modulus of the optical fiber block and an elastic modulus of the substrate and the spacer has a deformation rate lower than a deformation rate of the optical fiber block and a deformation rate of the substrate. However, the spacer having an elastic modulus lower than an elastic modulus of the optical fiber block and an elastic modulus of the substrate and the spacer having a deformation rate lower than a deformation rate of the optical fiber block and a deformation rate of the substrate are considered to be obvious since the elastic modulus and deformation rate of the spacer, optical fiber block and the substrate are lower or higher dependent on their materials. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Aoki to include the above features for the purpose of providing high performance of optical signal transmission. It is also noted that 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 . Allowable Subject Matter 12-151-08 AIA 07-43 12-51-08 11. Claim 4 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. The prior art of record fails to disclose the method, wherein, the compressing the spacer includes: moving the optical fiber block in an X-axis direction to a position where alignment of an optical axis of the optical fiber block with respect to the light input part, the alignment having been achieved in advance, remains same, even after the spacer compressed, and applying a force in the Z direction as recited in claim 4. Conclusion 07-96 AIA 12. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Miao et al. (US 10539744 B2) disclose an optical mode converter. Watanabe (US 7603021 B2) discloses an optical waveguide module . 13. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jennifer Doan whose telephone number is (571) 272-2346. The examiner can normally be reached on Monday to Friday from 7:00am to 3:30pm. 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, Thomas Hollweg can be reached on 571-270-1739. 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. /JENNIFER DOAN/Primary Examiner, Art Unit 2874 Application/Control Number: 18/665,619 Page 2 Art Unit: 2874 Application/Control Number: 18/665,619 Page 3 Art Unit: 2874 Application/Control Number: 18/665,619 Page 4 Art Unit: 2874 Application/Control Number: 18/665,619 Page 5 Art Unit: 2874 Application/Control Number: 18/665,619 Page 6 Art Unit: 2874 Application/Control Number: 18/665,619 Page 7 Art Unit: 2874 Application/Control Number: 18/665,619 Page 8 Art Unit: 2874 Application/Control Number: 18/665,619 Page 9 Art Unit: 2874
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