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 .
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.
Claim Objections
Claim 5 is objected to because of the following informalities: “by ¼ or more than a length of the reinforcing member” should say something like “by at least ¼ of a length of the reinforcing member” since the current wording appears to give two options that don’t make sense together, i.e. either “1/4” on its own, without units, or “more than a length of the reinforcing member”. The first option would be meaningless and the second option would mean that the spacer and the reinforcing member should not overlap at all. Therefore, while it is clear that this is not the intended meaning of the limitation, the limitation is grammatically incorrect. Paragraph 0080 (citing PG Pub of present application) supports the suggested language. Appropriate correction is required.
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 1-11 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.
Regarding claim 1: The term “near” in claim 1 is a relative term which renders the claim indefinite. The term “near” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. For the purpose of examination, near is considered to be anywhere on the device.
Regarding claims 2, 3, 4, 5, and 6: “the spacer” lacks proper antecedent basis. Claim 2 depends from claim 1, which defines multiple spacers. For the purpose of examination, “the spacer” is interpreted as “one or more of the spacers”.
Regarding claims 2 and 4: The claim limitation “positioning means” has been evaluated under the three-prong test set forth in MPEP § 2181, subsection I, but the result is inconclusive. Thus, it is unclear whether this limitation should be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because of inconsistent usage of “positioning means” between claims 2 and 4. Claim 2 says that the spacer “serves as positioning means”, so it is understood that the spacer provides the structure for performing the function. However, this is inconsistent with claim 4 which requires the positioning means to include further structure apart from the spacer. This additional structure may be interpreted under 35 U.S.C. 112(f). The boundaries of this claim limitation are ambiguous; therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. For the purpose of examination, this limitation is not being interpreted under 35 U.S.C. 112(f).
In response to this rejection, applicant must clarify whether this limitation should be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. Mere assertion regarding applicant’s intent to invoke or not invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph is insufficient. Applicant may:
(a) Amend the claim to clearly invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, by reciting “means” or a generic placeholder for means, or by reciting “step.” The “means,” generic placeholder, or “step” must be modified by functional language, and must not be modified by sufficient structure, material, or acts for performing the claimed function;
(b) Present a sufficient showing that 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, should apply because the claim limitation recites a function to be performed and does not recite sufficient structure, material, or acts to perform that function;
(c) Amend the claim to clearly avoid invoking 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, by deleting the function or by reciting sufficient structure, material or acts to perform the recited function; or
(d) Present a sufficient showing that 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, does not apply because the limitation does not recite a function or does recite a function along with sufficient structure, material or acts to perform that function.
Regarding claims 2-11: Dependent claims 2-11 inherently contain all of the deficiencies of any base and/or intervening claims from which they depend.
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 1-3 and 6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kono (JP H11-1999-64668; copy and translation provided by Applicant with IDS filed on 22 August, 2024; hereinafter Kono).
Regarding claim 1: Kono disclosesAn optical waveguide device (Fig. 3, Fig. 7, and Fig. 9) comprising: an optical waveguide substrate (Fig. 3, 7, and 9, substrate 7) provided with an optical waveguide (Fig. 3, 7, and 9, optical waveguide 9); anda reinforcing member (Fig. 7 and 9, reinforcing member 13; alternatively, Fig. 3, top of jig 10 which has integrally formed spacers) disposed on an upper side of the optical waveguide near an end portion of the optical waveguide (as shown in Figs. 7 and 9, the reinforcing member 13 is disposed on an upper side of the optical waveguide near an end portion of the optical waveguide; alternatively, shown in Fig. 3, the jig 10 including the reinforcing member is disposed on an upper surface of the optical waveguide near an end portion of the optical waveguide), the optical waveguide substrate and the reinforcing member being joined through an adhesive layer (Fig. 7 and 9 show that the optical waveguide substrate and the reinforcing member are joined with an adhesive layer 6 therebetween; therefore they are considered to be joined through an adhesive layer; alternatively, adhesive 6 is shown between the integral spacers of jig 10 and the optical waveguide substrate), wherein spacers (Fig. 7, spacers 12; Fig. 3, protrusion extending from the jig 10 toward the waveguide substrate; Fig. 9, electrode 14) are disposed between the optical waveguide substrate and the reinforcing member to interpose the optical waveguide between the spacers (Figs. 3, 7, and 9 each show this).
