DETAILED ACTION
This office action is in response to the application and claims filed on September 25, 2024. Claims 1-7 are pending, with claim 1 as the sole independent.
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
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The prior art documents submitted by Applicant in the Information Disclosure Statements filed on March 30, 2025 and September 25, 2024, have been considered and made of record (note attached copy of forms PTO-1449).
Drawings
The original drawings (nine (9) pages) were received on September 25, 2024. These drawings are acknowledged.
Claim Objections
Claim 1 is objected to because of the following informalities: regarding claim 1, this claim includes at least the awkward phrasing of “modulation electrodes disposed on the substrate to interpose the optical waveguide of the rib type.” Applicant may consider re-drafting this phrase with better flowing prose and English. Claims 1-7 appear to be a translation from a foreign (Japanese) document into English, and should be carefully reviewed for other awkward language, typos, and/or minor informalities that come to Applicant’s attention. 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.
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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 1-7 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. At least claim 1 is rejected, while claims 2-7 also are rejected for being dependent therefrom.
Claim 1 recites the limitation(s) "the segment electrode" in the claim body (three instances). There is insufficient antecedent basis for these limitations in the claim. The initial term is “segment electrodes” and then the claim follows with only one electrode. Therefore, claim 1 lacks proper antecedent basis. Further, the phrase “disposed in proximity to…” is a relative term that is a term of degree (a “frame of reference”). The feature “proximity” 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. Further, the scope (metes-and-bounds) of what would be outside of proximity is not clear in claim 1. For these combined reasons, independent claim 1 is rejected as being vague / indefinite under the meaning of 35 U.S.C. 112(b). Claims 2-7 are also rejected as being dependents.
Dependent claims 2-4 also include instances of “the segment electrode” (two instances in claim 3), which is rejected under 35 U.S.C. 112(b) for the same reasons as in section (8) above for lacking proper antecedent basis.
Dependent claim 6 recites the term “a modulation electrode” and then “the modulation electrode.” However, claim 1 already recites “modulation electrodes.” Therefore, the term(s) “a/the modulation electrode” in claim 6 lacks proper antecedent basis and is found vague / indefinite under the meaning of 35 U.S.C. 112(b).
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.
Claims 1, 2, and 4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kharel et al. US 2021/0157177 A1 (which has matured into U.S. Patent No. 11,567,353 B2).
Kharel et al. US 2021/0157177 A1 teaches (ABS; Figs. 1A, 1B, 14E, 15A, 26; corresponding text, in particular paragraphs [0115], [0141], [0142]; Claims) an optical waveguide device (example in Fig. 14E) comprising: a substrate 1401E; an optical waveguide of a rib type 14120E formed on the substrate; and modulation electrodes 1440E / 1430E disposed on the substrate to interpose the optical waveguide of the rib type, wherein the modulation electrodes include a plurality of segment electrodes (shown as in Fig. 15A) that are disposed in proximity to the optical waveguide (note frame-of-reference of the term “proximity”) of the rib type and that are disposed along the optical waveguide of the rib type, and a signal transmission portion that is electrically connected to the segment electrode and that transmits a modulation signal (for modulation by electric control, using engineered electrodes in Kharel), a thickness of the signal transmission portion is larger than a thickness of the segment electrode (see Fig. 14E), a buffer layer (grayish layer on top of the waveguide and electrode in upper portion) is disposed between the signal transmission portion and the optical waveguide of the rib type in at least a portion in which the signal transmission portion-crosses the optical waveguide of the rib type, and the buffer layer is not disposed between the substrate and the segment electrode (not located between lower substrate and segment), which clearly, fully meets Applicant’s claimed structural limitations for sole examined independent claim 1. Further note the lack of proper antecedent basis for the three terms “the segment electrode” in claim 1.
Regarding dependent claims 2 and 4, see Figs. 14E and 26 of Kharel. Also note the features 1442E and 1444E, and in particular Kharel Fig. 14E and 26 for the sizing and locations of control for electric field application and power feeding to the device design (orientations of structure met).
Claims 1, 2, and 4-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Okahashi et al. CN 116 113 872 A (printed publication at least as early as May 12, 2023, also PCT/JP ‘413 with foreign priority dates to March 24, 2021).
Okahashi et al. CN 116 113 872 A teaches (ABS; Figs. 1, 2, 11; corresponding text; Claims) an optical waveguide device (example in Figs. 1-2) comprising: a substrate 142; an optical waveguide of a rib type 14120E formed on the substrate; and modulation electrodes 112 a-d disposed on the substrate to interpose the optical waveguide of the rib type, wherein the modulation electrodes include a plurality of segment electrodes (shown as in Fig. 1 from above) that are disposed in proximity to the optical waveguide (note frame-of-reference of the term “proximity”) of the rib type and that are disposed along the optical waveguide of the rib type, and a signal transmission portion that is electrically connected to the segment electrode and that transmits a modulation signal (for modulation by electric control, transmission is electrically operated), a thickness of the signal transmission portion is larger than a thickness of the segment electrode (see Figs. 1-2), a buffer layer 120 a-d (on top of the waveguide and electrode in upper portion of Fig. 2) is disposed between the signal transmission portion and the optical waveguide of the rib type in at least a portion in which the signal transmission portion-crosses the optical waveguide of the rib type, and the buffer layer is not disposed between the substrate and the segment electrode (not located between lower substrate and segment), which clearly, fully meets Applicant’s claimed structural limitations for sole examined independent claim 1. Further note the lack of proper antecedent basis for the three terms “the segment electrode” in claim 1.
