DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. 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
2. The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
3. Claim 2 is rejected under 35 USC 112(a) or 35 USC 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement.
Regarding claim 2, the claim contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 2 recites “wherein one or both of the first and second materials are transparent to visible light.”
The courts have described the essential question to be addressed in a description requirement issue in a variety of ways. An objective standard for determining compliance with the written description requirement is, "does the description clearly allow persons of ordinary skill in the art to recognize that he or she invented what is claimed." In re Gosteli, 872 F.2d 1008, 1012, 10 USPQ2d 1614, 1618 (Fed. Cir. 1989). Under Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991), to satisfy the written description requirement, an applicant must convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention, and that the invention, in that context, is whatever is now claimed.
While there is a presumption that an adequate written description of the claimed invention is present in the specification as filed, In re Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976), a question as to whether a specification provides an adequate written description may arise in the context of an original claim. An original claim may lack written description support when (1) the claim defines the invention in functional language specifying a desired result but the disclosure fails to sufficiently identify how the function is performed or the result is achieved or (2) a broad genus claim is presented but the disclosure only describes a narrow species with no evidence that the genus is contemplated. See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1349-50 (Fed. Cir. 2010) (en banc).
In the instant case, claim 2 defines the invention by functional language specifying a desired result to be obtained from the materials, namely that they are “transparent to visible light” — while independent claim 1 (upon which claim 2 depends) also necessitates that the second material possesses “an electron mobility higher than silicon.” However, the disclosure fails to explain how such results are achieved. Instead, the specification provides general knowledge, e.g., “A high carrier mobility material may exhibit desirable conductivity properties while maintaining transparency to optical modes within the waveguide by virtue of its relatively lower carrier concentration” in paragraph [063]; and “...bulk GaAs has an electron mobility of 8500 cm2/Vs, which is 6 times higher than the electron mobility of silicon. Heterostructions of InGaAs/GaAs may reach mobilities of 41000 cm2/Vs at 4 Kelvin and AlxG1-xAs/GaAs heterostructures may reach mobilities of up to 180,000 cm2/Vs. In comparison, Si has a mobility of 1500 cm2/Vs. Doped STO may also exhibit high electron mobilities, from 10,000 cm2/Vs to 53,000 cm2/Vs, depending on carrier concentration” in paragraph [065]. Such a disclosure provides the parameters of the problems to be solved by the second material (having a higher electron mobility than silicon, while also being transparent to visible light), but fails to describe how both problems are solved by just one material. That is to say, the disclosure provides no evidence that the problem is solved. As such, one of ordinary skill in the art would not recognize that the applicant had possession of the claimed device comprising a “second material with an electron mobility higher than silicon,” (claim 1) wherein the same material is also “transparent to visible light” (claim 2). Since one of ordinary skill in the art would not recognize that the applicant had possession of the claimed invention, the claims are rejected for failing the written description requirement.
Claim Rejections - 35 USC § 103
4. The following is a quotation of 35 USC 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.
5. The factual inquiries for establishing a background for determining obviousness under 35 USC 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.
6. Claims 1-6, 8-9, 12-15, and 17 are rejected under 35 USC 103 as being unpatentable over Ortmann et al. (Ortmann, J. Elliott et al. "Ultra-Low-Power Tuning in Hybrid Barium Titanate–Silicon Nitride Electro-Optic Devices on Silicon", ARXIV.ORG, Cornell University Library, 201 Olin Library Cornell University, Ithaca, NY 14853, November 26, 2019, 8 pgs.) in view of Li et al. (CN 106992192 A).
Regarding claim 1, Ortmann discloses a device, comprising:
a first cladding layer (Fig. 1(b), SiN layer);
a first electrode (Fig. 1(b), left-side metal electrode);
a second cladding layer (Fig. 1(b), bottom SiO2 layer);
a second electrode (Fig. 1(b), right-side metal electrode); and
a waveguide structure composed of a first material (Fig. 1(b), BTO), wherein the waveguide structure is coupled to the first electrode and the second electrode (Fig. 1(b)),
wherein the first electrode and the second electrode are composed of a second material with an electron mobility (Fig. 1(b), metal).
Ortmann fails to explicitly disclose wherein the first electrode and the second electrode are composed of a second material with an electron mobility higher than silicon.
