1014-00005 · Optiwave Semiconductor Corp · Prosecution Files/Sub-Family A

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Filed Electronically via USPTO Patent Center

September 6, 2023

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

REQUEST FOR EXTENSION OF TIME UNDER 37 C.F.R. § 1.136(a)

Commissioner for Patents United States Patent and Trademark Office P.O. Box 1450 Alexandria, VA 22313-1450

Re: Request for Two (2) Month Extension of Time

Dear Commissioner:

I. PRIORITY CLAIM REFERENCE

The above-identified application, U.S. Application No. 17/672,204, claims the benefit of priority under 35 U.S.C. § 119(e) to U.S. Provisional Application No. 63/297,841, which was filed on January 10, 2022. The statutory twelve (12) month term for the provisional application expired on January 10, 2023. Priority to the provisional application was preserved through the timely filing of this non-provisional application on January 9, 2023, one day prior to the expiration of the provisional application's statutory term. A claim to the benefit of the provisional application was properly made in the Application Data Sheet filed concurrently with the non-provisional application at the time of its filing.

II. STATEMENT OF EXTENSION SOUGHT

Applicant, Optiwave Semiconductor Corp. ("Applicant"), by and through its undersigned attorney of record, respectfully requests a TWO (2) MONTH extension of time under 37 C.F.R. § 1.136(a) to respond to the non-final Office Action mailed in the above-identified application.

This extension of time extends the shortened statutory period for response set by the Office Action by two (2) additional months from the date on which a response to the non-final Office Action would otherwise have been due. This request is being filed concurrently with the payment of the requisite extension fee, as set forth more fully below.

Applicant notes that this is the first extension of time requested in connection with this particular Office Action. The maximum statutory period for response to a non-final Office Action is six (6) months from the mailing date of the Office Action, as provided under 35 U.S.C. § 133. Extensions of time under 37 C.F.R. § 1.136(a) are available to extend any shortened statutory period up to, but not beyond, the six-month statutory maximum. This two-month extension is well within the permissible limits of the statute and the applicable regulations.

III. AUTHORITY AND LEGAL BASIS

This request for a two-month extension of time is made pursuant to the authority of 37 C.F.R. § 1.136(a)(1), which provides that the time for taking any action in a patent application may be extended upon the filing of a petition therefor and payment of the fee set forth in 37 C.F.R. § 1.17(a). Specifically:

(a) Under 37 C.F.R. § 1.136(a)(1), if an applicant is required to take action within a prescribed period in a pending patent application, and the applicant desires an extension of time to respond, the applicant may petition for, and is entitled to, an extension of the time period for response upon payment of the applicable fee.

(b) Under 37 C.F.R. § 1.17(a)(2), the fee for a petition for a two-month extension of time under 37 C.F.R. § 1.136(a) for a small entity is $640.00.

(c) The extension of time granted under 37 C.F.R. § 1.136(a) is automatic upon the filing of the petition and payment of the required fee. No showing of cause or justification is required.

This request satisfies all requirements for an automatic extension of time: it is a timely-filed petition accompanied by the appropriate fee payment, as set forth in the following section.

IV. FEE TRANSMITTAL

The required extension fee for a two-month extension of time is hereby tendered as follows:

Method of Payment: The above fee is authorized to be charged to USPTO Deposit Account No. 50-3788 in the name of Calderwood & Harkness LLP, or, in the alternative, to be charged via credit card authorization submitted through the USPTO Patent Center electronic filing system.

Fee Authorization Statement: The Commissioner is hereby authorized to charge any additional fees that may be required, or to credit any overpayments, to Deposit Account No. 50-3788 of Calderwood & Harkness LLP. If the fee set forth above is found to be insufficient for any reason, including but not limited to a change in fee schedule or a change in entity status, the Commissioner is authorized to charge any deficiency, together with any fees for any additional extension(s) of time necessary to permit the timely filing of a complete and proper response, to the same Deposit Account No. 50-3788 without further authorization.

V. SMALL ENTITY STATUS CONFIRMATION

Applicant, Optiwave Semiconductor Corp., has previously established small entity status in this application pursuant to 37 C.F.R. § 1.27. The undersigned hereby confirms that small entity status remains proper in this application and that the fees paid herewith are at the small entity rate.

Optiwave Semiconductor Corp. qualifies as a small entity under 37 C.F.R. § 1.27(a)(2) as a business concern having fewer than 500 employees, including affiliates. As of the date of this filing, Optiwave Semiconductor Corp. employs approximately 185 individuals. Applicant has not assigned, granted, conveyed, or licensed, and is under no obligation to assign, grant, convey, or license, any rights in the invention to any person, concern, or organization that would not qualify as a small entity under 37 C.F.R. § 1.27.

