CTNF 18/765,418 CTNF 79520 DETAILED ACTION This office action is in response to the application and claims filed on July 8, 2024. Claims 1-20 are pending, with claim 1 as the sole independent claim. Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Priority 02-26 AIA Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55. Information Disclosure Statement The prior art documents submitted by Applicant in the Information Disclosure Statements filed on July 8, 2024, have been considered and made of record (note attached copy of forms PTO-1449). Drawings The original drawings (eight (8) pages) were received on July 8, 2024. These drawings are acknowledged. Claim Objections 07-29-01 AIA Claim s 1, 2, 12, and 14 are objected to because of the following informalities: regarding claim 1, the typo “the first electrode is on first side” should read “the first electrode is on a first side.” Regarding claim 2, the term “on an optical waveguide side” is objectionable because this feature is already found (in relation to the “first electrode”) in claim 1, and is labeled different. Additionally, the “first electrode” is already defined on a particular side of the optical waveguide. Note the 35 U.S.C. 112(b) rejection below for claim 2. Regarding claim 12 and 14, the use of “further comprising” and “further includes” should be avoided because the features later referred (the “optical waveguide, the control electrode, and the low dielectric constant layer” as a group ) are already found in claim 1. Therefore, such features cannot be found after “further comprising” (the second group is new ; but the first group is not new ). Note the 35 U.S.C. 112(b) rejections for claim 12 and claim 14 (and claims 13, 15, 16, and 20; which depend from claim 12) . Appropriate correction is required. Applicant’s cooperation is respectfully requested to carefully review all pending claims 1-20, because these claims appear to be a direct translation from a foreign (Japanese) document into English. Therefore, some awkward language, typos, and/or minor informalities may be present (those not uncovered by this FAOM). Claim Rejections - 35 USC § 112 07-30-02 AIA 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. 07-34-01 Claims 2, 4, 12-16, and 20 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 2 recites the limitation “on an optical waveguide side” in the claim body. This claim lacks proper antecedent basis, because this claim feature is not described this way in claim 1. Further, the “first electrode” has already defined on a particular side of the optical waveguide, which is known from independent claim 1. There is insufficient antecedent basis for this limitation in the claim, and claim 2 is therefore rejected under 35 U.S.C. 112(b) as being vague and indefinite. Claim 4 is rejected, because the term “ substantially semi-elliptical shape” in the claim body is a relative term which renders the claim indefinite. The term “substantially” being “ semi -elliptical” is 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. Although the Examiner notes that other claims include “substantially” language, the feature(s) which are being referred to by such term are more concrete in meaning than “semi-elliptical.” The term “semi-elliptical shape” itself is somewhat a frame-of-reference, and therefore being “substantially” “semi-elliptical” in “shape” yields a vague and indefinite claim, and is rejected under 35 U.S.C. 112(b). Regarding claim 12 and 14, the use of “further comprising” and “further includes” creates claims that lack proper antecedent basis. The term listed (the “optical waveguide, the control electrode, and the low dielectric constant layer” as a group ) are already found in claim 1. Therefore, such features cannot be found after “further comprising” (the second group is new ; but the first group is not new ). Applicant is referring the “further comprising” features that are already found in the preceding claim. Therefore, claims 12 and 14 (with claims 13, 15, 16, and 20 further dependent therefrom) are rejected as being vague and indefinite under the meaning of 35 U.S.C. 112(b). Claim Rejections - 35 USC § 102 07-06 AIA 15-10-15 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. 07-07-aia AIA 07-07 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 – 07-08-aia AIA (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. 07-12-aia AIA (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. 