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 .
Information Disclosure Statement
In the instant application, several Information Disclosure Sheets (IDS) have been submitted to date citing a usual high number of documents.
It is desirable to avoid the submission of long lists of documents if it can be avoided. Clearly irrelevant and marginally pertinent cumulative information should be eliminated. If a long list is submitted, those documents which have been specifically brought to applicant's attention and/or are known to be of most significance should be highlighted. See Penn Yan Boats, Inc. v. Sea Lark Boats, Inc., 359 F. Supp. 948, 175 USPQ 260 (S.D. Fla. 1972), affd, 479 F.2d 1338, 178 USPQ 577 (5th Cir. 1973), cert, denied, 414 U.S. 874 (1974). But of. Molins PLC v. Textron Inc., 48 F.3d 1172, 33 USPQ2d 1823 (Fed. Cir. 1995). See MPEP 2004.
Applicant's duty of disclosure of material and information is not satisfied by presenting a patent examiner with "a mountain of largely irrelevant [material] from which he is presumed to have been able, with his expertise and with adequate time, to have found the critical [material]. It ignores the real world conditions under which examiners examines. Applicant has a duty not just to disclose pertinent prior art references but to make a disclosure in such a way as not to "bury" it within other disclosures of less relevant prior art; See Golden Valley Microwave Foods Inc. v. Weaver Popcorn Co. Inc., 24 USPQ2d 1801 (N.D. Ind. 1992); Molins PLC v. Textron Inc., 26 USPQe2d 1889, at 1899 (D.Del 1992); Penn Yan Boats, Inc. v. Sea Lark Boats, Inc. et al., 175 USPQ 260, at 272 (S.D. Fl. 1972).
The examiner is not afforded the time to thoroughly review each reference, given the number of references cited. By his initialing each of the cited references on the accompanying 1449 form(s), the examiner is relying that the Applicant has actually submitted these documents or that the USPTO internal systems has accurately generated string(s) that represent the US references submitted. The Examiner is not afforded enough time to even check that the references cited on the accompanying 1449 form(s) are being reviewed (see search list(s) for the US documents actually reviewed and IFW of the instant application for the foreign references, non-patent literature and the international search reports and written opinions that have been filed). With this vast number of references, the Examiner is able to perform at best, only a cursory review of the cited references. The Examiner believes that the Applicant spent more time generating the 1449 forms in the instant application, then the Examiner is allotted to review the references cited on these 1449 forms.
The Examiner has reviewed cursorily each reference cited. Due to the high number of documents presented and the limited time provided for examination, the Examiner was unable to determined how material or not, each of the references is specifically related to the invention(s) claimed.
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 – 14, 16 – 20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 – 20 of copending Application No. US 2023/0344410 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both patent applications disclose a multilayer piezoelectric substrate having IDT’s electrode, a multilayer passivation structure over the electrode, the material of the passivation layer being silicon based (silicon oxide and silicon nitride), having a third layer in the passivation layer, using lithium tantalate for the piezoelectric material, the passivation structure is less than 80nm, the second layer is over the first layer, etc.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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) 1 – 5, 7 – 11, 13 – 15, 17, 18, 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kodama et al (US 2020/0106420) in view of Goto et al (US 2011/0133858).
Kodama et al discloses, regarding,
Claim 1, A multilayer piezoelectric substrate acoustic wave device comprising: a multilayer piezoelectric substrate (see Fig. 6B); an interdigital transducer electrode 14, 16 formed with the multilayer piezoelectric substrate; and a multilayer passivation structure 18 over the interdigital transducer electrode (see Fig 6B).
The problem to be solve appears to duplicate the number of layers for the passivation structure over the electrode. It is reminded that mere duplication of essential parts is well-known in the art since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8.
Moreover, Goto et al teaches, an acoustic wave device having piezoelectric layer 9 and electrodes 10 over the piezoelectric layer 9 and a multilayer passivation structure including a first layer 11 having a first passivation material and a second layer 12 having a second passivation material different from the first passivation material (see Fig. 1; paragraphs 0037, 0031).
The Prior Art further discloses, regarding,
Claim 2, the interdigital transducer electrode is disposed on the piezoelectric layer (Kodama et al, Fig. 6B).
