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 .
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 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.
DETAILED ACTION
This is an AIA application filed August 20, 2024.
The earliest effective filing date of this AIA application is seen as August 21, 2023, the date of the earliest priority application (United States provisional patent application serial number 63/520,766) for any claims which are fully supported under 35 U.S.C. 112(a) by the provisional application.
The effective filing date of this AIA application is seen as August 20, 2024, the actual filing date, for any claims that are not fully supported by the foregoing provisional or non-provisional application(s).
The present application is also related to the applications giving rise to the following patent publication(s) (some redundancy may be present):
none are seen.
The claims originally filed August 20, 2024 are entered, currently outstanding, and subject to examination.
This action is in response to the information disclosure statement/IDS filing of December 11, 2024.
Claims 1-20 are currently pending and outstanding.
No claims have been amended, cancelled, withdrawn, or added.
Claims 1-20 are currently outstanding and subject to examination.
This is a non-final action and is the first action on the merits.
Allowable subject matter is not indicated below.
Often, in the substance of the action below, formal matters are addressed first, claim rejections second, and any response to arguments third.
Special Definitions for Claim Language - MPEP § 2111.01(IV)
No special definitions are seen as present in the specification regarding the language used in the claims. Consequently, the words and phrases of the claims are given their plain meaning. MPEP §§ 2173.01, 2173.05(a), and 2111.01.
If special definitions are present, Applicant should bring those to the attention of the examiner and the prosecution history with its next response in a manner both specific and particular. In doing so, there will be no mistake, confusion, and/or ambiguity as to what constitutes the special definition(s).
Claim Rejections - 35 USC § 102
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.
Claims 1 and 3-5 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by U.S. Patent Application Publication No. 20180299628 of Liu et al. (Liu).
With respect to claim 1, Liu discloses a package (Figs. 2A/B, ¶ 27) comprising:
a substrate (printed circuit board (PCB) 205) having a recess (cavity 225) defined near an edge of the substrate (¶ 28, "The top side of the PCB 205 includes a recess or cavity such as the cavity 125.");
a photonic chiplet (photonics IC (PIC) 215) disposed in the recess ("The PIC 215 is located within the cavity 225");
an electrical chiplet ("an electronic IC (EIC) such as a driver IC 210)" disposed at least in part on the photonic chiplet (215); and
a fiber (optical fiber 220) optically coupled to the photonic chiplet (215) at the edge of the substrate (205).
With respect to claim 3, Liu as set forth above discloses the package of claim 1, including one further comprising
one or more connections coupling a top surface of the substrate (205) to a top surface of the photonic chiplet (215).
Fig. 2B from bump bonds (BBs) 240 to top of PIC 215.
With respect to claim 4, Liu as set forth above discloses the package of claim 1, including one wherein
the photonic chiplet (215) comprises a through silicon via (TSV) coupled to the substrate (205).
¶ 20, "The interconnection of the driver IC to the PCB through the PIC may use through-silicon vias (TSVs) integrated into the PIC."
With respect to claim 5, Liu as set forth above discloses the package of claim 1, wherein the electrical chiplet (210) is disposed in part on the photonic chiplet (215) and in part on the substrate (205).
Per Fig. 2B.
Claim Rejections - 35 USC § 103
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 of this title, 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.
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.
Claims 2, 6-16, and 18-20 are rejected under 35 U.S.C. § 103 as being unpatentable over Liu as set forth above.
With respect to claim 2, Liu as set forth above discloses the package of claim 1, but not one wherein
a portion of the photonic chiplet (215) overhangs the substrate (205).
Fig. 2B shows the optical fiber 220 overhanging both the PIC 215 and PCB 205 at cavity 225.
Fig. 2B shows the presence of overhangs by optical elements.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have the photonic chiplet overhang the substrate along the lines of the optical fiber in a system according to Liu as set forth above in order to provide alternative configrations and designs that would accommodate other circumstances. This provides one rationale to combine the references.
