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 .
DETAILED ACTION
Response to Amendment
Applicant’s Amendment filed on August 4, 2026 has been fully considered and entered.
Claim Rejections - 35 USC § 102
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, 7, 10, 11, 16-18 and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Krishnamurthi et al. (US 2016/0018610 A1).
Regarding claim 1, Krishnamurthi discloses a photonic integrated circuit (Fig. 3), comprising: at least a first waveguide (304) with an end having a tilted surface (250) for reflecting light with a total internal reflection (TIR) mirror (paragraphs 0029-0030, 0044), wherein the first waveguide is made of crystalline silicon (paragraph 0030 discloses 304 formed from silicon nitride, which has silicon in a crystalline form); and a functional surface (336; paragraphs 0040-0041 describe spacer 336 provided to reduce the numerical aperture, where therefore provides a function) for interacting with the light reflected by the TIR mirror; wherein the functional surface is directly deposited on to an antireflection coating (306; paragraph 0032 describes layer 306 as an “anti-reflective (ARC) layer”) on the first waveguide.
Regarding claim 2, Krishnamurthi discloses the functional surface is a reflecting functional surface or a transmissive functional surface in Fig. 3.
Regarding claim 7, Krishnamurthi discloses the total internal reflection mirror is at a 40 to 50 degree angle, such as at a 45 degree angle, with respect to the functional surface in Fig. 3 in paragraph 0028.
Regarding claim 10, Krishnamurthi discloses the first waveguide is formed by a portion of a patterned silicon layer on an insulating layer in paragraph 0024.
Regarding claim 11, Krishnamurthi discloses the antireflection coating and the functional surface are locally located on the surface of the first waveguide at the end having the tilted surface such that light propagated through the first waveguide is reflected by the mirror through the antireflection coating to the functional surface in Fig. 3 and paragraph 0026.
Regarding claim 16, Krishnamurthi discloses depositing the functional surface directly on to an antireflection coating on top of the first waveguide in paragraph 0032.
Regarding claim 17, Krishnamurthi discloses the first waveguide is manufactured on a silicon on insulator, SOI, substrate in paragraph 0024.
Regarding claim 18, Krishnamurthi discloses first waveguide is formed in the silicon on insulator substrate in paragraph 0024.
Regarding claim 20, Krishnamurthi discloses using the photonic integrated circuit in optical communications, sensing or imaging in paragraphs 0023-0025.
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 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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 3, 5, 8, 9, 14, 15 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Krishnamurthi et al. (US 2016/0018610 A1).
Regarding claim 3, Krishnamurthi teaches the claimed invention except for specifically stating the thickness of the functional surface. However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to arrive at the claimed thickness in order to provide the desired function while maintaining a compact form factor, and since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 5, Krishnamurthi teaches the claimed invention except for specifically stating the thickness of the first waveguide. However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to arrive at the claimed thickness in order to provide the adequately guide the light by total internal reflection while maintaining a compact form factor, and since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 8, Krishnamurthi teaches the claimed invention except for specifically stating the thickness of the antireflection coating. However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to arrive at the claimed thickness in order to provide the desired antireflective property while maintaining a compact form factor, and since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 9, Krishnamurthi teaches the claimed invention except for specifically stating the width of the first waveguide. However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to arrive at the claimed width in order to adequately guide the light by total internal reflection while maintaining a compact form factor, and since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claims 14 and 15, Krishnamurthi further discloses the length and width of the functional surface greater than the thickness of the functional surface in Fig. 3. Krishnamurthi teaches the claimed invention except for specifically stating the length and width of the functional surface at least 5 times the thickness of the functional surface. However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to arrive at the claimed length and width in order to match the dimensions of an output coupler, and since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 19, Krishnamurthi teaches the claimed invention except for the method of forming the functional surface. However, adding material directly on a surface by means of sputtering, epitaxy, chemical vapour deposition, electroplating, or atom layer deposition are ubiquitous in the art of optical devices and as such, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to use any well-known and commonly used deposition method, for the purpose of effectively and efficiently forming the functional surface.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Krishnamurthi et al. (US 2016/0018610 A1) in view of Scifres et al. (5,282,080 A).
Regarding claim 6, Krishnamurthi teaches the claimed invention except for the first waveguide further comprises a splitter. Scifres discloses a photonic integrated circuit (Fig. 8) comprising a first waveguide which further comprises a splitter (98). Since both inventions relate to optical devices, one having ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to use a waveguide comprising a splitter as disclosed by Scifres in the photonic integrated circuit of Krishnamurthi for the purpose of providing multiplication of the optical path, increasing the density of the device.
Claims 12 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Krishnamurthi et al. (US 2016/0018610 A1) in view of Aalto et al. (WO 2020/225484 A1 from Applicant’s Information Disclosure Statement).
