DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 28 November 2025 has been entered.
Response to Arguments
Applicant’s arguments with respect to claim(s) 8-14, 16 and 19 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Double Patenting
Applicant’s arguments, see Page 7, filed 28 November 2025, with respect to the Double Patenting Rejection have been fully considered. Because the applicant holds the non-statutory double patenting rejection in abeyance, the examiner maintains the double patenting rejection. Applicant has the opportunity to timely file a terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application.
Claims 8-14 and 16-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 9-15 and 17-18 of U.S. Patent No. 11,417,309 in view of Dias (US 5511296).
Although the claims at issue are not identical, they are not patentably distinct from each other because, “bonding the first metal layer to the second metal layer to form a stack” as recited in the instant application claim 8 would have been obvious for a person of ordinally sill in the art that “bonding the delay line substrate to the piezoelectric substrate to form a stack” as claimed in claim 9 of the Patent No. 11,417,309 because claim 9 further recites “depositing a first metal layer on the delay line substrate; depositing a second metal layer and the piezoelectric substrate”. Further, though claim 8 of the instant application does not recite “exposing a portion of the delay line substrate, the via having a depth terminating within the delay line substrate”, claim 10 of the instant application recites “core drilling through the delay line substrate of the at least one of the plurality of locations” in which it would have been obvious for a person of ordinally sill in the art that, further milling the piezoelectric substate would expose a portion of the delay line substrate.
Though, claim 9 of the Patent No. 11,417,309 does not recite “milling the piezoelectric substrate by rotating an annular cutting blade”, Dias teaches an ultrasonic transducer including a piezoelectric substrate, depositing a metal layer on the piezoelectric substrate and dicing piezoelectric material, in which, milling the piezoelectric substrate by rotating an annular cutting blade. Therefore, a person of ordinary skill in the art would modify the method of producing an ultrasonic transducer to include a circular cutting blade for milling the piezoelectric substrate and to conclude that, the invention defined in the claims 8 and 11 under examination would have been an obvious variation of the invention defined in a claims 9 and 12 of the Patent No. 11,417,309 in view of Dias.
Note: the limitations of both sets of claims are listed with the conflicting portions have been underlined.
Application 16/478,894
US 11,417,309
8. A method of producing an ultrasonic transducer, the method comprising the steps of: providing a delay line substrate; providing a piezoelectric substrate as an active transducer element; depositing a first metal layer on the delay line substrate; depositing a second metal layer and the piezoelectric substrate; bonding the first metal layer to the second metal layer to form a stack and to facilitate coupling ultrasonic waves from the piezoelectric element into the delay line or from the delay line into the piezoelectric element;
milling the piezoelectric substrate by rotating an annular cutting blade to expose a portion of at least one of the first metal layer and the second metal layer to allow electrical contact;
depositing a first patterned electrode on the exposed portion to allow external electrical connection to the at least one of the first metal layer and the second metal layer; and depositing a second patterned electrode on the piezoelectric element, the second patterned electrode defining an active area of the ultrasonic transducer and configured to electrically connect externally.
9. A method of producing an ultrasonic transducer, the method comprising the steps of: providing a delay line substrate; providing a piezoelectric substrate as an active transducer
element; depositing a first metal layer on the delay line substrate; depositing a second metal layer and the piezoelectric substrate; bonding the delay line substrate to the piezoelectric substrate to form a stack and to facilitate coupling ultrasonic waves from the piezoelectric element into the delay line or from the delay line into the piezoelectric element;
milling the piezoelectric substrate to form a via exposing a portion of at least one of the first metal layer and the second metal layer to allow electrical contact, and exposing a portion of the delay line substrate, the via having a depth terminating within the delay line substrate;
depositing a first patterned electrode on the exposed portion to allow external electrical connection to the at least one of the first metal layer and the second metal layer; and depositing a second patterned electrode on the piezoelectric element, the second patterned electrode defining an active area of the ultrasonic transducer and configured to electrically connect externally.
9. The method of claim 8, further comprising:
milling the piezoelectric substrate at a plurality of locations; and partitioning the stack through at least one of the plurality of locations to create individual ultrasonic transducers.
10. The method of claim 9, further comprising:
milling the piezoelectric substrate at a plurality of locations; and partitioning the stack through at least one of the plurality of locations to create individual ultrasonic transducers.
10. The method of claim 9, wherein the partitioning includes core drilling through the delay line substrate of the at least one of the plurality of locations.
11. The method of claim 10, wherein the partitioning includes core drilling through the delay line substrate of the at least one of the plurality of locations.
