DETAILED ACTIONNotice 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 .
Election/Restrictions
Applicant’s election of group II, claims 9-17, in the reply filed on 02/05/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 1-8 have been withdrawn by the Applicant from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected method of manufacture, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 02/05/2026.
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.
Claims 9-17 are rejected under 35 U.S.C. 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claims 9-11, and 13-15 each disclose steps of “forming or providing” (e.g. claim 1, lines 3-12; emphasis added). This language is indefinite, because the claims are directed to methods of manufacture, and it is not at all clear whether any manufacturing (i.e. forming) is being performed or if instead the already manufactured elements are simply being provided. A reasonable interpretation of these limitations would be to select “providing” for each and every one, in which case there is literally not a single manufacturing step for any of the structures associated with these phrases. Further, in just claim 1 alone there are disclosed six alternative statements of “forming or providing”, which results in 126 different possible methods recited in a single claim. When compounded with the numerous other instances of “forming or providing” throughout the claims, there are hundreds or even thousands of methods being recited. Simply put, if the reader does not know what the preferred method of the claim is intended to be, and if multiple distinct interpretations of the claim are reasonable and it is not clear which is intended, then the claim is indefinite. The Applicant is strongly encouraged to decide what the actual method of the claims is intended to be, and to disclose that method.
NOTE: The Applicant is strongly cautioned that there is little to nothing in the original disclosure which provides any details regarding what step(s) is/are taken in any of the “forming or providing” steps. The supposed method of the claims is broadly recited in the “Detailed Description” section of the specification in par. [0043]. In par. [0043] this method generally discusses “forming or providing” with little in the way of detail about how any of the structures would actually be formed (e.g. deposition, sputtering, photoresist patterning, etching, drilling, ablation, etc. are nowhere in the disclosure).
Claim 9 is further found to be indefinite, as it discloses: “forming or providing one or more surface acoustic wave resonators or filters over the multi-layer piezoelectric substrate, including forming or providing a multi-mode surface acoustic wave resonator or filter” (lines 8-10; emphasis added). This recitation does not make logical sense, because surface acoustic wave resonators or filters are not separate entities from the piezoelectric substrate, but naturally require having a piezoelectrics material to be functional. This problem is compounded by the specification which discloses that each “resonator or filter” is nothing more than “IDT [interdigital transducer] electrodes” (pars. 0037, 0039 and 0043) and provides absolutely no other structure for these purported “resonators or filters” anywhere in the specification or drawing figures. As such, it is not clear if the claim should be rejected under 112(a) for lacking scope of enablement, or if the Applicant is acting as their own lexicographer when they recite “surface acoustic wave resonators or filters… including… a multi-mode surface acoustic wave resonator or filter” but instead they only actually intend interdigital transducer (IDT) electrodes because there is no mention of different piezoelectric layers (other than the multi-layer piezoelectric substrate) which would be enabling for standalone surface acoustic wave resonators or filters. Because the intended interpretation of the above cited limitation is ambiguous, the claim is rendered indefinite. As best understood, the “forming or providing one or more surface acoustic wave resonators or filters over the multi-layer piezoelectric substrate, including forming or providing a multi-mode surface acoustic wave resonator or filter” is actually intended to be “forming or providing interdigital transducer (IDT) electrodes on the multi-layer piezoelectric substrate, such that these elements are capable of being used as a multi-mode surface acoustic wave resonator or filter” which is actually supported by the specification and drawing figures.
Claim 9 is still further found to be indefinite, as it discloses: “forming or providing one or more unfilled vias through the support substrate that extend between an open end and a closed end” (lines 11-12; emphasis added). It is entirely impossible to know or even confidently guess what element(s) the “open end” and “closed end” are associated with or attempting to define. Are they open and closed ends of the unfilled vias (i.e. “blind” vias) or are they open or closed ends of any one or more of the other recited structures that were provided in the claim? Because the claim provides no answers to these questions, the scope or metes and bounds cannot be ascertained and it is therefore indefinite.
Claim 9 presents additional indefiniteness issues in the recitation of: “electrically connecting the multi-mode surface acoustic wave resonator or filter and the one or more metal layers with the one or more vias to provide a ground connection for the multi-mode surface acoustic wave resonator or filter” (lines 13-15; emphasis added). The first issue is that it is not clear if “the one or more vias” are the same as the “unfilled vias”, or if they represent some other vias. Further, unfilled vias cannot electrically connect anything, because they are not filled with a conductor, so the limitation does not make any logical sense. The Applicant is cautioned to determine what support there may be for amendments directed to providing some sort of electrically conductive material in the vias, as there is very little description of such features in the original disclosure. The paragraphs (e.g. 0051-0052) directed to the embodiment of figs. 8-9 seem to disclose that a “metal layer” is provided in the vias which are described as “unfilled”. It is not clear if the Applicant is acting as their own lexicographer when describing vias which have conductive material therein as being “unfilled”, as this does not make logical sense. Perhaps Applicant intends for “unfilled” to mean not entirely filled; however, it is impossible to be sure. As best understood, the limitation may intend: “providing a metal layer within the unfilled vias, and thereby electrically connecting the multi-mode surface acoustic wave resonator or filter and the one or more metal layers with the one or more previously unfilled vias to provide a ground connection for the multi-mode surface acoustic wave resonator or filter” or “electrically connecting the multi-mode surface acoustic wave resonator or filter and the one or more metal layers with the one or more unfilled vias to provide a ground connection for the multi-mode surface acoustic wave resonator or filter”, wherein in the second interpretation the Applicant is potentially acting as their own lexicographer as noted above. Currently any of the above interpretations is held to be reasonable, as best understood.
