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 .
Terminal Disclaimer
The terminal disclaimer filed on 3/5/26 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of US 11,881,837, US 11,909,378 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Response to Arguments
Applicant’s terminal disclaimer has been fully considered and are persuasive. The previous non-statutory double patent rejections have been withdrawn.
However, upon further consideration, a new ground(s) of rejection is made. See the new double patent rejection and the new prior art rejection as followed.
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 2-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,909,377 in view of Komatsu US 9,035,725.
Patent ‘377 claims a wireless communication device comprising: a filter comprising a surface acoustic wave device comprising: a piezoelectric layer; a (first) acoustic reflector; a (first) interdigital transducer electrode; a second interdigital transducer electrode between the first interdigital transducer electrode and the first reflector; a second acoustic reflector; a high speed layer (acoustic velocity adjustment structure arranged to increase an acoustic wave propagation velocity) over at least a portion of a first region between the first interdigital transducer and the first acoustic reflector (first region including a gap between the first and second interdigital transducers would effectively between the first interdigital transducer and first acoustic reflector as well); the high speed layer is at least partially embedded in a temperature compensation layer; the first region overlaps (includes) a portion of the first interdigital transducer electrode; a low speed layer over a third region over the (first) acoustic reflector; radio frequency circuit element including amplifier or switch, and the filter within a common module package; antenna; transceiver; front end or diversity receive module.
Patent ’377 does not explicitly disclose the first interdigital transducer electrode positioned between the first acoustic reflector and a/the second acoustic reflector.
Komatsu exemplarily discloses a surface acoustic wave device (Fig. 3, 5) with first interdigital transducer electrode between a first and a second acoustic reflectors.
At the time of the filing, it would have been obvious to one of ordinary skill in the art to have made the first interdigital transducer electrode positioned between the first and second acoustic reflectors. The modification would have been obvious because the reflectors can confine the acoustic wave and obvious positioning as taught by Komatsu (see Figs. 1, 3, 5; Col. 7 lines 11-12).
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.
Claim(s) 2, 4-7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Komatsu US 9,035,725.
2. Komatsu discloses a surface acoustic wave device (Figs. 3-6B, etc.) comprising:
a piezoelectric layer (11); and
first acoustic reflector (29C), a second acoustic reflector (29D), and at least a first interdigital transducer electrode (e.g., Fig. 3 item 12; Fig. 5 item 12 at the center) over the piezoelectric layer, the first interdigital transducer electrode positioned between the first acoustic reflector and the second acoustic reflector, a high speed layer (14; Col. 3 lines 46-49) over at least a portion of a first region between the first interdigital transducer electrode and the first acoustic reflector (e.g., see Figs. 4A, 6A; item 14 covers everything, thus covers the first region as claimed).
4. The surface acoustic wave device of claim 2 wherein further comprising a second interdigital transducer electrode (e.g., Fig. 5, one of item 12 on the left side) positioned between the first interdigital transducer electrode (Fig. 5, center item 12) and the first acoustic reflector (29C), the second interdigital transducer electrode being longitudinally coupled to the first interdigital transducer electrode (Fig. 5; Col. 7 lines 45-48).
5. The surface acoustic wave device of claim 4 wherein at least a portion of the first region is in between the first interdigital transducer electrode and the second interdigital transducer electrode (see Fig. 6A).
6. The surface acoustic wave device of claim 2 wherein the first region overlaps at least a portion of the first interdigital transducer electrode (see Figs. 4A, 6A).
7. The surface acoustic wave device of clam 2 further comprising a low speed layer (13; Col. 3 lines 38-42) positioned over the first acoustic reflector in a third region (see Figs. 4A, 6A).
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, 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) 8, 10-15, 17-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Komatsu US 9,035,725 in view of Caron US 2018/0138892.
8, 11-15, 18-21. For brevity, Komatsu discloses a filter including a surface acoustic wave device having a piezoelectric layer, a first acoustic reflector, a second acoustic reflector, a first interdigital transducer electrode, a second interdigital transducer electrode, a high speed layer over a first region, a low speed layer over a third region, and the overlap/encompass of the first region as similarly discussed above (see claims 2, 4-7 above), but does not explicitly disclose for claim 8: a radio frequency module comprising the filter and a radio frequency circuit element coupled to the filter, the filter and the radio frequency element being enclosed within a common module package; for claim 15: a wireless communication device comprising: the filter; an antenna operatively coupled to the filter; a radio frequency amplifier operatively coupled to the filter and configured to amplifier a radio frequency signal; and a transceiver in communication with the radio frequency amplifier.
