DETAILED ACTION
This office action is in response to the application and claims filed on July 19, 2024. Claims 1-18 are pending, 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 July 19, 2024, have been considered and made of record (note attached copy of forms PTO-1449).
Drawings
The original drawings (nine (9) pages) were received on July 19, 2024. These drawings are acknowledged.
Claim Objections
Claims 1, 2, 9-11, and 13 are objected to because of the following informalities: regarding independent claim 1, the phrasing used is awkward, and for example “wherein different poled domains of said material necessarily have different from one another axial geometric extents” could be re-drafted for improved reading to “wherein different poled domains of said material have different axial geometric extents from one another”, which reads both more clearly and is simpler. Regarding dependent claims 2, 9-11, and 13, although some examples of “identified preferred materials” (for claims 2 and 13) and “identified preferred nonlinear processes” (for claims 9-11) are given (see Applicant’s paragraph [0069]), the claims would read best if such “identified preferred” features are directly claimed in the claim body of claims 2, 9-11, and 13. Further regarding claim 11, this claim depends from claim 9, and therefore is a duplicate claim. Claim 11 should either be canceled, or amended to depend from a different claim. Applicant is advised that should claims 1, 2, 6, and 9 are be found allowable, claim 11 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m). Appropriate correction is required. Other awkward phrasing in English is used throughout claims 2-18, which could be drafted more clearly (similar to Claim 1 as noted above).
Claim Rejections - 35 USC § 112
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.
Claim 11 is 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. Regarding claim 11, this is a substantial duplicate of claim 9 (upon which it depends) and therefore it is unclear how this claim is further limiting. Therefore, the claim is vague and indefinite under the meaning of 35 U.S.C. 112(b), as the subject matter is not particularly pointed out, because it already exists in the exact same form in claim 9.
Claims 12-18 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 1 is a system / device / apparatus claim, but added dependent claim 12, and further claims 13-18 are attempting to add method steps (for “manufacturing” or “assembling” or “using”) into this system claim. Accordingly, claim features from two statutory classes are included in one claim. A single claim that includes both an apparatus and a method of manufacturing / assembling / using the apparatus is indefinite (see MPEP 2173.05(p)(II)). It may be unclear if infringement occurs when the method is performed, or if just having the structure of the device / apparatus is enough for infringement. For these reasons, claims 12-18 are rejected under 35 U.S.C. 112(b). The rejection may be overcome by deleting the method step(s). For examination purposes, the step limitation will be treated as an intended result limitation and rejected if the structure of the “Prior Art” device is capable of such intention.
Claim Rejections - 35 USC § 102
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.
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 –
(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.
(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.
Claims 1-3 and 5-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Smith WO 02/31591 A1.
Smith WO 02/31591 A1 teaches (ABS; Figs. 2, 3, 5, 8, 9A, 9B, 10; corresponding text, entire document; Claims) an optical component (modulator 10 in Fig. 2 and the substrate / waveguide are all “optical components”; page 10, lines 22-23) comprising: a substrate 12 made of a material, the substrate having an axis and an axial profile of a non-linearity parameter (at least Lithium Niobate disclosed by Smith), said axial profile being not periodic (“aperiodic” spacing, page 12, lines 5-6), wherein said axial profile is formed by poled domains of said material (poling shown at least in Fig. 2), and wherein different poled domains of said material necessarily have different from one another axial geometric extents (alternating extents 36 and 34, domain boundaries 35; the language of this claim shown at least in MZ striped arrangement; page 11, lines 19-23), which clearly, fully meets Applicant’s claimed structural limitations for sole pending independent claim 1.
The Examiner also notes that “periodically poled” features in quasi phase matching techniques may themselves be “aperiodic” or “not periodic” in a broadest reasonable sense of the term “period”. Therefore, using language such as “not periodic” in the context of poled domain regions is inherently difficult to overcome prior art features, absent other specific structural features which define the aperiodicity.
Additionally, the Examiner fully incorporates, and agrees with, the logic and rationale found in the Written Opinion of corresponding PCT US ‘340, notably relating to the Smith WO ‘451 prior art.
Regarding claims 2, 3, and 5-11, Smith WO ‘451 anticipates such structural features (Figs. 2, 3, 5, 8, 9A, 9B, 10; pages 10-12), for the material chosen (claim 2), optical waveguide (16 / 18 / 14 Figs. are waveguides; claim 3), birefringent material (claim 5), quasi phase matching capability (claims 6-8, the term “chosen” breadth noted) of the device itself, or a preferred nonlinear process (claims 9-11; note that any nonlinearity can meet “preferred” and language from the specification para [0069] need not be applied). Regarding claims 12-18, there is no structure imputed by any of the method steps that distinguishes the structure of Smith WO ‘451. The U.S. PTO is not equipped to test the myriad methods and steps in a device claim, unless there is patentably distinguishing structure imputed to the device (base) claim.
Claims 1-12 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Fejer et al. US 2022/0252958 A1 (which has matured into U.S. Patent No. 11,469,567 B2).
