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 .
Response to Arguments
Applicant’s arguments, see pages 4-7, filed on June 9, 2026, have been fully considered but they are not persuasive.
In response to applicant’s argument that “Kitada does not disclose or suggest that lithium reduces the carbon in the piezoelectric layer. Kitada also does not disclose or suggest controlling, in the lithium-containing KNN-based piezoelectric layer, a ratio of a maximum intensity of carbon to a maximum intensity of oxygen in secondary ion mass spectrometry”, it must be noted that what the lithium does and what Kitada controls are features not recited in the claims.
It is noted that the features upon which applicant relies (i.e., “reduces” and “controls”) are not recited in the rejected claims. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
It should be emphasized that “apparatus claims must be structurally distinguishable from the prior art.” MPEP 2114. In In re Danly, 263 F. 2d 844, 847, 120 USPQ 528, 531 (CCPA 1959), it was held that apparatus claims must be distinguished from prior art in terms of structure rather than function. In Hewlett-Packard Co. v Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990), the court held that: “Apparatus claims cover what a device is, not what it does” (emphases in original). To emphasize the point further, the court added: “An invention need not operate differently than the prior art to be patentable, but need only be different” (emphases in original).
In response to applicant’s argument that “Moe discusses carbon and oxygen in the context of a scandium aluminum nitride film, and does NOT disclose or suggest a lithium-containing KNN-based oxide piezoelectric layer.”, it must be noted that it would have been obvious to one having ordinary skill in the art at the time the invention was made to use the claimed material 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 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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 2, and 4-7 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication No. 2018/0138394 A1 to Kitada in view of U.S. Patent Application Publication No. 2021/0280634 A1 to Moe et al.
Kitada discloses a piezoelectric element, piezoelectric element application device, and method of manufacturing piezoelectric element, comprising:
a substrate;
a first electrode formed on the substrate;
a piezoelectric layer formed on the first electrode; and
a second electrode formed on the piezoelectric layer,
wherein the piezoelectric layer contains:
potassium (see Abstract; see paragraphs [0004], [0010], [0017], [0054], [0066], [0077], [0087], and [0088]);
sodium (see Abstract; see paragraphs [0004], [0010], [0017], [0054], [0066], [0077], [0087], and [0088]);
niobium (see Abstract; see paragraphs [0010], [0017], [0054], [0077], and [0087]); and
lithium (see paragraphs [0022], [0082], [0085], [0087]-[0089], [0106], [0139], [0143]-[0147], [0149], [0152], [0170], and [0195]).
However, it fails to disclose the piezoelectric layer containing oxygen and carbon, and in secondary ion mass spectrometry in the piezoelectric layer, a ratio of a maximum intensity of carbon to a maximum intensity of oxygen is 3.1 x 10-3 or more and 9.1 x 10-3 or less.
Moe et al. discloses methods of forming films including scandium at low temperatures using chemical vapor deposition to provide piezoelectric resonator devices and/or high electron mobility transistor devices, comprising:
a layer containing:
oxygen (see paragraphs [0001], [0022], [0037] – [0039]); and
carbon (see paragraphs [0001], [0022], [0037], and [0038]); and
in secondary ion mass spectrometry in the piezoelectric layer, a ratio of a maximum intensity of carbon to a maximum intensity of oxygen is 3.1 x 10-3 or more and 9.1 x 10-3 or less (see paragraphs [0021], [0022], and [0037] – [0044]).
It would have been obvious to one skilled in the art before the effective filling date of the invention to use the materials (oxygen and carbon) and the ratio of maximum intensity disclosed by Moe et al. on the piezoelectric element disclosed by Kitada, for the purpose of improving film morphology.
With regards to claim 2, Kitada discloses:
the piezoelectric layer includes a plurality of piezoelectric films stacked in a direction from the first electrode toward the second electrode (see Figures 4-11).
With regards to claim 4, Kitada discloses:
the piezoelectric layer contains a first transition metal (see paragraphs [0022], [0082], [0085], [0087]-[0089], [0106], [0139], [0143]-[0147], [0149], [0152], [0170], and [0195]).
With regards to claim 5, Kitada discloses:
the piezoelectric layer contains two or more kinds of the first transition metals (see paragraphs [0022], [0082], [0085], [0087]-[0089], [0106], [0139], [0143]-[0147], [0149], [0152], [0170], and [0195]); and
a total content of the first transition metals in the piezoelectric layer is 5 mol% or less (see paragraphs [0330], [0360], [0362], [0366], [0392], [0396], [0425], and [0431]).
With regards to claim 6, Kitada discloses:
a seed layer being provided between the first electrode and the piezoelectric layer (see Figures 4-11); and
crystal orientation of a surface of the piezoelectric layer is preferentially oriented to a (100) plane (see Figures 4-11).
With regards to claim 7, Kitada in view of Moe et al. disclose:
a piezoelectric element application device comprising the piezoelectric element according to paragraph 7 above.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/PEDRO J CUEVAS/Primary Examiner, Art Unit 2896 February 26, 2026
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