FR EA
1014-00005 · Optiwave Semiconductor Corp · Prosecution Files/Sub-Family B
application-b1-emergency-extension-request.docx DOCUMENT IP / Technology
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REQUEST FOR EXTENSION OF TIME UNDER 37 C.F.R. § 1.136(a) AND FEE TRANSMITTAL

October 18, 2024

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

Via Electronic Filing (USPTO Patent Center)

In re Application of:

Dear Commissioner:

1. Request for Extension of Time

The undersigned, Peter Vassiliev (USPTO Registration No. 79,514), of Calderwood & Harkness LLP, 555 California Street, 42nd Floor, San Francisco, CA 94104, as attorney of record for Applicant Optiwave Semiconductor Corp. ("Applicant" or "OWS"), hereby respectfully requests a four (4) month extension of time under 37 C.F.R. § 1.136(a) within which to file a response to the Restriction Requirement mailed by the United States Patent and Trademark Office in the above-identified application.

The Restriction Requirement in this application was mailed by the USPTO on August 21, 2024, setting a shortened statutory period of two (2) months for reply, which results in an original response deadline of October 21, 2024. Applicant requires additional time to evaluate the propriety of the restriction, confer with the named inventors regarding election strategy, and prepare a complete and considered response to the Office Action.

This Request for Extension of Time seeks an additional four (4) months of time in which to respond, thereby extending the deadline for filing a response from the original due date of October 21, 2024 to a new deadline of April 21, 2025. As extended, the total response period will be six (6) months from the mailing date of the Restriction Requirement, which is the maximum permissible period for response under 35 U.S.C. § 133 and 37 C.F.R. § 1.136(a). Applicant acknowledges that this four-month extension represents the maximum extension available for this Office Action and that no further extensions of time beyond April 21, 2025 may be obtained under 37 C.F.R. § 1.136(a), as the total period for response cannot exceed six (6) months from the mailing date of the Restriction Requirement.

Applicant respectfully requests that the Office grant this extension and reset the response deadline accordingly.

2. Entity Status Declaration

Applicant Optiwave Semiconductor Corp. hereby declares and confirms its status as a "small entity" within the meaning of 37 C.F.R. § 1.27 for purposes of paying reduced patent fees to the United States Patent and Trademark Office.

The basis for this small entity determination is as follows: Optiwave Semiconductor Corp. is a business concern having fewer than 500 employees, including employees of its affiliates, at the time of this filing. Specifically, OWS currently employs approximately one hundred eighty-five (185) full-time and part-time employees across all of its domestic and international operations. This employee count is well below the 500-employee threshold established by the Small Business Administration (SBA) size standards incorporated by reference in 37 C.F.R. § 1.27(a)(2).

Applicant further confirms that it has not assigned, granted, conveyed, or licensed — and is not under any obligation under contract or law to assign, grant, convey, or license — any rights in the invention that is the subject of the above-identified application to any person, concern, or organization that would not qualify as a small entity under 37 C.F.R. § 1.27. No rights have been transferred to any entity that would disqualify OWS from small entity status.

It is noted for the record that Harborview Partners, a private equity firm, currently holds an approximately seventy-two percent (72%) equity stake in Optiwave Semiconductor Corp. However, this equity ownership does not affect the entity size determination for USPTO fee purposes. The determination of small entity status under 37 C.F.R. § 1.27 is based on OWS's own independent employee count and the employee counts of its affiliates as defined under the applicable SBA regulations, and OWS satisfies the small entity requirements on that basis. The fees transmitted herewith are calculated at the small entity rate.

3. Fee Calculation and Payment

In connection with this Request for Extension of Time, Applicant submits the following fee:

The fee for a four (4) month extension of time under 37 C.F.R. § 1.17(a)(4) is currently $2,560.00 at the small entity rate, as set forth in the current USPTO fee schedule effective as of the date of this filing.

The itemized fee calculation is as follows:

Method of Payment: The Commissioner for Patents is hereby authorized to charge the total fee of $2,560.00 to Deposit Account No. 50-3841, maintained by Calderwood & Harkness LLP with the United States Patent and Trademark Office, in connection with this filing.