11. A method of producing an ultrasonic transducer, the method comprising the steps of: providing a delay line substrate; providing a piezoelectric substrate as an active transducer element; depositing a metal layer on either the delay line substrate or the piezoelectric substrate; bonding the delay line substrate to the piezoelectric substrate such that the deposited metal layer is between the delay line substrate and the piezoelectric substrate to form a stack and to facilitate coupling ultrasonic waves from the piezoelectric element into the delay line or from the delay line into the piezoelectric element;
milling the piezoelectric substrate by rotating an annular cutting blade to expose a portion of at least one of the first metal layer and the second metal layer to allow electrical contact;
depositing a first patterned electrode on the exposed portion to allow external electrical connection to the at least one of the first metal layer and the second metal layer; and depositing a second patterned electrode on the piezoelectric element, the second patterned electrode defining an active area of the ultrasonic transducer and configured to electrically connect externally.
12. A method of producing an ultrasonic transducer, the method comprising the steps of: providing a delay line substrate; providing a piezoelectric substrate as an active transducer
element; depositing a metal layer on either the delay line substrate or the piezoelectric substrate; bonding the delay line substrate to the piezoelectric substrate such that the deposited metal layer is between the delay line substrate and the piezoelectric substrate to form a stack and to facilitate coupling ultrasonic waves from the piezoelectric element into the delay line or from the delay line into the piezoelectric element;
milling the piezoelectric substrate to form a via exposing a portion of at least one of the first metal layer and the second metal layer to allow electrical contact, and exposing a portion of the delay line substrate, the via having a depth terminating within the delay line substrate;
depositing a first patterned electrode on the exposed portion to allow external electrical connection to the at least one of the first metal layer and the second metal layer; and depositing a second patterned electrode on the piezoelectric element, the second patterned electrode defining an active area of the ultrasonic transducer and configured to electrically connect externally.
12. The method of claim 11, wherein milling the piezoelectric substrate occurs at a plurality of locations and the method of claim 9 further comprises partitioning the stack through at least one of the plurality of locations to create individual ultrasonic transducers.
13. The method of claim 12, wherein milling the piezoelectric substrate occurs at a plurality of locations and the method of claim 10 further comprises partitioning the stack through at least one of the plurality of locations to create
individual ultrasonic transducers.
13. The method of claim 12, wherein the partitioning includes core drilling through the delay line substrate of the at least one of the plurality of locations.
14. The method of claim 13, wherein the partitioning includes core drilling through the delay line substrate of the at least one of the plurality of locations.
14. The method of claim 11, wherein milling the piezoelectric substrate forms a via tapering to a depth.
15. The method of claim 12, wherein milling the piezoelectric substrate forms the via tapering to the depth.
16. The method of claim 11, wherein milling the piezoelectric substrate forms an annular via including two side walls extending a full depth of the via, and depositing the first patterned electrode deposits the first patterned electrode on both of the two side walls.
17. The method of claim 12, wherein milling the piezoelectric substrate forms the annular via including two side walls extending the depth of the via, and wherein depositing the first patterned electrode deposits the first patterned electrode on both of the two side walls.
17. The method of claim 16, wherein depositing the first patterned electrode deposits the first patterned electrode discontinuously between the two side walls.
18. The method of claim 17, wherein depositing the first patterned electrode deposits the first patterned electrode discontinuously between the two side walls.
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.
Claim(s) 8, 11, 18-19 are rejected under 35 U.S.C. 103 as being unpatentable over Aoki’003 (US 20070058003, hereafter Aoki’003) in view of Dias (US 5511296).
[AltContent: textbox (second metal layer)][AltContent: arrow][AltContent: textbox (first metal layer)][AltContent: arrow][AltContent: textbox (piezoelectric substrate)][AltContent: ][AltContent: textbox (delay line substrate)][AltContent: ]
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Annotated Fig. 2, Aoki’003.
