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.
Claims 1-15 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 1 discloses “A laminated piezoelectric element comprising: a piezoelectric film, wherein the laminated piezoelectric element is obtained by laminating a plurality of layers of piezoelectric films each including a piezoelectric layer consisting of a polymer-based piezoelectric composite material that contains piezoelectric particles in a matrix containing a polymer material, and electrode layers formed on both surfaces of the piezoelectric layer, and in a case where a value obtained by dividing a capacitive reactance Xc of the piezoelectric film at a frequency of 1 kHz by an equivalent series resistance ESR is set to 1, a value XE20 obtained by dividing the capacitive reactance Xc at a frequency of 20 kHz by the equivalent series resistance ESR is in a range of 0.6 to 1.5” (lines 1-10). The entirety of this claim is replete with errors, makes no logical sense, contradicts itself, and uses conditional language which renders it indefinite.
First, the preamble states that the claims are directed to a “laminated piezoelectric element” and that the element comprises “a piezoelectric film” (expressly recited as singular). The claim continues by disclosing that the “laminated piezoelectric element is obtained by laminating a plurality of layers of piezoelectric films each including a piezoelectric layer…[etc.]” The first two limitations completely contradict one another. Put simply, the product cannot comprise a single piezoelectric film, and “a plurality of layers of piezoelectric films”. The Applicant is strongly encouraged to actually decide what structures comprise the product and to claim those. Does the laminated piezoelectric element comprise a single piezoelectric film, or does it comprise a plurality of layers of piezoelectric films, and a plurality of piezoelectric polymer-based composite material, and electrode layers on both surfaces of the piezoelectric layer? Further, the reader cannot possibly guess what is meant by “both surfaces of the piezoelectric layer”, as it is highly unlikely that the layer is an imaginary two-dimensional object, and almost certainly exists in three-dimensions, and therefore does not only have two (i.e. both) surfaces. Even further still, why does the applicant apparently insist on renaming the piezoelectric material three times? Why not simply disclose what it is at the outset? It is quite confusing that the product is disclosed as a piezoelectric film, but actually it’s a plurality of piezoelectric films, but actually the plurality of piezoelectric films are each a piezoelectric layer, but actually the piezoelectric layer is a polymer-based piezoelectric composite material. This convoluted set of limitations is entirely unnecessary and renders any confident interpretation impossible. This limitation is further found to be indefinite because the claims are not directed to a method of manufacture, yet despite that fact, they rely upon reciting a method of manufacturing the statutorily claimed product. From MPEP 2113: “As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith.” In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972).” As such, the reader cannot possibly surmise how the claimed product, which is apparently intended to be manufactured in a certain way, would differ from any other prior art product in light of the method in which the Applicant would prefer it be manufactured.
The claim also recites an entirely indefinite conditional statement which is not satisfied in nearly every mathematical instance possible. The claim states that “in a case where a value obtained by dividing a capacitive reactance Xc of the piezoelectric film at a frequency of 1 kHz by an equivalent series resistance ESR is set to 1, a value XE20 obtained by dividing the capacitive reactance Xc at a frequency of 20 kHz by the equivalent series resistance ESR is in a range of 0.6 to 1.5” This purported limitation is literally meaningless in a nearly infinite number of instances wherein “a value obtained… is NOT set to 1”. As such, the reader cannot possibly even guess how this supposed limitation is intended to further limit or define the claimed product. This is especially true because, as was already noted, the claims are not directed to a method. Accordingly, there is no calculating done because the claim is directed to a product. If the Applicant wishes to disclose some material property or the like which is somehow pertinent to the claimed product, then they are strongly encouraged to do so, rather than to recite a rare conditional occurrence requiring a method which is not part of the claimed product. Further, the claim does not even disclose what “XE20” is intended to be a value of… Is it resistance? Or is it capacitance? Or is it “reactance”? or is it some other value/variable/property? Is it a unitless number? The reader is left to ask: “0.6 to 1.5, of what?” Even further still, the claim does not indicate the value of Xc or of the ESR, so it is literally impossible to arrive at the 0.6 to 1.5 (unitless?) result. On the other hand, the reader could simply assign whatever value they desire to the Xc and the ESR and thereby always arrive at the range of 0.6 to 1.5, but this does not make the claim any more understandable and does not help the reader know how this is intended to actually limit or define the structures of the claimed product. There are no answers to any of the above questions in the claim language, which renders it impossible to determine the scope or metes and bounds of this ambiguous claim.
