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 .
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.
DETAILED ACTION
This is an AIA application filed July 5, 2024.
The earliest effective filing date of this AIA application is seen as January 7, 2022, the date of the earliest priority application (United States patent application serial number 17/647,423 filed January 7, 2022, now U.S. Patent No. 12,055,776) for any claims which are fully supported under 35 U.S.C. 112(a) by the parent application.
The effective filing date of this AIA application is seen as July 5, 2024, the actual filing date, for any claims that are not fully supported by the foregoing provisional or non-provisional application(s).
The present application is also related to the applications giving rise to the following patent publication(s) (some redundancy may be present):
Office
Application
App. Date
Pub. #
Pub. Date
US
17647423
01/07/2022
US 20230221513 A1
US 12055776 B2
07/13/2023
08/06/2024
EP
22215398
12/21/2022
EP 4209832 A1
EP 4209832 B1
07/12/2023
10/01/2025
CN
202310006514
01/04/2023
CN 116413855 A
07/11/2023
The claims originally filed July 5, 2024 are entered, currently outstanding, and subject to examination.
This action is in response to the original filing of the same date.
Claims 1-20 are currently pending and outstanding.
No claims have been amended, cancelled, withdrawn, or added.
Claims 1-20 are currently outstanding and subject to examination.
This is a non-final action and is the first action on the merits.
Allowable subject matter is not indicated below.
Often, in the substance of the action below, formal matters are addressed first, claim rejections second, and any response to arguments third.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims.
No figure is seen where the subject matter of claim 1 is set forth. There appears to be no drawing showing a single control conductor, a single common conductor, and a plurality of photonic devices spanning the two.
The foregoing must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Applicant should check the claims closely for all structures, steps, and relationships to ensure that they are present in the drawings.
Applicant may have other claimed configurational and/or geometrical features that are not shown in the drawings. Examiner suggests that Applicant review its claims and drawings to ensure that all claimed features are shown. While examiner endeavors to ensure all issues in all actions are fully and completely addressed, examiner’s additional scrutiny of the present application may reveal other drawing objections. Applicant should note this well and make sure that this application conforms to the rules as to both form and substance.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
Applicant must provide the same terminology/vocabulary/phrasing in the specification that is present in the claims. At least one term or phrase is missing from the specification present in the claim(s).
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o).
Correction is required as the following amendment(s)/text in the claims find(s) no antecedent in the specification.
Claim(s)
Antecedent Missing For
1
"respective one of the plurality of photonic devices"
1 and 3
"respective common connection"
1, 3, and 12
"respective control connection"
1, 7, 9, and 11
"plurality of waveguides"
4
"bias of the switch"
6
"respective control conductor"
"plurality of control ports"
7
"respective one of the plurality of waveguides"
9
"respective optical input of each of the plurality of photonic devices"
"respective waveguide of the plurality of waveguides"
11
"optical outputs"
"optical inputs"
14
"plurality of common conductors"
15
"respective photonic component of the plurality of photonic devices"
"respective one of the common conductors"
"plurality of signal converters"
20
"plurality of A/D converters"
As set forth in MPEP § 608.01(o):
The meaning of every term used in any of the claims should be apparent from the descriptive portion of the specification with clear disclosure as to its import; and in mechanical cases, it should be identified in the descriptive portion of the specification by reference to the drawing, designating the part or parts therein to which the term applies. A term used in the claims may be given a special meaning in the description. See MPEP § 2111.01 and § 2173.05(a).
Usually the terminology of the original claims follows the nomenclature of the specification, but sometimes in amending the claims or in adding new claims, new terms are introduced that do not appear in the specification. The use of a confusing variety of terms for the same thing should not be permitted.
. . . While an applicant is not limited to the nomenclature used in the application as filed, he or she should make appropriate amendment of the specification whenever this nomenclature is departed from by amendment of the claims so as to have clear support or antecedent basis in the specification for the new terms appearing in the claims. This is necessary in order to insure [sic, ensure] certainty in construing the claims in the light of the specification, Ex parte Kotler, 1901 C.D. 62, 95 O.G. 2684 (Comm’r Pat. 1901). See 37 CFR 1.75 and MPEP §§ 608.01(i), § 1302.01.
