DETAILED ACTION
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 .
Election/Restrictions
Applicant’s election without traverse of Claims 1-10 in the reply filed on March 5, 2026 is acknowledged.
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)(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 1-7 and 20 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Abatchev, et al. (US 7,910,483).
In reference to Claim 1, Abatchev discloses a method for trimming the second hard mask layer with the photoresist layer on top of the second hard mask layer (2:5-7) (a method of trimming an integrated photonic device), forming a pattern in the photoresist layer (2:4) the etch being chosen based on the feature’s roughness or width (10:65-67) (the method comprising: generating one or more trim patterns based on at least based on an optical measurement of the photonic device); transferring the pattern resulting from trimming the mask (2:64-67) (creating a patterned resist on the photonic device based on the one or more trim patterns); and trimming for critical dimension control (3:33-34) (Examiner understands this to be an intended use claim however the prior art does disclose “Poor etching can cause defects in the performance of the device and poor yields” (1:44-45)) (trimming the photonic device to adjust a performance metric of the photonic device).
In reference to Claim 2, Abatchev discloses the method of Claim 1, as described above.
Abatchev discloses the device is made from a many layered setup where trimming gets to the next material (1:66-2:54) (the photonic device comprises a core and the trimming comprises converting a portion of the core from one material into another material).
In reference to Claim 3, Abatchev discloses the method of Claim 2, as described above.
Abatchev discloses trimming using plasma (2:43-54) (the trimming comprises exposing the photonic device to a plasma of reactive gas).
In reference to Claim 4, Abatchev discloses the method of Claim 3, as described above.
Abatchev discloses the layer is silicon (2:18-22) (the core is a silicon core).
In reference to Claim 5, Abatchev discloses the method of Claim 3, as described above.
Abatchev discloses the layer is silicon (2:18-22) (the trimming comprises converting the portion of the core into silicon nitride).
In reference to Claim 6, Abatchev discloses the method of Claim 3, as described above.
Abatchev discloses trimming the layer is silicon (2:18-22) (the trimming comprises converting the portion of the core into silicon dioxide).
In reference to Claim 7, Abatchev discloses the method of Claim 1, as described above.
Abatchev discloses trimming for critical dimension control (3:33-34) (Examiner understands this to be an intended use claim however the prior art does disclose “Poor etching can cause defects in the performance of the device and poor yields” (1:44-45)) (generating the one or more trim patterns is further based on a target optical performance for the photonic device).
In reference to Claim 20, Abatchev discloses the method of Claim 1, as described above.
Abatchev discloses trimming using plasma (2:43-54) (the trimming comprises exposing the photonic device to a plasma comprising a reactive gas via one or more openings in the patterned resist).
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, 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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 8-10 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Abatchev, et al. (US 7,910,483) as applied to Claim 1 above, and further in view of Kitai, et al. (US 2005/0205778).
In reference to Claim 8, Abatchev discloses the method of Claim 1, as described above.
Abatchev does not disclose fabricating the photonic device in an offset state in which a value of the performance metric in the offset state is different from a predefined optimal value of the performance metric in an optimal state, wherein the trimming causes the value of the performance metric to approach the predefined optimal value.
Kitai discloses an alignment process that uses the offset either on purpose or for correction depending on the preferred final product ([0015]-[0017]) (Examiner understands this to be an intended use claim however the prior art does disclose “the material offset data obtained during the alignment may be recorded and used by the automated trimming system to optimize … trimming parameters”([259])) (fabricating the photonic device in an offset state in which a value of the performance metric in the offset state is different from a predefined optimal value of the performance metric in an optimal state, wherein the trimming causes the value of the performance metric to approach the predefined optimal value).
It would have been obvious to one of ordinary skill in the art to complete the method of Abatchev using the offset of Kitai because some products are optimized by offset. One of ordinary skill in the art would have been motivated to use the offset of Kitai in the fabrication process of Abatchev because Kitai is aligning during a fabrication process. The reasonable expectation of success is an aligned final product.
In reference to Claim 9, Abatchev discloses the method of Claim 1, as described above.
Kitai discloses an alignment process that uses the offset either on purpose or for correction depending on the preferred final product ([0015]-[0017]) the material offset data obtained during the alignment may be recorded and used by the automated trimming system to optimize … trimming parameters ([259]) (generating one or more process parameters based on the optical measurement and performing the trimming using the one or more process parameters).
In reference to Claim 10, Abatchev discloses the method of Claim 1, as described above.
Kitai discloses an alignment process that uses the offset either on purpose or for correction depending on the preferred final product ([0015]-[0017]) (Examiner understands this to be an intended use claim however the prior art does disclose “the material offset data obtained during the alignment may be recorded and used by the automated trimming system to optimize … trimming parameters”([259])) (the photonic device is one of a plurality of photonic devices fabricated on a common substrate, the method comprises performing the steps of the method for each of the plurality of photonic devices, and at least the step of trimming the photonic device to adjust the performance metric of the photonic device is performed simultaneously for the plurality of photonic devices).
In reference to Claim 22, Abatchev discloses the method of Claim 1, as described above.
Kitai discloses an alignment process that uses the offset either on purpose or for correction depending on the preferred final product ([0015]-[0017]) the material offset data obtained during the alignment may be recorded and used by the automated trimming system to optimize … trimming parameters ([259]) (fabricating the photonic device in an offset state in which a value of the performance metric in the offset state is different from a predefined optimal value and a sign of a difference between the value of the performance metric and the predefined optimal value is such that the trimming causes a magnitude of the difference to be reduced).
