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 .
Response to Arguments
Applicant’s arguments with respect to claims 1 – 20 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.
Claim Objections
Claim 4 is objected to because of the following informalities: “fifth” should read “third”, “sixth” should read “fourth” and “seventh” should read “fifth”. Appropriate correction is required.
Claim 7 is objected to because of the following informalities: “[200 nm, 550 nm]” should read “200 nm – 550 nm”. Appropriate correction is required.
Claim 10 is objected to because of the following informalities: “[200 nm, 350 nm]” should read “200 nm – 350 nm”. Appropriate correction is required.
Claim 11 is objected to because of the following informalities: “second” should read “first”. Appropriate correction is required.
Claim 15 is objected to because of the following informalities: “[40 nm, 100 nm]” should read “40 nm – 100 nm”. Appropriate correction is required.
Claim 19 is objected to because of the following informalities: “fifth” should read “third”, “sixth” should read “fourth” and “seventh” should read “fifth”. Appropriate correction is required.
Allowable Subject Matter
Claims 3 – 7 and 18 – 20 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
The prior art of record, taken alone or in combination, fails to disclose or render obvious the chip comprising, among other things, a third waveguide in the insulation layer, wherein the third waveguide is located on a side of the second waveguide away from the substrate, electro-optic modulation efficiency of the third waveguide is higher than electro-optic modulation efficiency of the first waveguide, and a third coupling portion of the first waveguide and a fourth coupling portion of the third waveguide form a second coupling structure configured to implement optical coupling between the first waveguide and the third waveguide.
The closest relevant prior art of record, Kamineni et al. (U.S. PG Pub. # 2023/0366913 A1), teaches waveguides (415 and 416) laterally adjacent the second waveguide (fig. 4), but fails to teach or suggest a third waveguide located on a side of the second waveguide away from the substrate that has a higher than electro-optic modulation efficiency of the first waveguide or the coupling arrangement as claimed. Thus, with no teaching from the prior art, and without the benefit of applicant's teachings, there is no motivation for one of ordinary skill in the art to combine/modify the prior art of record in a manner so as to create the claimed invention.
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, 2, 9 – 11, 13 – 17 and 21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shin et al. (U.S. PG Pub. # 2021/0364695 A1).
In Re claims 1 and 16, ‘695 teaches a chip, comprising: a substrate (101); an insulation layer (102 and 105, par. 0058) located on one side of the substrate; a first waveguide (103) and a second waveguide (104) that are in the insulation layer, wherein the second waveguide is located on a side of the first waveguide away from the substrate (fig. 6), the first waveguide is used as a part in an active component, the first waveguide is used for electro-optic modulation, the active component is an electro-optic modulator (20), the second waveguide is used for a passive component (41), and a transmission loss of the second waveguide is less than a transmission loss of the first waveguide, wherein a first coupling portion of the first waveguide and a second coupling portion of the second waveguide form a first coupling structure, and the first coupling structure is configured to implement optical coupling between the first waveguide and the second waveguide; and
the chip further comprises:
a photoelectric detector (60) in the insulation layer, wherein the photoelectric detector is connected to an inter-layer interconnection structure (64) by using a doping structure (61), the doping structure is a semiconductor layer having a doping element (par. 0084), a material of the semiconductor layer is consistent with a material of the first waveguide (fig. 6), and a distance between the doping structure and the substrate is equal to a distance between the first waveguide and the substrate (fig. 6), wherein the inter-layer interconnection structure is led out to a periphery of the insulation layer (fig. 6).
Furthermore, The patentability of an apparatus depends only on the claimed structural limitations. ‘695 teaches a structure that is substantially identical to that of the claimed invention, therefore the claimed properties or functions are presumed to be inherent. The burden is on the applicant to show that the ‘695 device does not possess these functional characteristics. See MPEP 2112.01.
In Re claims 2 and 17, ‘695 teaches wherein a material of the first waveguide is silicon, and a material of the second waveguide is silicon nitride (par. 0054, 0055).
In Re claim 9, ‘695 teaches wherein a distance between a surface (63a) of the photoelectric detector away from the substrate and a surface (bottom) of the substrate is less than a distance between a surface of the second waveguide away from the substrate and the surface of the substrate (fig. 6).
In Re claim 10, ‘695 teaches wherein a size range of the photoelectric detector in a direction perpendicular to the surface of the substrate is [200 nm, 350 nm] (par. 0085).
In Re claim 11, ‘695 teaches a second electrode pair (65 and 13) located on two sides of the first waveguide in the insulation layer.
In Re claim 13, As stated in MPEP §2114, “[w]hile features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function.” In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997). A claim containing “a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). As such, while the functional language limitations are not ignored, such limitations are not given patentable weight, and the claimed limitations are anticipated if a prior art apparatus is capable of performing the claimed function. MPEP §2114. Claim 13 contains a functional limitation (wherein a transmission loss of the second waveguide is less than or equal to 0.5 dB/cm). Since the disclosed apparatus of ‘695 fully capable of performing the recited function, and contains all recited structural elements, the claim rejection based on ‘695 is proper.