Consequently, identity between terms and phrases in the specification and claims is preferred and is seen as mandatory to ensure “certainty in construing the claims in the light of the specification”.
Further, under 37 C.F.R. § 1.121(e) regarding disclosure consistency:
The disclosure must be amended, when required by the Office, to correct inaccuracies of description and definition, and to secure substantial correspondence between the claims, the remainder of the specification, and the drawings.
Examiner considers direct correspondence between the specification and the claims to be important with respect to determining the scope of the claims.
Examiner strongly urges Applicant to review its claims with a fine-toothed comb and scrutinize them for any discrepancies between claim language and language that is used in the written description/specification as originally filed. Applicant is responsible for what it drafts. Discrepancies may be interpreted to Applicant’s detriment.
Special Definitions for Claim Language - MPEP § 2111.01(IV)
No special definitions as defined by MPEP § 2111.01(IV) are seen as present in the specification regarding the language used in the claims. Consequently, the words and phrases of the claims are given their plain meaning. MPEP §§ 2173.01, 2173.05(a), and 2111.01.
If special definitions are present, Applicant should bring those to the attention of the examiner and the prosecution history with its next response in a manner both specific and particular. In doing so, there will be no mistake, confusion, and/or ambiguity as to what constitutes the special definition(s). Per above, such special definitions must conform to the requirements of MPEP § 2111.01(IV).
Claim Rejections - 35 USC § 103
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.
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 1-9, 14-18, and 20 are rejected under 35 U.S.C. § 103 as being unpatentable over U.S. Patent Application Publication No. 20050206873 of Tanaka et al. (Tanaka) in view of U.S. Patent No. 5319182 of Havens et al. (Havens, cited by Applicant).
With respect to claim 1, Tanaka discloses a photonic integrated circuit (PIC) device (Fig. 1, ¶ 65 and adjacent, "optical sensor circuit 20") comprising:
a control conductor (the ungrounded line running vertically in the middle of Fig. 1 to connect the individual circuits) configured to conduct electrical signals generated by control circuitry (the control circuitry controls the presence of signal on that line);
a plurality of photonic devices (optical sensors 1, 2, 3, etc. and the related circuitry),
wherein each photonic device of the plurality of photonic devices is electrically connected to the control conductor at a respective control connection (on the right of the photonic devices);
a common conductor (on the left and connected to ground via biasing voltage circuit 13 and including ground) electrically connected to each of the plurality of photonic devices at a respective common connection (per Fig. 1); and
wherein:
each photonic device of the plurality of photonic devices is configured to be turned on or off based on the electrical signals received from the control conductor (¶ 66, "Each optical sensor circuit 20 includes an integrator circuit 17 for the optical sensors 1, 2, 3, etc., selection switches (MOSFETs) 4, 5, 6, etc., associated with each of the optical sensors 1, 2, 3, etc., for selecting and connecting the optical sensors 1, 2, 3, etc., to the respective integrator circuit 17, non selection switches (MOSFETs) 7, 8, 9, etc., and NOT circuits 10, 11, 12, etc., associated with each of the optical sensors 1, 2, 3, etc.” The signals received by integrator circuit 17 are based on the electrical signals from the photonic devices according the their on or off state), and
the control conductor (right side) and the common conductor (left side and ground) are electrically connected such that electronic communication of the electrical signals conducted from the control conductor must pass through at least one of the plurality of photonic devices before reaching the common conductor (¶ 69, "When the MOSFET 4, which is a selection switch, is switched on by inputting an ON-signal as a selection signal 1, the photoelectrons generated in the selected optical sensor 1 flow into the integrator circuit 17 via the MOSFET 4, raising the sensor output voltage. As the photoelectron current becomes higher, the voltage rise becomes higher. The photo-holes generated in the selected optical sensor 1 flow to the ground.").
