DETAILED ACTION
This office action is in response to the application and claims filed on March 15, 2024. This application is a 371 of PCT/JP2022/036840, dated September 30, 2022.
Claims 1-10 are pending, with claim 1 as the sole independent claim.
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 .
Information Disclosure Statement
The prior art documents submitted by Applicant in the Information Disclosure Statements filed on March 15, 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 March 15, 2024. These drawings are acknowledged.
Specification
The abstract of the disclosure is objected to because the abstract is too long. Generally, the abstract should be no more than 150 words and does not need the reference numbers from the specification / drawings to be include in such text. A 1-paragraph, shorter, corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Objections
Claims 1-10 are objected to because of the following informalities: regarding independent claim 1, the phrases “a substrate on which an optical waveguide is formed” and “a dielectric layer that covers the rib type optical waveguide is provided” are awkward (ending with these terms) and should be redrafted. Also of note is that claims 1-10 appear to be direct translations from a foreign language (Japanese) into English. Therefore, claims 1-10 should be carefully reviewed for typos and other awkward language due to this translation. Claims 2-10 are objected to at least as being dependent from claim 1, but are also objected for the following reasons (claims 9 and 10). Regarding dependent claim 9, this claim is objected to because the phrase “the control electrode is a modulation electrode” should be re-written with functional features. For example, the phrase could read “the control electrode is configured for modulating the light wave…”. Labeling an “electrode” as a different named “electrode” is objectionable in this context and should use functional language instead. Regarding dependent claim 10, the terms “a light wave” and “an electronic circuit” appear to be found also in claim 8, and thus should be re-drafted with a different status identifier (“the” instead of “a/an”). Also note the 35 U.S.C. 112(b) rejection below for lack of proper antecedent basis for these terms “a light wave” and “an electronic circuit” in claim 10. Appropriate correction is required.
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 1-10 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 is rejected below as the sole independent claim, while claims 2-10 are also rejected for the same reasons and as being dependent upon claim 1.
Regarding independent claim 1, the terms “close to” and “near” in the claim body are relative terms which render the claim indefinite. The phrase “disposed close to the optical waveguide”, “the control electrode close to the rib type optical waveguide”, and “is provided in a part of the first recess portion near a base part” are 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. Further, there is no clear line of demarcations identifying between the control electrode and being “close to” the optical waveguide and not “close to” such a waveguide; or the recess feature “near” the base part. For these reasons, independent claim 1 is rejected as being vague and indefinite under the meaning of 35 U.S.C. 112(b). Claims 2-10 are also rejected as including all such features of claim 1 as part of their claim scope.
Noting dependent claim 10, this claim body recites the limitations “inputs a light wave” and “an electronic circuit”. However, there is insufficient antecedent basis for these limitations in the claim. Claim 8 already recites “a light wave” and “an electronic circuit”, and thus it is unclear if these terms in claim 10 are new terms, or if these are the exact same features as in claim 8. Therefore, claim 10 lacks proper antecedent basis under the meaning of indefiniteness in 35 U.S.C. 112(b). Correction is required.
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 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Doi et al. US 2002/0146190 A1, and further in view of WO 2007/114367 A1 (both cited in the IDS dated on 3/15/2024).
Regarding independent claim 1, Doi et al. US 2002/0146190 A1 teaches (ABS; Figs. 1-3; corresponding text, in particular paragraphs [0077] – [0154]; Claims) an optical waveguide device (Figs. 1-3) comprising: a substrate 1A (Fig. 1) on which an optical waveguide (5B-1; 5B-2) is formed; and a control electrode (7-1; 7-3) disposed close to the optical waveguide on the substrate, wherein the optical waveguide is a rib type optical waveguide (see Figs. 1-2, formed like a rib / mesa), an end portion of the control electrode close to (note this frame-of-reference) the rib type optical waveguide is positioned in a first recess portion of the substrate that forms the rib type optical waveguide (see recess near/next to the rib waveguide, Figs. 1-2), a second recess portion that is further recessed from a shallowest position of the first recess portion is provided in a part of the first recess portion near a base part of the rib type optical waveguide (see Fig. 2 of Doi, additional lower reaching trench or 2nd recess extends off of the original recess (paras [0077] – [0154]; Figs. 1-3).
