DETAILED ACTIONNotice 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 information disclosure statement (IDS) submitted on 7/2/24 was filed in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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.
Claim(s) 1-2, 6-9, 11-14, 17-18, and 20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Adams et al. (US 2020/0408637 A1).
Re. Claim 1, Adams et al. discloses a photonic device 100A comprising:
a Photonic Integrated Circuit (PIC) 108 (Fig. 1A; [0019]); and
a laser 102 connected to an input of the PIC 108 via a Polarization-maintaining (PM) device 104 (Fig. 1A; [0019]);
wherein the PM device 104 has a desired polarization axis on a first mode and undesired on a second undesired mode (Figs. 1A, 2A-2B; [0020], [0023]), and wherein the PIC 108 includes an on-chip first monitoring photodiode 112 and circuitry configured to determine Polarization Extinction Ratio (PER) based on an optical power measured by the on-chip first monitoring photodiode 112 (Fig. 1A; [0019]).
Re. Claim 2, Adams et al. discloses the on-chip first monitoring photodiode 112 measures second undesired mode optical power and the PER is inferred based on the second undesired mode optical power ([0028] and [0034]). While the 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, 44 USPQ2d 1429 (Fed. Cir. 1997). “Apparatus claims cover what a claim is, not what a claim does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original).
Re. Claim 6, Adams et al. discloses the PER is determined by the first monitoring photodiode via a direct measurement of the second undesired mode in steady-state condition ([0034]). While the 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, 44 USPQ2d 1429 (Fed. Cir. 1997). “Apparatus claims cover what a claim is, not what a claim does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original).
Re. Claim 7, Adams et al. discloses the PIC includes at least one power control actuator, the on-chip first monitoring photodiode measures the optical power after the at least one power control actuator, and the at least one power control actuator is controlled based on the optical power ([0022], [0043]-[0044]). While the 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, 44 USPQ2d 1429 (Fed. Cir. 1997). “Apparatus claims cover what a claim is, not what a claim does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original).
Re. Claim 8, Adams et al. discloses the PER is determined by the circuitry in a presence of a change in temperature, wavelength, and/or mechanical strain by monitoring a control response of the at least one power control actuator (Fig. 3; [0032]). While the 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, 44 USPQ2d 1429 (Fed. Cir. 1997). “Apparatus claims cover what a claim is, not what a claim does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original).
Re. Claim 9, Adams et al. discloses the circuitry configured to determine the PER is further configured to determine optical power fluctuations during temperature ramps, and determine the PER based on an amplitude and period of the optical power fluctuations (Fig. 3; [0032]). While the 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, 44 USPQ2d 1429 (Fed. Cir. 1997). “Apparatus claims cover what a claim is, not what a claim does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original).
Re. Claim 11, Adams et al. discloses the PM device 104 is PM fiber (Fig. 1A; [0019]).
Re. Claim 12, Adams et al. discloses the first mode is a Transverse Electric (TE) mode and the second undesired mode is a Transverse Magnetic (TM) mode (Fig. 2A; [0024]).
Re. Claim 13, Adams et al. discloses a method comprising steps of:
responsive to a laser 102 being connected to an input of a Photonic Integrated Circuit (PIC) 108 via a Polarization-maintaining (PM) device 104 having a desired polarization axis on a first mode and undesired on a second undesired mode (Figs. 1A and 5; [0019] and [0047]),
monitoring optical power by an on-chip first monitoring photodiode112 (Figs. 1A and 5; [0019] and [0048]); and
determining Polarization Extinction Ratio (PER) based on the monitored optical power (Figs. 1A and 5; [0019] and [0048]).
Re. Claim 14, Adams et al. discloses the on-chip first monitoring photodiode 112 measures second undesired mode optical power and the PER is inferred based on the second undesired mode optical power ([0028] and [0034]).
Re. Claim 17, Adams et al. discloses the PER is determined by the first monitoring photodiode via a direct measurement of the second undesired mode in steady-state condition ([0034]).
Re. Claim 18, Adams et al. discloses the PER is determined by the first monitoring photodiode in a presence of a change in temperature, wavelength, and/or mechanical strain by monitoring a control response of power control actuators (Fig. 3; [0032]).
Re. Claim 20, Adams et al. discloses the PIC includes at least one power control actuator, the on-chip first monitoring photodiode performs the monitoring the optical power after the at least one power control actuator, and wherein the steps further include controlling the at least one power control actuator based on the optical power ([0022], [0043]-[0044]).
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.
Claim(s) 10 and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Adams et al. (US 2020/0408637 A1).
Re. Claims 10 and 19, Adams et al. discloses the photonic device and associated method as discussed above. In addition, Adams et al. discloses the device and method are suitable for telecommunication network devices, including modulators, controllers, and scramblers ([0001]-[0003]). However, Adams et al. does not explicitly disclose the photonic device is an optical modem, and the method is performed in an optical modem.
Optical modems are well known optical devices within telecommunications networks which provide numerous functionalities, including modulation, signal control and scrambling, and therefore one of ordinary skill in the art would have found it obvious before the effective filing date of the claimed invention to use a modem as the photonic device and perform the method within a modem. “A person of ordinary skill is also a person of ordinary creativity, not an automaton” – ‘[w]hen there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.” KSR International Co. v. Teleflex Inc., 550 USPQ2d 1385 (2007).
Allowable Subject Matter
Claims 3-5 and 15-16 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:
Re. Claims 3-5, the prior art does not disclose or reasonably suggest the claimed photonic device, specifically comprising a polarization splitter connected to the input, wherein the first mode is connected to a first output of the polarization splitter and the first monitoring photodiode is connected to a second output of the polarization splitter, in combination with the remaining limitations of the claims.
Re. Claims 15-16, the prior art does not disclose or reasonably suggest the claimed method, specifically wherein the steps further include performing polarization splitting at the input via a polarization splitter, wherein the first mode is connected to a first output of the polarization splitter and the first monitoring photodiode is connected to a second output of the polarization splitter, in combination with the remaining limitations of the claims.
The most applicable prior art, Adams et al. (US 2020/0408637 A1), addressed above, fails to disclose or reasonably suggest the claimed invention, specifically those portions highlighted above in combination with the remaining limitations of the claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See the attached PTO-892.
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/RHONDA S PEACE/Primary Examiner, Art Unit 2874 6/29/26
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