However, Li teaches a similar optical device and discloses wherein a first electrode (claim 8, top electrode) and a second electrode (claim 8, bottom electrode) are composed of a material with an electron mobility higher than silicon (claim 8, niobium-doped strontium titanate).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to combine Ortmann and Li such that the first and second electrodes were to be composed of a second material with an electron mobility higher than silicon, motivated by enhancing the overall performance of the device.
Regarding claim 2, modified Ortmann discloses wherein one or both of the first and second materials are transparent to visible light (Ortmann - Fig. 1(b), BTO; Li - claim 8, niobium-doped strontium titanate).
Regarding claim 3, modified Ortmann fails to explicitly disclose wherein the second material has a band gap larger than an energy corresponding to an operating frequency of the device.
However, due to the nature of optics/optical engineering, the process of designing optical devices often includes manipulation of variables such as index of refraction, materials used, arrangements of components, shapes/sizes of components, and other concerns, in order to allow an optical system to meet its particular utility. This manipulation would normally be considered routine experimentation since the results are governed by known optics/physics equations and are known to be result-effective (unless the particular range of values meets secondary considerations).
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to adjust the second material such that it had a band gap larger than an energy corresponding to an operating frequency of the device, 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 (C.C.P.A. 1955). In this case, it would have been obvious to one of ordinary skill in the art as of the effective filing date of the invention to change the band gap value(s) of the second material such that the relation was satisfied, motivated by reducing noise within the system.
Regarding claim 4, modified Ortmann discloses wherein the second material comprises one of:
gallium arsenide (GaAs);
an aluminum gallium arsenide / GaAs heterostructure;
an indium gallium arsenide (InGaAs)/GaAs heterostructure;
zinc oxide (ZnO);
zinc sulfide (ZnS);
indium oxide (InO);
doped silicon;
a two-dimensional electron gas; or
doped strontium titanate (Li - claim 8, niobium-doped strontium titanate).
Regarding claim 5, modified Ortmann discloses wherein the doped strontium titanate is either:
niobium doped (Li - claim 8, niobium-doped strontium titanate);
lanthanum doped; or
vacancy doped.
Regarding claim 6, modified Ortmann discloses wherein the first material comprises one of:
barium titanate (Ortmann - Fig. 1(b), BTO);
barium strontium titanate;
lead zirconium titanate;
lead lanthanum zirconium titanate; or
strontium barium niobate.
Regarding claim 8, modified Ortmann discloses wherein the waveguide structure comprises a ridge portion (Ortmann - Fig. 1(b), SiN) and a slab layer (Ortmann - Fig. 1(b), BTO), wherein the ridge portion is connected to the slab layer (Ortmann - Fig. 1(b), SiN is connected to BTO), wherein the ridge portion is disposed between the first electrode and the second electrode (Ortmann - Fig. 1(b), first and second electrodes are positioned to the left and right of the SiN, respectively).
Regarding claim 9, modified Ortmann discloses wherein the ridge portion is disposed on a first side of the slab layer (Ortmann - Fig. 1(b), top side of the slab layer) and extends into the first cladding layer (Ortmann - Fig. 1(b), the shape of the SiN layer forms the ridge portion), and
wherein the first electrode and the second electrode are coupled to the slab layer on the first side of the slab layer (Ortmann - Fig. 1(b), electrodes are coupled to the top of the slab) and abut the ridge portion of the waveguide structure (Ortmann - Fig. 1(b), each electrode abuts the SiN layer).
Regarding claim 12, modified Ortmann discloses wherein the first electrode and the second electrode are configured to generate an electric field along an x-direction in the waveguide structure (Ortmann - Results and Discussion section, page 2679, “We designed the electrodes such that the electric field is applied along the BTO⟨011⟩ family of lattice vectors in order to exploit the largest Pockels coefficient, r42, and maximize the electro-optic response”; wherein the x-direction is chosen to align with the axes of the structure defined by the family of lattice vectors, along the direction in which the applied electric field exploits the largest Pockels coefficient, r42, and yields a sufficiently maximized electro-optic response), and
wherein the waveguide structure is characterized by an electro-optic coefficient having a nonzero value aligned along the x-direction (Ortmann - Results and Discussion section, page 2679, “We designed the electrodes such that the electric field is applied along the BTO⟨011⟩ family of lattice vectors in order to exploit the largest Pockels coefficient, r42, and maximize the electro-optic response”; the Pockels coefficient r42 is nonzero when the electric field is applied to align along the x-direction).