This claim has been examined as best understood as follows:
1. A laminated piezoelectric element comprising: a plurality of layers of piezoelectric films consisting of a polymer-based piezoelectric composite material that contains piezoelectric particles in a matrix containing a polymer material, and electrode layers formed on two surfaces of each piezoelectric film, and in a case where a value obtained by dividing a capacitive reactance Xc of the piezoelectric film at a frequency of 1 kHz by an equivalent series resistance ESR is set to 1, a value XE20 obtained by dividing the capacitive reactance Xc at a frequency of 20 kHz by the equivalent series resistance ESR is in a range of 0.6 to 1.5; and in a case where a value obtained by dividing a capacitive reactance Xc of the piezoelectric film at a frequency of 1 kHz by an equivalent series resistance ESR is not set to 1, a value XE20 equals any other possible number known; wherein XE20 can be any property.
The Applicant is again strongly encouraged to decide what the inventive structures of the claimed product actually are and to recite as much in the claims.
Claims 2-15 are also rejected as indefinite, so rendered by virtue of their dependency upon the indefinite subject matter of claim 1.
Claims 3 and 7 are further rejected as indefinite, because the claims disclose “the value XE20 is in a range of 0.8 to 1.3” (line 2). These claims are indefinite for the same reasons as claim 1, because the reader cannot possibly know what unit is associated with the claimed range and cannot know what XE20 even refers to.
Claims 5, 9, 12 and 14 are each further rejected as indefinite, because the claims disclose “the piezoelectric film laminated at least on an outermost layer of the laminated piezoelectric element includes a protective layer laminated on a surface of the electrode layer on the outermost layer sides opposite to the piezoelectric layer, the protective layer has a hole portion penetrating from a surface to the electrode layer, and the laminated piezoelectric element has a conductive member disposed in the hole portion, and a conductive wire disposed on the surface of the hole portion of the protective layer and electrically connected to the electrode layer via the conductive member” (emphasis added). These claims are replete with indefiniteness issues. First, the claims repeatedly alternate between defining individual structures which are part of the laminated piezoelectric element, to instead defining the piezoelectric element itself as if it is somehow separate from the components previously disclosed. This is deeply confusing and ambiguous.
The claim recites that there is a “piezoelectric film laminated on an outermost layer of the laminated piezoelectric element”. But this recitation explicitly contradicts the already very indefinite language of claim 1 which requires that the “piezoelectric film” is not on the piezoelectric element but is instead a component part of the product. Is the film on the piezoelectric element, or is it part of the element? What is the outermost layer? Is it a layer of the already disclosed structures? If so, which material? Is it a newly recited outermost layer of the laminated piezoelectric element, which is a different material or structure than those which were previously recited? Is it a previously disclosed electrode or polymer or film or layer? The reader cannot possibly surmise the answers to these questions.
Second, how does the piezoelectric film include a protective layer, when it has already been disclosed that the film includes a piezoelectric layer and electrode layers, but no protective layer?
Third, there is a lack of antecedent basis for “the outermost layer sides opposite to the piezoelectric layer”. Further, the reader cannot possibly guess which layer is being modified here.
Fourth, “the protective layer has a hole portion penetrating from a surface to the electrode layer,” is indefinite because the reader is given no information whatsoever as to which “surface” is being referred to or even which structure possesses the purported “surface”.
Fifth, the claim yet again reverts to defining the laminated piezoelectric element as having a conductive member in the hole, which contradicts the previous language that indicates that the hole is in the protective layer, and not in the overall laminated piezoelectric element.
Sixth, “the surface of the hole” is indefinite, because it is highly unlikely that the hole has only a single surface, as it is not an imaginary object.
The Applicant is encouraged to review and edit all of the claims to ensure that they are readable and understandable, and to disclose definite limitations to the claimed product.
