DETAILED ACTION
This office action is in response to the continuation (CON) application and claims filed on September 24, 2024. This application is a CON of U.S. Application No. 18/310,315, which has matured into U.S. Patent No. 12,105,310 B2.
Claims 73-91 are pending, with claim 73 as the sole independent.
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Information Disclosure Statement
It is noted that Applicant has not filed an Information Disclosure Statement. If Applicant becomes aware of any prior art that may be pertinent to the examination and analysis of the claimed subject matter, a PTO-1449 form should be filed.
Drawings
The original drawings (seventeen (17) pages) were received on September 24, 2024. These drawings are acknowledged.
Specification
The disclosure is objected to because of the following informalities: the 1st paragraph of the specification must include the most-recent US PTO data. For example, the U.S. Patent No. 12,105,310 B2 of the parent should be updated. Appropriate correction is required.
Claim Objections
Claim 73 is objected to because of the following informality. The term “it” should not be used in US PTO claims. Therefore, the featured language “as it passes” should be re-drafting using the language of structure first defined (the “optical energy”).
Claim 90 is objected to under 37 CFR 1.75 as being a substantial duplicate of claim 80. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m). Claims 80 and 90 are “so close in content” that they both “cover the same thing”, because second harmonic and SHG are the same in the context of these claims. Applicant may cancel one of claim 80 or 90.
Claims 90 and 91 are objected to because of the following informalities: regarding claims 90-91, the term “SHG” should be written out once fully before abbreviation (as “second harmonic generation”). 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 80 and 90 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.
Claims 80 and 90 are considered as substantial duplicates to each other, claiming essentially the exact same thing, even though the wording is not verbatim. Therefore, these claims do not “particularly point out” and “distinctly claim” the subject matter of the invention because the two claims are, in essence, the same / duplicative. For these reasons, claims 80 and 90 are rejected under 35 U.S.C. 112(b) as being vague and indefinite as they are not distinct to each other. Applicant may consider canceling one of these claims in response to this office action.
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 pre-AIA 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 –
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
Claims 73, 74, 78, 82, and 84 are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by Yoo US 2003/0133641 A1.
Yoo US 2003/0133641 A1 teaches (ABS; Figs. 4, 5, 8, 14, 21, 30-33; corresponding text, in particular paragraphs [0062] – [0082], [0088], [0109], [0121] – [0128]; Claims) an optical system (as in Figs. 4, 5, 30-33) comprising: a laser light source (ABS; [0014], [0064], [0090], lasers can be diodes, tunable, etc.) and an optical device comprising a plurality of optical waveguides (1 / 2 / …W; Fig. 5); wherein each optical waveguide in the plurality of optical waveguides comprises an optical core and a cladding (see para [0109], the specifics of having a core and cladding are described although not shown in all Yoo Figs.; “planar optical waveguide formed in a substrate” para [0063]); wherein each optical waveguide in the plurality of optical waveguides further comprises a wavelength conversion element 46; wherein each wavelength conversion element is independently addressable (see para [0069], by controller 66, which can control each/any W-C element 46; note breadth of independently “addressable”); and wherein the laser light source is optical coupled to the plurality of optical waveguides, such that optical energy passing through at least one optical waveguide is controllably converted from a 1st wavelength to a 2nd wavelength as it (the “optical energy”) passes through the respective wavelength conversion element 46, which clearly, fully meets Applicant’s claimed structural limitations of sole pending independent claim 73.
Regarding dependent claim 74, Yoo discusses non-linear optical materials as implied by the “non-linear susceptibility” and “non-linear interaction” (paras [0094] – [0095]), which meets all structure found in a wavelength converter.
Regarding claim 78, at least some phase matching is part of a sample wavelength converter (as QPM, para [0095]).
Regarding claim 82, the wavelength conversion can be from parametric-based amplification (example Fig. 13; para [0094]), which meets the function capable.
Regarding claim 84, photodetectors are disclosed throughout Yoo’s example embodiments (as 62), which are part of the integrated photonic circuit (the receiving elements, para [0075], which will inherently be a “layer” in the O-E circuit).
Claims 73-75, 79, 80, 82, 83, 88, 90, and 91 are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by Galvanauskas et al. U.S. Pat. No. 6,744,555 B2.
Galvanauskas et al. U.S. Patent No. 6,744,555 B2 teaches (ABS; Figs. 7, 11, 12, 13, 14; corresponding text, in particular column 7, line 8 through column 11, line 15; Claims, notably independent claim 32) an optical system (as in Figs. 7, 11-14) comprising: a laser light source (ABS; Title; ultrashort-pulse laser with laser generator) and an optical device comprising a plurality of optical waveguides (WGs shown in Figs. 7, 11-14, etc.); wherein each optical waveguide in the plurality of optical waveguides comprises an optical core and a cladding (the planar waveguides shown throughout Galvanauskas inherently have a “core” (for propagating the signal(s)) and a “cladding” (for maintaining signals in the core), because planar configuration types are shown in Figs. 7 and 11-14; although not shown expressly / exact wording in Galvanauskas); wherein each optical waveguide in the plurality of optical waveguides further comprises a wavelength conversion element (“wavelength conversion channels” WCCs in Galvanauskas); wherein each wavelength conversion element is independently addressable (wavelength conversion “control” is found in the channels themselves, column 4, line 45 through column 6, line 53; notably column 6, lines 37-53); note breadth of independently “addressable”); and wherein the laser light source is optical coupled to the plurality of optical waveguides, such that optical energy passing through at least one optical waveguide is controllably converted from a 1st wavelength to a 2nd wavelength as it (the “optical energy”) passes through the respective wavelength conversion element (the WCC), which clearly, fully meets Applicant’s claimed structural limitations of sole pending independent claim 73.
