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 .
Priority
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in Japan on 02/25/2022. A certified copy of the JP2022-028575 application was received 08/06/2024.
Information Disclosure Statement
The prior art documents submitted by applicant in the Information Disclosure Statement filed 08/06/2024 have all been considered and made of record.
Joint Inventors
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.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “…each of the side surfaces slopes to face more upward at a farther distance from an upper surface of the substrate…” must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Furthermore, the drawings are objected to because
markers 20 and 22 in figure 10a appear to be indicating the same element, and
markers 21 and 23, in figure 10a appear to be indicating the same element.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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.
Claims 1-14 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.
With regards to claim 1, the claim recites “…the element mount area is located with the core between portions of the element mount area…”. As the claim is currently worded, the element mount area must be located between portions of itself. The claim is indefinite because the limitations create confusion regarding the structure of the claimed device.
Examiner’s note: for the purposes of further examination, examiner will interpret the above limitations as requiring that the core be located between portions of the element mount area.
With regards to claim 2, the claim recites “…the cladding layer includes first recesses located with the core between the first recesses…”. As the claim is currently worded, the first recesses must be located between themselves. The claim is indefinite because the limitations create confusion regarding the structure of the claimed device.
Examiner’s note: for the purposes of further examination, examiner will interpret the above limitations as requiring that the core be located between the first recesses.
With regards to claim 6, the claim recites “…each of the side surfaces slopes to face more upward at a farther distance from an upper surface of the substrate…”. It is unclear whether or not the slope of the side surfaces is changing over a unit of distance, and if so, in what manner this change occurs. Furthermore, it is unclear what point of reference is to be used when determining the distance from the substrate (I.E, “…farther distance from an upper surface of the substrate…” as compared to what reference point). The claim is indefinite because the limitations create confusion regarding the structure of the claimed device.
Examiner’s note: For the purposes of further examination, examiner will interpret the above limitations broadly requiring some form of change in slope.
With regards to claim 7, the claim recites “…the cladding layer includes second recesses located with the one or more cores between the second recesses…”. As the claim is currently worded, the second recesses must be located between themselves. The claim is indefinite because the limitations create confusion regarding the structure of the claimed device.
Furthermore, the claim recites “…one or more cores in the cladding layer, the one or more cores defining optical waveguides, wherein the cladding layer includes second recesses located with the one or more cores between the second recesses…”. The claim indicates the possibility of one core or multiple cores, but does not indicate the possibility of a single waveguide. It is unclear whether or not there can be only one core.
Examiner’s note: for the purposes of further examination, examiner will interpret the above limitations as requiring that cores of the plurality (and respective waveguides) be located between first recesses.
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 1-4, 6-7, and 9-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Okuda (US 11398713 B2).
With regards to claim 1, Okuda discloses an optical waveguide board, comprising:
a substrate (Fig10/Substrate 1);
a cladding layer on the substrate (Cladding layer [Elements 2 and 9]); and
a core in the cladding layer, the core defining an optical waveguide (Core [Portion of 46c beneath element 9]; Column 10/Lines 1-4/“…ridge-type waveguides…”), wherein the cladding layer includes a first surface facing the substrate and a second surface opposite to the first surface (First surface [bottom surface of element 2] and second surface [top surface of element 9]), and includes, on the second surface, an element mount area on which a light receiver is mountable (Element mount area [area between lines 36e and 36f]; Column 4/Lines 56=58/“…bonding pad 12…”), and the element mount area is located with the core between portions of the element mount area in a plan view (Fig10), and a height from the substrate to the element mount area (Fig10 [Distance from top of element 1 to interface between elements 9 and 12]) is greater than a height from the substrate to an upper surface of an area of the cladding layer covering the core (Fig10 [Distance from top of element 1 to interface between elements 8 and 9]).
With regards to claim 2, Okuda discloses the optical waveguide board according to claim 1, wherein the cladding layer includes first recesses located with the core between the first recesses in a plan view (First recesses [as indicated below]).
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With regards to claim 3, Okuda discloses the optical waveguide board according to claim 1, further comprising: electrodes in the element mount area, the electrodes being electrically connectable to the light receiver being mounted (Fig10/Electrodes 11).
With regards to claim 4, Okuda discloses the optical waveguide board according to claim 2, further comprising: electrodes extending from the element mount area onto side surfaces of the first recesses (Fig10/Electrodes 11).
With regards to claim 6, Okuda discloses the optical waveguide board according to claim 4, wherein each of the side surfaces slopes to face more upward at a farther distance from an upper surface of the substrate (Fig10 [Slope change at upper corners of recesses]).
