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 .
Election/Restrictions
Claims 3, 5, 6, 8 and 9 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 6/26/26. Applicant states claims 1-16 read on the elected claims, but the listed withdrawn claims clearly read on non-elected species. Species J does not include a metalized pattern, spot facing regions, rough surface regions or position controller located on the optical element.
Claim Rejections - 35 USC § 102
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.
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, 2, 4, 7, 10, 11 and 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ooba et al (US 9,201,194 B2). Ooba teaches:
1. An optical module (Fig. 6) comprising:
a substrate (51); and
an optical element (53) having a mount face (bottom) opposed to the substrate (51), the optical element (53) configured to subject input light to a predetermined action and output the light (C7 L52 – C8 L3), wherein
the optical element (53) is joined to the substrate (51) by the mount face (bottom) with a plurality of joint materials (58, 62) mutually separated from each other (Fig. 6).
2. The optical module according to claim 1, wherein the substrate (51) is provided with a position controller (52a, 61) configured to position the plurality of joint materials (58, 62) at mutually separated positions (Fig. 6).
4. The optical module according to claim 2, wherein the position controller (52a, 61) includes protrusions (the shape of 52a, 61) extending longer than the plurality of joint materials (58, 62) in a lateral direction (see Fig. 6 showing a portion of 61 extending behind and past 62 in a lateral direction).
7. The optical module according to claim 2, wherein the position controller (52a, 61) is located on the substrate (51).
10. The optical module according to claim 2, wherein the position controller (52a, 61) is formed in strip shapes (the blocks 52, 61 can be considered “strip shapes”).
11. The optical module according to claim 2, wherein the position controller (52a, 61) is formed in polygonal shapes (blocks, Fig. 6).
16. The optical module according to claim 1, wherein the plurality of joint materials includes an epoxy resin (C8 L12-16).
Claim Rejections - 35 USC § 103
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.
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.
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.
Claims 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over Ooba as applied to claim 1 above, and further in view of what would have been obvious to a person of ordinary skill in the art.
Ooba teaches the optical element being an optical functional circuit including one with combining/splitting functions (C7 L58 – C9 L3) in a planar lightwave circuit.
It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to try polarized-wave combining/splitting or ring resonator or an etalon filter for the optical element, since it has been held that “it is obvious to try - choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success” is a rationale for arriving at a conclusion of obviousness. In re KSR International Co. v. Teleflex Inc. As discussed, Ooba already teaches combining/splitting in the element, one of ordinary skill in the art would know that polarization combining/splitting is one kind of combining and splitting that can be done in the optical functional circuit of Ooba. Further, one of ordinary skill the art would recognize that ring resonators and etalon filter structures are optical elements that can be implemented in the planar lightwave circuit of Ooba since these are known identified optical components and the kind of element in the lightwave circuit is not important to the substrate mount that is the important element in both Ooba and applicant’s disclosure. One of ordinary skill the art would expect known optical element would succeed in the planar lightwave circuit, including ring resonators, etalon filters and polarized-wave combiner/splitters, since there is nothing about the lightwave circuit of Ooba that would negate the appearance of these known optical elements.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Ooba as applied to claim 1 above, and further in view of Saito et al (US 6,377,723 B1).
Ooba teaches the optical module previously discussed.
Ooba does not teach expressly wherein the substrate is one of two substrates of a thermoelectric cooling element, the thermoelectric cooling element including the two substrates and a semiconductor which is disposed between the two substrates, and the optical element is thermally controlled by the thermoelectric cooling element.
Saito teaches an optical module (Fig. 18) comprising a substrate (1, 12, 10) is one of two substrates (1, 12, 10, 16) of a thermoelectric cooling element (1, 12, 10, 16, 17), the thermoelectric cooling element including the two substrates and a semiconductor(part of the Peltier module) which is disposed between the two substrates (1, 12, 10 and 16), and the optical element (part of 1) is thermally controlled by the thermoelectric cooling element (C5 L50 – C6 L36).
Ooba and Saito are analogous art because they are from the same field of endeavor, optical elements.
At the time of the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to modify the substrate of Ooba to include a Peltier module as taught by Saito.
The motivation for doing so would have been to be able to accurately control the temperature of the optical element (Saito, C5 L50 – C6 L2).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The following references teach optical modules with various substrate mounting variations similar to applicants’: US 6470118, US 2008/0056638, US 9116317, US 9470855, US 9817197.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RYAN A LEPISTO whose telephone number is (571)272-1946. The examiner can normally be reached 9AM-6PM EST M-F.
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 at 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.
/RYAN A LEPISTO/Primary Examiner, Art Unit 2874
Prosecution Insights