Regarding dependent claim 74, Galvanauskas discusses non-linear optical materials such as nonlinear crystal, PPLN, nonlinear materials (Fig. 1 discussion; independent claim 32) which meets all structure found in a wavelength converter.
Regarding claim 75, periodically poled material such as lithium niobate is disclosed for the WCC, which is placed as part of the waveguide core propagation (Galvanauskas dependent claims 15-16).
Regarding claim 79, the conversion can be considered electro-optic at least based on the electrodes / voltages in Figs. 13 and 14, which meets all structure.
Regarding claims 80, 91, and 92, second harmonic conversion / generation (with an “SHG” element or conversion) is disclosed as an example of the WCCs functionality (column 6, line 60 through column 7, line 39).
Regarding claim 82, the wavelength conversion can be from parametric-based amplification (example ABS; parametric generation), which meets the function capable.
Regarding claim 83, because an input “pump” of about 1550 nm is applied to the device (column 7, lines 1-7), this meets the infrared designation.
Regarding claim 88, the device of Galvanauskas is capable of being used (“intended use”) with sampling biological features (column 11, line 25 through column 12, line 17), with meets all structure (as in claim 73).
Claim Rejections - 35 USC § 103
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 pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter 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 pre-AIA 35 U.S.C. 103(a) 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 under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claims 76, 77, 79-81, and 88-91 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Yoo US 2003/0133641 A1, standing alone.
Regarding sole independent claim 73, Yoo US 2003/0133641 A1 teaches (ABS; Figs. 4, 5, 8, 14, 21, 30-33; corresponding text, in particular paragraphs [0062] – [0082], [0088], [0109], [0121] – [0128]; Claims) an optical system (as in Figs. 4, 5, 30-33) comprising: a laser light source (ABS; [0014], [0064], [0090], lasers can be diodes, tunable, etc.) and an optical device comprising a plurality of optical waveguides (1 / 2 / …W; Fig. 5); wherein each optical waveguide in the plurality of optical waveguides comprises an optical core and a cladding (see para [0109], the specifics of having a core and cladding are described although not shown in all Yoo Figs.; “planar optical waveguide formed in a substrate” para [0063]); wherein each optical waveguide in the plurality of optical waveguides further comprises a wavelength conversion element 46; wherein each wavelength conversion element is independently addressable (see para [0069], by controller 66, which can control each/any W-C element 46; note breadth of independently “addressable”); and wherein the laser light source is optical coupled to the plurality of optical waveguides, such that optical energy passing through at least one optical waveguide is controllably converted from a 1st wavelength to a 2nd wavelength as it (the “optical energy”) passes through the respective conversion element 46.
Regarding further dependent claims 76-77, 79-81, and 88-91, there is no express and exact recitation of a single embodiment that employs such features in Yoo (placing non-linear material in the cladding (claim 76); using a noncentrosymmetric material (claim 77); having electro-optic effects, SHG, THG, for the wavelength conversion (claims 79, 80, 81, 90, 91); or having the intended use of the optical system be for measuring a biological sample, which can be nucleic acids (claims 88-89)). However, at a time before the invention of the current application, it would have been an obvious matter of common skill and design choice to a person of ordinary skill in the art to use features such as the optical sub-features as design choices to be implemented in an optical system with preferred uses of the nonlinear wavelength conversion feature which is ”independently addressable”, because Applicant has not disclosed that using such features provides an advantage, is used for a particular purpose, or solves a stated problem. One of ordinary skill in the art, furthermore, would have expected Yoo to perform equally well with such features as the optical dependencies (such as: placing non-linear material in the cladding (claim 76); using a noncentrosymmetric material (claim 77); having electro-optic effects, SHG, THG, for the wavelength conversion (claims 79, 80, 81, 91, 92); or having the intended use of the optical system be for measuring a biological sample, which can be nucleic acids (claims 88-89)) because these claim terms would have been easily integrated and would have also been recognized by one with common skill in the art to improve the sensing / measuring of the analysis waveguide device (with wavelength conversion control (Fig. 5 Yoo). It would have required no undue burden or unnecessary experimentation to arrive at those features with an optical system such as in Yoo. Further, the base structure of the sole independent claim 73 in clearly anticipated by at least Yoo (and also note Galvanauskas) as discussed prior in this section. Therefore, it would have been an obvious matter of common skill and design choice to modify (and/or update) Yoo to obtain the invention as specified in claims 76, 77, 79-81, and 88-91. See KSR v. Teleflex, 127 S.Ct. 1727 (2007).
Allowable Subject Matter
Claims 85-87 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. Regarding claims 85 and 87, the closest prior art of record (for independent claim 73) does not expressly teach or reasonably suggest, in combination, features in which those optical devices include a “layer of nanometer-scale apertures” (note that claim 86 depends further from claim 85).
Inventorship
This application currently names joint inventors. In considering patentability of the claims under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: PTO-892 form references A, D, and E. Reference A is the parent patent ‘310, while references D and E pertain to the state of the art of wavelength conversion elements in waveguides, and split/separated waveguide channels.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Daniel Petkovsek whose telephone number is (571) 272-4174. The examiner can normally be reached M-F 7:30 - 6 PM.
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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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/DANIEL PETKOVSEK/Primary Examiner, Art Unit 2874 September 9, 2026
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