Claims 6, 10, 13 and 15 are each further rejected as indefinite, because the claims disclose “The laminated piezoelectric element according to claim 5, wherein in a case where an opening area of the hole portion is defined as A, a thickness of the electrode layer is defined as t, and a capacitance of the laminated piezoelectric element is defined as C, C/(A × t) is 260 μF/mm3 or less” (claim 6; lines 1-4; emphasis added); “The laminated piezoelectric element according to claim 9, wherein in a case where an opening area of the hole portion is defined as A, a thickness of the electrode layer is defined as t, and a capacitance of the laminated piezoelectric element is defined as C, C/(A × t) is 260 μF/mm3 or less” (claim 10; lines 1-4; emphasis added); “The laminated piezoelectric element according to claim 12, wherein in a case where an opening area of the hole portion is defined as A, a thickness of the electrode layer is defined as t, and a capacitance of the laminated piezoelectric element is defined as C, C/(A × t) is 260 μF/mm3 or less” (claim 13; lines 1-4; emphasis added); and “The laminated piezoelectric element according to claim 14, wherein in a case where an opening area of the hole portion is defined as A, a thickness of the electrode layer is defined as t, and a capacitance of the laminated piezoelectric element is defined as C, C/(A × t) is 260 μF/mm3 or less” (claim 15; lines 1-4; emphasis added).
Each of these claims is indefinite for effectively the same reasons as claim 1. The conditional “in a case where” language is entirely indefinite, as the reader cannot possibly guess what would happen in literally any other “case”. What happens in a case where the opening area is not defined as A, or the thickness is not defined as t, or the capacitance is not defined as C? Moreover, disclosure of three entirely undefined variables render this supposed equation very difficult to solve for and make it virtually impossible to know how it is intended to limit the product structure. Further still, the run-on nature of the claim language makes it impossible to know where the definition of “C” ends. Is it the unknown, ill-defined and nebulous “C” only? Or is it instead “C, C/(A × t)”? Even further still, the claim does not even inform the reader what they are calculating at all. What is the purported “260 μF/mm3 or less” even associated with? What is it defining? All we know (or can at least guess) is that it is not area, thickness or capacitance (because capacitance cannot be calculated with capacitance in the formula along with other variables, especially given that the three variables each have no assigned value). There is no information in the claims to answer any of these questions and thus these claims are entirely ambiguous and indefinite.
NOTE: All of the examined claims (i.e. claims 1-15) have been interpreted and examined as best understood according to the 112(b) rejections, above.
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 of this title, 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.
Claims 1-3 and 7 are rejected under 35 U.S.C. 102(a(1)) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over JP S61294999 A (Translations of Title and Inventor name (斉藤 史郎 ?) not found in prior art search; this reference hereinafter referred to as “Ref. ‘999”).
Regarding claim 1, Ref. ‘999 discloses laminated piezoelectric element (4) comprising: a piezoelectric film (2a, 2b and 3) (Abstract; figs. 1-2 and 6), wherein the laminated piezoelectric element is obtained by laminating a plurality of layers (at least two) of piezoelectric films each including a piezoelectric layer (3) consisting of a polymer-based piezoelectric composite material that contains piezoelectric particles in a matrix containing a polymer material (Abstract; fig. 6; pp. 2-3, lines 51-53 and 1-8; pg. 4, lines 20-24), and electrode layers (2a, 2b) formed on both surfaces of the piezoelectric layer (pp. 2-3, lines 53 and 1-2; pg. 4, lines 24-25), and a capacitive reactance range of 0.6 to 1.5 (0.6 to 0.8: Abstract; pg. 2, lines 24-29 and 40-44; pg. 3, lines 25-27; pg. 4, lines 15-18). Ref. ‘999, however, does not explicitly disclose a value obtained by dividing a capacitive reactance Xc of the piezoelectric film at a frequency of 1 kHz by an equivalent series resistance ESR is set to 1, a value XE20 obtained by dividing the capacitive reactance Xc at a frequency of 20 kHz by the equivalent series resistance ESR.
However, the product of the claim is ultimately defined by its structure and its materials properties, and not by a preferred method of calculating or arriving at such properties. As such, it is obvious to any POSITA that because Ref. ‘999 anticipates the actual claimed capacitive reactance property range, and therefore it is naturally expected that one can arrive at that range disclosed by Ref. ‘999, in anticipation of the claimed range, by way of the preferred calculation.
