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 .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 6 recites the limitation "the line segment patterns" on Line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 7 recites the limitation “a second dielectric layer” without a recitation of a previous first dielectric layer. However, claim 3, which claim 7 do not depend from, does recite a first dielectric layer. Claim 7 will be examined as if its dependency was on claim 3.
Appropriate correction is required.
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.
Claim(s) 1, 4, 6 and 10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent Application Publication 2019/0072834 to Kono.
In regards to claim 1, Kono recites an optical modulation element (Figures 1, 2A & 2B) comprising: a substrate (27); first and second waveguides (15 & 17) formed of an optical material film having a ridge part (29; Figure 2B) which are disposed on the substrate and provided parallel to each other; a buffer layer (29d) disposed on the first and second waveguides; and first and second signal electrodes (16 & 18) provided along the first and second waveguides, wherein the first and second signal electrodes each include a solid-line part (31 & 35) provided outside the respective first and second waveguides in a plan view and provided continuously in the traveling direction, a dashed-line part (19 & 20) provided at positions inside the solid-line parts so as to overlap the respective first and second waveguides in a plan view and provided intermittently in the traveling direction, and a connection part (33a-d & 37a-d) connecting the solid-line part and the dashed-line part, and a width of the dashed-line part is larger than a width of the ridge part (Figure 2B).
In regards to claim 4, Kono recites a width of the solid-line part is larger than the width of the dashed-line part.
In regards to claim 6, Kono recites each of the line segment patterns constituting the dashed-line part is parallelly connected to the solid-line part through a plurality of the connection parts. (Figures 1 & 2A)
In regards to claim 10, Kono recites the first and second waveguides have a straight section and a curved section, and the dashed-line parts of the respective first and second signal electrodes respectively overlap the first and second waveguides both in the straight section and curved section in a plan view.
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.
Claim(s) 2 and 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication 2019/0072834 to Kono as applied to claim 1 above.
In regards to claims 2 and 5, although Kono does not expressly recite the dashed- line part has an upper layer and a lower layer, and a width of the lower layer is larger than the width of the ridge part and smaller than a width of the upper layer and a maximum distance between both ends of the connection part in the traveling direction is equal to or larger than half of a length of a line segment pattern constituting the dashed-line part, it is not inventive to discover the optimum or workable ranges or values through routine experimentation when the general conditions of a claim are disclosed in the prior art. Optimizing the widths and distances in order to manipulate the signal is common in the optical art. 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 through routine experimentation of a result effective variable involves only routine skill in the art, it would have been obvious before the effective filing date to a person having ordinary skill in the art for the dashed- line part has an upper layer and a lower layer, and a width of the lower layer is larger than the width of the ridge part and smaller than a width of the upper layer and a maximum distance between both ends of the connection part in the traveling direction is equal to or larger than half of a length of a line segment pattern constituting the dashed-line part for the purpose of desired signal manipulation. In re Aller, 105 USPA 233; In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980)
Allowable Subject Matter
Claims 3 and 7-9 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 prior art of record fails to disclose or reasonably suggest a first dielectric layer provided on the buffer layer, wherein the upper layer of the dashed-line part is provided on the first dielectric layer, and the lower layer of the dashed-line part is filled in a trench pattern formed in the first dielectric layer in addition to the accompanying features of the independent claim and any intervening claims.
References Cited
The references cited made of record and not relied upon is considered pertinent to applicant’s disclosure. None of the documents cited by the Examiner discloses or reasonably suggests the allowable subject matter discussed above.
The documents submitted by applicant in the Information Disclosure Statements have been considered and made of record. Note attached copy of forms PTO-1449. None of the references submitted by Applicant discloses or reasonably suggest the allowable subject matter discussed above.
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
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TINA M WONG whose telephone number is (571)272-2352. The examiner can normally be reached M-F 8:30-5:30.
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, 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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/TINA WONG/Primary Examiner, Art Unit 2874
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