DETAILED ACTION
This office action is in response to the continuation (CON) application and claims filed on July 19, 2024. This application is a CON of U.S. Application No. 18/061,695, which has matured into U.S. Patent No. 12,105,327 B2.
Claims 1-6 are presented for review, with claim 1 as the sole pending independent claim.
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 .
Information Disclosure Statement
The prior art documents submitted by Applicant in the Information Disclosure Statements filed on May 23, 2025 and July 19, 2024, have been considered and made of record (note attached copy of forms PTO-1449).
Drawings
The original drawings (four (4) pages) were received on July 19, 2024. These drawings are acknowledged.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1-4 and 6 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-4 and 16 of prior U.S. Patent No. 12,105,327 B2 (to Wu et al.; see attached PTO-892 form reference A). This is a statutory double patenting rejection. Statutory double patenting occurs when two patents claim the same invention or are not patentably distinct from each other. Notably, current independent claim 1 is not patentably distinct from allowed independent claim 1 of the ‘327 parent patent. Conversely, these claims attempt to claim the exact same invention. The purpose of this doctrine is to prevent an inventor from extending patent exclusivity unjustly through multiple patents for the same invention. This is particularly relevant when broadening claims in a continuation application, as it can lead to challenges regarding the distinctiveness of the claims. Applicant is respectfully requested to state how current independent claim 1 is not the same invention as allowed claim 1 of ‘327; or substantially amend claim 1 to a form in which these claims are no longer claiming the “same invention.” Correction is required.
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Dependent Claim 5 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 4 of U.S. Patent No. 12,105,327 B2 (to Wu et al.). Although the claims at issue are not identical, they are not patentably distinct from each other because. Dependent claim 5 is rejected as being obvious over the allowed claims 4 of the ’32 parent patent. For example, the substrate is claiming as being “an insulator”, which would have been obvious to one having ordinary skill of a desired property of substrate(s) upon which a resonator is formed. Simply having “insulative” properties for a substrate (Si; Glass; e.g. are both “insulators” in a reasonable sense) would have been an obvious design choice, and based on the recitation of “a substrate” (in claim 4 of Wu ‘327), and therefore this is a non-statutory double patenting rejection over Wu ‘327, based on the tenets of KSR v. Teleflex, 127 S.Ct. 1727 (2007). For these reasons, claim 5 is rejected under NS-DP to Wu ‘327.
Inventorship
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
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: PTO-892 form references B and C (Grillanda US ‘295 and Puckett US ‘205), which pertain to the state of the art for slot/confinement optical waveguides on a substrate.
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.
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/DANIEL PETKOVSEK/Primary Examiner, Art Unit 2874 June 4, 2026
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