07-15-03-aia AIA Claim s 1-3, 5, 6, 8-10, and 17-19 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Zhu et al. U.S. Patent No. 12,461,400 B2 (this document is effectively filed at least as early as February 24, 2022 , under WO ‘670) . Zhu et al. U.S. Patent No. 12,461,400 B2 teaches (ABS; Figs. 4A, 4B, 7A-7C; corresponding text, in particular columns 5-10 Claims) an optical modulator (Figs. 4B and 7C embodiments are the closest for the claims at issues) comprising: an optical waveguide made of a material having an electro-optic effect (waveguide shown in Fig. 4B, not labeled; AlN or SCAlN or LiNbO3 waveguide material); a control electrode to control light passing through the optical waveguide; and a low dielectric constant layer (SiO 2 ) with a dielectric constant lower than a dielectric constant of the optical waveguide; wherein the control electrode includes a first electrode (“upper electrode” and “metal”, Fig. 4B) and a second electrode (“bottom electrode” with additional “metal” and contact, Fig. 4B) that generate a potential difference with each other; and in a cross-sectional view in a direction perpendicular or substantially perpendicular to an extending direction of the optical waveguide: the first electrode is on a first side of the optical waveguide in a width direction and on the first side of the optical waveguide in a thickness direction ( top and or right in Fig. 4B); the second electrode is on a second side of the optical waveguide in the width direction and on the second side of the optical waveguide in the thickness direction ( bottom and or left in Fig. 4B); the low dielectric constant layer is interposed between the first electrode and the optical waveguide; and a portion of the first electrode adjacent to the optical waveguide is in the low dielectric constant layer (at least part(s) of the electrode contacts are formed in the low dielectric constant layer of the SiO2), which clearly, fully meets Applicant’s claimed structural limitations of sole pending independent claim 1. Regarding claim 2, at least a “corner portion” of the upper electrode is on an optical waveguide side, which meets all structure . Regarding claim 3, the first electrode in Zhu Figs. 4B and/or 7C is on the first edge side as labeled. Regarding claim 5, the first electrode is substantially rectangularly shaped and is on the side opposite of the waveguide. Regarding claim 6, in a thickness direction frame of reference, the 1 st electrode is only on one (top) side while the 2 nd electrode is only on one (bottom) side of the WG. Regarding claim 8, the waveguide can be lithium niobate (column 6, line 59-63). Regarding claim 9, the 1 st and 2 nd electrode can both be considered as extending in two dimensions (thickness and width) in a reasonable frame of reference, which meets all structure of claim 9. Regarding claim 10, a substrate exists (“Substrate Si”, Fig. 4B), also the SiO2 itself could function as a substrate, thus structure is met. Regarding claim 17, the waveguide is located in an “upper part” of the substrate (noting the frame-of-reference, see Fig. 4B and 7C), as the waveguide can be located in an integrated device shown as in Zhu or turned upside-down. The waveguide is not perfectly in the middle in either Fig. 4B or 7C. Regarding claim 18, at least titanium diffusion is disclosed (Zhu Fig. 2 column). Regarding claim 19, at least Figure 9 of Zhu shows an MZI configuration as an example embodiment of the optical modulator of Figs. 4B and 7C . 07-15 AIA Claim s 1-3, 5-7, 9, and 10 are rejected under 35 U.S.C. 102( a)(1 ) as being anticipated by JP 2017-111238 A (to Nippon) . JP 2017-111238 A teaches (ABS; Fig. 9; corresponding text, in particular paragraphs [0034] – [0064]; Claims) an optical modulator (Fig. 9) comprising: an optical waveguide made of a material having an electro-optic effect (waveguide as 416 shown in Fig. 9; also waveguide(s) 203 / 204 can comprise interferometric design; the waveguide can be electro-optic based on control electrodes); a control electrode to control light passing through the optical waveguide (411 / 412; signal 407 / 408 and ground 420; alsophase adjustment electrodes 211 / 212; also signal 207 / 208 and ground 209 / 210); and a low dielectric constant layer (418) with a dielectric constant lower than a dielectric constant of the optical waveguide; wherein the control electrode includes a first electrode and a second electrode (Fig. 9; noted control electrode features above) that generate a potential difference with each other (potential difference formed between electrodes as in Fig. 9); and in a cross-sectional view in a direction perpendicular or substantially perpendicular to an extending direction of the optical waveguide: the first electrode is on a first side of the optical waveguide in a width direction and on the first side of the optical waveguide in a thickness direction ( top and or right in Fig. 9); the second electrode is on a second side of the optical waveguide in the width direction and on the second side of the optical waveguide in the thickness direction ( bottom and or left in Fig. 9); the low dielectric constant layer 218 (InP; BCB; polyamide of an organic material; etc.) is interposed between the first electrode and the optical waveguide; and a portion of the first electrode adjacent to the optical waveguide is in the low dielectric constant layer (at least part(s) of the electrode contacts are formed and embedded in the low dielectric constant layer 418), which clearly, fully meets Applicant’s claimed structural limitations of sole pending independent claim 1. Further, the Examiner fully incorporates , and agrees with, the logic and rationale found in the PCT Search Report and Written Opinion from corresponding PCT / JP 2022 / 043689. See Box No. V section (1) for JP ‘238. Regarding further dependent claims 2, 3, 5-7, 9, and 10, see Fig. 9 in particular section (b) of JP ‘238 for the structural features of arranged locations of the control electrodes as outlined in claim 1 above, based on the cross-sectional and frames of reference, and as the materials chosen . 