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 .
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.
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 1-20 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.
Claims 1-20 recites the limitation “defining an outer boundary with a shape substantially corresponding to a contour line of the strain distribution on the beam”. The meaning of the claim limitation that includes the phrase “a shape substantially” is unclear because no guidance or boundaries are provided to determine how the term “substantially” is measured. MPEP 2173.05(b)(I). Dependent claims 2-10 and 12-20 incorporate the same limitation and, therefore, are rejected for the same reason.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-6 and 11-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of U.S. Patent 12,329,033. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-12 of U.S. Patent 12,329,033 reads into the pending claims 1-6 as shown in the table 1 below. The claims under examination are anticipated over the Patent’s claim since the Patent discloses a method of making a piezoelectric sensor as stated in the U.S. Patent 12,329,033. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Table 1
Claim Under Examination (18/047430)
U.S. Patent 12,329,033.
1. A method of making a piezoelectric sensor, comprising: forming or depositing one or more piezoelectric layers to define a beam extending between a proximal portion and a distal end; modeling a strain distribution on the beam based on a force applied to the beam; defining an outer boundary with a shape substantially corresponding to a contour line of the strain distribution on the beam; forming or providing an electrode having said outer boundary shape; attaching the electrode to the beam; and attaching the beam to a substrate in cantilever form so that the proximal portion of the beam is anchored to the substrate and the distal end of the beam is unsupported.
1. A piezoelectric sensor, comprising: a substrate; a cantilever beam having a proximal portion attached to the substrate and extending to an unsupported distal end of the beam; and an electrode disposed on or in the proximal portion of the beam, the electrode having an outer boundary with a shape substantially corresponding to a contour line of a strain distribution plot for the cantilever beam resulting from a force applied to the cantilever beam.
2. The method of claim 1 wherein the beam is a triangular beam, the unsupported distal end being a distal tip of the triangular beam.
2. The sensor of claim 1 wherein the cantilever beam is a triangular beam, the unsupported distal end being a distal tip of the triangular beam.
3. The method of claim 1 wherein at least a portion of two edges of the outer boundary of the electrode are disposed inward of a pair of outer edges of the beam.
3. The sensor of claim 1 wherein at least a portion of two edges of the outer boundary of the electrode are disposed inward of a pair of outer edges of the cantilever beam.
4. The method of claim 1 wherein two corners of the proximal portion of the beam are not covered by the electrode.
4. The sensor of claim 1 wherein two corners of the proximal portion of the cantilever beam are not covered by the electrode.
5. The method of claim 1 wherein at least a portion of the outer boundary of the electrode is non-linear.
5. The sensor of claim 1 wherein at least a portion of the outer boundary of the electrode is non-linear.
6. The method of claim 1 wherein the beam has a rectangular shape.
6. The sensor of claim 1 wherein the cantilever beam has a rectangular shape.
11. A method of making a microphone module, comprising: forming or providing a printed circuit board that includes a substrate layer; forming or providing a piezoelectric microelectromechanical systems microphone via a process including (a) forming one or more cantilever piezoelectric sensors including forming or depositing one or more piezoelectric layers to define a beam extending between a proximal portion and a distal end, (b) modeling a strain distribution on the beam based on a force applied to the beam, (c) defining an outer boundary with a shape substantially corresponding to a contour line of the strain distribution on the beam, (d) forming or providing an electrode having said outer boundary shape, (e) attaching the electrode to the beam, and (f) attaching the beam to a substrate in cantilever form so that the proximal portion of the beam is anchored to the substrate and the distal end of the beam is unsupported; and mounting the one or more piezoelectric microelectromechanical systems microphones on the printed circuit board.
7. A piezoelectric microelectromechanical systems microphone, comprising: a substrate; and a plurality of piezoelectric sensors movably coupled to the substrate, each of the piezoelectric sensors spaced apart from an adjacent piezoelectric sensor by a gap and including: a cantilever beam having a proximal portion attached to the substrate and extending to an unsupported distal end of the beam, and an electrode disposed on or in the proximal portion of the beam, the electrode having an outer boundary with a shape substantially corresponding to a contour line of a strain distribution plot for the cantilever beam resulting from a force applied to the cantilever beam, the plurality of piezoelectric sensors configured to deflect when subjected to sound pressure.
12. The method of claim 11 wherein the beam is a triangular beam, the unsupported distal end being a distal tip of the triangular beam.
8. The microphone of claim 7 wherein the cantilever beam is a triangular beam, the unsupported distal end being a distal tip of the triangular beam.
13. The method of claim 11 wherein at least a portion of two edges of the outer boundary of the electrode are disposed inward of a pair of outer edges of the beam.