VI. CONCLUSION

For the foregoing reasons, Applicant respectfully requests that the Commissioner for Patents grant a two (2) month extension of time under 37 C.F.R. § 1.136(a) to respond to the non-final Office Action mailed in U.S. Application No. 17/672,204. The required extension fee of $640.00 (small entity rate) is tendered herewith.

Should the Office require any additional information or fees in connection with this request, the undersigned respectfully requests that the Examiner or other Office personnel contact the undersigned at the telephone number or email address provided below.

Respectfully submitted,

CALDERWOOD & HARKNESS LLP

/Peter Vassiliev/ Peter Vassiliev Registration No. 79,514

Calderwood & Harkness LLP 555 California Street, 42nd Floor San Francisco, CA 94104 Telephone: (415) 773-6200 Facsimile: (415) 773-6201

Email: pvassiliev@calderwoodharkness.com

Date: September 6, 2023

Attorney for Applicant Optiwave Semiconductor Corp.

CERTIFICATE OF ELECTRONIC FILING

I hereby certify that this Request for Extension of Time Under 37 C.F.R. § 1.136(a), together with any papers or fees referred to therein, is being filed electronically via the United States Patent and Trademark Office Patent Center system on September 6, 2023, addressed to the Commissioner for Patents, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450.

/Peter Vassiliev/ Peter Vassiliev Registration No. 79,514

Date: September 6, 2023

CORRESPONDENCE ADDRESS

All correspondence related to U.S. Application No. 17/672,204 should be directed to:

Calderwood & Harkness LLP 555 California Street, 42nd Floor San Francisco, CA 94104

Attention: Peter Vassiliev / Christy Bauer

Customer Number: 47-2901 Telephone: (415) 773-6200 Facsimile: (415) 773-6201

INTERNAL MATTER REFERENCE — PRIVILEGED & CONFIDENTIAL — NOT FOR FILING

Docketing Notes:

This filing represents the last billable activity on C&H Matter No. 1014-00005 prior to dormancy imposed by the Project Lighthouse budget freeze effective August 11, 2023. All further substantive work on this matter, including the preparation and filing of a response to the non-final Office Action, is on hold pending client authorization and release of the budget freeze. The responsible partner (C. Bloom) should be notified immediately upon any change in the budget status for this matter.

Extension of Time Tracking:

• Extension requested herein: Two (2) months (first extension).

• Remaining available extension time under 37 C.F.R. § 1.136(a): Four (4) additional months (i.e., two further extensions of two months each, or combinations totaling four months), bringing the absolute final deadline for response to the full six (6) month statutory maximum under 35 U.S.C. § 133.

• The absolute deadline for responding to the non-final Office Action in this application will be March 9, 2025 (assuming the Office Action mailing date triggers a six-month statutory period ending on that date). No further extensions beyond the six-month statutory period are available under 37 C.F.R. § 1.136(a). Failure to respond by the six-month statutory deadline will result in abandonment of the application.

• Docketing should calendar the new response due date (as extended by the two-month extension granted herein) as well as a final-warning date thirty (30) days prior to the six-month statutory deadline.

Application Number:	17/672,204
Filing Date:	January 9, 2023
Title of Invention:	Multi-Channel Silicon-Photonic Mach-Zehnder Modulator with Segmented Traveling-Wave Electrode Architecture
First Named Inventor:	Dr. Rajan Menon
Additional Named Inventors:	Dr. Lena Strickland; Dr. Feng-Yi Chen; Dr. Arjun Dasgupta
Art Unit:	As assigned
Examiner:	As assigned
Confirmation Number:	As assigned
Applicant / Assignee:	Optiwave Semiconductor Corp., a Delaware corporation, 4710 Ridgeview Parkway, Suite 300, Santa Clara, CA 95054
Attorney Docket Number:	C&H Matter No. 1014-00005 / OWS-A1
Entity Status:	Small Entity
Fee Description	C.F.R. Citation	Amount
Two-month extension of time (small entity rate)	37 C.F.R. § 1.17(a)(2)	$640.00
Total Fees Enclosed	$640.00
C&H Matter No.:	1014-00005
Client:	Optiwave Semiconductor Corp.
Application No.:	17/672,204
Responsible Partner:	Catherine Bloom (Reg. No. 58,412)
Billing Partner:	Alan Ngo (Reg. No. 61,877)
Lead Associate:	Christy Bauer (Reg. No. 74,329)
Filing Attorney:	Peter Vassiliev (Reg. No. 79,514)