Regarding claim 2, Ref. ‘999 discloses the laminated piezoelectric element according to claim 1, wherein the polymer material (PVDF and PVF2-TrFE are both viscoelastic at room temperature) has viscoelasticity at room temperature (pg. 3, lines 4-8).
Regarding claim 3, Ref. ‘999 discloses the laminated piezoelectric element according to claim 1, wherein the value XE20 is in a range of 0.8 to 1.3 (0.8: Abstract; pg. 2, lines 24-29 and 40-44; pg. 3, lines 25-27; pg. 4, lines 15-18).
Regarding claim 7, Ref. ‘999 discloses the laminated piezoelectric element according to claim 2, wherein the value XE20 is in a range of 0.8 to 1.3 (0.8: Abstract; pg. 2, lines 24-29 and 40-44; pg. 3, lines 25-27; pg. 4, lines 15-18).
Claims 4, 8 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Ref. ‘999, in view of Miyoshi (JP 2014-014063 A).
Regarding claims 4, 8 and 11, Ref. ‘999 discloses all of the elements of the current invention as detailed above with respect to claims 1, 2 and 3, respectively. Ref. ‘999, however, does not explicitly disclose that the electrode layers each have a thickness of 1 μm or less.
Miyoshi teaches that a similar laminated piezoelectric element (12) (Abstract; figs. 1-2) is well known comprising: a piezoelectric film (10), wherein the laminated piezoelectric element is piezoelectric films each including a piezoelectric layer (24, 26) consisting of a polymer-based piezoelectric composite material that contains piezoelectric particles in a matrix containing a polymer material (figs. 1-2 ; pg. 5, par. 6; pp. 7-8, final line through line 12), and electrode layers (14 and 16) formed on both surfaces of the piezoelectric layer wherein the electrode layers each have a thickness of 1 μm or less (figs. 1-2; pg. 7, “Description of Embodiments” section, par. 3; pg. 11, par. 10).
Before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to have modified the current invention of Ref. ‘999 to incorporate the preferred electrode thickness of Miyoshi. POSITA would have realized that any known electrode thickness can be easily and readily incorporated into the piezoelectric device of Ref. ‘999 to achieve the desired capacitance, resistance to peeling, electrical connectivity and the like. Moreover, there is no indication in the instant disclosure that any special electrode or electrode thickness was devised or that any surprising results were derived from simply using the old laminated piezoelectric element of Ref. ‘999 with the well-known thin electrode of Miyoshi. This combination would have been easily performed with knowledge of the commonly understood advantages and with reasonable expectations of success.
Allowable Subject Matter
Claims 5-6, 9-10, and 12-15 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.
The following is a statement of reasons for the indication of allowable subject matter: The prior art cited above, in the record and on the concurrently attached PTO-892 do not disclose or teach all of the limitations of these claims. Specifically, the prior art does not disclose the piezoelectric film laminated at least on an outermost layer of the laminated piezoelectric element includes a protective layer laminated on a surface of the electrode layer on the outermost layer sides opposite to the piezoelectric layer, the protective layer has a hole portion penetrating from a surface to the electrode layer, and the laminated piezoelectric element has a conductive member disposed in the hole portion, and a conductive wire disposed on the surface of the hole portion of the protective layer and electrically connected to the electrode layer via the conductive member. Nor does the prior art disclose that in a case where an opening area of the hole portion is defined as A, a thickness of the electrode layer is defined as t, and a capacitance of the laminated piezoelectric element is defined as C, C/(A × t) is 260 μF/mm3 or less.
These features are also considered non-obvious, as there is no motivation to modify the cited prior art to teach the limitations in a further combination rejection. Such a rejection would improperly rely upon hindsight reasoning. Accordingly, the features of claims 5-6, 9-10 and 12-15, as best understood, are found to be novel and unobvious.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Please refer to the concurrently mailed PTO-892, as all of those cited references are considered to be pertinent to the claimed invention. For example, Hyuga (US 2008/0045838 A1) is held to be of particular relevance to the claimed invention (see at least elements 10 and 10a-10e: fig. 4; pars. 0070-0072).
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/JEFFREY T CARLEY/Primary Examiner, Art Unit 3729
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