DETAILED ACTION
This office action is in response to the amendment filed on June 24, 2026. In accordance with this amendment, claims 1, 4, 6-12, 16-18, 20, and 21 have been amended.
Claims 1-21 remain pending, with claims 1, 20, and 21 in independent claim form. Based on Applicant’s persuasive arguments related to independent claims 1, 20, and 21 (as a “PIC”), the Examiner has presented new grounds of rejection (with Huang et al. US ‘238 as the secondary reference in an obviousness rejection to each independent claim). Accordingly, this office action has been made non-final.
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 Objections
Claims 20 and 21 are objected to because of the following informalities: regarding these independent claims, the same “wherein” language should be added (after “the compact platform” to use wherein before “is a photonic integrated circuit”), as was updated to independent claim 1. This “wherein” language clearly defines that the PIC is required and essential, and further defines what the term of “compact platform” means in these claims.
Claim Rejections - 35 USC § 112
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 20 and 21 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.
Claims 20 and 21 are rejected under 35 U.S.C. 112(b) for the following reasons. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claims 20 and 21 recite the broad recitation “integrated on a compact platform”, and the claim also recites “the compact platform is a photonic circuit” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. For these reasons, claims 20 and 21 are rejected as being vague and indefinite under the meaning of 35 U.S.C. 112(b). See the use of “wherein” in claim 1 (and in the “Claim Objections” above), which obviates this issue and requires the term of “photonic integrated circuit.”
Dependent claims 7 and 14 are rejected for the use of the term “preferably”, “preferable”, or “more preferable.” Note that Applicant did not correct such features in claims 7 and 14 in the amendment dated June 24, 2026 (although other instances of the “preferable(y)” language was corrected in different claims). A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claims 7 and 14 recite the broad recitation for “conversion efficiency”, “nonlinearity”, “optical loss”, “optical confinement”, “input power”, and “length”, and the claim also recites “preferably” / “preferable” which is the narrower statement of the range/limitation. The claims are therefore considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. For these reasons, claims 7 and 14 are rejected as being indefinite under the meaning of 35 U.S.C. 112(b).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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 1-4, 6, 13, 16, and 19-21 are rejected under 35 U.S.C. 103 as being unpatentable over Hall et al. U.S. Patent No. 11,086,191 B2, based on independent claim 1, and further in view of Huang et al. US 2022/0075238 A1.
Regarding independent claims 1, 20, and 21, Hall et al. U.S. Patent No. 11,086,191 B2 teaches (ABS; Figs. 2A-2B, 4A, 5A, 5B; corresponding text, in particular column 4, line 40 through column 11, line 12; Claims) an optical system for frequency conversion (Fig. 4A), and inherent method of using same (for claim 20), of a first wavelength of a single photon by difference-frequency generation (DFG) (note Fig. 4A, “DFG Waveguide)”, wherein the optical system comprises: a single-photon source (from “Fiber In”, at 402) for supplying a single photon with a first wavelength (“The quantum states may be single photon states”, see column 5, lines 8-27); a laser source 406 for generating laser irradiation (or “radiation”, Fig. 4A “Optical Source”) with a second wavelength; a multiplexer 404 being arranged for combining and coupling the single photon and the laser irradiation (see operation of Fig. 4A, at combination at/in feature 404, namely “Coarse WDM”); and a nonlinear waveguide 410, comprising a second-order nonlinear optical susceptibility material for frequency conversion of the single photon (both DFG and SFG discussed for nonlinear features and functions; “converts the wavelength of the input optical signal that includes the one of more quantum states to a new wavelength, based on the wavelength of the pump…”; see column 5, lines 30-34); wherein the multiplexer and the nonlinear waveguide are structurally integrated on a compact platform 400 (see Fig. 4A, note breadth of “integrated”), the multiplexer optically combines the laser irradiation and the single photon, and optical transmits the combined laser irradiation and single photon to the nonlinear waveguide (see operation of Fig. 4A; column 5, lines 8-34), which is optically connected to the multiplexer, for frequency conversion of the single photon in the nonlinear waveguide by DFG (Fig. 4A, column 5 frequency conversion) by optically interacting with the laser irradiation and the (“nonlinear”) waveguide material, so as to frequency convert the single photon from the first wavelength to a third wavelength. Regarding 3rd independent claim 21, the same “frequency converter” language is met in the structure, as enumerated above in claim 1. Additionally, the Examiner fully incorporates, and agrees with, the logic and rationale found in the INTL Search Report and Written Opinion for the corresponding PCT EP ‘190. Hall ‘191 corresponds directly to WO ‘765 in the Written Opinion, and the pending claims 1-21 are substantially the same as claims 1-21 of PCT EP ‘190.