07-15 AIA Claim s 1-3, 5, 7, 9, and 10 are rejected under 35 U.S.C. 102( a)(1 ) as being anticipated by JP 2020-034610 A (which also corresponds to Ogawa et al. U.S. Patent No. 10,921,517 B2 (cited in the PTO-1449 as reference B) . JP 2020-034610 A teaches (ABS; Figs. 11, 14-16; corresponding text, in particular paragraphs [0024] – [0108]; Claims) an optical modulator (Figs. 11, 14, 15, 16 as example embodiments) comprising: an optical waveguide made of a material having an electro-optic effect (slot waveguide has a core 6, with low refractive index layer 14; and also with thin film high refractive index layer(s) 10 / 12 on either side; the waveguide can be electro-optic based on control electrodes; core is modulated by electrode(s)); a control electrode to control light passing through the optical waveguide (electrodes as 28 / 30); and a low dielectric constant layer (claddings, at 32 / 34 / 36) with a dielectric constant lower than a dielectric constant of the optical waveguide; wherein the control electrode includes a first electrode and a second electrode (Figs. 11, 14-16; noted control electrode features above; contacts are metal at least at 28 / 30) that generate a potential difference with each other (potential difference formed between electrodes as in Figs. 11 and 14-16); and in a cross-sectional view in a direction perpendicular or substantially perpendicular to an extending direction of the optical waveguide: the first electrode is on a first side of the optical waveguide in a width direction and on the first side of the optical waveguide in a thickness direction ( top and or right in example Figs.); the second electrode is on a second side of the optical waveguide in the width direction and on the second side of the optical waveguide in the thickness direction ( bottom and or left in example Figs.); the low dielectric constant layer (embedded in cladding at 76 / 74, at least in Fig. 11) is interposed between the first electrode and the optical waveguide; and a portion of the first electrode adjacent to the optical waveguide is in the low dielectric constant layer (at least part(s) of the electrode contacts are formed and embedded in the low dielectric constant layer; claddings and gap, at 76 / 74), which clearly, fully meets Applicant’s claimed structural limitations of sole pending independent claim 1. Further, the Examiner fully incorporates , and agrees with, the logic and rationale found in the PCT Search Report and Written Opinion from corresponding PCT / JP 2022 / 043689. See Box No. V section (3) for JP ‘610. Regarding further dependent claims 2, 3, 5, 7, 9, and 10, see Figs. 11 and 14-16 in particular section from JP ‘610 for the structural features of arranged locations of the control electrodes as outlined in claim 1 above, based on the cross-sectional and frames of reference, and as the materials chosen . Claim Rejections - 35 USC § 103 07-06 AIA 15-10-15 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. 07-20-aia AIA 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. 07-23-aia AIA 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. 07-20-02-aia AIA 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. 07-21-aia AIA Claim s 4, 7, 11-16, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Zhu et al. U.S. Patent No. 12,461,400 B2 (this document is effectively filed at least as early as February 24, 2022 , under WO ‘670), based on sole independent claim 1, standing alone . Regarding independent claim 1, Zhu et al. U.S. Patent No. 12,461,400 B2 teaches (ABS; Figs. 4A, 4B, 7A-7C; corresponding text, in particular columns 5-10 Claims) an optical modulator (Figs. 4B and 7C embodiments are the closest for the claims at issues) comprising: an optical waveguide made of a material having an electro-optic effect (waveguide shown in Fig. 4B, not labeled; AlN or SCAlN or LiNbO3 waveguide material); a control electrode to control light passing through the optical waveguide; and a low dielectric constant layer (SiO 2 ) with a dielectric constant lower than a dielectric constant of the optical waveguide; wherein the control electrode includes a first electrode (“upper electrode” and “metal”, Fig. 4B) and a second electrode (“bottom electrode” with additional “metal” and contact, Fig. 4B) that generate a potential difference with each other; and