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 .
Information Disclosure Statement
Information disclosure statement filed 9/26/2024 has been considered.
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.
Claim(s) 1, 16, 18, 20, 22, 29 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US Patent Application Publication No. US 2021/0325760 A1 to Makino et al. (hereinafter “Makino”).
Makino discloses an optical waveguide element, comprising a substrate (120 in Fig. 1B) with an optical waveguide (122a in Fig. 1B) formed thereon, having an electro optical effect (Fig. 1A; paragraph [0029]), and plurality of control electrodes (111 in Fig. 1B) formed on a front surface side of the substrate with the optical waveguide in between (Fig. 1B), for applying an electric field to the optical waveguide (paragraph [0032]), wherein a low resistivity layer (123 or 121 in Fig. 1B; substrate is disclosed as being lithium niobate- see paragraph [0033], and the layer 123 or 121 is disclosed as being tin oxide (SnO)- see paragraph [0038]. Since the resistivity of lithium niobate is widely known as being around 108 Ω·cm and the resistivity of SnO is widely known as being roughly, >10-2 Ω·cm, layer 123 or 121 would qualify as “low resistivity layer”) is formed on at least a part of the front surface between the plurality of control electrodes of the substrate (i.e. 123 in Fig. 3C) and/or at least a part of a back surface of the substrate.
Regarding claim 16, Makino discloses wherein the plurality of control electrodes include a signal electrode to which a modulation signal is applied, a ground electrode, and a bias electrode to which a bias voltage is applied (paragraph [0028]), and the low resistivity layer is formed in a region of the substrate to which an electric field due to the modulation signal is applied and / or a region of the substrate to which an electric field due to the bias voltage is applied (A-A’ in Fig. 1A).
Regarding claim 18, Makino discloses wherein the low resistivity layer is formed between the plurality of control electrodes and the substrate (i.e. layer 123).
Regarding claim 20, the claim recites “product-by-process” where the “product” claim is limited by the process of manufacturing the product (i.e. “the low resistivity layer is formed by…”). As stated in MPEP §2113, “even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). As such, while the product-by-process limitations are not ignored, such limitations are not given patentable weight unless such limitations impart definitive structural features and configurations to the claimed product that distinguishes the claimed product over the prior art. In the present application, all the structural features of the claims are disclosed by Makino and as such claim 20 is also anticipated by Makino.
Regarding claim 22, Makino discloses wherein the optical waveguide is a rib type optical waveguide (Fig. 1B).
Regarding claim 29, Makino discloses an optical transmission apparatus comprising the optical modulation device (Fig. 1A) and an electronic circuit (i.e. inherently present in the device of Makino) that outputs a modulation signal that causes the optical modulation device to perform a modulation operation (paragraph [0028]).
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.
Claim(s) 2, 12-15, 17, 19, 21, 23, 28 is/are rejected under 35 U.S.C. 103 as being unpatentable over Makino.
Regarding claim 2, Makino discloses an optical waveguide element as discussed above regarding claim 1. However, it does not explicitly disclose the thickness of the low resistivity layer such that the ratio of the electrical resistivity to thickness is between 106 to 1013 as claimed in the present application. On the other hand, Makino discloses that its low resistivity layer contributes to reducing or suppressing DC drift in the thin film lithium niobate optical modulator (paragraph [0039]). One of ordinary skill in the art would readily recognize the advantage and motivation to make the low resistivity layer thin and optimized such that the ratio of resistivity to the thickness is also optimized for the desired DC drift reduction as well as overall modulator device performance. This control over the thickness would be fully within the skill and the knowhow disclosed by the disclosure of Makino. Therefore, it would have been obvious to a person of ordinary skill in the art before the filing date of the present application to modify the invention of Makino to have the thickness of the low resistivity layer such that the ratio of the electrical resistivity to thickness is between 106 to 1013 as claimed in the present application.
Regarding claims 12-15, Makino discloses the claimed limitations of claim 1 as discussed above, and renders the claimed limitations of claim 2 obvious as discussed above. However, it does not explicitly disclose the thickness of low resistivity layer being 200nm or less, or the thickness of the substrate being 2 microns or less as claimed in the present application. Nevertheless, such thickness dimension would have been readily recognized as advantageous and desirable one of ordinary skill in the art since it would allow for optical modulators with compact dimensions as well as low DC drift. Therefore, it would have been obvious to a person of ordinary skill in the art before the filing date of the present application to modify the device of Makino to have the thickness of low resistivity layer being 200nm or less, or the thickness of the substrate being 2 microns or less as claimed in the present application.
Regarding claims 17, 19, 21, 23, Makino discloses the claimed limitations as already discussed above regarding claims 16, 18, 20, 22, respectively.
Regarding claim 28, Makino renders the claimed subject matter of claim 17 obvious as discussed above. In addition, Makino also discloses an electronic circuit that outputs a modulation signal that performs modulation operation (paragraph [0032]- although the “circuit” is not explicitly mentioned, the voltage that is applied to the electrodes 111 for causing modulation operation in Makino would inherently be from an “electronic circuit” within the scope of the invention disclosed by Makino).
Claim(s) 24-27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Makino in view of US Patent Application Publication No. US 2019/0162984 A1 to Sugiyama et al. (hereinafter “Sugiyama”).
Makino discloses the claimed limitations of claim 1 as discussed above, and renders the claimed limitations of claim 2 obvious as discussed above. However, it does not explicitly disclose the optical modulation device comprises a housing and an optical fiber that inputs/outputs an optical signal to the optical waveguide as claimed. On the other hand such features are well known in the optical modulator device art. For example, Sugiyama discloses an optical modulation device comprising an optical waveguide element and a mousing that accommodates the optical waveguide element (121 in Fig. 1), and an optical fiber (120a, 120b in Fig. 1) that inputs/outputs an optical signal to the optical waveguide element. Such elements would have been readily recognized as advantageous and desirable in an optical modulation device since the case provides an environmentally protective enclosure and the optical fiber facilitates optical signal routing into and out of the optical modulator device. Therefore, it would have been obvious to a person of ordinary skill in the art before the filing date of the present application to modify the device of Makino to have a housing and an optical fiber that inputs/outputs an optical signal to the optical waveguide as claimed in the present application.
Regarding claims 26-27, Makino discloses the claimed limitations of claim 16 as discussed above, and renders the claimed limitations of claim 15 obvious as discussed above. However, it does not explicitly disclose that the modulation device further comprises a driver circuit that amplifies a modulation signal, in the manner claimed in the present application. On the other hand, such amplification function is known in the art. For example, Sugiyama discloses an optical modulation device wherein the driver circuit amplifies the modulation signal (paragraph [0033]). One of ordinary skill in the art would readily recognize such a driver circuit as advantageous and desirable since it would allow for high fidelity electro optic modulation capable of low error rate operation. Therefore, it would have been obvious to a person of ordinary skill in the art before the filing date of the present application to modify the invention of Makino to have a driver circuit that amplifies a modulation signal, in the manner claimed in the present application.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SUNG H PAK whose telephone number is (571)272-2353. The examiner can normally be reached M-F: 7AM- 5PM.
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/SUNG H PAK/Primary Examiner, Art Unit 2874