Claims 10-17 are also rejected as indefinite, so rendered by virtue of their dependency upon the indefinite subject matter of claim 9.
Claim 11 is further found to be indefinite, as the claim discloses: “supporting the cap wafer over the support substrate with one or more vias such that a cavity is defined between the cap wafer and the support substrate” (lines 1-3; emphasis added). There are a number of problems with this claim language. It is entirely unclear if the “cap wafer” or the “support substrate” possesses the “one or more vias”. Further, if the support substrate is intended to possess the “one or more vias” it is unclear if these vias are the same as the “unfilled vias” of claim 9, or if they are new/different vias. Moreover, how do vias (i.e. openings, which are representative of the absence of material) support anything? This claim is replete with indefiniteness issues and should be revised. As best understood, the claim may intend: “supporting the cap wafer over the support substrate such that a cavity is defined between the cap wafer and the support substrate”.
NOTE: All of the examined claims (i.e. claims 9-17) have been interpreted and examined as best understood according to the 112(b) rejections, above.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Claims 9-17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kuroyanagi (US 2017/0331455 A1).
Regarding claim 9, Kuroyanagi discloses a method of manufacturing a packaged acoustic wave component (Title), the method comprising: forming or providing a support substrate (10a); forming or providing a *multi-layer piezoelectric substrate (10b, 17) over a first side (figs. 1, 10 and 13A: top, as viewed) of the support substrate (figs. 1, 10 and 13A; pars. 0028 and 0058); forming or providing one or more metal layers (30c) over a second side (fig. 10: bottom, as viewed) of the support substrate that is opposite the first side of the support substrate (figs. 10 and 14C; pars. 0029, 0031 and 0063); forming or providing one or more +surface acoustic wave resonators or filters (12, 22, 60, 62) over the multi-layer piezoelectric substrate, including forming or providing a multi-mode surface acoustic wave resonator or filter (60, 62) (figs. 10-12; pars. 0029-32 and 0054-0055); forming or providing one or more unfilled vias (at 32a-32c, the vias are unfilled when they are first formed by way of “irradiating the piezoelectric substrate 10b and the support substrate 10a with a laser beam”: par. 0060) through the support substrate that extend between an open end and a closed end (figs. 13B-13C; par. 0060); and electrically connecting the multi-mode surface acoustic wave resonator or filter and the one or more metal layers with the one or more vias to provide a ground connection for the multi-mode surface acoustic wave resonator or filter (figs. 14C-15C; pars. 0029, 0031 and 0054).
*NOTE: the term “multi-layer piezoelectric substrate” is not indefinite, though it is quite broad. In fact, there is nothing anywhere in the original disclosure which defines the “multi-layer piezoelectric substrate” in any manner at all (this purported multi-layer element is described as an “MPS” and variously referred to as element 102, 202 or 302 in the specification). There is no discussion of materials and more importantly, there is absolutely no mention anywhere of the “multi-layer piezoelectric substrate” even having more than one layer (nor are there any instances in the drawing figures where more than one layer is clearly shown). There are no structures defined for the “multi-layer piezoelectric substrate” at all in any form. As such, any piezoelectric layer or element is held to read on this limitation wherein the Applicant has apparently acted as their own lexicographer when using the term “multi-layer” to mean a single element/layer. The Applicant is strongly cautioned that any assertions to the contrary of this interpretation would likely lead to 112(a) scope of enablement rejections, as there is no support for the “multi-layer piezoelectric substrate” being a plurality of layers.