Claims 24-25 are rejected under 35 U.S.C. 103 as being unpatentable over Abatchev, et al. (US 7,910,483) as applied to Claim 1 above, and further in view of Kitai, et al. (US 2005/0205778) and Montmeat, et al. (US 9,934,995).
In reference to Claim 24, Abatchev discloses the method of Claim 1, as described above.
Abatchev does not disclose the optically measuring the photonic device comprises: coating the photonic device with a temporary material; optically measuring the coated photonic device; and removing the temporary material prior to creating the patterned resist.
Montmeat discloses depositing an anti-adhesive layer on the face (2:29-31) (the optically measuring the photonic device comprises: coating the photonic device with a temporary material); measuring the substrate (5:52-59) (optically measuring the coated photonic device); and removing the material from the periphery of the carrier substrate (2:32-35) (removing the temporary material prior to creating the patterned resist).
It would have been obvious to one of ordinary skill in the art to complete the method of Abatchev using the temporary adhesive of Montmeat because the adhesive keeps the product together during trimming. One of ordinary skill in the art would have been motivated to use the temporary adhesive from Montmeat in the fabrication process of Abatchev because Montmeat uses the adhesive to trim the product together. The reasonable expectation of success is an aligned final product.
In reference to Claim 25, modified Abatchev discloses the method of Claim 24, as described above.
Montmeat discloses the trimming of the carrier substrate is carried out by a photolithography step followed by an ion etching or chemical etching step (7:17-23) (Examiner is interpreting the adhesive must have a similar refractive index because the photolithography trimming step goes through all the layers) (the temporary material has an index of refraction substantially the same as a material to be added to the photonic device during final fabrication of the photonic device).
Claim 26 is rejected under 35 U.S.C. 103 as being unpatentable over Abatchev, et al. (US 7,910,483) as applied to Claim 1 above, and further in view of Montmeat, et al. (US 9,934,995).
In reference to Claim 26, Abatchev discloses the method of Claim 1, as described above.
Montmeat discloses repeating steps (5:37-40) (iteratively repeating the steps of: optically measuring the photonic device); measuring the substrate (5:52-59) the trimming of the carrier substrate is carried out by a photolithography step followed by an ion etching or chemical etching step (7:17-23) (generating one or more trim patterns based on at least the optical measurements); formation of a pattern (4:63) (creating a patterned resist on the photonic device based on the one or more trim patterns); and the trimming of the carrier substrate is carried out by a photolithography step followed by an ion etching or chemical etching step (7:17-23) (trimming the photonic device to adjust a performance metric of the photonic device).
It would have been obvious to one of ordinary skill in the art to complete the method of Abatchev using the temporary adhesive of Montmeat because the adhesive keeps the product together during trimming. One of ordinary skill in the art would have been motivated to use the temporary adhesive from Montmeat in the fabrication process of Abatchev because Montmeat uses the adhesive to trim the product together. The reasonable expectation of success is an aligned final product.
Kitai discloses the material offset data obtained during the alignment may be recorded and used by the automated trimming system to optimize … trimming parameters ([259]) (thereby causing a value of the performance metric of the photonic device to progressively approach an optimum value for the performance metric of the photonic device).
It would have been obvious to one of ordinary skill in the art to complete the method of Abatchev using the offset of Kitai because some products are optimized by offset. One of ordinary skill in the art would have been motivated to use the offset of Kitai in the fabrication process of Abatchev because Kitai is aligning during a fabrication process. The reasonable expectation of success is an aligned final product.
Claims 27-28 are rejected under 35 U.S.C. 103 as being unpatentable over Abatchev, et al. (US 7,910,483) as applied to Claim 1 above, and further in view of Kambe, et al. (US 2003/0031438).
In reference to Claim 27, Abatchev discloses the method of Claim 1, as described above.
Abatchev does not disclose the photonic device comprises an optical resonator, an optical filter, or an optical waveguide.
Kambe discloses using particle blends to create photonic crystals that are then placed in optical structures ([0070]) (the photonic device comprises an optical resonator, an optical filter, or an optical waveguide).
It would have been obvious to one of ordinary skill in the art to complete the method of Abatchev using the particle blends of Kambe because the blend can be used to make advantageous optical products. One of ordinary skill in the art would have been motivated to use the particle blends of Kambe in the fabrication process of Abatchev because the photonic crystals can be used to make an ideal solid state laser without natural emissions. The reasonable expectation of success is a strong solid state lasered product.
In reference to Claim 28, Abatchev discloses the method of Claim 1, as described above.
Kambe discloses using particle blends to create photonic crystals that are then placed in optical structures ([0070]) (the photonic device is a photonic crystal device).
Allowable Subject Matter
Claims 21, 23, and 29-30 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.
The following is a statement of reasons for the indication of allowable subject matter:
Claims 21 and 23 would be allowable because the prior art of record discloses much thicker core portions than 2-10 nm.
Claims 29 and 30 would be allowable because the prior art of record does not disclose a resonator.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KELSEY C GRACE whose telephone number is (571)270-1113. The examiner can normally be reached Monday-Thursday 7:00 AM - 5:00 PM EST, Friday 7:00 AM - 11:00 AM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christina Johnson can be reached at (571)272-1176. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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KELSEY C. GRACE
Examiner
Art Unit 1742
/CHRISTINA A JOHNSON/ Supervisory Patent Examiner, Art Unit 1742
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