Another completely independent and separately sufficient rationale arises as follows. In making the combination (above), prior art elements (listed above) are combined according to known methods (per the references) to yield predictable results (a photonic device) would occur as each element merely performs the same function in combination as it does separately. MPEP § 2141(III). This additional rationale is a sufficient, a complete, and an explicitly-recognized rationale to combine the references and conclude that the claim is obvious both under the controlling KSR Supreme Court case and MPEP § 2141(III)(A). Current Office policy regarding the determination of obviousness is set forth in the Federal Register notice at 89 Fed. Reg. 14449 (Feb. 27, 2024).
Further, the combination would then provide:
a portion of the photonic chiplet (215) overhangs the substrate (205).
With respect to claim 6, Liu as set forth above discloses the package of claim 1, but not one wherein
the photonic chiplet (215) has a top surface that is less than 30 mm×40 mm.
Where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device. Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984). MPEP § 2144.04(IV)(A).
As the scope of claim 6 departs from that of claim 1 only with regards to the relative dimensions, the claimed device is not patentably distinct from the prior art device of Liu as set forth above.
The size of any IC does not affect its operation electrically, electronically, and/or optically beyond more time for longer conduits, an entirely predictable effect.
Herein, this analysis is referred to as “relative dimensions/size”.
With respect to claim 7, Liu as set forth above discloses a package comprising:
a substrate (205) having a recess (225); and
a photonic chiplet (215) disposed in the recess (225).
Liu Fig. 2B as set forth above does not disclose:
a photonic interposer disposed on the substrate (205); and
an electrical chiplet disposed at least in part on the photonic interposer,
wherein the photonic chiplet (215) is coupled to the photonic interposer electrically or optically.
Liu Figs. 1A/B provide
a photonic interposer (interposer 130) disposed on the substrate (105); and
an electrical chiplet (driver IC 110) disposed at least in part on the photonic interposer (105),
wherein the photonic chiplet (115) is coupled to the photonic interposer (105) electrically or optically (The driver IC 110 is directly electrically connected to both the PIC 115 and indirectly electrically connected to the PCB 105 via the interposer 130.).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to include an interposer along the lines of Liu Figs. 1A/B in a system according to Liu Figs. 2A/B in order to provide additional processing and/or connection. This provides one rationale to combine the references.
Another completely independent and separately sufficient rationale arises as follows. In making the combination (above), prior art elements (listed above) are combined according to known methods (per the references) to yield predictable results (a photonic device) would occur as each element merely performs the same function in combination as it does separately. MPEP § 2141(III). This additional rationale is a sufficient, a complete, and an explicitly-recognized rationale to combine the references and conclude that the claim is obvious both under the controlling KSR Supreme Court case and MPEP § 2141(III)(A). Current Office policy regarding the determination of obviousness is set forth in the Federal Register notice at 89 Fed. Reg. 14449 (Feb. 27, 2024).
Further, the combination would then provide:
a photonic interposer disposed on the substrate; and
an electrical chiplet disposed at least in part on the photonic interposer,
wherein the photonic chiplet is coupled to the photonic interposer electrically or optically.
With respect to claim 8, Liu as set forth above discloses the package of claim 7, but not one wherein
the photonic interposer covers at least partially the photonic chiplet (215).
Figs. 3A/B shows an interposer in the form of a redistribution layer (RDL) 380 formed over several elements.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have a photonic interposer cover at least partially a photonic chiplet along the lines of Figs. 3A/B in a system according to Liu as set forth above in order to provide alternative construction geometries/configurations. This provides one rationale to combine the references.
Another completely independent and separately sufficient rationale arises as follows. In making the combination (above), prior art elements (listed above) are combined according to known methods (per the references) to yield predictable results (a photonic device) would occur as each element merely performs the same function in combination as it does separately. MPEP § 2141(III). This additional rationale is a sufficient, a complete, and an explicitly-recognized rationale to combine the references and conclude that the claim is obvious both under the controlling KSR Supreme Court case and MPEP § 2141(III)(A). Current Office policy regarding the determination of obviousness is set forth in the Federal Register notice at 89 Fed. Reg. 14449 (Feb. 27, 2024).
Further, the combination would then provide:
the photonic interposer covers at least partially the photonic chiplet (215).
With respect to claim 9, Liu as set forth above discloses the package of claim 7, further comprising a second fiber coupled to the photonic chiplet (215; per Figs. 2A/B).