Regarding independent claims 1, 20, and 21, the exact feature of a “photonic integrated circuit” (PIC) is not expressly and exactly taught by Hall. A feature such as an PIC has a specific meaning in the art and Hall is silent to such integration and design with the optical / photonic elements on an integrated circuit. Therefore, Hall cannot serve for literal anticipation under the meaning of 35 U.S.C. 102.
However, integrated optical / photonic components (along with electrical components, if necessary) onto a singular photonic integrated circuit (“PIC”) is common and ubiquitous in the art for fabricated chip designs on substrate.
For example, Huang et al. US 2022/0075238 A1 teaches (ABS; Figs.; paragraphs [0005], [0006]; Claims) a frequency conversion system that inputs pump light onto a chip and output second harmonic lights. Huang ‘238 uses integrated circuit design (paras [0005] – [0006]) to manufacture the overall frequency conversion system. One having ordinary skill in the art would have recognized, based on Huang’s teachings, that creating an individualized PIC with frequency / wavelength conversion functionality was within the ordinary level of skill in the art.
Since Hall and Huang are both from the same field of endeavor, the purpose disclosed by Huang would have been recognized in the pertinent art of Hall.
A person having ordinary skill in the art at a time before the effective filing date of the current application would have recognized the teaching of Huang, to integrate the optical and/or electrical sub-components of an optical frequency converter onto a photonic integrated circuit (“PIC” based design), as a way to manufacture the base invention/gist of quantum optical wavelength converter of Hall, for implementing manufacture on a mass scale by using PIC methods to mass produce the invention. Further, it would have required no undue burden or unnecessary experimentation to arrive at such feature of creating Hall’s frequency converted onto a PIC. See KSR v. Teleflex, 127 S.Ct. 1727 (2007). For these reasons, independent claims 1, 20, and 21 are found obvious over Hall and further in view of Huang (henceforth “COMBO”).
Further, and noting dependent claims: regarding dependent claim 2, Hall ‘191 teaches wherein the multiplexer comprises a first input waveguide for receiving the single photon with a first wavelength and a second input waveguide for receiving the laser irradiation with a second wavelength (see Fig. 4A at two inputs to the COMBINER (Coarse WDM); noting columns 4-6).
Regarding dependent claim 3, Hall ‘191 teaches wherein the laser irradiation and the single photon are optically combined into and as part of the first input waveguide (Fig. 4A at 404).
Regarding dependent claim 4, Hall ‘191 teaches that taper features can be used and found after the combiner, to the nonlinear fiber (column 7, lines 35-58), thus all structure of “taper” is met by Hall.
Regarding dependent claim 6, Hall ‘191 teaches the multiplexer and nonlinear waveguide are structurally integrated together onto a compact platform, as they must be bonded. Note that this method of forming does not impute any patentable distinction to the structure of the prior art of Hall (noting INTL Written Opinion).
Regarding dependent claim 13, Hall ‘191 teaches wherein the third wavelength of the single photon is changed by tuning the second wavelength (paragraph [0028]: "The nonlinear optical waveguide 410 converts the wavelength of the input optical signal that includes the one or more optical quantum states to a new wavelength, based on the wavelength of the pump source 406.").
Regarding dependent claim 16, Hall ‘191 teaches wherein there is a filter after the nonlinear waveguide (Fig. 4A and columns 4-6) and the filter could be potentially a ring resonator, but this is not positively claimed so the structure is met by Hall.
Regarding dependent claim 19, Hall ‘191 teaches wherein the optical system generates a continuous beam of mid-infrared or visible irradiation (Fig. 4A, can be continuous wave or continuously tunable in these ranges (capable of MIR and/or visible wavelengths).
