DETAILED ACTION
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 .
Election/Restrictions
Claims 1-11 have been withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected species, there being no allowable generic or linking claim.
Applicant's election with traverse of group II, claims 12-13 in the reply filed on 04/10/2026 is acknowledged. The traversal is on the grounds that: there would not be a burdensome search if all of the claimed species were examined together. This argument is not found persuasive because the different groups have been shown to have distinct features, despite any overlap in some of the subject matter. Further, a proper search of the prior art requires review of thousands of prior art references while searching for numerous features of the invention. To search for the additionally noted features of the non-elected method would significantly increase the burden of time for the search to be performed. Thus this argument is not compelling.
Respectfully, the product elected is not defined by the method of claim 1. From MPEP 2113: “[In] United Therapeutics Corp. v Liquidia Techs., Inc., 74 F.4th 1360, 1373, 2023 USPQ2d 862 (Fed. Cir. 2023) (the court held that product-by-process claims were properly rejected as "anticipated by a disclosure of the same product irrespective of the processes by which they are made.")”… further “"We are therefore of the opinion that when the prior art discloses a product which reasonably appears to be either identical with or only slightly different than a product claimed in a product-by-process claim, a rejection based alternatively on either section 102 or section 103 of the statute is eminently fair and acceptable. As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith." In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972).”
The requirement is still deemed proper and is therefore made FINAL.
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
The following title is suggested: “Composite Substrate of a TC-SAW Filter”.
Applicant is respectfully reminded of the proper content of an abstract of the disclosure.
A patent abstract is a concise statement of the technical disclosure of the patent and should include that which is new in the art to which the invention pertains. The abstract should not refer to purported merits or speculative applications of the invention and should not compare the invention with the prior art.
If the patent is of a basic nature, the entire technical disclosure may be new in the art, and the abstract should be directed to the entire disclosure. If the patent is in the nature of an improvement in an old apparatus, process, product, or composition, the abstract should include the technical disclosure of the improvement. The abstract should also mention by way of example any preferred modifications or alternatives.
Where applicable, the abstract should include the following: (1) if a machine or apparatus, its organization and operation; (2) if an article, its method of making; (3) if a chemical compound, its identity and use; (4) if a mixture, its ingredients; (5) if a process, the steps.
Extensive mechanical and design details of an apparatus should not be included in the abstract. The abstract should be in narrative form and generally limited to a single paragraph within the range of 50 to 150 words in length.
See MPEP § 608.01(b) for guidelines for the preparation of patent abstracts.
The abstract of the disclosure is objected to because the elected and examined claims are drawn to a substrate and SAW product. Contrary to the guidelines for content of the abstract as detailed above, the current abstract does not disclose the structures of the product and instead discloses the method of its manufacture. Correction is required. See MPEP § 608.01(b).
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 12-13 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.
Claim 12 discloses “A composite substrate of a filter, which is manufactured by the method as claimed in claim 1” (lines 1-2; emphasis added). The Applicant did not elect claim 1 which is part of non-elected group I. As such, the structures of the product should be amended into claim 12, which despite the Applicant’s assertions to the contrary, is not defined in any understandable manner by the method of claim 1. There is no need whatsoever for the piezoelectric layer of the product to be thinned or polished, nor is there any need for “processing a base substrate to form a centrally protruding structure…” The piezoelectric layer of the product can be formed without any thinning and still explicitly anticipate the actual structure of the product. Similarly, the substrate can be manufactured with a centrally protruding structure in its initial formation step and still be identical to the claimed substrate. The method of manufacture is simply not relevant. Accordingly, because claim 1 was not elected and claim 12, which was elected, contains essentially no structural descriptions, the claim is indefinite. As a courtesy, and for the purpose of advancing compact prosecution, claim 12 is examined as best understood, to require nothing more than:
A composite substrate of a filter, comprising: a base substrate having a centrally protruding structure having a height that decreases in a radially outward direction from a center of the base substrate to an outer periphery of the base substrate; and multilayer substrate comprising a first side of the base substrate having the centrally protruding structure connected to a piezoelectric layer.
The Applicant is strongly encouraged to amend claim 12 along these lines in order to ensure that the elected product is clearly claimed.
Claim 13 is also rejected as indefinite, so rendered by virtue of its dependency upon the indefinite subject matter of claim 1.
NOTE: Claims 12-13 have been interpreted and examined as best understood according to the 112(b) rejection, 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 12-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Okunaga (US 2020/0395914 A1).
Regarding claim 12, Okunaga discloses a composite substrate of a filter, comprising: a base substrate (33) having a centrally protruding structure (34) having a height that decreases in a radially outward direction (i.e. sloping sidewalls, 34c) from a center of the base substrate to an outer periphery of the base substrate (figs. 6-7; pars. 0022, 0052 and 0057); and multilayer substrate comprising a first side of the base substrate having the centrally protruding structure connected to a piezoelectric layer (6) (figs. 6-7; pars. 0052 and 0056).
Regarding claim 13, Okunaga discloses a *temperature compensated surface acoustic wave (TC-SAW) filter (Title; Abstract; par. 0024) comprising the composite substrate of the filter as claimed in claim 12, and a fork-finger transducer (IDT electrodes, 8, and reflectors, 9A and 9B) disposed on said composite substrate of said filter, wherein said piezoelectric layer of said composite substrate of said filter has a thickness variation smaller than 10% (the piezoelectric layer is flat, i.e. no variation of thickness) (figs. 2, 4, 6 and 9; pars. 0020, 0024-0025)
*NOTE: there is nothing in the body of claim 13 which provides any nexus of connection between the claim preamble which discloses a purported capability of the product being a “temperature compensated surface acoustic wave (TC-SAW) filter” and the body of the claim which requires nothing more than the structures of claim 12 and “a fork-finger transducer disposed on said composite substrate of said filter, wherein said piezoelectric layer of said composite substrate of said filter has a thickness variation smaller than 10%”. This language does not give the reader any information as to how the structures would purportedly be a SAW filter, much less a “temperature controlled” one. Accordingly, the preamble is not found to breathe life into the claim and therefore, as currently presented, is not understood to carry patentable weight or meaning. The cited prior art structures are identical to those claimed and are therefore understood to be capable of achieving the intended capability of the preamble.
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, Campanella-Pineda (US 2019/0348966 A1) is held to disclose all of the limitations of claims 12 and 13 (see at least fig. 7, which shows a piezoelectric layer, 601, on a substrate, 103, having a protrusion, peak of central one of 301, which has a height that decreases in a radially outward direction from the center of the substrate, and a fork finger transducer, 701)(see also, figs. 14 and 17). The Campanella-Pineda 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
Prosecution Insights