Additional Fee Authorization: If any additional fees are required or found to be due in connection with this Request for Extension of Time, or if the fee amounts set forth above are insufficient due to changes in the fee schedule or otherwise, the Commissioner is hereby further authorized to charge any such additional fees, including but not limited to any fee deficiency, to the same Deposit Account No. 50-3841 maintained by Calderwood & Harkness LLP. If any overpayment has been made, the Commissioner is authorized to credit such overpayment to the same Deposit Account.

4. Authorization and Signature

The undersigned, Peter Vassiliev, is authorized to act on behalf of Applicant Optiwave Semiconductor Corp. in connection with this application, including the filing of this Request for Extension of Time and Fee Transmittal. A Power of Attorney designating the practitioners associated with Customer Number 78251, including the undersigned, has been previously filed and is of record in U.S. Application No. 17/814,057. The undersigned acts pursuant to that Power of Attorney.

Respectfully submitted,

CALDERWOOD & HARKNESS LLP

/Peter Vassiliev/ Peter Vassiliev Registered Patent Attorney USPTO 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: October 18, 2024

5. Certificate of Electronic Filing

I hereby certify that this Request for Extension of Time under 37 C.F.R. § 1.136(a) and Fee Transmittal, together with any accompanying papers, is being filed electronically with the United States Patent and Trademark Office via the USPTO Patent Center (https://patentcenter.uspto.gov) on October 18, 2024.

/Peter Vassiliev/ Peter Vassiliev Registered Patent Attorney USPTO Registration No. 79,514

Date: October 18, 2024

FEE TRANSMITTAL (Equivalent to PTO/SB/17)

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

DATE: October 18, 2024

Fees Submitted.

Method of Payment

• [ ] Check enclosed

• [ ] Credit card (PTO-2038 attached)

• [x] USPTO Deposit Account — Deposit Account No. 50-3841 (Calderwood & Harkness LLP)

• [ ] EFT

• [ ] Other: __

Authorization: The Commissioner is hereby authorized to charge the above fee(s) to Deposit Account No. 50-3841. If any additional fees are required or any fee is found to be due, the Commissioner is authorized to charge or credit Deposit Account No. 50-3841 as necessary.

Correspondence Address.

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

Attention: Peter Vassiliev

Telephone: (415) 773-6200 Facsimile: (415) 773-6201

Email: pvassiliev@calderwoodharkness.com

Customer Number: 78251

/Peter Vassiliev/ Peter Vassiliev Registered Patent Attorney USPTO Registration No. 79,514 Calderwood & Harkness LLP

Date: October 18, 2024

INTERNAL FILE NOTATION NOT FOR FILING WITH THE USPTO — INTERNAL USE ONLY

PRIVILEGED AND CONFIDENTIAL — ATTORNEY WORK PRODUCT / ATTORNEY-CLIENT COMMUNICATION

C&H Matter No.: 1014-00005 (Sub-Matter B1) Application: U.S. App. No. 17/814,057 Client: Optiwave Semiconductor Corp. Date: October 18, 2024 Prepared by: Peter Vassiliev

Authorization and Budget Exception

This four (4) month extension of time was filed under emergency authorization received from Sandra Koh, IP Manager and In-House Patent Counsel at Optiwave Semiconductor Corp., via email dated October 15, 2024, at 4:47 PM Pacific Time. Ms. Koh's authorization was granted as a specific exception to the Project Lighthouse budget freeze imposed by Harborview Partners on August 11, 2023, which caps discretionary outside counsel intellectual property spend at $25,000 per quarter. Ms. Koh confirmed in her October 15, 2024 email that the extension fee and associated attorney time would be treated as non-discretionary prosecution maintenance spend and would not be charged against the Project Lighthouse quarterly cap. A copy of Ms. Koh's October 15, 2024 authorization email is attached to the internal file copy of this document and should be retained in the matter file.

Billing and Fees

The extension fee of $2,560.00 is billed under C&H Matter No. 1014-00005 and charged to the Calderwood & Harkness LLP USPTO Deposit Account No. 50-3841. Attorney time for preparation and filing of this extension request is also billed under the same matter number. The client invoice should reference this extension filing and include the USPTO fee as a disbursement.

