CTNF 18/765,891 CTNF 82540 DETAILED ACTION 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. Claim Objections 07-29-01 AIA Claim 1 is objected to because of the following informalities: “the mount” in line 5 should read “a mount” . Appropriate correction is required. 07-29-01 AIA Claim 9 is objected to because of the following informalities: “the photodetector” in line 3 should read “a photodetector” . Appropriate correction is required. 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. 07-15 AIA Claim s 1 – 9 are rejected under 35 U.S.C. 102( a)(1 ) as being anticipated by Lee et al. (U.S. PG Pub. # 2018/0164516 A1) . In Re claim 1, ‘516 teaches an optical receiving module assembly comprising: an electric sub-assembly including a printed circuit board (PCB) (400) including an opening portion (403) and an electronic device (external circuits, par. 0030, fig. 4) mounted on the PCB; and an optical receiving module including a first optical component (photodetector 202, par. 0030) mounted on (makes indirect contact with) the PCB and a second optical component (201) mounted on the mount (300) which includes a transparent material (lens 302) and is disposed in the opening portion (figs. 3 and 4), wherein the electronic device and the second optical component are electrically connected to each other by a mount electrode (207) formed on a surface of the mount (figs. 3 and 4). In Re claims 2 – 4, ‘516 teaches wherein a portion of the electronic device is disposed on the mount (wirebond, par. 0030). Furthermore, A pplicant is claiming the product including the process of making the module, and therefore is of "product-by-process" nature. The courts have been holding for quite some time that the determination of the patentability of product-by-process claim is based on the product itself rather than on the process by which the product is made. In re Thrope, 777 F. 2d 695, 227 USPQ 964 (Fed. Cir. 1985); and patentability of claim to a product does not rest merely on a difference in the method by which that product is made. Rather, it is the product itself which must be new and unobvious. Applicant has chosen to claim the invention in the product form. Thus a prior art product which possesses the claimed product characteristics can anticipate or render obvious the claim subject matter regardless of the manner in which it is fabricated. A rejection based on 35 U.S.C. section 102 or alternatively on 35 U.S.C. section 103 of the status is eminently fair and acceptable. In re Brown and Saffer, 173 USPQ 685 and 688; In re Pilkington, 162 USPQ 147. In Re claim 5, ‘516 teaches wherein the mount including the transparent material comprises a glass or plastic material (par. 0032). In Re claim 6, ‘516 teaches wherein the mount is fixed by an adhesive coated on a side surface of the PCB including the opening portion with being disposed at the opening portion (par. 0033). In Re claim 7, ‘516 teaches wherein the adhesive comprises an epoxy-based adhesive (par. 0050). Alternatively, In Re claim 1, ‘516 teaches an optical receiving module assembly comprising: an electric sub-assembly including a printed circuit board (PCB) (400) including an opening portion (403) and an electronic device (external circuits, par. 0030, fig. 4) mounted on the PCB; and an optical receiving module including a first optical component (a lens 302) mounted on (makes indirect contact with) the PCB and a second optical component (photodetector 202, par. 0030) mounted on the mount (300) which includes a transparent material (another lens 302) and is disposed in the opening portion (figs. 3 and 4), wherein the electronic device and the second optical component are electrically connected to each other by a mount electrode (207) formed on a surface of the mount (figs. 3 and 4). In Re claim 8, ‘516 teaches wherein the second optical component (202) converts light, which is vertically incident from the first optical component (lens), into an electrical signal to output to the electronic device through the mount electrode (figs. 3 and 4). In Re claim 9, ‘516 teaches wherein the first optical component is an optical waveguide including an optical slope surface (lenses have a sloped surface) for allowing the light to be vertically incident on the photodetector (lenses collimate or focus the light vertically). Conclusion 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. 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. /CHAD H SMITH/ Primary Examiner, Art Unit 2874 Application/Control Number: 18/765,891 Page 2 Art Unit: 2874 Application/Control Number: 18/765,891 Page 3 Art Unit: 2874 Application/Control Number: 18/765,891 Page 4 Art Unit: 2874
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