9. The microphone of claim 7 wherein at least a portion of two edges of the outer boundary of the electrode are disposed inward of a pair of outer edges of the cantilever beam.
14. The method of claim 11 wherein two corners of the proximal portion of the beam are not covered by the electrode.
10. The microphone of claim 7 wherein two corners of the proximal portion of the cantilever beam are not covered by the electrode.
15. The method of claim 11 wherein at least a portion of the outer boundary of the electrode is non-linear.
11. The microphone of claim 7 wherein at least a portion of the outer boundary of the electrode is non-linear.
16. The method of claim 11 wherein the beam has a rectangular shape.
12. The microphone of claim 7 wherein the cantilever beam has a rectangular shape.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
Claims 1-5, 9, 11-15, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Wan et al (US 10999684 B1), hereinafter Wan, and further in view of Qian et al (US 20190260346 A1), hereinafter Qian.
Regarding claim 1, Wan discloses a method of making a piezoelectric sensor (Title: MEMS Microphone And Method Of Manufacturing The MEMS Microphone), comprising:
forming or depositing one or more piezoelectric layers (col. 9, ll. 17-24, “the laminated film forming step is formed. In the laminated film forming step, as illustrated in FIG. 7, a laminated film 103 is formed on the silicon thin-film layer 101b of the SOI substrate 102. The laminated film 103 is formed by laminating a first electrode film (lower electrode film) layer 105, a piezoelectric material film layer 106 and a second electrode film (upper electrode film) layer 107 sequentially”) to define a beam (col. 9, ll. 64-67, “The beam regions 104a, 104b, 104c, 104d have respectively the first electrode film layer 105, the piezoelectric material film layer 106 and the second electrode film layer 107”, the beams comprise the piezoelectric layers) extending between a proximal portion and a distal end (annotated FIG. 13 below, col. 10, ll. 25-28, “in the cantilevered beams forming step, as illustrated in FIG. 13, unnecessary parts are removed by etching or the like”, the process of etching portions to define the beam creates a distal end and a proximal end of a beam); attaching the electrode to the beam (electrode film layers 105 and 107 in FIG. 13, col. 9, ll. 64-67, “The beam regions 104a, 104b, 104c, 104d have respectively the first electrode film layer 105, the piezoelectric material film layer 106 and the second electrode film layer 107”); and attaching the beam to a substrate in cantilever form so that the proximal portion of the beam is anchored to the substrate and the distal end of the beam is unsupported (FIG. 2, col. 7, ll. 22-24, “Further, each of the cantilevered beams 21, 22, 23, 24 respectively has base parts 21a, 22a, 23a, 24a, fixed on the element substrate 2, and free beam parts 21b, 22b, 23b, 24b, not fixed on the element substrate 2”).
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However, Wan fails to teach or suggest modeling a strain distribution on the beam based on a force applied to the beam; defining an outer boundary with a shape substantially corresponding to a contour line of the strain distribution on the beam; and forming or providing an electrode having said outer boundary shape.
Qian teaches a method of designing a BAW resonator and filter (Title: Acoustic Resonator And Filter With Electrode Having Zig-Zag Edge And Method For Producing The Same); comprising modeling a strain distribution on the beam based on a force applied to the beam (¶30 , Though Qian doesn’t specifically mention the modeling of a strain distribution, Qian discloses “defining a pulse function model to create a contour line of a BAW resonator; providing segments of the contour line based on pulse function amplitude, period and contour length” and “provide an effective area of the resonator, wherein the effective area includes a closed-loop contour line including a pulse function pattern with pre-defined amplitude” to describe various strains); defining an outer boundary with a shape substantially corresponding to a contour line of the strain distribution on the beam (effective area includes a closed-loop contour line, ¶30); forming or providing an electrode having said outer boundary shape (patterning a top electrode, ¶30).
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date that using the patterning of electrodes to encompass a predetermined effective area taught by Qian to the method of making piezoelectric sensors of Wan’s disclosure would have yielded predictable results, achieving higher target Q factor and smoother Q-circle with attenuated spurious modes (Qian ¶12).
Regarding claim 11, Wan further discloses a method of making a microphone module (MEMS microphone 100 in FIG. 1, col. 5, ll. 46-47), comprising: forming or providing a printed circuit board, that includes a substrate layer (PCB: Printed Circuit Board, col. 8, ll. 24-25); forming or providing a piezoelectric microelectromechanical systems microphone (MEMS transducer 10 in FIG. 1, col. 5, ll. 47) via a process including
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(a) forming one or more cantilever piezoelectric sensors including forming or depositing one or more piezoelectric layers to define a beam extending between a proximal portion and a distal end,
(b) modeling a strain distribution on the beam based on a force applied to the beam,
(c) defining an outer boundary with a shape substantially corresponding to a contour line of the strain distribution on the beam,
(d) forming or providing an electrode having said outer boundary shape,
(e) attaching the electrode to the beam, and
(f) attaching the beam to a substrate in cantilever form so that the proximal portion of the beam is anchored to the substrate and the distal end of the beam is unsupported; and mounting the one or more piezoelectric microelectromechanical systems microphones on the printed circuit board (col. 8, ll. 23-28).