Regarding claims 12 and 13, Krishnamurthi teaches the claimed invention except for a second waveguide. Aalto discloses a first waveguide (1 in Fig. 5A) and a second waveguide (3) with an end having a tilted surface for reflecting light with a total internal reflection (TIR) mirror (4; paragraph 0057), and a 3D printed waveguide (2a-2c; paragraph 0051) having a first end and a second end, wherein the first end of the 3D printed waveguide is connected to the functional surface of the first waveguide and the second end of the 3D printed waveguide is connected to the second waveguide at the end having a tilted surface such that the circuit is configured to transmit light from the first waveguide to the second waveguide through the 3D printed waveguide; wherein the second waveguide has the properties of the first waveguide. Since both inventions relate to optical devices, one having ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to use a second waveguide as disclosed by Aalto in the photonic integrated circuit of Krishnamurthi for the purpose of coupling light to additional optical components.
Response to Arguments
Applicant's arguments, filed August 4, 2026, with respect to claims have been considered but are moot in view of the new grounds of rejection. However, in order to expedite the prosecution of the Application, Applicant’s arguments regarding Krishnamurthi have been considered and are not persuasive.
On pages 5-7, Applicant claims that Krishnamurthi does not teach that the waveguide is made of crystalline silicon. However, paragraph 0030 of Krishnamurthi explicitly states waveguide 304 made from silicon nitride. Silicon nitride is known to have a crystal structure – see for example, https://en.wikipedia.org/wiki/Silicon_nitride, under “Crystal structure and properties” which describes ‘[t]here exist three crystallographic structures of silicon nitride.” Since the silicon atoms are arranged into a crystal lattice, Krishnamurthi discloses a waveguide comprising crystalline silicon.
On pages 7-8, Applicant states that “disposed is a general term that does not mean directly deposited” as claimed. However, Krishnamurthi does not merely use the term “disposed”, Krishnamurthi discloses spacer 336 “disposed on top” of ARC layer 306 (paragraph 0032). “On” is defined as “in contact with and supported by”, see for example, https://www.merriam-webster.com/dictionary/on. Thus, “disposed on top” would mean the spacer 336 is in contact with and supported by the ARC layer. Further, Krishnamurthi does not disclose any means by which spacer 336 is suspended in the air and the spacer would not simply float above the optical device. Krishnamurthi also does not disclose any intervening optical components between the spacer 336 and the ARC layer 306. Naturally, the only logical place for the spacer is directly on top of the ARC layer. Even assuming arguendo there is a layer of air between the spacer 336 and the ARC layer 306, that air can constitute the claimed functional surface since it performs a transmissive function of passing the light through.
On pages 9-11, in regards to claim 12, Applicant alleges there is no motivation to combine Aalto with Krishnamurthi because Krishnamurthi already has a method for coupling light to additional optical components. However, paragraph 0024 of Krishnamurthi only describes a basic optical communication channel 130 coupled to an optical device 134. As stated in paragraph 0003, “[e]mbodiments are illustrated by way of example and not by way of limitation in the figures of the accompanying drawings.” Krishnamurthi further states in paragraph 0106: “The above description of illustrated implementations, including what is described in the Abstract, is not intended to be exhaustive or to limit the embodiments of the present disclosure to the precise forms disclosed. While specific implementations and examples are described herein for illustrative purposes, various equivalent modifications are possible within the scope of the present disclosure, as those skilled in the relevant art will recognize.” In other words, the device of Krishnamurthi is not limited to the basic optical communication channel 130 coupled to an optical device 134 shown. One having ordinary skill in the art would find it obvious to incorporate the second waveguide of Aalto to couple the signal to an additional optical component which allows for adjustment of polarization of light. Further, using the second waveguide of Aalto allows for the use of additive manufacturing, ion beam etching or other 3D fabrication methods which increases versatility in the manufacturing process.
On pages 11-12, in regards to claim 19, Applicant states that “the motivation does not articulate why one of ordinary skill in the art would actually select one of those specific methods for forming the spacer.” However, as disclosed in the rejection of claim 19, those methods are well-known and commonly used in the art for deposition of materials. Applicant does not provide any evidence nor actually dispute that these methods are well-known and commonly used. Thus, one of ordinary would find it obvious to use the most well-known and commonly used methods since they have the most experience with said methods, which simplifies and expedites the manufacturing process.
Conclusion
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRIS H CHU whose telephone number is (571)272-8655. The examiner can normally be reached on Mon-Fri 9AM-5PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Uyen-Chau Le can be reached on 571-272-239797. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Any inquiry of a general or clerical nature should be directed to the Technology Center 2800 receptionist at telephone number (571) 272-1562.
Chris H. Chu
/CHRIS H CHU/Primary Examiner, Art Unit 2874 October 8, 2026