Claim 3, the multilayer passivation structure has a thickness thinner than a thickness of the interdigital transducer electrode (since the thickness of the electrode 14, 16 is thicker than the thickness H2; see Fig. 6B).
Claim 4, the first passivation material includes a silicon based material, and the second passivation material includes a silicon based material (Goto et al, paragraphs 0031, 0037).
Claim 5, one of the first and second layers is a silicon nitride layer and the other one of the first and second layers is a silicon oxide layer (Goto et al, 0031, 0037).
Claim 7, the first layer is in contact with the interdigital transducer electrode and the second layer is in contact with the first layer (Goto et al, Fig. 1).
Claim 8, the first layer is conformally disposed over the piezoelectric layer and the interdigital transducer electrode (Goto et al, Fig. 1).
Claim 9, the second layer is conformally disposed over the first passivation layer (Goto et al, Fig. 1).
Claim 10, the piezoelectric layer is a lithium tantalate layer, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Claim 11, a thickness of the multilayer passivation structure is less than 80 nm, since it has been held that discovering the optimum value of result effective variable involves only routine skill in the art. In re Boesch, 617 F. 2d 272, 205 USPQ 215 (CCPA 1980).
Claim 13, the multilayer passivation structure is selectively disposed over the interdigital transducer electrode such that a region over a bus bar of the interdigital transducer electrode is free from the first or second layer and at least a portion of an active region of the interdigital transducer electrode is covered by the first or second layer (Kodama et al, Fig. 1; Goto et al, Fig. 1).
Claim 14, A multilayer piezoelectric substrate acoustic wave device comprising: a multilayer piezoelectric substrate; an interdigital transducer electrode formed with the multilayer piezoelectric substrate (Kodama et al, Fig. 6B); and a multilayer passivation structure over the interdigital transducer electrode (Goto et al, Fig. 1), the multilayer passivation structure including a first layer having a first hardness and a second layer having a second hardness greater than the first hardness (Goto et al, paragraphs 0031, 0037; since it is known that silicon nitride and silicon oxide have different hardness; see rejection for claim 1 above).
Claim 15, the second hardness is at least 10% greater than the first hardness, since it has been held that discovering the optimum value of result effective variable involves only routine skill in the art. In re Boesch, 617 F. 2d 272, 205 USPQ 215 (CCPA 1980).
Claim 17, the multilayer piezoelectric substrate includes a support substrate, an intermediate layer, and a piezoelectric layer positioned such that the intermediate layer is disposed between the piezoelectric layer and the support substrate (Kodama et al, Fig. 6B).
Claim 18, the first layer includes a first silicon based material, and the second layer includes a second silicon based material different from the first silicon based material (Goto et al, paragraphs 0031, 0037).
Claim 20, the first layer is in contact with the interdigital transducer electrode and the second layer is in contact with the first layer, the first layer is conformally disposed over the piezoelectric layer and the interdigital transducer electrode, and the second layer is conformally disposed over the first layer (Goto et al, Fig. 1).
It would have been obvious before the effective filing date of the claimed invention to design the device as disclosed by Kodama et al and to modify the invention per the limitations disclosed by Goto et al for the purpose of improving the frequency temperature characteristics of an elastic wave device.
Claim(s) 12, 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kodama et al and Goto et al as applied to claims 1, 14 above, and further in view of Nakamura et al (US 2019/0326879).
The combined device discloses all of the elements above. However, the combined device does not disclose the elements below.On the other hand, Nakamura et al discloses, regarding,
Claim 12, a thickness of the first layer 16 is greater than a thickness of the second layer 45 (see Fig. 4F).
Claim 16, the first layer 16 has a first thickness and the second layer 45 has a second thickness, the second thickness is thinner than the first thickness (see Fig. 4F).
It would have been obvious before the effective filing date of the claimed invention to design the combined device as disclosed above and to modify the invention per the limitations disclosed by Nakamura et al for the purpose of efficiently reducing the packaging size of an acoustic wave device.
Allowable Subject Matter
Claims 6, 19 are 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 overcoming the double patenting rejection noted above.
The cited prior art fails to disclose the mentioning of a third layer having the specified material (silicon oxynitride) for the multilayer passivation structure.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Julio C. Gonzalez whose telephone number is (571)272-2024. The examiner can normally be reached M-F.
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/Julio C. Gonzalez/
Primary Examiner
Art Unit 2831
February 26, 2026