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 .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-9 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 requires a) a core layer including a core portion and a mark and b) a side cladding portion. Either the mark or both the core portion and the mark correspond to a non-irradiated region, AND the side cladding corresponds to an irradiated region. In addition, the irradiated region (i.e. the side cladding) includes a frame-shaped part. With those constraints, Claim 1 further that the mark (corresponding to a non-irradiated region) is formed in the frame-shaped part (a portion of the irradiated region) as the non-irradiation region. Setting aside for the moment the ambiguity in the claim as to whether the mark alone or the combination of core portion and mark is a non-irradiated region and assuming that a non-irradiated region includes the mark and the core (see, for example, [0007,0142] of the specification), the amendment presently requiring that the mark is formed in the frame-shaped part (a subset of the irradiated region) and that the mark is formed as the non-irradiation region is new matter, since the specification as originally filed does not without self-contradiction describe a non-irradiated mark formed in a region (frame-shaped), which is by definition also necessarily irradiated. In other words, since the frame-shaped region is recited as a subset of the irradiated region, the frame-shaped region is irradiated. Since the frame-shaped region is irradiated, it cannot also be non-irradiated; otherwise, the irradiated region could not include the frame-shaped part (since in that case, the region including the frame-shaped part would extend at least partially in both irradiated and also non-irradiated regions).
What is more, the specification does not support that the mark is formed in the core portion. Yet, the claim as amended requires that the mark (non-irradiated) is both formed in the frame-shaped part (which is necessarily irradiated, since the irradiated region includes the frame-shaped part) and also “is formed in the frame-shaped part as the non-irradiation region.” However, Claim 1 requires both the core layer including a core portion and a mark to correspond to the non-irradiated region. The specification as originally filed does not describe in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of a mark that is formed as the non-irradiation region (i.e. the non-irradiation region is the mark) which includes BOTH the core portion and a mark and also is formed as a non-irradiation region in a frame-shaped part, which is not in a non-irradiated region, but which is necessarily in the irradiated region.
Claims 1-9 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites the combination of limitations, ”a core layer including a core portion and a mark corresponding to a non-irradiated region with the active radiation and a side cladding portion corresponding to an irradiated region with the active radiation, and has the substrate supporting the core layer; a step of laminating a cladding layer on the core layer included in the post- exposure laminate to obtain a workpiece; and a step of cutting out an optical waveguide from the workpiece, wherein the irradiated region includes a frame-shaped part extending along an outer edge of the core forming layer and having a frame shape, the mark is formed in the frame-shaped part as the non-irradiation region.” The claim is indefinite, because the limitation is confused and includes multiply contradictory limitations. For example, it is not clear how an irradiated region can include a frame-shaped part and also a non-irradiated region (mark), since if a region including the frame-shaped part contains both irradiated and non-irradiated regions, it would not be clear in what sense the region is specifically an “irradiated region” (and not a region which is both irradiated and non-irradiated). As a further example, it is not clear what is meant by the limitation “the mark is formed in the frame-shaped part as the non-irradiation region.” The phrase “formed . . . as the non-irradiation region” implies not some portion of a “non-irradiation region” but an equivalence between the mark and whatever is defined as “a non-irradiation region.” However, Claim 1 earlier requires “a core layer including a core portion and a mark corresponding to a non-irradiated region with the active radiation.” Therefore, the limitation “formed . . . as the non-irradiation region” would, by its terms, include the core portion. However, the mark cannot, by the terms of the claims be part of include the core portion, since it is in the frame-shaped part, which the irradiated region (also side cladding portion), includes. Therefore, the claim is confused and contains contradictions, rendering the claim unsusceptible of meaningful examination.
Claim 1 recites the limitation “the non-irradiation region” in line 15. The limitation has insufficient antecedent basis. Examiner considers the limitation to include the interpretation “a non-irradiation region” or “the non-irradiated region.”
Claims 2-9 are rejected as depending from rejected Claim 1.
Response to Arguments
Applicant's arguments filed 6 November 2025 have been fully considered but they are not persuasive.
In response to Applicant’s arguments concerning the amendment to Claim 1 (Remarks, pp. 5-8), the relationships among an irradiated region, a non-irradiated regions, a mark, a core layer, a frame-shaped part, and a side cladding in Claim 1 as amended are too confused to meaningfully evaluate the arguments with respect to the amendment. See rejections herein.
Conclusion
No claim is allowed.
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 ALEXANDER M WEDDLE whose telephone number is (571)270-5346. The examiner can normally be reached 9:30-6:30.
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ALEXANDER M WEDDLE
Examiner
Art Unit 1712
/ALEXANDER M WEDDLE/Primary Examiner, Art Unit 1712