Tanaka as set forth above does not disclose:
a plurality of waveguides,
each of the plurality of wave guides are optically connected with a respective one of the plurality of photonic devices,
Havens discloses an integrated solid state light emitting and detecting array and apparatus employing said array that includes (Fig. 6, col. 9, ll. 38 and adjacent):
a plurality of waveguides ("Waveguides 72"),
each of the plurality of wave guides are optically connected with a respective one of the plurality of photonic devices ("A proximal end face of an optical fiber waveguide 72 is disposed in face-to-face proximity with each of the photonic elements 74, 76.").
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use waveguided along the lines of Havens in a system according to Tanaka as set forth above in order to provide a portable and flexible optical sensing system. This provides one rationale to combine the references.
Another completely independent and separately sufficient rationale arises as follows. In making the combination (above), the combining of prior art elements (listed above) according to known methods (per the references) to yield predictable results (an optical sensing system) would occur as each element merely performs the same function in combination as it does separately. MPEP § 2141(III). This additional rationale is a sufficient, a complete, and an explicitly-recognized rationale to combine the references and conclude that the claim is obvious both under the controlling KSR Supreme Court case and MPEP § 2141(III)(A). Current Office policy regarding the determination of obviousness is set forth in the Federal Register notice at 89 Fed. Reg. 14449 (Feb. 27, 2024).
Further, the combination would then provide:
a plurality of waveguides,
each of the plurality of wave guides are optically connected with a respective one of the plurality of photonic devices.
The foregoing obviousness analysis is referred to in summary fashion in the rejections below.
With respect to claim 2, Tanaka in view of Havens as set forth above discloses the PIC device of claim 1, including one wherein:
each of the plurality of photonic devices comprises a photonic component (optical sensor 1) and a switch (selection switch (MOSFET) 4), and
the switch is configured to switch between on and off based on the electrical signals received from the control conductor (signals received by the integrator circuit 17 from the right side control conductor are based on the state of the switch 4).
With respect to claim 3, Tanaka in view of Havens as set forth above discloses the PIC device of claim 2, including one wherein
the photonic component (1) and the switch (4) of each of the plurality of photonic devices are connected in series between the respective control connection and the respective common connection.
Per Fig. 1.
With respect to claim 4, Tanaka in view of Havens as set forth above discloses the PIC device of claim 2, including one wherein
a bias of the switch is configured to change, based on the electrical signals received from the control conductor, to thereby switch the switch between on and off.
The gate appears to be connected to the control conductor.
With respect to claim 5, Tanaka in view of Havens as set forth above discloses the PIC device of claim 2, but not one further comprising
a plurality of control conductors,
the control conductor being one control conductor of the plurality of control conductors,
each control conductor of the plurality of control conductors is configured to conduct the electrical signals.
Havens col. 8, ll. 26 and adjacent provides:
"The isolation devices 14a-14i associated with each of the photonic elements 12a-12i, respectively, are utilized to restrict the flow of electrical current through the photosensitive array 10 to only predetermined paths so as to facilitate the discrete addressing of each particular photosensitive element 12. The isolation devices 14a-14i may comprise a current control device, such as a transistor, a threshold switch, an FET, relay, or the like."
Col. 7, l. 58 and adjacent:
"In a preferred embodiment, the isolation devices 14a-14i are omitted and alternate photonic elements are connected directly to the data lines 19 and 20 (See FIG. 1a)."
It would be obvious to combine Havens as set forth above with Tanaka in view of Havens as set forth above in order to provide addressable control over individual elements. See the articulated obviousness analysis above. As such Tanaka in view of Havens as set forth above would provide:
a plurality of control conductors,
the control conductor being one control conductor of the plurality of control conductors,
each control conductor of the plurality of control conductors is configured to conduct the electrical signals.
With respect to claim 6, Tanaka in view of Havens as set forth above discloses the PIC device of claim 5, further comprising the control circuitry, wherein:
the control circuitry comprises a plurality of control ports,
each control port of the plurality of control ports is connected to a respective control conductor of the plurality of the control conductors,
each control port of the plurality of control ports is configured to control the electrical signals between first and second states,
the switch of each respective photonic device, when subject to the first state,
is configured to switch on, and
the switch of each respective photonic device,
when subject to the second state,
is configured to switch off.
Per claim 5 above, Havens Fig. 1 shows a plurallty of control ports as associated with the isolation devices which switch on and off according to the respective control signal.
