DETAILED ACTION
This office action is in response to the application and claims filed on February 6, 2024. Claims 1-21 are pending, with claims 1, 20, and 21 in independent claim form.
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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The prior art documents submitted by Applicant in the Information Disclosure Statements filed on April 17, 2024, have been considered and made of record (note attached copy of forms PTO-1449).
Drawings
The original drawings (nine (9) pages) were received on February 6, 2024. These drawings are acknowledged.
Claim Objections
Claims 1, 20, and 21 are objected to because of the following informalities: regarding each independent claim, the closing portion of these preambles are awkwardly in the English language. For example, the phrase “wherein the optical system comprising” in claim 1 is awkward, and could be replaced with “wherein the optical system comprises…” / “[[frequency converter comprising…” in claim 21). Further, the claims appear to be directly derived from an EPO application, therefore Applicant’s cooperation is respectfully requested to carefully review the claims 1-21 for any issues that may exist before the US PTO that may be different under EPO review. Also noting claims 1, 20, and 21 (with dependent claim 19), the term “laser irradiation” (many instances in 1, 20, 21) should be reviewed as such term is typically referred to as “laser radiation” in US PTO claims. However, the Examiner acquiesces that Applicant may be their own lexicographer, if “irradiation” is desired. Finally noting claims 1, 20, and 21, the term “waveguide material” in the closing section(s) should read “nonlinear waveguide material” for consistency of terms. Appropriate correction is required.
Further regarding dependent claims being also objected to:
-Dependent claim 6: the phrase “structurally integrated on a compact platform” should read “structurally integrated on the compact platform”, as this feature is already found in independent claim 1.
-Claim 12: this claim is drafted awkwardly, with the commas dividing “wherein the conversion takes place”, and should be re-drafted.
-Claims 16-17: the use of conditional (“may”, “if”) language should be avoided. Positive claim limitations should only be used in US PTO claims. If the “ring resonator” may be the filter of claim 16, or the “integration” of the waveguide may be found with the ring resonator, it is not immediately clear if these terms are required (maybe not?).
-Claim 19: the term “visible irradiation” should be reviewed as such term is more typically described as “visible radiation” in US PTO claims. However, the Examiner does note that Applicant is their own lexicographer in this instance.
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 1, 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 2-19 are also rejected at least being dependent from rejected claim 1, but some of these claims include further indefinite features as is fully addressed below.
Claims 1, 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 1, 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 1, 20, and 21 are rejected as being vague and indefinite under the meaning of 35 U.S.C. 112(b). Also note dependent claim 6, which discussed this “compact platform”, and should be carefully reviewed.
Regarding dependent claim 4, the phrase “taper-like” (akin to "or the like") renders the claim indefinite because the claim includes elements not actually disclosed (those encompassed by "or the like"), thereby rendering the scope of the claim unascertainable. See MPEP § 2173.05(d). Therefore, claim 4 is indefinite based on the requirements of 35 U.S.C. 112(b).
Regarding dependent claims 6 and 18, the terms “a compact platform” (claim 6) and “two or more nonlinear waveguides” (claim 18) are unclear as lacking proper antecedent basis. Because it is not immediately clear if these claims conflict with features found in claim 1 (“a compact platform” and “nonlinear waveguide”), these claims are rejected under 35 U.S.C. 112(b). There is insufficient antecedent basis for these limitations in the claim. Further noting claim 18, there is already “one” nonlinear waveguide in claim 1, and the additional features “in one”, “the next”, and “the last” in reference to the “nonlinear waveguide(s)” must also be corrected and clearly claimed.
Regarding dependent claim 7, the terms “sufficiently high”, “sufficiently low”, and “sufficiently tight” in the claim body each are relative terms which render the claim indefinite. The term “sufficiently” to be high/low/tight” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. For these reasons, claim 7 is rejected as being indefinite under the meaning of 35 U.S.C. 112(b).
Dependent claims 7-12 and 14 are also rejected for the use of the term “preferably”, “preferable”, or “more preferable.” 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 7-12 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 7-12 and 14 are rejected as being indefinite under the meaning of 35 U.S.C. 112(b).
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 1-4, 6, 13, 16, and 19-21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hall et al. U.S. Patent No. 11,086,191 B2 (the features of which has also been published as same PG Pub US ‘250 and WO 2018/106765 A1).
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”), which is impliedly a “photonic integrated circuit” (PIC) in a broadest reasonable interpretation (BRI) of Fig. 4A element 400, 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, which clearly, fully meets Applicant’s claimed structural limitations for independent claim 1 and independent claim 20’s methods.
Regarding 3rd independent claim 21, the same “frequency converter” language is met in the structure, as enumerated above in claim 1. Therefore claim 21 is also anticipated by Hall ‘191.
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.
In particular, 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-like” is met by Hall (note the 35 U.S.C. 112(b) rejection of “like”).
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).
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 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, based on independent claim 1, 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, 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”), which is impliedly a “photonic integrated circuit” (PIC) in a broadest reasonable interpretation (BRI) of Fig. 4A element 400, 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 further dependent claims 5, 7-12, 14, 15, and 17-18, Hall et al. US ‘191 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.
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 (Hall US ‘190 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, Ulsig, and Young (as “COMBO”). Notably, claim 5 is found as an obvious design choice using Hall 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 fully anticipated by Hall US ‘190 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 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).
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
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: PTO-892 form references B-D and N, which pertain to the state of the art of optical nonlinear systems that use optical waveguides and result in an output of wavelength converted signals using 2nd order nonlinear functions such as DFG, harmonic generation (doubling, tripling, etc.), and SFG.
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/DANIEL PETKOVSEK/Primary Examiner, Art Unit 2874
January 15, 2026