Regarding claim 2: Kono disclosesThe optical waveguide device according to claim 1 (as applied above), wherein one or more of the spacers also serves as positioning means in a direction parallel to a plane in which the optical waveguide substrate and the reinforcing member face each other (as shown in Figures 1, 2, 6, 8, and 10, the optical fiber is positioned against the reinforcing member 13, which is held in place by the spacers 12; this serves as positioning means in a direction parallel to a plane in which the optical waveguide substrate and the reinforcing member face each other).
Regarding claim 3: Kono disclosesThe optical waveguide device according to claim 1 (as applied above), wherein one or more of the spacers includes two parts (as shown in Figs. 3 and 7, the spacers include two parts, one on either side of the waveguide), and one part is formed on the optical waveguide substrate and another part is formed on the reinforcing member (as shown in Figs. 3 and 7, both parts are on the optical waveguide substrate and on the reinforcing member; Examiner notes that this limitation is being treated as a product-by-process limitation; as set forth in MPEP 2113, product-by-process claims are NOT limited to the manipulations of the recited steps, only to the structure implied by the steps; since the devices of Figs. 3 and 7 have an identical structure to a device formed by this process, the claim does not distinguish structurally from Kono).
Regarding claim 6: Kono disclosesThe optical waveguide device according to claim 1 (as applied above), wherein one or more of the spacers is a film body formed on the reinforcing member or the optical waveguide substrate, or a protruding portion formed by mechanically processing the reinforcing member or the optical waveguide substrate (Fig. 3, the spacers are each protruding portions formed by mechanically processing the reinforcing member or the optical waveguide substrate).
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.
Claims 5 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Kono (JP H11-1999-64668; copy and translation provided by Applicant with IDS filed on 22 August, 2024; hereinafter Kono).
Regarding claim 5: Kono discloses the optical waveguide device of claim 1, as applied above. Kono further discloses that the spacer is disposed at a position with respect to the reinforcing member that is separated from an end surface of the reinforcing member, in which the end portion of the optical waveguide is positioned (see gap between left-side of spacer 12 and left-side of reinforcing member 13 in Fig. 6, a side view of the embodiment of Fig. 7). Kono fails to disclose that the separation is at least ¼ of a length of the reinforcing member in a light propagation direction. However, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the Kono device for the separation to fall within the claimed range, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art (In re Aller, 105 USPQ 233), and that, 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 (In re Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 177 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984)).
Regarding claim 7: Kono discloses the optical waveguide device of claim 1, as applied above. Kono fails to disclose that a distance between the optical waveguide and the reinforcing member is set in a range of 0.2 times to 1.5 times a mode field diameter of the optical waveguide. However, this distance is a result effective variable because if it is too small, it will generate a lot of loss in the coupling between the fiber and the waveguide, but increasing the distance increases the overall size of the device. Before the effective filing date of the claimed invention, a person of ordinary skill in the art would have found it obvious to form the Kono device such that a distance between the optical waveguide and the reinforcing member is set in a range of 0.2 times to 1.5 times a mode field diameter of the optical waveguide, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art (In re Aller, 105 USPQ 233), since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art (In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980)), and since such a modification would have involved a mere change in the size of a component and it has been held that a change in size is generally recognized in as being within the level of ordinary skill in the art (In re Rose, 105 USPQ 237 (CCPA 1955)) and that, 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 (In re 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)).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Kono (JP H11-1999-64668; copy and translation provided by Applicant with IDS filed on 22 August, 2024; hereinafter Kono) in view of Sutherland (US 2020/0132934; hereinafter Sutherland).
Kono discloses the optical waveguide device of claim 2, as applied above. Kono fails to teach that the positioning means further includes a marker for positioning one or more of the spacers, and any one of the optical waveguide substrate and the reinforcing member includes the marker. However, Sutherland, also related to coupling optical fibers with optical waveguide substrates (see paragraph 0001), teaches providing an optical waveguide substrate with markers for positioning one or more spacers (see Figs. 6a-6c, alignment marks 710S and 710P on optical waveguide substrate 610). For faster and more accurate alignment of the spacers with the waveguide substrate and the reinforcing member, 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 marker for positioning the one or more spacers, wherein any one of the optical waveguide substrate and the reinforcing member includes the marker, since it was taught by Sutherland.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Kono (JP H11-1999-64668; copy and translation provided by Applicant with IDS filed on 22 August, 2024; hereinafter Kono) in view of Li et al. (WO 2022135095; hereinafter Li; see attached translation).