Filed Electronically via USPTO Patent Center
September 6, 2023
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
REQUEST FOR EXTENSION OF TIME UNDER 37 C.F.R. § 1.136(a)
Commissioner for Patents United States Patent and Trademark Office P.O. Box 1450 Alexandria, VA 22313-1450
Re: Request for Two (2) Month Extension of Time
Dear Commissioner:
I. PRIORITY CLAIM REFERENCE
The above-identified application, U.S. Application No. 17/672,204, claims the benefit of priority under 35 U.S.C. § 119(e) to U.S. Provisional Application No. 63/297,841, which was filed on January 10, 2022. The statutory twelve (12) month term for the provisional application expired on January 10, 2023. Priority to the provisional application was preserved through the timely filing of this non-provisional application on January 9, 2023, one day prior to the expiration of the provisional application's statutory term. A claim to the benefit of the provisional application was properly made in the Application Data Sheet filed concurrently with the non-provisional application at the time of its filing.
II. STATEMENT OF EXTENSION SOUGHT
Applicant, Optiwave Semiconductor Corp. ("Applicant"), by and through its undersigned attorney of record, respectfully requests a TWO (2) MONTH extension of time under 37 C.F.R. § 1.136(a) to respond to the non-final Office Action mailed in the above-identified application.
This extension of time extends the shortened statutory period for response set by the Office Action by two (2) additional months from the date on which a response to the non-final Office Action would otherwise have been due. This request is being filed concurrently with the payment of the requisite extension fee, as set forth more fully below.
Applicant notes that this is the first extension of time requested in connection with this particular Office Action. The maximum statutory period for response to a non-final Office Action is six (6) months from the mailing date of the Office Action, as provided under 35 U.S.C. § 133. Extensions of time under 37 C.F.R. § 1.136(a) are available to extend any shortened statutory period up to, but not beyond, the six-month statutory maximum. This two-month extension is well within the permissible limits of the statute and the applicable regulations.
III. AUTHORITY AND LEGAL BASIS
This request for a two-month extension of time is made pursuant to the authority of 37 C.F.R. § 1.136(a)(1), which provides that the time for taking any action in a patent application may be extended upon the filing of a petition therefor and payment of the fee set forth in 37 C.F.R. § 1.17(a). Specifically:
(a) Under 37 C.F.R. § 1.136(a)(1), if an applicant is required to take action within a prescribed period in a pending patent application, and the applicant desires an extension of time to respond, the applicant may petition for, and is entitled to, an extension of the time period for response upon payment of the applicable fee.
(b) Under 37 C.F.R. § 1.17(a)(2), the fee for a petition for a two-month extension of time under 37 C.F.R. § 1.136(a) for a small entity is $640.00.
(c) The extension of time granted under 37 C.F.R. § 1.136(a) is automatic upon the filing of the petition and payment of the required fee. No showing of cause or justification is required.
This request satisfies all requirements for an automatic extension of time: it is a timely-filed petition accompanied by the appropriate fee payment, as set forth in the following section.
IV. FEE TRANSMITTAL
The required extension fee for a two-month extension of time is hereby tendered as follows:
Method of Payment: The above fee is authorized to be charged to USPTO Deposit Account No. 50-3788 in the name of Calderwood & Harkness LLP, or, in the alternative, to be charged via credit card authorization submitted through the USPTO Patent Center electronic filing system.
Fee Authorization Statement: The Commissioner is hereby authorized to charge any additional fees that may be required, or to credit any overpayments, to Deposit Account No. 50-3788 of Calderwood & Harkness LLP. If the fee set forth above is found to be insufficient for any reason, including but not limited to a change in fee schedule or a change in entity status, the Commissioner is authorized to charge any deficiency, together with any fees for any additional extension(s) of time necessary to permit the timely filing of a complete and proper response, to the same Deposit Account No. 50-3788 without further authorization.
V. SMALL ENTITY STATUS CONFIRMATION
Applicant, Optiwave Semiconductor Corp., has previously established small entity status in this application pursuant to 37 C.F.R. § 1.27. The undersigned hereby confirms that small entity status remains proper in this application and that the fees paid herewith are at the small entity rate.