+NOTE: The language directed to “forming or providing one or more surface acoustic wave resonators or filters over the multi-layer piezoelectric substrate, including forming or providing a multi-mode surface acoustic wave resonator or filter” (lines 8-10; emphasis added) is not necessarily indefinite; however it is important to indicate how it is being interpreted in light of the actual disclosure of the specification and drawing figures. This recitation does not make logical sense, because surface acoustic wave resonators or filters are not separate entities from the piezoelectric substrate, but naturally require having a piezoelectric material in order to function as a resonator or filter. This problem is compounded by the specification which discloses that each “resonator or filter” is nothing more than “IDT [interdigital transducer] electrodes” (pars. 0037, 0039 and 0043) and provides absolutely no other structure for these purported “resonators or filters” anywhere in the specification or drawing figures. As such, it is not clear if the claim should be rejected under 112(a) for lacking scope of enablement, or if the Applicant is acting as their own lexicographer when they recite “surface acoustic wave resonators or filters… including… a multi-mode surface acoustic wave resonator or filter” but instead they only actually intend interdigital transducer (IDT) electrodes because there is no mention of different piezoelectric layers (other than the single layer “multi-layer piezoelectric substrate”) which would be enabling for standalone surface acoustic wave resonators or filters. In this instance, the Applicant is being given the benefit of the doubt as having acted as their own lexicographer, whereby the “surface acoustic wave resonators or filters” are actually IDTs. It is also possible that the “forming or providing one or more surface acoustic wave resonators or filters over the multi-layer piezoelectric substrate, including forming or providing a multi-mode surface acoustic wave resonator or filter” is actually intended to be “forming or providing interdigital transducer (IDT) electrodes on the multi-layer piezoelectric substrate, such that these elements are capable of being used as a multi-mode surface acoustic wave resonator or filter”. However, the reader cannot be certain. As with the above noted “multi-layer piezoelectric substrate” limitation, the Applicant is strongly cautioned that any assertions to the contrary of this interpretation would likely lead to 112(a) scope of enablement rejections, as there is no support for the “surface acoustic wave resonators or filters” possessing any structure other than the IDTs.
Regarding claim 10, Kuroyanagi discloses the method of claim 9 wherein forming or providing a multi-mode surface acoustic wave resonator or filter includes forming or providing a dual mode surface acoustic wave resonator or filter (pars. 0038 and 0054-0055).
Regarding claim 11, Kuroyanagi discloses the method of claim 9 further comprising forming or providing a cap wafer (20) and supporting the cap wafer over the support substrate with one or more vias such that a cavity (26) is defined between the cap wafer and the support substrate (fig. 10; pars. 0030, 0056-0057 and 0070).
Regarding claim 12, Kuroyanagi discloses the method of claim 9 wherein electrically connecting the multi-mode surface acoustic wave resonator or filter and the one or more metal layers includes electrically connecting a second metal layer (metal within 32c and/or 17 and/or 18 and/or 35) disposed over an electrical connection of the multi-mode surface acoustic wave resonator or filter with the one or more vias (fig. 10 and 14C-14D; pars. 0029 and 0061).
Regarding claim 13, Kuroyanagi discloses the method of claim 9 wherein forming or providing the one or more vias includes forming or providing a pair of vias (32b and 32c) at each electrical connection location to provide a reduction in resistive loss (fig. 10; pars. 0029, 0040 and 0042).
Regarding claim 14, Kuroyanagi discloses the method of claim 9 wherein forming or providing the one or more vias includes forming or providing a linear array of vias (32a-32c) configured to facilitate inter-filter isolation (fig. 10; pars. 0029, 0040 and 0042).
Regarding claim 15, Kuroyanagi discloses the method of claim 9 further comprising forming or providing one or more solder connections (36) and attaching the one or more solder connections to the one or more metal layers (fig. 10; par. 0030).
Regarding claim 16, Kuroyanagi discloses the method of claim 9 wherein the open end of the one or more vias is on the second side of the support substrate and the closed end of the one or more vias is on the first side of the support substrate (fig. 14B: the bottom of the substrate, i.e. the second side has an open, i.e. exposed end of the via, whereas the top, i.e. first side, has a closed, i.e. covered end of the via).
NOTE: the vias of the instant original disclosure are through vias and there is no explanation whatsoever in the claims about what constitutes an open or closed end. As such, the reader is left to subjectively decide what is or is not an open or closed end.
Regarding claim 17, Kuroyanagi discloses the method of claim 9 wherein the open end of the one or more vias is on the first side of the support substrate and the closed end of the one or more vias is on the second side of the support substrate (fig. 10: the top, i.e. first, side of the substrate has the wider, i.e. open, end of the via, whereas the bottom, i.e. second, side of the substrate has the narrower, i.e. closed, end.
NOTE: in this embodiment which is the opposite of the embodiment of claim 16, the reader can dictate a different interpretation of the broadly recited open and closed ends.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Please refer to the concurrently mailed PTO-892, as all of those cited references are considered to be pertinent to the claimed invention. For example, Goto et al. (US 2020/0212883 A1) and Yamashita (US 2014/0118093 A1) are both held to disclose all of the limitations of at least claim 9. The Goto reference is not currently applied as an anticipation rejection due to the completeness of the above applied art, and in order to avoid an overly long Office Action or duplicative rejections.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jeffrey T Carley whose telephone number is (571)270-5609. The examiner can normally be reached Monday - Friday, 9:00 am - 5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sunil Singh can be reached at (571)272-3460. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JEFFREY T CARLEY/Primary Examiner, Art Unit 3729