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 .
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.
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Claims 1, 8, 16 and 17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 5 of U.S. Patent No. 12,500,573 B2.
As set forth below, the chart identifies which claims from the current application corresponds to conflicting claims found in the cited US Patent.
Current Application
USPAT 12,500,573 B2
1
5
8
5
16
5
17
5
As disclosed in the chart above, the US patent claim 5 substantially recite the same limitations recited in claims 1, 8, 16 and 17 of the current application as listed above. However, the following differences between the US patent claims and the current application claims are present as set forth below:
The US patent claim 5 “first” electrode will correspond to the current claim 1 “lower” electrode, and claim 5 “second” electrode will correspond to the current claim 1 “upper” electrode”; and
The US patent claim 5 has the additional limitation of “a second area that is within about 10% of the first area” which isn’t required in the present application claims 1 and 16.
Therefore, claim 5 of the patent meets claims 1, 8, 16 and 17 of the present application under an “anticipation” analysis in an obviousness-type double patenting rejection.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 21-24, 27 and 28 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nishihara et al. (USPAT 7,786,649 B2, Cited by Applicant).
In regards to claim 21, Nishihara et al. teaches in Figs. 1(a), 1(b) and 5 a radio frequency filter comprising: a plurality of bulk acoustic wave devices (S1, S2, P1 and P2), each of the plurality of bulk acoustic wave devices coupled to at least one other (S2) of the plurality of bulk acoustic wave devices to at least partially cancel a second harmonic response of the at least one other of the plurality of bulk acoustic wave devices (Based on column 6, lines 30-51, Nishihara et al. discloses that the shape of the plurality of bulk acoustic wave devices are decided to eliminate ripple/harmonic/nonlinear response in a pass band of the filter, therefore a second harmonic of “at least one other” bulk acoustic resonator S2 will be canceled by the remaining plurality of bulk acoustic wave resonators), each of the plurality of bulk acoustic wave devices having a piezoelectric layer between a first electrode (Fig. 1(b): 12) and a second electrode (Fig. 1(b): 16) and a unique shape that is different from all the other bulk acoustic wave devices of the filter (See TABLE 2, “Filter #2, each of the resonators S1, S2, P1 and P2 have a different perimeter/circumference from each other).
In regards to claim 22, based on Fig. 5 and TABLE 2, “Filter #2”, the plurality of bulk acoustic wave devices (S1, S2, P1 and P2) includes at least 4 bulk acoustic wave devices with unique shapes.
In regards to claims 23 and 24, based on Fig. 5 and TABLE 2, “Filter #2”, the plurality of bulk acoustic wave devices includes at least two bulk acoustic wave devices (S1 and S2) that are coupled to at least partially cancel each other's second harmonic responses (Based on column 6, lines 30-51, Nishihara et al. discloses that the shape of the plurality of bulk acoustic wave devices are decided to eliminate ripple/harmonic/nonlinear response in a pass band of the filter, therefore a second harmonic of “at least one other” bulk acoustic resonator S2 will be canceled by the remaining plurality of bulk acoustic wave resonators, including S1), the at least two bulk acoustic wave devices having different shapes and having sizes that differ by not more than about 10%, and wherein the at least two bulk acoustic wave devices have perimeters that differ by not more than about 10% [based on Table 2, Filter #2 shown in Fig. 5, S1 has A axis of 198.9 and a B axis of 110.5, resulting in an area of 69,047.34 and a circumference of 991.25, S2 has A axis of 162.4 and a B axis of 135.3, resulting in an area of 69,029.34 and a circumference of 937.19, therefore, the first and second areas are within 1% of each other, and the circumference/perimeter of the first and second acoustic wave devices are about 5% of each other].
Area of Ellipse is equal to A= π*A*B
Perimeter/Circumference of Ellipse is equal to:
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102
476
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In regards to claim 27, based on Fig. 5, wherein the at least two of the plurality of bulk acoustic wave devices (S1 and S2) are coupled in series as resonator sub-elements of a resonator of the filter.
In regards to claim 28, based on Fig. 5, wherein at least two of the plurality of bulk acoustic wave devices (P1 and P2) are coupled in parallel as resonator sub-elements of a resonator.
Allowable Subject Matter
Claims 2-7, 9-15, 18-20, 25 and 26 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.
Conclusion
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/JORGE L SALAZAR JR/Primary Examiner, Art Unit 2843