Therefore, these cited dependent claims 2, 3, 4, 6, 13, 16, and 19, all such structural features are found within Hall ‘191, regarding Fig. 4A and in columns 4-6. See the “Written Opinion” in Sections (5) – (11). These claims are also rejected under the obvious features of base independent claim 1.
Claims 5, 7-12, 14, 15, and 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over Hall et al. U.S. Patent No. 11,086,191 B2, and further in view of Huang et al. US 2022/0075238 A1 (noting the rejection of base independent claim 1 above as “COMBO”), and further in view of Ulsig et al. NPL “Second-order nonlinear effects…” (for claims 7-11 and 14) and Young U.S. Patent No. 11,048,143 B1 (claims 15, 17, and 18).
Regarding independent claim 1, COMBO makes obvious all features found in the base independent claim 1. See section (11) above for the full rejection.
Regarding further dependent claims 5, 7-12, 14, 15, and 17-18, COMBO does not expressly and exactly teach those dependencies, in which evanescent coupling occurs to the nonlinear waveguide (claim 5), the features of the desired parameters and properties of claims 7-12 (“conversion efficiency”, “nonlinearity”, “optical loss”, “optical confinement”, “input power”, and “length”), desired and usable semiconductor material selected (claim 14), or the linear resonator with reflective sections, ring resonators, and/or nonlinear waveguide (multiple as in claim 18) configurations for dependent claims 14, 15, and 17-18. However, at a time before the effective filing date of the current application, it would have been an obvious matter of common skill and design choice to a person of ordinary skill in the art to use features such as those outlined by the dependent claims for an optical system, because Applicant has not disclosed that using such features provides an advantage, is used for a particular purpose, or solves a stated problem (when viewing hypothetical “COMBO” output in claim 1).
Additionally, the close prior art of Ulsig et al. NPL “Second-order nonlinear effects…” and Young U.S. Patent No. 11,048,143 B1 teach similar features as missing in the dependencies, which pertain to claims 7-11 14 (Ulsig NPL) and claims 15, 17, and 18 (Young US ‘143). The full Written Opinion for PCT EP ‘190 (see Section (12)) is fully incorporated herein, and the Examiner agrees with the conclusions pertaining to claims 5, 7-12, 14, 15, and 17-18. One of ordinary skill in the art, furthermore, would have expected the combination of references herein (COMBO and further in view of Ulsig NPL and/or Young US ‘143) to perform equally well with such features as the optical dependencies (selectable parameters and functions of the device, linear resonators, ring resonators, multipole nonlinear waveguides combined together) because these claim terms would have been easily integrated and would have also been recognized by one with common skill in the art to improve optical signal propagation in the system for the intended output of a wavelength converted single photon. It would have required no undue burden or unnecessary experimentation to arrive at those features with an optical system such as found in Hall, Huang, Ulsig, and Young (as “COMBO2”). Notably, claim 5 is found as an obvious design choice using Hall and Huang and standing alone, considering that evanescent coupling is common in the art and inputting to a waveguide using this method is known in combiners / couplers. Further, the base structure of the sole independent claim 1 is made obvious by COMBO as discussed prior to this section. Therefore, it would have been an obvious matter of common skill and design choice to modify (and/or update) COMBO and COMBO2 to obtain the invention as specified in claims 5, 7-12, 14, 15, and 17-18. See KSR v. Teleflex, 127 S.Ct. 1727 (2007).
Response to Arguments
Applicant’s arguments with respect to claims 1, 20, and 21 (about the formation of Hall as an exact “PIC”) have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. The Examiner has provided a new grounds of rejection for all claims 1-21 above, and notably the independent claims 1, 20, and 21 now being rejected under Hall and further in view of Huang. This action is made NON-FINAL, because it is a shift of rejection not previously considered.
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
Because new grounds of rejection(s), or shifts of rejection(s) have been made, those not necessitated by the amendment dated on June 24, 2026, this action is made NON-FINAL. The normal statutory periods for reply to a non-final rejection will apply.
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
July 29, 2026
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