Claim 11 includes identical limitations from claim 1, except for the added limitations of a method for making a microphone module, forming a printed circuit board, and mounting one or more piezoelectric microelectromechanical systems microphones onto the printed circuit board. Since claim 11 recites subject encapsulating claim 1, the applied prior art teaches the limitations of steps (a)-(f) for the same reasons previously discussed. (Also see supra rejection of claim 1).
Regarding claims 2 and 12, Wan further discloses the method of claim 1 wherein the beam is a triangular beam (FIG. 2, col. 7, ll. 20-22, “each of the cantilevered beams 21, 22, 23, 24 is formed in a triangular shape in a plan view”), the unsupported distal end being a distal tip of the triangular beam (annotated FIG. 2 below). (Also see supra rejection of claim 1).
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Regarding claims 3 and 13, Wan further discloses the method of claim 1 wherein at least a portion of two edges of the outer boundary of the electrode are disposed inward of a pair of outer edges of the beam (annotated FIG. 2 below, Inner electrodes 14 have edges that are disposed inward of the beam’s outer edge). (Also see supra rejection of claim 1).
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Regarding claims 4 and 14, Wan further discloses the method of claim 1 wherein two corners of the proximal portion of the beam are not covered by the electrode (annotated FIG. 2 below, electrodes 14 don’t cover the beam’s corner). (Also see supra rejection of claim 1).
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Regarding claims 5 and 15, Wan further discloses the method of claim 1 wherein at least a portion of the outer boundary of the electrode is non-linear. (annotated FIG. 2 below, each electrode 14 covers a boundary where the edges of each electrode are not linear and parallel from one another). (Also see supra rejection of claim 1).
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Regarding claims 9 and 19, Wan further discloses the method of claim 1 wherein the force is applied to the distal end of the beam (Wan, weight 25 in FIG. 13, col. 6, ll. 64-66, the weight applied to the distal end of the beam creates a force to propagate vibration of the beam). (Also see supra rejection of claim 1).
Claims 6-8 and 16-18 are rejected under 35 U.S.C. 103 as being unpatentable over Wan and Qian, and further in view of Grosh et al (US 20150271606 A1), hereinafter Grosh.
Regarding claim 6 and 16, Wan further discloses the method of claim 1.
However, Wan teaches a triangular shaped beam but fails to teach or suggest rectangular shaped beam.
Grosh teaches the method of claim 1 (Title: Acoustic Transducer With Gap-Controlling Geometry And Method Of Manufacturing An Acoustic Transducer) wherein the beam has a rectangular shape (rectangular cantilever in FIG. 1, ¶2).
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Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date that using the shape of beam taught by Grosh to the method of making piezoelectric sensors of Wan’s disclosure would have yielded predictable results, allowing for varied residual stresses and frequency sensitivity in the cantilever (Grosh ¶2). Moreover, this combination would have been easily performed with the knowledge of the commonly understood and with reasonable expectations of success.
Regarding claims 7 and 17, Wan further discloses the method of claim 6 wherein the electrode has a rectangular shape that covers a proximal portion of the beam (FIG. 2, electrodes 14 don’t cover the beam’s corner). (Also see supra rejection of claim 4 and 6).
Regarding claims 8 and 18, Wan further discloses the method of claim 6 wherein the electrode has a contoured edge (FIG. 2, each electrode 14 cover a non-linear area). (Also see supra rejection of claim 5 and 6).
Claims 10 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Wan and Qian, and further in view of Feng et al (WP 2018191842 A1), hereinafter Feng.
Regarding claims 10 and 20, the method of claim wherein the force is applied on substantially an entire surface of the beam.
However, Wan fails to teach or suggest a force applied on the entire surface of the beam
Feng teaches the method of claim wherein the force is applied on substantially an entire surface of the beam (FIG. 1A, the beam is subject to a load across the entire surface).
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Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date that using the applying a force across the entire surface of beam taught by Feng to the method of making piezoelectric sensors of Wan’s disclosure would have yielded predictable results, allowing for uniform distribution of stress.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EUGENE REY D LEGASPI whose telephone number is (571)272-2956. The examiner can normally be reached Monday-Friday 8-5PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Thomas Hong can be reached at (571) 272-0993. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/E.D.L./Examiner, Art Unit 3729 /THOMAS J HONG/Supervisory Patent Examiner, Art Unit 3729