Fejer et al. US 2022/0252958 A1 teaches (ABS; Figs. 1A-1D, notably Fig. 1C; paragraphs [0017] – [0018]; Claim 10) an optical component (“nonlinear optical devices”, ABS) comprising: a substrate made of a material, the substrate having an axis and an axial profile of a non-linearity parameter (nonlinearity in Fejer), said axial profile being not periodic (“aperiodic”; para [0017], feature 114), wherein said axial profile is formed by poled domains of said material (poling shown at least in Fig. 1C), and wherein different poled domains of said material necessarily have different from one another axial geometric extents (axial is frame of reference, differences are found in Fig. 1C to make the domains having different extents / geometries), which clearly, fully meets Applicant’s claimed structural limitations for sole pending independent claim 1.
The Examiner respectfully notes that the functional language chosen for claim 1 is awkward in prose and could be supplemented / replaced by language more akin to the structural features / meaning as outlined by Applicant’s Fig. 2A. Axial profiles being “not periodic” is broader than being “aperiodic”, and further, there are no frames-of-reference for such terms of “axial geometric extents.” Features are 3-D in prior art.
Regarding claims 2-4, see Fig. 1C of Fejer, which teaches all structure, as combinations of inhomogeneity and 1st / 2nd / 3rd extents are found in Fejer (claim 2), with optical waveguide formation (claim 3), and the “thickness” direction (note frame-of-reference as thickness can be chosen in Fejer Fig. 1C), for claim 4.
Regarding claim 5, the waveguide is found in Fejer Fig. 1C, and the term birefringent is met based on conditions applied.
Regarding claims 6-8, quasi-phase-matching (QPM) is found in Fig. 1C’s formation and choice of nonlinear conversion (para [0017] – [0018], claim 10).
Regarding claims 9-11, at least one nonlinear frequency conversion process occurs in Fejer, which meets this intended use of the waveguide in Fejer.
Regarding (method) claim 12, all structure is found in Fejer being imputed from the method formation therein, with “aperiodically.”
Claims 1, 2, 3, 5, and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nee et al. US 2005/0195473 A1.
Nee et al. US 2005/0195473 A1 teaches (ABS; Figs. 1-2; paragraphs [0014] – [0024]; Claims) an optical component 10 (nonlinear in function; “frequency conversion”; ABS) comprising: a substrate made of a material, the substrate having an axis and an axial profile of a non-linearity parameter (nonlinearity in Nee), said axial profile being not periodic (“aperiodic”; ABS; being not periodic is broad), wherein said axial profile is formed by poled domains of said material (poling shown at least in Figs. 1-2), and wherein different poled domains of said material necessarily have different from one another axial geometric extents (axial is frame of reference, differences are found in Figs. 1-2 to make the domains having different extents / geometries), which clearly, fully meets Applicant’s claimed structural limitations for sole pending independent claim 1.
The Examiner respectfully notes that the functional language chosen for claim 1 is awkward in prose and could be supplemented / replaced by language more akin to the structural features / meaning as outlined by Applicant’s Fig. 2A. Axial profiles being “not periodic” is broader than being “aperiodic”, and further, there are no frames-of-reference for such terms of “axial geometric extents.” Features are 3-D in prior art.
Regarding claims 2, 3, and 5, see Figs. 1-2 of Nee, which teaches all structure, as combinations of inhomogeneity and 1st / 2nd / 3rd extents are found in Nee (claim 2), with optical waveguide formation (claims 3 and 5).
Regarding (method) claim 12, all structure is found in Nee being imputed from the method formation therein, with “aperiodically.”
Claim 1-3, 5, and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kashyap et al. U.S. Patent No. 8,411,353 B2.
Kashyap et al. U.S. Patent No. 8,411,353 B2 teaches (ABS; Figs. 1-4, 18, 22, 28; corresponding text; Claims) an optical component 10 / 60 (nonlinear in function; “wavelength conversion”; ABS; Figs. 1 and 28) comprising: a substrate made of a material, the substrate having an axis and an axial profile of a non-linearity parameter (nonlinearity in Kashyap), said axial profile being not periodic (aperiodic shown in Figs. 1, 28, e.g.; being not periodic is broad), wherein said axial profile is formed by poled domains of said material (poling shown at least in Figs. 1-4, 18, 22, 28), and wherein different poled domains of said material necessarily have different from one another axial geometric extents (axial is frame of reference, differences are found in the cited Figs. to make the domains having different extents / geometries), which clearly, fully meets Applicant’s claimed structural limitations for sole pending independent claim 1.
Regarding claims 2, 3, and 5, see Figs. 1 and 28 of Kashyap, which teaches all structure, as combinations of inhomogeneity and 1st / 2nd / 3rd extents are found in Kashyap (claim 2), with optical waveguide formation (claims 3 and 5).
Regarding (method) claim 12, all structure is found in Kashyap being imputed from the method formation therein, with “aperiodically.”
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 D-G, N, and O, which pertain to the state of the art of optical frequency / wavelength converters that employ “not periodic” (aperiodic, etc.) features of differently poled domains.
Based on the original claims as filed, and with such claim breadth as found in those claims, Applicant’s cooperation is respectfully request to amend substantial structural features into at least independent claim 1.
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.
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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 2, 2026
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