Regarding dependent claims 2 and 4-7, see Figs. 1, 2, and 11 of CN ‘872. Also note the features in Figs. 1, 2 (150b and 152b) for claims 2 and 4, for the sizing and locations of control for electric field application and power feeding to the device design (orientations of structure met). Additionally, the casing / housing with optical fiber connection is shown in Fig. 11 of CN ‘872 for claims 5-7.
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 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.
Claims 3 and 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over Kharel et al. US 2021/0157177 A1, as applied to claim 1 above, and further in view of Makino et al. US 2021/0325761 A1 (Makino for claim 3 only).
Regarding sole independent claim 1, Kharel et al. US 2021/0157177 A1 teaches (ABS; Figs. 1A, 1B, 14E, 15A, 26; corresponding text, in particular paragraphs [0115], [0141], [0142]; Claims) an optical waveguide device (example in Fig. 14E) comprising: a substrate 1401E; an optical waveguide of a rib type 14120E formed on the substrate; and modulation electrodes 1440E / 1430E disposed on the substrate to interpose the optical waveguide of the rib type, wherein the modulation electrodes include a plurality of segment electrodes (shown as in Fig. 15A) that are disposed in proximity to the optical waveguide (note frame-of-reference of the term “proximity”) of the rib type and that are disposed along the optical waveguide of the rib type, and a signal transmission portion that is electrically connected to the segment electrode and that transmits a modulation signal (for modulation by electric control, using engineered electrodes in Kharel), a thickness of the signal transmission portion is larger than a thickness of the segment electrode (see Fig. 14E), a buffer layer (grayish layer on top of the waveguide and electrode in upper portion) is disposed between the signal transmission portion and the optical waveguide of the rib type in at least a portion in which the signal transmission portion-crosses the optical waveguide of the rib type, and the buffer layer is not disposed between the substrate and the segment electrode (not located between lower substrate and segment).
Regarding further dependent claim 3, there is no express and exact teaching of an opening portion in the buffer layer for electrical connection, or in dependent claims 5-7 an exact “optical fiber” for the accommodating case.
Makino et al. US 2021/0325761 A1 teaches a configuration in which a buffer layer 123 (Figs. 3A-3C) is located between the signal transmission feature and optical waveguide feature of a rib type 122a, and in that the buffer is disposed between segmented electrodes. Additionally, an opening (at w3, the negative space at left / right of the step portion 123a of the buffer, can be found in which the gap / opening allows electrode connectivity. Such an opening is recognized to allow improved electrode connection of the waveguide rib device.
Since Kharel and Makino are both from the same field of endeavor, the purpose disclosed by Makino would have been recognized in the pertinent art of Kharel.
A person having ordinary skill in the art at a time before the effective filing date of the current application would have recognized the teaching of Makino, to use an opening portion in a buffer layer to cover an optical waveguide of the rib type, in an electrode modulation device, for the function to electrically connect a segmented electrode and a signal transmission feature for modulation control, by using the opening portion, into the base design of the optical waveguide modulation device of Kharel, to allow for directed connectivity of electrode features through a buffer but allowing the buffer to protect / encase features of the rib waveguide. Further, it would have required no undue burden or unnecessary experimentation to arrive at such feature of an “opening portion” in the buffer of Kharel. See KSR v. Teleflex, 127 S.Ct. 1727 (2007). For these reasons, dependent claim 3 is found obvious over Kharel and further in view of Makino.
Further, and noting Kharel ‘177 Fig. 26, although an “optical fiber” is not expressly shown in this figure for a connected case / housing for the overall device (an “optical modulation device” as a whole), one having ordinary skill in the art at the time of the effective filing of the current application would have recognized as mere common skill to use an “optical fiber” for such connection of the electro-optic modulation and electronic circuit necessary for control of the features of Figs. 14+. For these reasons, the added limitations of dependent claims 5-7 would have been mere obvious design choices, at least based on the structural case / housing found in Fig. 26 of Kharel. POSITA would have easily recognized these features in an optical fiber accommodating case for modulation device(s). For these reasons, claims 5-7 would have been obvious based on Kharel, standing alone. See KSR v. Teleflex, 127 S.Ct. 1727 (2007).
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
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: PTO-892 form references C and D, which pertain to the state of the art of optical waveguide modulators using electrode placements and patterns on a substrate configuration.
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 August 19, 2026
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