Liu as set forth above does not disclose:
a first fiber coupled to the photonic interposer.
Fig. 3A shows an optical fiber 320 coupled to a separate optical device in the form of the carrier 365.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have an optical fiber coupled to the interposer along the lines of Figs. 3A/B in a system according to Liu as set forth above in order to provide additional photonic pathways. This provides one rationale to combine the references.
Another completely independent and separately sufficient rationale arises as follows. In making the combination (above), prior art elements (listed above) are combined according to known methods (per the references) to yield predictable results (a photonic device) would occur as each element merely performs the same function in combination as it does separately. MPEP § 2141(III). This additional rationale is a sufficient, a complete, and an explicitly-recognized rationale to combine the references and conclude that the claim is obvious both under the controlling KSR Supreme Court case and MPEP § 2141(III)(A). Current Office policy regarding the determination of obviousness is set forth in the Federal Register notice at 89 Fed. Reg. 14449 (Feb. 27, 2024).
Further, the combination would then provide:
a first fiber coupled to the photonic interposer.
With respect to claim 10, Liu as set forth above discloses the package of claim 9, but not one wherein
the first fiber and the second fiber extend in directions orthogonal to each other.
It would have been obvious to one having ordinary skill in the art at the time of applicant's invention to have such a rearrangement of fiber optic connections as a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular arrangement was [patentably] significant. In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950); In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975). MPEP § 2144.04(VI)(C).
Space requirements or design preferences would account for various/any direction.
With respect to claim 11, Liu as set forth above discloses the package of claim 7, but not one wherein
the photonic chiplet (215) is optically coupled to the photonic interposer via evanescent coupling.
For product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties and/or functions are presumed to be inherent. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP § 2112.01(I).
Consequently, because Liu as set forth above as set forth above provides the structure of claim 7, the combination is seen as also providing the same claimed properties or functions of claim 11.
Unsupported features are seen to directly result from the supported/claimed structures. No authority is known by which unsupported or “naked” functions/characteristics/features can be claimed and subject to exclusive protection.
Below, this analysis is referred to as “same product/same features”.
With respect to claim 12, Liu as set forth above discloses the package of claim 7, including one wherein
the photonic chiplet (215) is electrically coupled to the photonic interposer (~130) via metal bumps (one or more bump bonds (BBs) 250/150/140).
With respect to claim 13, Liu as set forth above discloses a package comprising:
a substrate (205) having a first recess (225) defined near a first edge of the substrate (205);
a first photonic chiplet (215) disposed in the first recess (225); and
a first fiber optically coupled to the first photonic chiplet (215) at the first edge of the substrate (205).
Liu as set forth above does not disclose:
a second recess defined near a second edge of the substrate;
and a second photonic chiplet disposed in the second recess; and
and a second fiber optically coupled to the second photonic chiplet at the second edge of the substrate.
Mere duplication of parts has no distinguishing significance unless a new and unexpected result is produced. In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960); MPEP § 2144.04(VI)(B).
Here, duplication has occurred with a second photonic chiplet and its surrounding environment.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide a duplicate photonic chiplet system along the lines of duplicating parts in a system according to Liu as set forth above in order to provide additional processing and/or signal. This provides one rationale to combine the references.
Another completely independent and separately sufficient rationale arises as follows. In making the combination (above), prior art elements (listed above) are combined according to known methods (per the references) to yield predictable results (a photonic device) would occur as each element merely performs the same function in combination as it does separately. MPEP § 2141(III). This additional rationale is a sufficient, a complete, and an explicitly-recognized rationale to combine the references and conclude that the claim is obvious both under the controlling KSR Supreme Court case and MPEP § 2141(III)(A). Current Office policy regarding the determination of obviousness is set forth in the Federal Register notice at 89 Fed. Reg. 14449 (Feb. 27, 2024).
Further, the combination would then provide:
a second recess defined near a second edge of the substrate;
and a second photonic chiplet disposed in the second recess; and
and a second fiber optically coupled to the second photonic chiplet at the second edge of the substrate.
With respect to claim 14, Liu as set forth above discloses the package of claim 13, but not one wherein
the first edge is orthogonal to the second edge.
