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
Applicant’s election without traverse of group II, claims 9-13 in the reply filed on 03/16/2026 is acknowledged.
Claims 1-8 have been withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected piezoelectric-body film joint substrate product, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 03/16/2026.
Claim Objections
Claims 9, 10 and 13 are objected to because of the following informalities:
“peeling off a first piezoelectric-body film formed on a first substrate and including a first piezoelectric film and a first electrode film provided on the first piezoelectric film and a second piezoelectric-body film formed on a second substrate and including a second piezoelectric film and a second electrode film provided on the second piezoelectric film respectively from the first substrate and the second substrate” (claim 9, lines 21-27; emphasis added);
“the second piezoelectric-body film further includes a second lower electrode film formed on a surface of the second piezoelectric film on a side opposite to the second electrode film” (claim 10, lines 35 and 1-3; emphasis added); and
“…according to claim 9, wherein area of a surface of the electrode formed on the third substrate is larger than area of a sticking surface of the first piezoelectric-body film to be stuck on the surface of the electrode” (claim 13, lines 17-20; emphasis added). Note: claim line numbers are based upon the numbering provided by the Applicant in the most recent claim set of record.
Regarding claim 9, the extreme run-on nature of this claim language renders confident interpretation quite difficult. It is not clear which features are “including” which other features, or what elements are “provided on” what other elements. Further, it is difficult to determine which substrate possesses which other structures and which substrate is being peeled from what. The claim should likely instead disclose something akin to:
“ providing a first piezoelectric-body film formed on a first substrate, and including a first piezoelectric film and a first electrode film provided on the first piezoelectric film; and providing a second piezoelectric-body film formed on a second substrate, and including a second piezoelectric film and a second electrode film provided on the second piezoelectric film; peeling the first piezoelectric-body film and the second piezoelectric-body film , respectively”.
For claim 9, appropriate correction is required
Regarding claim 10, there is no “first lower electrode film” claimed prior to the cited recitation in claim 10, which renders the claim difficult to understand. If the language of claim 11 were instead disclosed before the language of claim 10, then claim 10 would be less confusing. Though the claim is not indefinite, such a correction would decrease the cognitive dissonance created by the current order of presentation.
Regarding claim 13, both instances of the word “area” are confusing as they are lacking an appropriate article (i.e. “a”, “an” or “the”) preceding their recitation. It seems likely that the claim should instead recite:
“…according to claim 9, wherein an area of a surface of the electrode formed on the third substrate is larger than an area of a sticking surface of the first piezoelectric-body film to be stuck on the surface of the electrode”.
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.
Claim 13 is 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 13 discloses “…according to claim 9, wherein area of a surface of the electrode formed on the third substrate is larger than area of a sticking surface of the first piezoelectric-body film to be stuck on the surface of the electrode” (lines 17-20; emphasis added). This language is indefinite because there is no way to know what “a sticking surface” is intended to be, and especially because in claim 9 (from which claim 13 depends) the first piezoelectric-body film has already been previously “stuck” (see “sticking” step). As such, it is confusing and impossible to determine whether claim 13 is intended to occur before claim 9, or whether claim 13 should instead disclose something akin to: “…according to claim 9, wherein an area of a surface of the electrode formed on the third substrate is larger than an area of the surface of the first piezoelectric-body film which has been stuck on the surface of the electrode”.
NOTE: Claim 13 has 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 9-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fujii et al. (US 2018/0123017 A1).
Regarding claim 9, Fujii discloses a method of manufacturing a piezoelectric-body film joint substrate (Title; Abstract; fig. 1), the method comprising: *peeling off (etching) a first piezoelectric-body film (12, 14, 16) formed on a first substrate (11) and including a first piezoelectric film (14) and a first electrode film (16) provided on the first piezoelectric film and a second piezoelectric-body film (22, 24, 26) formed on a second substrate (21) and including a second piezoelectric film (24) and a second electrode film (26) provided on the second piezoelectric film respectively from the first substrate and the second substrate (figs. 3B-3C; pars. 0073, 0075, and 0103); sticking the first piezoelectric-body film on an electrode (“solder films formed of Au-Sn”: 32a, 32b) formed on a third substrate (30) different from both of the first substrate and the second substrate (par. 0094); and sticking the second piezoelectric-body film on the first piezoelectric-body film (by way of the third substrate: par. 0070) (par. 0101).
*NOTE: According to the specification in the instant application, the Applicant has acted as their own lexicographer with respect to the term “peeling”, which apparently can comprise the plain and common meaning, but also can comprise “etching” (specification, pg. 10, lines 26-30) which is not normally considered a form of peeling. As such, where the prior art discloses removal by etching, it is reasonably held to disclose “peeling” as disclosed and claimed in the instant application.
Regarding claim 10, Fujii discloses the method of manufacturing a piezoelectric-body film joint substrate according to claim 9, wherein the second piezoelectric-body film further includes a second lower electrode film (22) formed on a surface of the second piezoelectric film on a side opposite to the second electrode film (figs. 1 and 3B-3C; par. 0073).
Regarding claim 11, Fujii discloses the method of manufacturing a piezoelectric-body film joint substrate according to claim 9, wherein the first piezoelectric-body film further includes a first lower electrode film (12) formed on a surface of the first piezoelectric film on a side opposite to the first electrode film (figs. 1 and 3B-3C; par. 0073).
Claim Rejections - 35 USC § 103
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 of this title, 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.
Claims 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Fujii, in view of Takeda et al. (US 2008/0012908 A1).
Regarding claim 12, Fujii discloses all of the elements of the current invention as detailed above with respect to claim 9. Fujii further discloses that both piezoelectric films are formed from lead zirconate titanate (specifically: “pure PZT”) (pars. 0113 and 0116). Fujii, however, does not explicitly disclose that the second piezoelectric film is monocrystalline and the first piezoelectric film is monocrystalline.
Takeda teaches that it is well known to perform a related method (Title; Abstract), wherein the piezoelectric film(s) (45) is/are PZT and wherein the PZT is monocrystalline (fig. 6; pars. 0054 and 0059).
Before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to have modified the current invention of Fujii to incorporate the PZT being monocrystalline of Takeda, since it has been held by the courts that selection of a prior art material on the basis of its suitability for its intended purpose is within the level of ordinary skill. Further, the applicant is respectfully advised that it has been held by the courts that where a prior art apparatus is identical or substantially identical in structure (both Fujii and Takeda disclose PZT as the piezoelectric material), properties or functional characteristics are presumed to be inherent, and a prima facie case of either anticipation or obviousness has been established. POSITA would have realized that a monocrystalline structure of PZT can be easily and readily employed to achieve the desired polarization, piezoelectric effect and the like. Moreover, there is no indication in the instant disclosure that any special monocrystalline piezoelectric material was devised or that any surprising results were derived from simply using the old method of Fujii with the well-known monocrystalline PZT of Takeda. This combination would have been easily performed with knowledge of the commonly understood advantages and with reasonable expectations of success.
Regarding claim 13, Fujii in view of Takeda teaches the method of claim 9 as detailed above, and Takeda further teaches that it is well known that [an] area of a surface of the electrode (44) formed on the third substrate (41/42) is larger than [an] area of a sticking surface (fig. 6: bottom, as viewed) of the first piezoelectric-body film (45) to be stuck on the surface of the electrode (fig. 6; par. 0059).
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, Mikami (CN 1442911 A) is held to be of particular relevance to the claimed invention, see at least figures 3A-3E and 5A-5D.
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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/JEFFREY T CARLEY/Primary Examiner, Art Unit 3729
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