Regarding sole independent claim 1, Doi US ‘190 does not expressly and exactly teach “a dielectric layer that covers the rib type optical waveguide is provided, … and the dielectric layer is disposed in at least a part of the second recess portion.” Doi is silent to covering the gap or negative spaces of the 1st / 2nd recess (see Doi Fig. 2) with any formation or element of dielectric covering, etc. However, it is common and ubiquitous in the integrated optical / electrical modulation of optical waveguides with control electrodes to use dielectrics as a barrier or clad feature.
For example, WO 2007/114367 A1 teaches (ABS; Fig. 4; corresponding text, notably paragraphs [0054], [0055]; Claims) teaches a rib waveguide type optical device that includes electrode control of features of the waveguide, and in that a layer / film of dielectric material 8 is found in the recess feature near the base of the waveguide. Fig. 4 of WO ‘367 also teaches that such dielectric layer covers (at least part) of the waveguide rib/mesa core and also protects/covers features of the electrodes in WO ‘367. Therefore, one having ordinary skill in the art at the time of the effective filing date of the current application would have recognized that using such dielectric would improve optical modulation performance by helping to match impedances and allow for the designed refractive index features to be modulated during electrode control.
Since Doi US ‘190 and WO ‘367 are both from the same field of endeavor, the purpose disclosed by WO ‘367 would have been recognized in the pertinent art of Doi US ‘190.
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 WO ‘367, to have a dielectric layer fill the 1st and 2nd (lower) recesses near the optical waveguide rib base, in between the core and the control electrode, into the base design of the optical waveguide / modulation device of Doi US ‘190, to allow improved and known means for controlling optical signals to propagate in a raised / ridge core feature (a “protruding” optical waveguide), and allow for matched impedance design and proper isolation and controllability of optical signals in a layered semiconductor device, for improving optical operation of the such modulator based on the teachings of WO ‘367. Further, it would have required no undue burden or unnecessary experimentation to arrive at such feature of a “dielectric layer” to fill both the 1st and 2nd trenches / recesses, in particular a shallower 2nd recess (with the dielectric). See KSR v. Teleflex, 127 S.Ct. 1727 (2007). For these reasons, independent claim 1 is found obvious over Doi US ‘190 and further in view of WO ‘367 (henceforth “COMBO”)
Regarding dependent claim 2, in the hypothetical COMBO features for the optical waveguide device, the dielectric layer (of WO ‘367) would be continuously formed between the rib type waveguide core and the control electrode. Therefore, claim 2 would have been obvious over COMBO based on the dielectric added material of at least WO ‘367. KSR.
Regarding claims 3-5 and 7, having any incline angles, depths, thicknesses of the recess or substrate, cross sectional features, etc. in an opto-electronic control modulation waveguide with electrode(s) in COMBO would have been an obvious design choice (for tolerances of selectable values for inclined surface angles, depth of deepest part of recess, cross sectional designs, or substrate) and require merely common skill to recognize. KSR. These design choices and tolerances of preferred dimensions are within general levels of skill for manufacturing methods of optical waveguide modulators, and are generally similar to the design of both Doi and WO ‘367. Therefore, claims 3-5 and 7 would have been obvious over COMBO.
Regarding dependent claim 6, see the double protruding features to the left of the rib waveguide of Doi ‘190, which creates another recess (left side of Fig. 2 of Doi) in that the control electrode 7-1 (7-3) is form to jut into this “3rd recess”. For these reasons, claim 6 is found obvious based on the hypothetical COMBO with the primary reference to Doi US ‘190. KSR.
Regarding dependent claims 8-10, the overall configuration of an “optical modulation device” for a larger optical implementation would have been recognized based at least on COMBO. Having a case (a “housing”), with an input optical fiber to input/output light waves to the base COMBO waveguide modulation formation would have been obvious based on those features in COMBO. Additionally, using an “electronic circuit” for electrical control of the high-speed modulation device is known based on features of the control capability to be variable. Therefore, all structural features of the optical modulation (and transmission) devices in claims 8-10 would have been obvious based on features of the three prior art references found within COMBO. KSR. Impedance matching and amplification of the modulation signal are obvious constructions of the device at least found in WO ‘367.
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 reference A and B to Take US ‘627 and Motoya US ‘590. Reference A to Take US ‘627 pertains to the state of the art of optical waveguide modulators and secondary recesses/trenches in a dielectric layer (see Fig. 3 at “P”). Reference B to Motoya US ‘590 is from the same Assignee and at least one Common Inventor, with similar subject matter.
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/DANIEL PETKOVSEK/Primary Examiner, Art Unit 2874 February 13, 2026