Caron exemplarily discloses a radio frequency module (Fig. 12, etc.) comprising: a filter (236) and a radio frequency circuit element (234, 232) coupled to the filter, the filter and the radio frequency element being enclosed within a common module package ([0136]); and/or a wireless communication device (Fig. 15) comprising: a filter (263); an antenna (261) operatively coupled to the filter; a radio frequency amplifier ([0141], within RF front end 262) operatively coupled to the filter and configured to amplifier a radio frequency signal; and a transceiver (264) in communication with the radio frequency amplifier.
At the time of the filing, it would have been obvious to one of ordinary skill in the art to have implemented the filter in a radio frequency module and/or wireless communication device of Caron. The modification would have been obvious as obvious implementation of filter in various module/device for RF signal processing as taught by Caron (Figs. 12, 15, etc.; [0136], [0140]).
10. The radio frequency module of claim 8 wherein the radio frequency circuit element is a radio frequency amplifier (Caron: Fig. 12 item 232) arranged to amplify a radio frequency signal, or a switch (234) configured to selectively coupled the filter to a port of the radio frequency module.
17. The wireless communication device of claim 15 wherein the filter is included in a radio frequency front end (Caron: Fig. 15 item 262), or a diversity receive module.
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Komatsu US 9,035,725 in view of Yamaji US 2018/0041186.
3. Komatsu discloses the invention as discussed above, including a first dielectric layer (13) including silicon oxide (SiO2; Col. 5 lines 53-54) as a temperature compensation layer (Col. 5 lines 62-64) and a second dielectric layer (14) including silicon oxynitride (SiON; Col. 6 lines 1-5) as the high speed layer (Col. 3 lines 46-49).
Yamaji exemplarily discloses a surface acoustic wave device (Fig. 2A, etc.) including a piezoelectric layer (210); a first interdigital transducer electrode (211); a first dielectric film (221) including silicon oxide ([0030]); a second dielectric film (223) on the first dielectric film; and a third dielectric film (223) including silicon oxide ([0030]) on the second dielectric film; effectively, a second dielectric layer (223) of oxynitride is embedded in a first dielectric layer (221, 223) of silicon oxide.
At the time of the filing, it would have been obvious to one of ordinary skill in the art to have the second dielectric layer embedded in the first dielectric layer. The modification would have been obvious because moisture protection and oxidation prevention can be provided as taught by Yamaji ([0032]). As a result of the combination, the high speed layer (Komatsu: item 14) is at least partially embedded in a temperature compensation layer (13) between the high speed layer and the first interdigital transducer electrode (12).
Claim(s) 9, 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over the resultant combination of Komatsu US 9,035,725 in view of Caron US 2018/0138892 as applied to claims 8 or 15 above, and further in view of Yamaji US 2018/0041186.
9, 16. The resultant combination discloses the invention as discussed above, including a first dielectric layer (Komatsu: item 13) including silicon oxide (SiO2; Col. 5 lines 53-54) as a temperature compensation layer (Col. 5 lines 62-64) and a second dielectric layer (14) including silicon oxynitride (SiON; Col. 6 lines 1-5) as the high speed layer (Col. 3 lines 46-49).
Yamaji exemplarily discloses a surface acoustic wave device (Fig. 2A, etc.) including a piezoelectric layer (210); a first interdigital transducer electrode (211); a first dielectric film (221) including silicon oxide ([0030]); a second dielectric film (223) on the first dielectric film; and a third dielectric film (223) including silicon oxide ([0030]) on the second dielectric film; effectively, a second dielectric layer (223) of oxynitride is embedded in a first dielectric layer (221, 223) of silicon oxide.
At the time of the filing, it would have been obvious to one of ordinary skill in the art to have the second dielectric layer embedded in the first dielectric layer. The modification would have been obvious because moisture protection and oxidation prevention can be provided as taught by Yamaji ([0032]). As a result of the combination, the high speed layer (Komatsu: item 14) is at least partially embedded in a temperature compensation layer (13) between the high speed layer and the first interdigital transducer electrode (12).
Conclusion
Note that this Office Action is made Non-Final due to the new double rejection and new prior art rejection.
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/A.W/Examiner, Art Unit 2843
/ANDREA LINDGREN BALTZELL/Supervisory Patent Examiner, Art Unit 2843
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