Regarding claims 8, 11 and 19, Aoki’003 teaches, a method of producing an ultrasonic transducer (piezoelectric device 10, Figs. 1 to 6), the method comprising the steps of:
providing a delay line substrate (cover body 42, annotated Fig. 2, covering body, that is a lid 120…the lid 120 is made of a translucent material such as glass, para. [0056], see the Note below);
providing a piezoelectric substrate (piezoelectric substrate 12) as an active transducer element (see Fig. 1A);
depositing a first metal layer (metal pattern 44, Fig. 2A, on the covering body 42 metal pattern 44…are formed, para. [0032]) on the delay line substrate;
depositing a second metal layer (metal pattern 28, piezoelectric substrate 12…is formed with a metal pattern 28 serving as a bonding film, para. [0029]) on the piezoelectric substrate;
bonding the first metal layer to the second metal layer to form a stack and to facilitate coupling ultrasonic waves from the piezoelectric element into the delay line or from the delay line into the piezoelectric element (Fig. 2A, piezoelectric substrate 12 and the covering body 42 having the above stated structure are bonded to each other through the metal patterns 28 and 44 as bonding films by thermocompression (metal bonding), para. [0032], an excitation space 46 is not open to the outside after bonding. As a result, the excitation space 46 of the SAW element 10 can secure high air tightness, para. [0039], which enables the recited coupling between the piezoelectric element and the delay line);
milling the piezoelectric substrate (through hole 30, Fig. 2B, through-holes 30 are formed on the piezoelectric substrate 12, para. [0039]) to expose a portion of at least one of the first metal layer and the second metal layer to allow electrical contact (through-holes 30 are bored until exposing a part of the leading electrodes 26 to a hole forming section without penetrating the thin metal film which forms the leading electrodes 26, para. [0031]);
depositing a first patterned electrode (one of the leading electrodes 26, see annotated Fig. 1A below and Fig. 2D) on the exposed portion to allow external electrical connection to the at least one of the first metal layer and the second metal layer (piezoelectric substrate 12 includes through-holes 30 formed…through-holes 30 are bored until exposing a part of the leading electrodes 26 to a hole forming section… metal films 32 are formed on the second surface of the piezoelectric substrate 12 and the through-holes 30…mountable exterior electrodes 34 are formed on the second surface of the piezoelectric substrate 12 and conduction between the mountable exterior electrodes 34 and the leading electrodes 26 is established, para. [0031]); and
[AltContent: textbox (second patterned electrode)][AltContent: ][AltContent: textbox (first patterned electrode)][AltContent: ]
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Annotated Fig. 1A, Aoki’003.
depositing a second patterned electrode (other leading electrode 26, see annotated Fig. 1A and Fig. 2D) on the piezoelectric element, the second patterned electrode defining an active area of the ultrasonic transducer and configured to electrically connect externally (see Fig. 1A, two separate leading electrodes 26, para. [0031]).
Aoki’003 does not teach milling the piezoelectric substrate by rotating an annular cutting blade. However, Dias teaches an acoustic transducer including a piezoelectric substrate, depositing a metal layer on the piezoelectric substrate and dicing piezoelectric material, in which, milling the piezoelectric substrate by rotating an annular cutting blade (micromachining with fine circular saws, col. 1, lines 63-65). From the teaching of Aoki’003 para. [0031-0033], through-holes 30 are bored until exposing a part of the leading electrodes 26, one of ordinary skill in the art would have known that boring a substrate is typically done by micromachining tools. Dias teaches, dicing and micromachining a piezoelectric substrate using a fine circular saw. Therefore, in view of the teachings of Dias, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to modify the method of producing an ultrasonic transducer element of Aoki’003 and to replace the boring with a circular cutting saw as taught by Dias so that it enables limiting the cutting depth and cutting length that forms a cost effective method of producing a stacked ultrasonic transducer. Moreover, there is no indication in the instant invention that any surprising results were derived, or that any special steps were devised in order to use the annular cutting blade with the well-known method of Aoki’003. Such a combination would have been done by one of ordinary skill in the art without any need for experimentation and with reasonable expectations of success.
Note: Aoki’003 teaches in para. [0056], cover body 42 made of materials such as glass, in which it is known that the glass is mode of fused silica, which is a delay line substrate. If applicant disagrees, see the disclosed specification para. [0039] of the PG PUB.
Regarding claims 18, Aoki’003 further teaches, the method of claim 8, wherein bonding the delay line substrate to the piezoelectric substrate includes bonding the first metal layer directly to the second metal layer (piezoelectric substrate 12 and the covering body 42 having the above stated structure are bonded to each other through the metal patterns 28 and 44 as bonding films by thermocompression (metal bonding), para. [0032]).
Claim(s) 9-10, 12-14 and 20-21 are rejected under 35 U.S.C. 103 as being unpatentable over Aoki’003 in view of Dias as applied to claims 8, 11 and 19 above, and further in view of Aoki’998 (US 20060131998, hereafter Aoki’998).
Regarding claims 9 and 12, modified Aoki’003 does not teach the recited limitations. However, Aoki’998 teaches, a method of producing an ultrasonic transducer including providing a delay line 22 in Fig. 9, depositing a first metal layer 12 on the delay line substrate 22, providing a piezoelectric substrate 21, depositing a second metal layer 8 of the piezoelectric substrate 21, bonding the first metal layer to the second metal layer to form a stack, in which,
[Claims 9 and 12] further comprising: milling the piezoelectric substrate at a plurality of locations (see annotated Fig. 15 below, an individualizing process is performed by dicing the wafer stacked structure along the outlines 24 of the SAW resonators which are perpendicular to each other in transverse and longitudinal directions. As a result, the quartz oscillator 1 shown in FIGS. 1A and 1B is provided, para. [0069]); and partitioning the stack through at least one of the plurality of locations to create individual ultrasonic transducers (the quartz oscillator 1, Fig. 15).
[AltContent: textbox (milling)][AltContent: ]
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Annotated Fig. 15, Aoki’998.