Changes in shape are a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed orthogonal edge arrangement was significant [in a patentable way, that would distinguish itself over the prior art, i.e., unique, unpredictable, advantageous, or the like per below]. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966); MPEP § 2144.04(IV)(B). This is particularly true when the specification gives little or no description of why such changes in shape are unique, unpredictable, advantageous, or the like. No disclosure is given in the application with regards to the patentable significance of the orthogonality. Further, orthogonal elements are ubiquitous within Liu as set forth above.
Herein, this point is referred to as “changes in shape”.
Per the above and the foregoing obviousness analyses, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have such orthogonal edges.
With respect to claim 15, Liu as set forth above discloses the package of claim 13, including one further comprising
an electrical chiplet (210) disposed at least in part on the first photonic chiplet (215).
Fig. 2B.
With respect to claim 16, Liu as set forth above discloses the package of claim 15, but not one wherein
the electrical chiplet is disposed at least in part on the second photonic chiplet (215).
Per the obviousness analyses above an in light of rearrangement of parts, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to share an electrical chiplet between two photonic chiplets in order to conserve chip space and/or to provide similar processing for similar chips.
With respect to claim 18, Liu as set forth above discloses the package of claim 13, including one wherein
a portion of the first photonic chiplet (215) overhangs the substrate (205).
See claim 2, above.
With respect to claim 19, Liu as set forth above discloses the package of claim 13, including one wherein
the first photonic chiplet (215) comprises a through silicon via (TSV) coupled to the substrate (205).
Per claim 4, above.
With respect to claim 20, Liu as set forth above discloses the package of claim 13, including one further comprising
one or more connections coupling a top surface of the substrate (205) to a top surface of the first photonic chiplet (215).
Per claim 3, above.
Claim 17 is rejected under 35 U.S.C. § 103 as being unpatentable over Liu as set forth above in view of U.S. Patent Application Publication No. 20220196915 of Coons et al. (Coons).
With respect to claim 17, Liu as set forth above discloses the package of claim 13, but not one further comprising:
a first v-groove, disposed in the first recess (225),
coupling the first fiber to the first photonic chiplet (215); and
a second v-groove, disposed in the second recess,
coupling the second fiber to the second photonic chiplet.
Coons discloses a stackable photonics die with direct optical interconnect that includes (Fig. 1, ¶ 28):
"In embodiments, portions of the optical fiber 110 may fit within the grooves 112 that are located on the legacy PIC 102."
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide grooves for optical fibers along the lines of Coons in a system according to Liu as set forth above in order to provide alignment and securements for such fibers. This provides one rationale to combine the references.
Another completely independent and separately sufficient rationale arises as follows. In making the combination (above), prior art elements (listed above) are combined according to known methods (per the references) to yield predictable results (a photonic device) would occur as each element merely performs the same function in combination as it does separately. MPEP § 2141(III). This additional rationale is a sufficient, a complete, and an explicitly-recognized rationale to combine the references and conclude that the claim is obvious both under the controlling KSR Supreme Court case and MPEP § 2141(III)(A). Current Office policy regarding the determination of obviousness is set forth in the Federal Register notice at 89 Fed. Reg. 14449 (Feb. 27, 2024).
Further, the combination would then provide:
a first v-groove, disposed in the first recess (225),
coupling the first fiber to the first photonic chiplet (215); and
a second v-groove, disposed in the second recess,
coupling the second fiber to the second photonic chiplet.
Conclusion
Applicant’s publication US 20250067942 A1 published February 27, 2025 is cited.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The cited references have elements related to Applicant’s disclosure and/or claims or are otherwise associated with the other cited references, particularly with respect to optoelectronic packages and related designs .
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW JORDAN whose telephone number is (571) 270-1571. The examiner can normally be reached most days 1000-1800 PACIFIC TIME ZONE (messages are returned).
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. While examiner does not examine over the phone (see 37 C.F.R. § 1.2), examiner is glad to clarify or discuss issues so long as it forwards prosecution.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Thomas (Tom) 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.
/Andrew Jordan/
Primary Examiner, Art Unit 2874
V: (571) 270-1571 (Pacific time)
F: (571) 270-2571
September 15, 2026
Prosecution Insights