With regards to claim 7, Okuda discloses the optical waveguide board according to claim 2, further comprising: one or more cores in the cladding layer, the one or more cores defining optical waveguides, wherein the cladding layer includes second recesses located with the one or more cores between the second recesses (Fig10/One or more cores [Portions of elements 41a and 41b beneath element 9] and second recesses [as indicated below]).
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With regards to claim 9, Okuda discloses the optical waveguide board according to claim 4, further comprising: wires on bottom surfaces of the first recesses, the wires each having a higher light reflectance than the electrodes (Fig10/Wires [elements 12 and connection between elements 11 and 12]; Column 4/Lines 56-58).
With regards to claim 10, Okuda discloses the optical waveguide board according to claim 9, wherein the wires extend to positions overlapping the element mount area in a plan view (Fig10 [Positions of elements 12]).
With regards to claim 11, Okuda discloses the optical waveguide board according to claim 1, further comprising: a light-shielding film on the second surface of the cladding layer, the light-shielding film surrounding a portion of the core located between the portions of the element mount area in a plan view (Light-shielding film 43).
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.
Claims 5 and 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Okuda (US 11398713 B2).
With regards to claim 5, Okuda discloses the optical waveguide board according to claim 4. Okuda is silent regarding the side surfaces each having a greater surface roughness than the second surface. However, Okuda does disclose the side surfaces and second surface as being formed of different materials (Column 4/Lines 53-56; Column 3/Lines 61-62) and it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice (In re Leshin, 125 USPQ 416). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select materials such that the surface roughness of the side surfaces is greater than that of the second surface since doing so would further reduce optical losses in the ridge waveguide.
With regards to claim 12, Okuda discloses an optical waveguide package, comprising:
the optical waveguide board according to claim 1; and
a light receiver, the light receiver including a light receiving part at a position overlapping the core in a plan view (Fig12/Light receiving part 27).
Okuda does not disclose the light receiver as being mounted on the element mount area, but does disclose the light receiver as being mounted over the element mount area (Fig12), and it has been held that rearranging parts of an invention involves only routine skill in the art (In re Japikse, 86 USPQ 70). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to mount the light receiver on the element mount area since doing so would allow the waveguide board itself to serve as the base for the receiver element, thereby forgoing the need for additional mounting elements (Such as element 81 of Okuda).
With regards to claim 13, Okuda discloses the optical waveguide package according to claim 12, wherein the light receiver is mounted with the light receiving part facing the optical waveguide board (Fig12).
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Okuda (US 11398713 B2) as applied to claim 12 above, in further view of Komatsu (US 5358896 A) and Kinghorn (US 20180052290 A1).
With regards to claim 14, Okuda discloses a light source module, comprising: the optical waveguide package according to claim 12. Okuda does not specifically disclose a light emitter and a lid covering the light receiver and the light emitter. However, the practices of including a light emitter and lid within a light source module exist in the art as exemplified by Komatsu and Kinghorn.
Okuda discloses an optical waveguide package with a light receiver. Komatsu discloses an optical waveguide package with a light emitter (Komatsu/Fig9/Light emitter 5). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include a light emitter within the light source module of Okuda as suggested by Komatsu since doing so would reduce or remove reliance on external light sources.
Okuda and Komatsu together disclose an optical waveguide package with a light receiver and a light emitter. Kinghorn discloses a lid covering a portion of an optical waveguide package with a light emitter (Kinghorn/Figs20-21/Lid 999). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to cover the receiver and emitter of Okuda and Komatsu with a lid as suggested by Kinghorn since doing so would further insulate the receiver and emitter and further protect them from physical damage.
Allowable Subject Matter
Claim 8 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
With regards to claim 8, the prior art of record fails to disclose or reasonably suggest the optical waveguide board according to claim 7, wherein a height from the substrate to a bottom surface of each of the second recesses is greater than a height from the substrate to each of the one or more cores in addition to the accompanying features of the independent claim and any intervening claims. The closest prior art was relied upon in the rejection set forth above.
Conclusion
This prior art, made of record, but not relied upon, is considered pertinent to applicant’s disclosure since the following references have similar structure and/or use similar structure and/or similar optical elements to what is disclosed and/or claimed in the instant application:
Benzoni (US 6981806 B2) [Figs1a-1d]
Okayama (US 20100178005 A1) [Fig4c]
Takagi (US 20020163002 A1) [Figs7-10]
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Marc E Manheim whose telephone number is (703)756-1873. The examiner can normally be reached 6:30am - 5pm E.T., Monday - Tuesday and Thursday - 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 A 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.
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/MARC E MANHEIM/Examiner, Art Unit 2874
/THOMAS A HOLLWEG/Supervisory Patent Examiner, Art Unit 2874
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