In addition, it is respectfully noted that it would be improper to import specific structural limitations (which are not actually claimed and recited in the claims) from the specification into the claims when interpreting functional language limitations. See MPEP §2111. Thus, the pending claims will be given their broadest reasonable interpretation consistent with the specification, without importing limitations from the specification into the claims.
In Re claim 14, ‘695 teaches wherein a size range of the second waveguide in a direction perpendicular to a surface of the substrate is [300 nm, 400 nm] (par. 0066).
In Re claim 15, ‘695 teaches wherein a size range of the insulation layer between the first waveguide and the second waveguide in a direction perpendicular to a surface of the substrate is [40 nm, 100 nm] (par. 0068).
In Re claim 21, ‘695 teaches wherein each electrode of the second electrode pair is located inside the insulation layer (fig. 6).
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 2, 11, 13, 14, 16 and 17 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Kamineni et al. (U.S. PG Pub. # 2023/0366913 A1).
In Re claims 1 and 16, ‘913 teaches a chip, comprising: a substrate (302 or 402); an insulation layer (324) located on one side of the substrate; a first waveguide (308 in fig. 3B or 408 in fig. 4) and a second waveguide (322 or hashed area laterally adjacent 415, fig. 4) that are in the insulation layer, wherein the second waveguide is located on a side of the first waveguide away from the substrate (fig. 4), the first waveguide is used as a part in an active component, the first waveguide is used for electro-optic modulation, the active component is an electro-optic modulator, the second waveguide is used for a passive component, and a transmission loss of the second waveguide is less than a transmission loss of the first waveguide (inherent to the structure as claimed), wherein a first coupling portion of the first waveguide and a second coupling portion of the second waveguide form a first coupling structure (fig. 4), and the first coupling structure is configured to implement optical coupling between the first waveguide and the second waveguide (par. 0089); and the chip further comprises: a photoelectric detector (122) in the insulation layer, wherein the photoelectric detector is connected to an inter-layer interconnection structure (340, between 414 and 438 not annotated in fig. 4) by using a doping structure (312), the doping structure is a semiconductor layer having a doping element (par. 0072), a material of the semiconductor layer is consistent with a material of the first waveguide (par. 0071), and a distance between the doping structure and the substrate is equal to a distance between the first waveguide and the substrate (fig. 4), wherein the inter-layer interconnection structure is led out to a periphery of the insulation layer (where they contact a layer 442).
In Re claims 2 and 17, ‘913 teaches wherein a material of the first waveguide is silicon (par. 0071), and a material of the second waveguide is silicon nitride (par. 0073).
In Re claim 11, ‘913 teaches a second electrode pair located on two sides of the first waveguide in the insulation layer (pars. 0090, 436).
In Re claim 13, as stated in MPEP §2114, “[w]hile features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function.” In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997). A claim containing “a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). As such, while the functional language limitations are not ignored, such limitations are not given patentable weight, and the claimed limitations are anticipated if a prior art apparatus is capable of performing the claimed function. MPEP §2114. Claim 13 contains a functional limitation (wherein a transmission loss of the second waveguide is less than or equal to 0.5 dB/cm). Since the disclosed apparatus of ‘695 fully capable of performing the recited function, and contains all recited structural elements, the claim rejection based on ‘695 is proper.
In addition, it is respectfully noted that it would be improper to import specific structural limitations (which are not actually claimed and recited in the claims) from the specification into the claims when interpreting functional language limitations. See MPEP §2111. Thus, the pending claims will be given their broadest reasonable interpretation consistent with the specification, without importing limitations from the specification into the claims.
In Re claim 14, ‘913 teaches wherein a size range of the second waveguide in a direction perpendicular to a surface of the substrate is [300 nm, 400 nm] (par. 0057).
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.
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.+
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Shin et al. (U.S. PG Pub. # 2021/0364695 A1).
‘695 is silent to wherein a hydrogen content in a silicon nitride material of the second waveguide is less than or equal to 10%.
However, it is well known in the art that having a hydrogen content in silicon nitride material less than or equal to 10% as it allows for less loss of optical transmission in the silicon nitride.
Thus, it would have been obvious to one of ordinary skill in the art before the effective
filing date of the claimed invention to make the hydrogen content less than or equal to 10% in the SiN so as to allow for less optical loss in the SiN as a person with ordinary skill has good
reason to pursue the known options within his or her technical grasp.
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 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 CHAD SMITH whose telephone number is (571)270-1294. The examiner can normally be reached M-F 7:30 - 5.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Uyen-Chau Le can be reached at 1-571-272-2397. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHAD H SMITH/Primary Examiner, Art Unit 2874
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