Regarding claim 13, modified Ortmann discloses wherein the waveguide structure comprises a slab layer (Ortmann - Fig. 1(b), BTO layer), and
wherein the first electrode and the second electrode are comprised within a second layer (Ortmann - Fig. 1(b), the bottom-most portions of each electrode comprise a second layer, as depicted in Image 1 below) coplanar to the slab layer (Ortmann - Fig. 1(b), the bottom side of the second layer is coplanar to the top side of the slab layer, by virtue of the fact that the points of contact between the second layer and slab layer occupy a mutual plane) and disposed adjacent to a first side of the slab layer (Ortmann - Fig. 1(b), the second layer is disposed adjacent to the top side of the slab layer, which is considered to be a first side of the slab layer).
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Image 1. An edited version of Ortmann’s Fig. 1(b) depicts the electrodes’ second layer portion.
Regarding claim 14, modified Ortmann discloses wherein the first electrode and the second electrode are separated by a gap region (Ortmann - Fig. 1(b), there is a gap between the electrodes) and are disposed within the first cladding layer and on a first side of the waveguide structure (Ortmann - Fig. 1(b)).
Regarding claim 15, modified Ortmann discloses wherein the first material has an index of refraction that is larger than an index of refraction of the first and second cladding layers (Fig. 1(b), BTO has an index of refraction that is larger than that of SiN or SiO2).
Regarding claim 17, modified Ortmann discloses wherein the first and second electrodes are configured to generate an electric field to concentrate an optical mode within the waveguide structure (Ortmann - Optical Mode Simulations section, page 2679).
7. Claim 7 is rejected under 35 USC 103 as being unpatentable over Ortmann in view of Li, and further in view of Guo (US 7583882 B2).
Regarding claim 7, modified Ortmann discloses wherein the first cladding layer is composed of silicon nitride (Ortmann - Fig. 1(b), SiN top layer).
Modified Ortmann does not disclose wherein the second cladding layer is composed of silicon nitride.
However, Guo teaches a similar waveguide and discloses wherein a first cladding layer (Fig. 3, top-most cladding layer 124) and second cladding layer (Fig. 3, bottom-most cladding layer 124) are composed of silicon nitride (column 6 lines 47-48).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to combine modified Ortmann and Guo such that the second cladding layers was composed of silicon nitride, motivated by enhancing the overall performance of the device.
8. Claims 10-11 are rejected under 35 USC 103 as being unpatentable over Ortmann in view of Li, and further in view of Eltes et al. (Eltes, Felix et al. “A BaTiO3-based Electro-Optic Pockels Modulator Monolithically Integrated on an Advanced Silicon Photonics Platform”, ARXIV.ORG, Cornell University Library, 201 Olin Library Cornell University, Ithaca, NY 14853, November 6, 2019, 7 pgs.).
Regarding claim 10, modified Ortmann discloses wherein the ridge portion is disposed on a first side of the slab layer (Ortmann - Fig. 1(b), the SiN layer is disposed on the top side of the slab layer) and extends into the first cladding layer (Ortmann - Fig. 1(b), the shape of the SiN layer forms the ridge portion).
Modified Ortmann fails to explicitly disclose wherein the first electrode and the second electrode are coupled to the slab layer on a second side of the slab layer opposite the first side.
However, Eltes teaches a similar optical waveguide device and discloses wherein the first electrode (Fig. 1(b), the left-most of the three contacts) and the second electrode (Fig. 1(b), the right-most of the three contacts) are coupled to the slab layer on a second side of the slab layer opposite the first side (Fig. 1(b), the bottom portion of each contact is coupled to the bottom side of the slab layer, which is considered to be a second side).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to combine modified Ortmann and Eltes such that the first electrode and the second electrode were to be coupled to the slab layer on a second side of the slab layer opposite the first side, motivated by securing the electrodes in place more effectively as a result of their penetration through the slab layer.
Regarding claim 11, modified Ortmann discloses wherein the second cladding layer is disposed on a second side of the first electrode (Ortmann - Fig. 1(b), the SiO2 layer is disposed below the left-most contact, which is considered to be the first electrode), second electrode (Ortmann - Fig. 1(b), the SiO2 layer is disposed below the right-most contact, which is considered to be the second electrode), and waveguide structure opposite the first side (Ortmann - Fig. 1(b), the SiO2 layer is disposed below the waveguide structure).
Modified Ortmann fails to explicitly disclose wherein the first cladding layer is disposed on a first side of the first electrode, second electrode, and waveguide structure.
