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 of group II, claims 8-12, in the reply filed on 09/22/2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 1-7 have been withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected acoustic wave device module product, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 09/22/2025.
Specification
Applicant is respectfully reminded of the proper content of an abstract of the disclosure.
A patent abstract is a concise statement of the technical disclosure of the patent and should include that which is new in the art to which the invention pertains. The abstract should not refer to purported merits or speculative applications of the invention and should not compare the invention with the prior art.
If the patent is of a basic nature, the entire technical disclosure may be new in the art, and the abstract should be directed to the entire disclosure. If the patent is in the nature of an improvement in an old apparatus, process, product, or composition, the abstract should include the technical disclosure of the improvement. The abstract should also mention by way of example any preferred modifications or alternatives.
Where applicable, the abstract should include the following: (1) if a machine or apparatus, its organization and operation; (2) if an article, its method of making; (3) if a chemical compound, its identity and use; (4) if a mixture, its ingredients; (5) if a process, the steps.
Extensive mechanical and design details of an apparatus should not be included in the abstract. The abstract should be in narrative form and generally limited to a single paragraph within the range of 50 to 150 words in length.
See MPEP § 608.01(b) for guidelines for the preparation of patent abstracts.
The abstract of the disclosure is objected to because the elected and examined claims are drawn to a method of manufacture. Contrary to the guidelines for content of the abstract as detailed above, the current abstract does not disclose the steps of the claimed process. Correction is required. See MPEP § 608.01(b).
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
Based upon the guidance in MPEP 2181, the Examiner is not interpreting claim 8 as invoking 35 U.S.C. 112(f). The instant disclosure in claim 8: “a step of polishing a sapphire substrate” (claim 8, line 2); “a step of disposing magnesium oxide on a main surface of the sapphire substrate” (claim 8, line 3); “a step of forming a polycrystalline spinel layer by bringing the sapphire substrate and the magnesium oxide into close contact with each other and by heat treatment” (claim 8, lines 4-5); “a step of removing the magnesium oxide and polishing the polycrystalline spinel layer” (claim 8, line 6); and “a step of forming a piezoelectric substrate on the polycrystalline spinel layer” (claim 8, line 8); are not held to invoke 112(f) based upon the following language from MPEP 2181: “If the claim element uses the phrase ‘step for,’ then Section 112, Para. 6 is presumed to apply…. On the other hand, the term ‘step’ alone and the phrase ‘steps of’ tend to show that Section 112, Para. 6 does not govern that limitation.”); Personalized Media, 161 F.3d at 703–04, 48 USPQ2d at 1886–87 (Fed. Cir. 1998); Mas-Hamilton, 156 F.3d at 1213, 48 USPQ2d at 1016 (Fed. Cir. 1998)”.
If the Applicant wishes to invoke 112(f), then they should indicate as much in their reply to this Office Action.
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.
Claims 8-12 are 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 8 discloses “a step of disposing magnesium oxide on a main surface of the sapphire substrate; a step of forming a polycrystalline spinel layer by bringing the sapphire substrate and the magnesium oxide into close contact with each other and by heat treatment; a step of removing the magnesium oxide and polishing the polycrystalline spinel layer” (lines 3-6; emphasis added). The above noted limitations render the claim indefinite because the reader cannot confidently ascertain the scope and/or metes and bounds of the claim. Regarding the first two italicized sections, the “step of disposing” has already disclosed that the magnesium oxide is “on a main surface of the sapphire substrate”, and as such it surely has already been brought “into close contact” with the sapphire. As such, it is not clear why the step is seemingly redundantly recited. Are the two layers brought even closer together (this is not apparently supported by the original disclosure)? The third italicized portion is indefinite because it is entirely unclear what the “magnesium oxide” is being removed from. Is it removed from the sapphire substrate? Is it removed by formation of the spinel layer? Is it part of the spinel layer or a separate layer? If a separate layer, is it being removed from the spinel layer? The claim does not answer any of these questions of scope and thus is found to be indefinite. As best understood, it seems likely that the “bringing… into close contact” is a redundant and unnecessary recitation and the magnesium oxide is intended to be removed from the sapphire substrate and/or the spinel layer, though this is at best an educated guess as to the intent of the claim.
Claims 9-12 are also rejected as indefinite, so rendered by virtue of their dependency upon the indefinite subject matter of claim 8.
Claim 10 is further rejected as indefinite, because the claim discloses “the magnesium oxide is also disposed on another main surface of the sapphire substrate, and the polycrystalline spinel layer is also formed on the another main surface of the sapphire substrate” (lines 1-3; emphasis added). These limitations are indefinite because they suggest that a single layer of each material is somehow formed on two sides of a substrate, which does not make logical sense. As best understood, it seems likely that the claim should instead recite: “additional magnesium oxide is also disposed on another main surface of the sapphire substrate, and another polycrystalline spinel layer is also formed on the another main surface of the sapphire substrate”.
NOTE: All of the examined claims (i.e. claims 8-12) have been interpreted and examined as best understood according to the 112(b) rejections, above.
Allowable Subject Matter
Claims 8-12 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter: The relevant prior art is cited on the record (including the concurrently mailed PTO-892). Of those references, the most pertinent is to Nakayama et al. (WO 2011/034136 A1), Akselrod (WO 03/048431 A1) and Gregory et al. (WO 2008/097385 A1). The remaining cited art is particularly relevant to the state of the art, but does not provide any contributions pertinent to the claimed invention beyond that which is found in Nakayama, Akselrod and Gregory.
Nakayama discloses the formation of a spinel layer for use with a piezoelectric layer, however the spinel is formed in an entirely different manner than that which is claimed. Nakayama creates a compact of sapphire and magnesium oxide powders and forms those into spinel. On the contrary, the claim (as best understood) requires polishing a [formed] sapphire substrate; disposing magnesium oxide on a main surface of the sapphire substrate; forming the polycrystalline spinel layer by bringing the sapphire substrate and the magnesium oxide into close contact with each other and by heat treatment; and removing the magnesium oxide and polishing the polycrystalline spinel layer. Gregory discloses simply adding a previously formed layer of spinel onto the sapphire/magnesium oxide substrate, and does not appear to disclose any removing of the magnesium oxide. Further, Akselrod discloses adding magnesium oxide to an already formed spinel layer, which is also contrary to the claimed method and its order of operations. There are related semi-additive methods of manufacturing piezoelectric substrates, see, e.g. Goto et al. (US 2019/0379347 A1) and/or Cardwell et al. (US 20220406953 A1); however, these references do not disclose all or even most of the steps of claim 8, and use different materials. While the substitution of materials can at time be considered obvious, it is not obvious in this instant method, and such a rejection would improperly rely upon hindsight reasoning and therefore is not appropriate.
Conclusion
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sunil Singh can be reached at (571)272-3460. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JEFFREY T CARLEY/Primary Examiner, Art Unit 3729