[Claims 10 and 13] wherein the partitioning includes core drilling through the delay line substrate of the at least one of the plurality of locations (see the through-holes 11 in Figs. 4 and 15, cover 3 is constructed with a rectangular glass substrate 10, and tapered through-holes 11 and 11 converging from an upper surface to a lower surface thereof are formed, para. [0058]).
Therefore, in view of the teachings of Aoki’998, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to modify the method of producing an ultrasonic transducer element of Aoki’003 and to include boring the piezoelectric substrate at plurality of locations as taught by Aoki’998 so that it enables individualizing the transducer elements by performing dicing of the wafer stacked structure along the outlines while producing ultrasonic transducers from a wafer.
Regarding claim 14, modified Aoki’003 does not teach, milling the piezoelectric substrate forms a via tapering to a depth. However, Aoki’998 further teaches, the method of claim 11, wherein milling the piezoelectric substrate forms a via tapering to a depth (see annotated Fig. 4, below, through-holes 11 and 11 having a tapered shape converging from an upper surface to a lower surface thereof, para. [0072]).
[AltContent: textbox (tapering to a depth)][AltContent: ]
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Annotated Fig. 4, Aoki’998.
Aoki’998 teaches forming taped through holes 11 on a delay line substrate 22. Therefore, in view of the teachings of Aoki’998, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to modify the method of producing an ultrasonic transducer element of Aoki’003 and to include via holes having a tapering to a depth on the piezoelectric substrate as Aoki’998 taught in Fig. 4 so that it enables easily performing sputtering metal layers inside the through holes as Aoki’998 disclosed in para. [0068].
Regarding claims 20, Aoki’003 in view of Dias and Aoki’998 teaches the recited limitations with respect to claim 14. Aoki’003 further teaches, the method of claim 14, wherein the depth ranges from anywhere in the metal layer to a point through the metal layer into the delay line substrate (wiring patterns 112 formed on each of the substrates 110a to 110c being electrically connected via through-holes 114, see Fig. 8, para. [0056]).
Regarding claim 21, Aoki’003 in view of Dias and Aoki’998 teaches the recited limitations with respect to claim 14. Aoki’003 further teaches, the method of claim 14, wherein the via connects the exposed portion of the metal layer to a surface of the piezoelectric substrate (see Fig. 2E, through-holes 30 are formed on the piezoelectric substrate 12 having the excitation electrode so as to establish conduction with the mountable exterior electrodes 34 through the through-holes 30, para. [0039]).
Allowable Subject Matter
Claim 16 is 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 and to overcome the nonstatutory double patenting rejections set forth in this Office action. Claim 17 would be allowable by virtue of its dependency. Claim 22 would be allowable.
The following is an examiner’s statement of reasons for allowance:
Claim 16 would be allowable for disclosing a method of producing a transducer, wherein milling the piezoelectric substrate forms an annular via including two side walls extending a full depth of the via, and depositing the first patterned electrode deposits the first patterned electrode on both of the two side walls.
Claim 22 would be allowable for disclosing a method of producing a transducer, wherein an annular via including two side walls extending a full depth of the via, exposing a portion of the metal layer to allow electrical contact; depositing a first patterned electrode on a radially inward one of the two side walls, and on the exposed portion to allow external electrical connection to the metal layer.
Prior art of record Aoki’003 does not teach milling the piezoelectric substrate by rotating an annular cutting blade; or milling the piezoelectric substrate forms an annular via including two side walls extending a full depth of the via, and depositing the first patterned electrode deposits the first patterned electrode on both of the two side walls; or depositing a first patterned electrode on a radially inward one of the two side walls, and on the exposed portion to allow external electrical connection to the metal layer.
Though, Prior art of record Aoki’998 teaches a plurality of tapered through holes, Aoki,998 fails to teach milling the piezoelectric substrate by rotating an annular cutting blade; or milling the piezoelectric substrate forms an annular via including two side walls extending a full depth of the via, and depositing the first patterned electrode deposits the first patterned electrode on both of the two side walls; or depositing a first patterned electrode on a radially inward one of the two side walls, and on the exposed portion to allow external electrical connection to the metal layer.
Prior art Dias does not teach milling the piezoelectric substrate forms an annular via including two side walls extending a full depth of the via, and depositing the first patterned electrode deposits the first patterned electrode on both of the two side walls; or depositing a first patterned electrode on a radially inward one of the two side walls, and on the exposed portion to allow external electrical connection to the metal layer
Therefore, claims 16 and 22 would be allowable. Claim 17 would be allowable by virtue of its dependency.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSE K. ABRAHAM whose telephone number is (571)270-1087. The examiner can normally be reached Monday-Friday 8:30-4:30 EST.
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/JOSE K ABRAHAM/Examiner, Art Unit 3729