in a cross-sectional view in a direction perpendicular or substantially perpendicular to an extending direction of the optical waveguide: the first electrode is on a first side of the optical waveguide in a width direction and on the first side of the optical waveguide in a thickness direction ( top and or right in Fig. 4B); the second electrode is on a second side of the optical waveguide in the width direction and on the second side of the optical waveguide in the thickness direction ( bottom and or left in Fig. 4B); the low dielectric constant layer is interposed between the first electrode and the optical waveguide; and a portion of the first electrode adjacent to the optical waveguide is in the low dielectric constant layer (at least part(s) of the electrode contacts are formed in the low dielectric constant layer of the SiO2). Regarding further dependent claims 4, 7, 11-16, and 20, there is no express and exact recitation of a single embodiment that employs all of such features as found in the primary reference to Zhu, in particular for the semi-elliptical core shape (claim 4), an auxiliary low dielectric layer (claim 7), the substrate and waveguide comprising the same material and being ridge shaped (claim 11), the use of two modulators connected together using the base features of claim 1, formed with features complementary and integrated into larger design(s) (as in claims 12-16 and 20). However, at the time of the effective filing date of the current application, it would have been an obvious matter of common skill and design choice to a person of ordinary skill in the art to use features such as those in the secondary (dependent and removed claim limitations) as outlined above, because Applicant has not disclosed that using such features provides an advantage, is used for a particular purpose, or solves a stated problem. One of ordinary skill in the art, furthermore, would have expected Zhu to perform equally well with such features as the opto-electrical (modulation) dependencies (noted features of the optical modulated as not expressly disclosed by one embodiment of Zhu) because these claim terms would have been easily integrated and would have also been recognized by one with common skill in the art to improve optical modulation and electrode control for the specifics of modulating the input optical signal(s). It would have required no undue burden or unnecessary experimentation to arrive at those features with an optical modulator unit such as in Zhu. Further, the base structure of the sole independent claim 1 is clearly and fully anticipated by Zhu and a number of other prior art references as listed above prior to this section. Therefore, it would have been an obvious matter of common skill and design choice to modify (and/or update) Zhu to obtain the invention as specified in claims 4, 7, 11-16, and 20. See KSR v. Teleflex , 127 S.Ct. 1727 (2007) . Inventorship 07-20-02-aia AIA 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 07-96 AIA The prior art made of record and not relied upon is considered pertinent to applicant's disclosure : PTO-892 form ref. C to Ishikura US ‘941, which pertains to the state of the art of optical modulators with positioning of electrodes critical to the design . Applicant’s cooperation is respectfully requested to amend substantial structural features into the sole pending independent claim. Note that at least three prior art references clearly and fully anticipate claim 1’s structure. Also note that “frame-of-reference” type limitations are found throughout claim 1, which enlarge the potential for more “Prior Art” references capable of reading on the claim construction (under U.S. PTO practice and procedure, broadest reasonable interpretation standard). Any inquiry concerning this communication or earlier communications from the examiner should be directed to Daniel Petkovsek whose telephone number is (571) 272-4174. The examiner can normally be reached M-F 7:30 - 6 PM. 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 (571) 272-2397. 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. /DANIEL PETKOVSEK/Primary Examiner, Art Unit 2874 June 12, 2026 Application/Control Number: 18/765,418 Page 2 Art Unit: 2874 Application/Control Number: 18/765,418 Page 3 Art Unit: 2874 Application/Control Number: 18/765,418 Page 7 Art Unit: 2874 Application/Control Number: 18/765,418 Page 8 Art Unit: 2874 Application/Control Number: 18/765,418 Page 9 Art Unit: 2874 Application/Control Number: 18/765,418 Page 10 Art Unit: 2874 Application/Control Number: 18/765,418 Page 11 Art Unit: 2874 Application/Control Number: 18/765,418 Page 12 Art Unit: 2874 Application/Control Number: 18/765,418 Page 13 Art Unit: 2874 Application/Control Number: 18/765,418 Page 14 Art Unit: 2874 Application/Control Number: 18/765,418 Page 15 Art Unit: 2874 Application/Control Number: 18/765,418 Page 16 Art Unit: 2874
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