Optiwave Semiconductor Corp. qualifies as a small entity under 37 C.F.R. § 1.27(a)(2) as a business concern having fewer than 500 employees, including affiliates. As of the date of this filing, Optiwave Semiconductor Corp. employs approximately 185 individuals. Applicant has not assigned, granted, conveyed, or licensed, and is under no obligation to assign, grant, convey, or license, any rights in the invention to any person, concern, or organization that would not qualify as a small entity under 37 C.F.R. § 1.27.
VI. CONCLUSION
For the foregoing reasons, Applicant respectfully requests that the Commissioner for Patents grant a two (2) month extension of time under 37 C.F.R. § 1.136(a) to respond to the non-final Office Action mailed in U.S. Application No. 17/672,204. The required extension fee of $640.00 (small entity rate) is tendered herewith.
Should the Office require any additional information or fees in connection with this request, the undersigned respectfully requests that the Examiner or other Office personnel contact the undersigned at the telephone number or email address provided below.
Respectfully submitted,
CALDERWOOD & HARKNESS LLP
/Peter Vassiliev/ Peter Vassiliev Registration No. 79,514
Calderwood & Harkness LLP 555 California Street, 42nd Floor San Francisco, CA 94104 Telephone: (415) 773-6200 Facsimile: (415) 773-6201
Email: pvassiliev@calderwoodharkness.com
Date: September 6, 2023
Attorney for Applicant Optiwave Semiconductor Corp.
CERTIFICATE OF ELECTRONIC FILING
I hereby certify that this Request for Extension of Time Under 37 C.F.R. § 1.136(a), together with any papers or fees referred to therein, is being filed electronically via the United States Patent and Trademark Office Patent Center system on September 6, 2023, addressed to the Commissioner for Patents, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450.
/Peter Vassiliev/ Peter Vassiliev Registration No. 79,514
Date: September 6, 2023
CORRESPONDENCE ADDRESS
All correspondence related to U.S. Application No. 17/672,204 should be directed to:
Calderwood & Harkness LLP 555 California Street, 42nd Floor San Francisco, CA 94104
Attention: Peter Vassiliev / Christy Bauer
Customer Number: 47-2901 Telephone: (415) 773-6200 Facsimile: (415) 773-6201
INTERNAL MATTER REFERENCE — PRIVILEGED & CONFIDENTIAL — NOT FOR FILING
Docketing Notes:
This filing represents the last billable activity on C&H Matter No. 1014-00005 prior to dormancy imposed by the Project Lighthouse budget freeze effective August 11, 2023. All further substantive work on this matter, including the preparation and filing of a response to the non-final Office Action, is on hold pending client authorization and release of the budget freeze. The responsible partner (C. Bloom) should be notified immediately upon any change in the budget status for this matter.
Extension of Time Tracking:
•  Extension requested herein: Two (2) months (first extension).
•  Remaining available extension time under 37 C.F.R. § 1.136(a): Four (4) additional months (i.e., two further extensions of two months each, or combinations totaling four months), bringing the absolute final deadline for response to the full six (6) month statutory maximum under 35 U.S.C. § 133.
•  The absolute deadline for responding to the non-final Office Action in this application will be March 9, 2025 (assuming the Office Action mailing date triggers a six-month statutory period ending on that date). No further extensions beyond the six-month statutory period are available under 37 C.F.R. § 1.136(a). Failure to respond by the six-month statutory deadline will result in abandonment of the application.
•  Docketing should calendar the new response due date (as extended by the two-month extension granted herein) as well as a final-warning date thirty (30) days prior to the six-month statutory deadline.
Application Number: | 17/672,204
Filing Date: | January 9, 2023
Title of Invention: | Multi-Channel Silicon-Photonic Mach-Zehnder Modulator with Segmented Traveling-Wave Electrode Architecture
First Named Inventor: | Dr. Rajan Menon
Additional Named Inventors: | Dr. Lena Strickland; Dr. Feng-Yi Chen; Dr. Arjun Dasgupta
Art Unit: | As assigned
Examiner: | As assigned
Confirmation Number: | As assigned
Applicant / Assignee: | Optiwave Semiconductor Corp., a Delaware corporation, 4710 Ridgeview Parkway, Suite 300, Santa Clara, CA 95054
Attorney Docket Number: | C&H Matter No. 1014-00005 / OWS-A1
Entity Status: | Small Entity
Fee Description | C.F.R. Citation | Amount
Two-month extension of time (small entity rate) | 37 C.F.R. § 1.17(a)(2) | $640.00
Total Fees Enclosed | $640.00
C&H Matter No.: | 1014-00005
Client: | Optiwave Semiconductor Corp.
Application No.: | 17/672,204
Responsible Partner: | Catherine Bloom (Reg. No. 58,412)
Billing Partner: | Alan Ngo (Reg. No. 61,877)
Lead Associate: | Christy Bauer (Reg. No. 74,329)
Filing Attorney: | Peter Vassiliev (Reg. No. 79,514)