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 .
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 4 and 10 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
In particular, claim 4 is a product claim directed to a product (piezoelectric element). However, claim 4 also recites process steps (“an electric field in the same direction as a direction of the spontaneous polarization of the one piezoelectric film is applied to the one piezoelectric film, and an electric field in a direction opposite to the electric field applied to the one piezoelectric film is applied to the other piezoelectric film”) are recited in the claim, amounting to process of use limitations. The presence of these limitations renders the claim indefinite, because it is unclear whether infringement occurs when one creates a piezoelectric element to which voltages can be applied as claimed, or whether it occurs when a voltage is actually applied in this manner. See MPEP 2173.05(p)(II).
Claim 10 refers to an actuator comprising a drive circuit and a piezoelectric element according to claim 1, and further requires “wherein the drive circuit applies an electric field in the same direction as a direction of the spontaneous polarization of the one piezoelectric film to the one piezoelectric film, and applies an electric field in a direction opposite to the electric field applied to the one piezoelectric film to the other piezoelectric film.” It is unclear whether the drive circuit constantly applies such a voltage (which is what the claim language appears to suggest), or whether the drive circuit must merely be capable of applying voltages in the claimed manner.
Allowable Subject Matter
Claims 1-3 and 5-9 are allowed.
Claim 4 would be allowable if rewritten 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 and to include all of the limitations of the base claim and any intervening claims.
Claim 10 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: US2013/0099627A1 is the closest prior art. Fig. 4 shows the hysteresis curves corresponding to the example given at [0065] to [0085]. The two piezoelectric layers, 34 and 44 (see Fig. 2G) are 2 µm thick (see [0068] and [0073]). Considering the graph in Fig. 4, and multiplying the E values by the 2 µm thickness to obtain voltage, the coercive voltages for the first and second piezoelectric film satisfy the claimed inequality. However, the value corresponding to the claimed a is 1.3, the value corresponding to x is 0.52 and the value corresponding to y is 0.12, i.e. x not equal to y. (see [0068]). Although the piezoelectric material can be selected as described at [0081]-[0085], there is no indication other PZT materials would have polarization-voltage characteristics as claimed.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LIVIUS R CAZAN whose telephone number is (571)272-8032. The examiner can normally be reached Monday - Friday noon-8:30 pm ET.
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/LIVIUS R. CAZAN/Primary Examiner, Art Unit 3729