Kono discloses the optical waveguide device of claim 1, as applied above. Kono fails to teach a spot size converter that changes a mode field diameter of a light wave propagating through the optical waveguide is disposed on the optical waveguide positioned on a lower side of the reinforcing member. However, Li, also related to coupling optical fibers with waveguide substrates (see background technique, page 2 of attached translation), teaches that providing the end of the substrate waveguide with a spot-size converter enables efficient coupling between an optical fiber and a waveguide on a waveguide substrate in the case that there is a large mismatch in the mode/spot-size between the two (see Figs. 3 and 4 as well as pages 9-11 of attached translation). In order to provide more efficient coupling between the optical fiber and the waveguide substrate in the Kono device, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to provide a spot size converter that changes a mode field diameter of a light wave propagating through the optical waveguide on the optical waveguide positioned on a lower side of the reinforcing member, since it was taught by Li.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Kono (JP H11-1999-64668; copy and translation provided by Applicant with IDS filed on 22 August, 2024; hereinafter Kono) in view of Sugamata et al. (US Patent No. 10,473,998; hereinafter Sugamata).
Regarding claim 9: Kono discloses An optical modulation device (embodiment of Figs. 8-9; see translation of 5th Embodiment) comprising: the optical waveguide device according to claim 1 (as applied above).
Kono further discloses an optical fiber through which a light wave is input into the optical waveguide or output from the optical waveguide (Fig. 8, single mode fiber 3). Kono fails to disclose a case accommodating the optical waveguide device. However, Sugamata, also related to optical modulation devices (see Fig. 1a, element 102), teaches a case (Sugamata, Fig. 1A, element 104) that houses the optical waveguide device (Sugamata, col. 9, lines 27-29). Since it was previously known to provide cases to house optical waveguide devices, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the Kono device by housing the optical waveguide device in a case in order to better protect the components of the optical waveguide device from an external environment.
Claims 10 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Kono (JP H11-1999-64668; copy and translation provided by Applicant with IDS filed on 22 August, 2024; hereinafter Kono) in view of Sugamata et al. (US Patent No. 10,473,998; hereinafter Sugamata) and further in view of Mitamura (US 2022/0004032; hereinafter Mitamura).
a. Regarding claim 10: Modified Kono teaches the optical modulation device according to claim 9, as applied above. While Kono Fig. 9 shows a modulation electrode serving as a spacer for the reinforcing member, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to use spacers such as 12 as separate components for holding the reinforcing member while still using the waveguide device to perform modulation, i.e. including a separate modulation electrode for modulating the light wave propagating through the optical waveguide, in order to modulate the device without extending the electrodes all the way to the end region of the waveguide, in order to better protect the electrodes from an external environment. Kono also fails to teach an electronic circuit that amplifies a modulation signal to be input into the modulation electrode of the optical waveguide device provided inside the case. However, Mitamura, also related to optical modulators (see Figs. 2 and 3 and paragraphs 0013-0014), teaches providing a device with an electronic circuit that amplifies a modulation signal to be input into the modulation electrode of an optical waveguide device (see paragraph 0065). Since it was taught by Mitamura, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to provide the Kono device with an electronic circuit that amplifies a modulation signal to be input into the modulation electrode of the optical waveguide device, in order to enable effective data transmission using the modulation electrode. Since it is taught to be part of the modulation device of Mitamura, it would have been obvious to include the electronic circuit in the case in the modified Kono device in order to group all of the components together and minimize the distance that the electrical signal has to travel for greater speed.
Regarding claim 11: Modified Kono teaches An optical transmission apparatus comprising: the optical modulation device according to claim 9 (as applied above).
While Kono fails to teach an electronic circuit that outputs a modulation signal causing the optical modulation device to perform a modulation operation, Mitamura, also related to optical modulators (see Figs. 2 and 3 and paragraphs 0013-0014), teaches providing a device with an such an electronic circuit (see paragraph 0065). Since it was also taught by Mitamura, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to provide the Kono device with an electronic circuit that outputs a modulation signal causing the optical modulation to perform a modulation operation in order to enable effective data transmission using the modulation electrode.
Conclusion
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/KIRSTEN D. ENDRESEN/Examiner, Art Unit 2874
/THOMAS A HOLLWEG/Supervisory Patent Examiner, Art Unit 2874
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