However, Eltes teaches a similar optical waveguide device, and discloses wherein the first cladding layer (Fig. 1(b), Si layer) is disposed on a first side of the first electrode (Fig. 1(b), the Si layer is disposed above the left-most contact, when vertical heights of each are compared; the left-most contact is considered to be the first electrode), second electrode (Fig. 1(b), the Si layer is disposed above the right-most contact, when vertical heights of each are compared; the right-most contact is considered to be the second electrode), and waveguide structure (Fig. 1(b), the Si layer is disposed at the top side of the waveguide structure).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to combine modified Ortmann and Eltes such that the first cladding layer was disposed on a first side of the first electrode, second electrode, and waveguide structure, motivated by enhancing the overall performance of the device.
9. Claims 16 is rejected under 35 USC 103 as being unpatentable over Ortmann in view of Li, and further in view of Yamada (JP 2000208871 A).
Regarding claim 16, modified Ortmann fails to disclose a first metallic lead electrically connected to the first electrode; and a second metallic lead electrically connected to the second electrode.
However, Yamada teaches an optical waveguide device, wherein a metallic lead is electrically connected to an electrode ([0070], “a metal wire (lead wire) is bonded to the upper electrode 124”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to combine modified Ortmann and Yamada such that a first metallic lead was electrically connected to the first electrode and a second metallic lead was electrically connected to the second electrode, motivated by allowing for the transmission of electricity between the electrodes and another electrical component.
10. Claims 18-20 are rejected under 35 USC 103 as being unpatentable over Eltes in view of Li.
Regarding claim 18, Eltes discloses an optical switch, comprising:
at least one input port (Fig. 1(c), left-side area labeled “Light in”);
at least one output port (Fig. 1(c), right-side area labeled “Modulated light out”);
a Mach-Zender interferometer (Fig. 1(c)’s caption, “The BTO/Si active waveguide is used as a phase shifter in a Mach-Zehnder modulator”; wherein a Mach-Zehnder modulator is an inherently interferometric structure) coupled to a beam splitter (II. Technology Concept section, page 2, “we used unbalanced MZMs, with multi-mode interference splitters”; wherein multi-mode interference splitters are used for beam splitting), wherein the Mach-Zehnder interferometer comprises a first arm (Fig. 1(c), bottom arm) and a second arm (Fig. 1(c), top arm);
a photonic phase shifter comprised within the first arm of the Mach-Zehnder interferometer (Fig. 1(c), the waveguide is depicted within the bottom arm; Fig. 1(c)’s caption, “waveguide is used as a phase shifter”), the photonic phase shifter comprising:
a first cladding layer (Fig. 1(b), Si layer);
a first electrode (Fig. 1(b), the left-most of the three contacts);
a second cladding layer (Fig. 1(b), ILD/SiO2 layer);
a second electrode (Fig. 1(b), the right-most of the three contacts); and
a waveguide structure composed of a first material (Fig. 1(b), BTO), wherein the waveguide structure is coupled to the first electrode (Fig. 1(b)) and the second electrode (Fig. 1(b));
wherein the first electrode and the second electrode are composed of a second material with an electron mobility (Fig. 1(b), metal).
Eltes fails to explicitly disclose wherein the first electrode and the second electrode are composed of a second material with an electron mobility higher than silicon.
However, Li teaches a similar optical device and discloses wherein a first electrode (claim 8, top electrode) and a second electrode (claim 8, bottom electrode) are composed of a material with an electron mobility higher than silicon (claim 8, niobium-doped strontium titanate).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to combine Ortmann and Li such that the first and second electrodes were to be composed of a second material with an electron mobility higher than silicon, motivated by enhancing the overall performance of the device.
Regarding claim 19, modified Eltes discloses wherein the first and second electrodes are configured to generate an electric field to concentrate an optical mode within the waveguide structure (Eltes - II. Technology Concept section, page 2).
Regarding claim 20, modified Eltes discloses wherein the first material comprises one of:
barium titanate (Eltes - Fig. 1(c));
barium strontium titanate;
lead zirconium titanate;
lead lanthanum titanate;
lead lanthanum zirconium titanate; or
strontium barium niobate.
Conclusion
11. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Daniel Jeffery Jordan whose telephone number is 571-270-7641. The examiner can normally be reached 9:30a-6:00p.
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/D. J. J./Examiner, Art Unit 2872
/TRAVIS S FISSEL/Primary Examiner, Art Unit 2872
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