CTNF 18/768,269 CTNF 80914 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. 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. Claim Rejections - 35 USC § 102 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, 10, and 15-17 are rejected under 35 U.S.C. 102( a)(1 ) as being anticipated by US 2003/0138179 (“AKIYAMA”) . Regarding claim 1, AKIYAMA teaches an optical modulator (1000) comprising: an optical waveguide (1004) including a material having an electro-optic effect (pars. [0087], [0088], [0110]); a first electrode (1109) including a semiconductor material (par. [0006]); and a second electrode (1108) including a metal material (par. [0006]) and positioned to provide a potential difference with respect to the first electrode to apply an electric field to the optical waveguide (par. [0158]). Regarding claim 10 , AKIYAMA teaches that the semiconductor material is a silicon semiconductor material in which silicon includes impurity doping (par. [0169]). Regarding claim 15 , AKIYAMA teaches that a main component of the metal material is a noble metal (pars. [0120]-[0122]). Regarding claim 16 , AKIYAMA teaches that, when seen in a cross section perpendicular or substantially perpendicular to an extending direction of the optical waveguide, an area of the first electrode is larger than an area of the second electrode (FIG. 2). Regarding claim 17 , AKIYAMA teaches that the second electrode is a signal electrode and the first electrode is a ground electrode (par. [0010]) . Claim Rejections - 35 USC § 103 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. 07-20-02-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 11 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over AKIYAMA . AKIYAMA teaches the limitations of the base claims 10 and 1, respectively. The remaining limitations appear to involve mere optimization of ranges. It has been held that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). As such, it would have been obvious to one of ordinary skill in the art at the effective filing date to optimize the impurity concentration and refractive index of the first electrode of AKIYAMA as set forth in the instant claims . 07-21-aia AIA Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over AKIYAMA in view of US 2025/0180932 (“ARAI”) . AKIYAMA teaches the limitations of the base claim 1. AKIYAMA further teaches that the first and second electrodes are on opposite sides of the optical waveguide (FIGs. 1, 2). AKIYAMA does not teach that the first and second electrodes are individually laminated to the optical waveguide. ARAI teaches an electrode laminated to an optical waveguide (par. [0078]). It would have been obvious to one of ordinary skill in the art at the effective filing date to modify the optical modulator of AKIYAMA such that the first and second electrodes are laminated to the optical waveguide as taught by ARAI. The motivation would have been to achieve integration . 07-21-aia AIA Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over AKIYAMA in view of US 2017/0237229 (“MENEZO”) . AKIYAMA teaches the limitations of the base claim 10. AKIYAMA does not teach that the first electrode is a silicon single-crystal substrate. MENEZO teaches a silicon single-crystal substrate electrode (pars. [0004], [0019]). It would have been obvious to one of ordinary skill in the art at the effective filing date to modify the optical modulator of AKIYAMA such that the first electrode is a silicon single-crystal substrate as taught by MENEZO. The motivation would have been to achieve structural uniformity and consistency of optical properties . 07-21-aia AIA Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over AKIYAMA in view of US 5,691,794 (“HOSHI”) . AKIYAMA teaches the limitations of the base claim 10. AKIYAMA does not teach that the first electrode is an active layer of an SOI substrate. HOSHI teaches an electrode that is an active layer of an SOI substrate (col. 8, lines 20-33). It would have been obvious to one of ordinary skill in the art at the effective filing date to modify the optical modulator of AKIYAMA such that the first electrode is an active layer of an SOI substrate as taught by HOSHI. The motivation would have been to achieve integration with device architecture . 07-21-aia AIA Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over AKIYAMA in view of US 2008/0170818 (“KISSA”) . AKIYAMA teaches the limitations of the base claim 1. AKIYAMA does not teach a metal thin-layer on a surface of the first electrode at an optical waveguide side and having a thickness smaller than a thickness of the first electrode. KISSA teaches a metal thin-layer on a surface of the first electrode at an optical waveguide side and having a thickness smaller than a thickness of the first electrode (par. [0107]). It would have been obvious to one of ordinary skill in the art at the effective filing date to modify the optical modulator of AKIYAMA to include a metal thin-layer on a surface of the first electrode at an optical waveguide side and having a thickness smaller than a thickness of the first electrode as taught by KISSA. The motivation would have been to prevent undesired optical coupling . Allowable Subject Matter 12-151-08 AIA 07-43 12-51-08 Claim s 2-5, 7-9, and 19 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. 13-03-01 AIA The following is a statement of reasons for the indication of allowable subject matter: Regarding claims 2-5 , the prior art of record, whether taken individually or in combination, when considered in light of the claimed subject matter as a whole as interpreted in light of the Specification as originally filed, fails to disclose or render obvious a low-permittivity layer with a refractive index smaller than a refractive index of the optical waveguide; and a gap between at least the first electrode and the optical waveguide; wherein the low-permittivity layer is provided at the gap. Regarding claims 7 and 8 , the prior art of record, whether taken individually or in combination, when considered in light of the claimed subject matter as a whole as interpreted in light of the Specification as originally filed, fails to disclose or render obvious that the first electrode includes a protrusion at a surface located at an optical waveguide side in a lamination direction of the first electrode, the optical waveguide, and the second electrode, and protruding toward the optical waveguide. Regarding claim 9 , the prior art of record, whether taken individually or in combination, when considered in light of the claimed subject matter as a whole as interpreted in light of the Specification as originally filed, fails to disclose or render obvious that, when seen in a cross section perpendicular or substantially perpendicular to an extending direction of the optical waveguide, in a direction perpendicular or substantially perpendicular to a lamination direction of the first electrode, the optical waveguide, and the second electrode, a length of a surface of the first electrode at an optical waveguide side is larger than a length of the optical waveguide. Regarding claim 19 , the prior art of record, whether taken individually or in combination, when considered in light of the claimed subject matter as a whole as interpreted in light of the Specification as originally filed, fails to disclose or render obvious that a surface layer of the first electrode at an optical waveguide side includes impurity doping at a concentration higher than in another portion of the first electrode . Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to JERRY M BLEVINS whose telephone number is (571)272-8581. The examiner can normally be reached Monday - Friday. 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, Thomas 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. /JERRY M BLEVINS/Primary Examiner, Art Unit 2874 Application/Control Number: 18/768,269 Page 2 Art Unit: 2874 Application/Control Number: 18/768,269 Page 3 Art Unit: 2874
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