With respect to claim 7, Tanaka in view of Havens as set forth above discloses the PIC device of claim 2, including one wherein
the photonic component of each of the plurality of photonic devices comprises at least one optical port optically connected with a respective one of the plurality of waveguides.
Havens Figs. 6 and 7 show the ports and connections between photonic elements comprising light detectors 74 and light sources 76 are shown in an exemplary 2x2 matrix with waveguides 72.
With respect to claim 8, Tanaka in view of Havens as set forth above discloses the PIC device of claim 1, including one wherein
each of the plurality of photonic devices comprises a photodiode.
Havens Fig. 5 has photodiodes 62a-62e.
With respect to claim 9, Tanaka in view of Havens as set forth above discloses the PIC device of claim 8, wherein:
the photodiode of each of the plurality of photonic devices comprises an optical input, and
a respective waveguide of the plurality of waveguides is optically connected with a respective optical input of each of the plurality of photonic devices.
Fig. 6, col. 9, ll. 44 and adjacent, "Light detectors 74 can be p-n diodes, p-i-n diodes, or phototransistors or the like.” Waveguides 72 are shown in Fig. 6. The set of photonic devices can be limited to the light detectors.
With respect to claim 14, Tanaka in view of Havens as set forth above discloses the PIC device of claim 1, including one further comprising
a plurality of common conductors,
the common conductor being one common conductor of the plurality of common conductors,
each common conductor of the plurality of common conductors is configured to conduct the electrical signals.
Havens Fig. 1 shows common conductors for connection to the discrete isolation devices 14a-14i.
With respect to claim 15, Tanaka in view of Havens as set forth above discloses the PIC device of claim 14, including one further comprising
a plurality of signal converters,
each signal converter of the plurality of signal converters is connected to a respective one of the common conductors, and
each signal converter of the plurality of signal converters is configured to convert the electrical signals for a respective photonic component of the plurality of photonic devices that is in electrical communication with the respective common conductor.
Havens Fig. 1 has photonic elements 12a-12i being LEDs or photodetectors/PDs which are signal converters.
With respect to claim 16, Tanaka in view of Havens as set forth above discloses the PIC device of claim 1, including one wherein
the PIC device is silicon-based.
Seen as inherent due to the semiconductor devices involved.
With respect to claim 17, Tanaka in view of Havens as set forth above discloses the PIC device of claim 1, including one wherein
the plurality of photonic devices are arranged in an array.
Havens, Fig. 1.
With respect to claim 18, Tanaka in view of Havens as set forth above discloses the PIC device of claim 1, including one wherein
the PIC device is an optoelectronic device.
Havens, Fig. 1 and the rejections above.
With respect to claim 20, Tanaka in view of Havens as set forth above discloses the PIC device of claim 1, wherein:
the electrical signals are D/A signals (intended use, see below), and
the common conductor is configured to supply the electrical signals from the photonic device to one of a plurality of A/D converters of the control circuitry (the common conductor of Tanaka and/or Havens is seen as so configured).
Claim 20 requires a device constructed according to its immediate parent claim, claim 1, to be operated in a certain manner.
The manner of operating the device does not differentiate an apparatus claim from the prior art. 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) (The preamble of claim 1 recited that the apparatus was “for mixing flowing developer material” and the body of the claim recited “means for mixing ..., said mixing means being stationary and completely submerged in the developer material”. The claim was rejected over a reference which taught all the structural limitations of the claim for the intended use of mixing flowing developer. However, the mixer was only partially submerged in the developer material. The Board held that the amount of submersion is immaterial to the structure of the mixer and thus the claim was properly rejected.). MPEP § 2114(II).
Consequently, claim 20 is rejected on the same grounds as its immediate parent claim, claim 1, as not being differentiated from it.
Claims 10-13 are rejected under 35 U.S.C. § 103 as being unpatentable over Tanaka in view of Havens as set forth above and further in view of U.S. Patent Application Publication No. 20170194764 of Evans et al. (Evans).
With respect to claim 10, Tanaka in view of Havens as set forth above discloses the PIC device of claim 1, but not one wherein
each of the plurality of photonic devices comprises a tunable optical component.