Deadline and Prosecution Status

This four-month extension establishes April 21, 2025 as the new absolute deadline for responding to the Restriction Requirement mailed August 21, 2024 in U.S. Application No. 17/814,057. This is the maximum extension available under 37 C.F.R. § 1.136(a), as the total response period now equals six (6) months from the mailing date of the Restriction Requirement. No further extensions of time are available. Failure to file a complete response to the Restriction Requirement, including an election of claims, on or before April 21, 2025 will result in abandonment of the application under 35 U.S.C. § 133.

Divisional Application Planning

Upon election of claims and restriction in the B1 application (U.S. App. No. 17/814,057), Applicant will need to file a divisional application (designated B2) to pursue the non-elected claims. The divisional application has been provisionally assigned U.S. Application No. 17/814,103 in Calderwood & Harkness's internal docketing system; however, this application number is a placeholder and has not yet been assigned by the USPTO, as the divisional has not yet been filed. The team should begin preparing the divisional application and related papers well in advance of the April 21, 2025 deadline to ensure timely filing.

Team Assignments.

Docketing Service Notification

Trident intellectual Property Services, LLC (Account Manager: Lisa Cheng) is to be notified of the updated deadline. The following information should be communicated to Trident:

• Application No.: 17/814,057

• Previous Deadline: October 21, 2024

• Updated Deadline: April 21, 2025

• Reason: Four-month extension of time filed October 18, 2024

• No further extensions available

• Divisional application B2 to be docketed for filing upon election/restriction

Please confirm notification to Trident and retain a copy of the notification in the matter file.

Attachments to Internal File Copy

1. Copy of Sandra Koh's email authorization dated October 15, 2024

2. Copy of filed Request for Extension of Time and Fee Transmittal (as filed via Patent Center)

3. USPTO Patent Center electronic filing receipt (to be attached upon receipt)

This internal file notation is prepared for the exclusive use of Calderwood & Harkness LLP attorneys and staff working on C&H Matter No. 1014-00005. It is protected by the attorney-client privilege and/or the work product doctrine. It is not to be filed with the USPTO or disclosed to any third party without prior authorization from the responsible partner.

Application Number:U.S. Application No. 17/814,057
Filing Date:July 21, 2023
Title of Invention:Electrode Fabrication Process for Multi-Channel Silicon-Photonic Mach-Zehnder Modulator (Sub-Family B — Electrode Fabrication Process)
First Named Inventor:Dr. Rajan Menon
Additional Named Inventors:Dr. Lena Strickland, Dr. Feng-Yi Chen, Dr. Arjun Dasgupta
Confirmation Number:4839
Art Unit:2828
Examiner:Kimberly N. Patel
Attorney Docket Number:C&H Matter No. 1014-00005-B1
Applicant:Optiwave Semiconductor Corp., a Delaware corporation
Applicant Address:4710 Ridgeview Parkway, Suite 300, Santa Clara, CA 95054
Fee Description37 C.F.R. ReferenceEntity StatusAmount
Extension of Time — Four (4) Months§ 1.17(a)(4)Small Entity$2,560.00
TOTAL FEES TRANSMITTED$2,560.00
Application Number:17/814,057
Filing Date:July 21, 2023
Applicant:Optiwave Semiconductor Corp.
Title of Invention:Electrode Fabrication Process for Multi-Channel Silicon-Photonic Mach-Zehnder Modulator
First Named Inventor:Dr. Rajan Menon
Attorney Docket No.:1014-00005-B1
Confirmation No.:4839
Art Unit:2828
Examiner:Kimberly N. Patel
DescriptionFee CodeQuantitySmall Entity FeeAmount
Extension of Time — 4 months (37 C.F.R. § 1.17(a)(4))12541$2,560.00$2,560.00
Total:$2,560.00
RoleNameUSPTO Reg. No.
Responsible PartnerCatherine Bloom58,412
Billing PartnerAlan Ngo61,877
Lead AssociateChristy Bauer74,329
Filing Attorney / Docket AttorneyPeter Vassiliev79,514