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 1 – 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 claim 1, the statement “in a case where…” seems to render the rest of the claim language in alternative form, but it is not clear. It would seem that there may be other possible scenarios in which the M composition ratio and B side may have different parameters. What if there is a case in which the M composition ratio and B site do not meet molar ratio? It would seem that the claim language would be irrelevant. The meets and bounds of the claims are unclear. Clarification is required.
In claim 3, the statement “in a case where” is indefinite (see claim issue above).
In claims 5, 6, 7, 9, 10, the terminologies “relatively large” and “relatively small” are unclear as such phrases are relative and unclear. Large and small have different scopes that vary based from a point of view.
Claims 2 – 10 are rejected due to their dependency on claim 1.
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.
Claim 1 – 10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 – 10 of copending Application No. US 2024/0114796 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both patent applications disclose a piezoelectric element with a first, second and third electrode, a first and second piezoelectric film, a substrate, a composition ratio, and molar ratio, both the films have polarizations with a hysteresis measured on the films, metal element, an actuator, etc.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Claim(s) 1 – 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fujii et al (US 2016/0240768) in view of Fujii et al (US 2013/0099627).
Fujii et al ‘768 discloses, regarding,
Claim 1, A piezoelectric element comprising: a substrate 12; and a first electrode 14, a first piezoelectric film16, a second electrode 18, a second piezoelectric film 26, and a third electrode 24 which are provided on the substrate in this order (see Fig. 1), wherein both the first piezoelectric film and the second piezoelectric film contain a perovskite-type oxide containing Pb at an A site and containing Zr, Ti, and M at a B site as a main component [0170, 0172, 0173], where M is a metal element selected from V, Nb, Ta, Sb, Mo, and W [0170], in a case where an M composition ratio at the B site of the perovskite-type oxide is defined by M/(Zr + Ti + M), where element symbols each represent a molar ratio, the M composition ratio in the first piezoelectric film is different from the M composition ratio in the second piezoelectric film, both the first piezoelectric film and the second piezoelectric film have spontaneous polarizations aligned in a film thickness direction, and directions of the spontaneous polarizations of the first piezoelectric film and the second piezoelectric film are the same [0040, 0138, 0139], and polarization-electric field hysteresis measured for the first piezoelectric film with the first electrode grounded and the second electrode as a drive electrode, and polarization-electric field hysteresis measured for the second piezoelectric film with the second electrode grounded and the third electrode as a drive electrode are shifted in the same electric field direction with respect to origins thereof [0131, 0132, 0141; see Figs. 13, 6].
Fujii et al ‘627 is being cited for explicitly showing that a first and second piezoelectric film have the same polarization [0119, 0120, 0124; Figs. 4, 8] and the polarization electric field hysteresis of the first and second piezoelectric films with respect to the electrodes are shifted in the same electric field direction [0077, 0078, 0119, 0120; see Figs. 4, 1).
Fujii et al ‘768 further discloses,
Claim 2, Pb composition ratios represented by Pb/(Zr + Ti +M), and Zr composition ratios represented by Zr/(Zr + Ti) and Ti composition ratios represented by Ti/(Zr + Ti) at the B site of the perovskite-type oxides contained in the first piezoelectric film and the second piezoelectric film are the same [0131, 0132, 0141], respectively.
Claim 3, a case where the metal element M is Nb and the M composition ratio at the B site is y, 0.08 ≤ y ≤ 0.15 is satisfied since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Claim 4, the M composition ratio of the perovskite-type oxide contained in the first piezoelectric film and the M composition ratio of the perovskite-type oxide contained in the second piezoelectric film differ from each other by 0.02 or more since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Claim 5, out of the first piezoelectric film and the second piezoelectric film, a film thickness of the piezoelectric film having a relatively small M composition ratio is thinner than a film thickness of the piezoelectric film having a relatively large M composition ratio by 100 nm or more since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Claim 6, the film thickness of the piezoelectric film having a relatively small M composition ratio is 1.5 μm or less since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Claim 7, the film thickness of the piezoelectric film having a relatively large M composition ratio is 2 μm or less since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Fujii et al ‘627 further discloses, regarding,
Claim 8, the first electrode and the third electrode are connected to each other (see Fig. 6M).
Claim 9, out of the first piezoelectric film and the second piezoelectric film, an electric field in the same direction as the direction of the spontaneous polarization is applied to the piezoelectric film having a relatively large M composition ratio, and an electric field in a direction opposite to the direction of the spontaneous polarization is applied to the piezoelectric film having a relatively small M composition ratio (see Figs. 11, 12).
Claim 10, An actuator comprising: the piezoelectric element and a drive circuit that applies a drive voltage to the piezoelectric element, wherein the drive circuit applies an electric field in the same direction as the direction of the spontaneous polarization to the piezoelectric film having a relatively large M composition ratio, and applies an electric field in a direction opposite to the direction of the spontaneous polarization to the piezoelectric film having a relatively small M composition ratio, out of the first piezoelectric film and the second piezoelectric film (see Figs. 8, 9, 13; 0103).
It would have been obvious before the effective filing date of the claimed invention to design the element/actuator as disclosed by Fujii et al ‘768 and to modify the invention per the limitations disclosed by Fujii et al ‘627 for the purpose of providing a piezoelectric device which is high in durability and reliability.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Julio C. Gonzalez whose telephone number is (571)272-2024. The examiner can normally be reached M-F.
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/Julio C. Gonzalez/
Primary Examiner
Art Unit 2831
May 29, 2026
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