Evans discloses a tunable waveguide devices that includes:
¶ 2, "The present disclosure is directed to tunable waveguide optical devices. In general, a heater may be used to change a characteristic of an optical device. For example, an operating wavelength of a semiconductor laser may be tuned by applying heat using a heater."
It would have been obvious to have a tunable optical element in the form of a thermo-optic device in order to provide an addressable thermo-optic system.
With respect to claim 11, Tanaka in view of Havens and Evans as set forth above discloses the PIC device of claim 10, but not one wherein:
the tunable optical component of each of the plurality of photonic devices comprises an optical input and an optical output,
the plurality of waveguides comprise input waveguides and output waveguides, and
the input waveguides are optically connected with respective optical inputs of the plurality of photonic devices, and
the output waveguides are optically connected with respective optical outputs of the plurality of photonic devices.
Evans provides for (¶ 31) "the tunable waveguide device 100 is an arm of a Mach-Zehnder interferometer (MZI), a phase shift by the MZI arm may be changed using a temperature control 116". As such, monitoring the light signal would comprise input and output waveguides along the lines of Havens Figs. 6 and 7. Consolidation of reception/transmission devices would provide for optical feedback and monitoring.
With respect to claim 12, Tanaka in view of Havens and Evans as set forth above discloses the PIC device of claim 10, including one wherein:
each of the plurality of photonic devices further comprises a switch (Havens devices 14x),
the switch is configured to switch between on and off based on the electrical signals received from the control conductor (per above), and
the tunable optical component of each of the plurality of photonic devices comprises a resistor comprising one end electrically connected to the respective control connection and another end electrically connected to the respective switch (any wire would include such resistance and be such a resistor).
With respect to claim 13, Tanaka in view of Havens and Evans as set forth above discloses the PIC device of claim 12, wherein:
the tunable optical component of each of the plurality of photonic devices comprises an active diode connected in series to the respective switch, and
the active diode has a same polarity as the respective switch.
Inclusion of a Tanaka MOSFET 4 or the like in series would provide additional signal control for addressable system. Motivation to combine would arise from same.
Claim 19 is rejected under 35 U.S.C. § 103 as being unpatentable over Tanaka in view of Havens as set forth above and further in view of U.S. Patent Application Publication No. 20200400884 of Gubbins et al. (Gubbins).
With respect to claim 19, Tanaka in view of Havens as set forth above discloses the PIC device of claim 1, including one further comprising:
an application-specific integrated circuit disposed on the circuit board and in electrical communication with the plurality of transceivers (integrator circuit 17 is seen as application-specific).
Tanaka in view of Havens as set forth above does not disclose:
a circuit board; and
a plurality of transceivers disposed on the circuit board.
Gubbins discloses an integrated laser transceiver that includes:
a circuit board (102);
a plurality of transceivers disposed on the circuit board; and
¶ 54, "The photonic integrated circuit 100 combined with the printed circuit board 102 and the optical fiber 106 may be described as a transceiver."
¶ 51, "Additional components may then be added to the photonic integrated circuit 100 to form an integrated transceiver."
It would have been obvious to couple transceivers to the device of Tanaka in view of Havens as set forth above as set forth above in order to provide addressable/selectable transceiver signals. In so doing, the combination would provide:
a circuit board; and
a plurality of transceivers disposed on the circuit board.
Conclusion
Applicant’s publication US 20240361550 A1 published October 31, 2024 is cited.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The cited references have elements related to Applicant’s disclosure and/or claims or are otherwise associated with the other cited references, particularly with respect to opto-electronic systems including those with addressable resources.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW JORDAN whose telephone number is (571) 270-1571. The examiner can normally be reached most days 1000-1800 PACIFIC TIME ZONE (messages are returned).
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. While examiner does not examine over the phone (see 37 C.F.R. § 1.2), examiner is glad to clarify or discuss issues so long as it forwards prosecution.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Thomas (Tom) HOLLWEG can be reached at (571) 270-1739. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Andrew Jordan/
Primary Examiner, Art Unit 2874
V: (571) 270-1571 (Pacific time)
F: (571) 270-2571
June 18, 2026
Prosecution Insights