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 without traverse of Group II and species 1, Figs. 6A-6C (claims 6, 10-14) in the reply filed on 1/7/26 is acknowledged. Further, restriction of subspecies A-N and X, Y, Z has been withdrawn, since no burden to examine such subspecies within elected species 1 of Group II invention.
Claims 1-5, 7-9, 15-18 and 19-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group I, species 2, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 1/7/26.
(Note that only claims 6, 10-14 readable on group II, species 1. Furthermore, Applicant’s election of Group I, species 1 in the reply filed on 1/7/26 but fails to identify a listing or claims that readable on further subspecies (A-N, X, Y, Z) has been acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement regarding to further subspecies (A-N, X, Y, Z), the election has been treated as an election without traverse (MPEP § 818.01(a)).
An Office Action on the merits of claims 6, 10-14 as following:
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the subject matters of claims 10-14 entirely must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
(Note that only claim 6 directed to process as represented in method set forth in Fig. 5, and the rest of claims 10-14 appears to be lack of drawings for supporting them. At best the disclosure about ¶¶ [0111], e.g., example 19 discloses some method aspect features but fail to show in any of the provided DWGs).
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Information Disclosure Statement
Acknowledgement is hereby made of receipt of Information Disclosure Statement(s) filed by applicant on 5/7/26, 2/3/26, 10/27/25, 4/1/25, 2/13/25, 10/23/24, 10/18/23, 9/8/23. Due to the excessively lengthy Information Disclosure Statement(s) submitted by applicant, the examiner has given only a cursory review of the listed references. In accordance with MPEP 609.04(a), applicant is encouraged to provide a concise explanation of why the information is being submitted and how it is understood to be relevant. Concise explanations (especially those which point out the relevant pages and lines) are helpful to the Office, particularly where documents are lengthy and complex and applicant is aware of a section that is highly relevant to patentability or where a large number of documents are submitted and applicant is aware that one or more are highly relevant to patentability. Applicant is required to comply with this statement for any non-English language documents. See 37 CFR § 1.56 Duty to Disclose Information Material to Patentability.
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
The abstract should be revised to reflect method invention.
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Objections
Claims 6, 10-14 are objected to because of the following informalities:
It is unclear as to exactly what method entity applicant(s) intend to claim since the preamble is lacking of details for what the method is for (see preamble line 1) which made scope of the claim unclear. In formulate the rejection on the merits the examiner presumes that claims directed to the making of a resonator beam by laser etching (see Applicant(s) disclosure about ¶ [0053] for the support of the claimed method) and claims will be rejected accordingly. Appropriate correction is required.
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 6-18 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.
The phrase: “ A method comprising” (claim 6, line 1) should be more specific to what exactly what method claim is/are directed to (for resonator or proof mass device), the use of:--"A method of making a resonator vibrator device, the method comprising steps of:”--, for clarity of elected method inventive entity.
It is unclear as to how step of “selective laser etching a feature into a resonator beam adjacent to a surface of the resonator beam, wherein the resonator beam comprises a piezoelectric material” (see claim 6, lines 3-4) can be done without providing of a feature (as a raw work piece) first hand.
It is suggested to rewritten above into method claim formats such as below:
--providing a feature material;
selectively etching the feature material by laser etching to form a resonator beam from a piezoelectric material;”—for clarity of the method inventive feature.
The phrases:” wherein the resonator beam comprises a piezoelectric material” (claim 6, line 3) is unclear as to how the piezoelectric material is presented without providing such material prior to the selective laser etching step. Please be more specific.
“forming, via the feature” (claim 6, line 7) is unclear and confusing in that it is not known as to exactly what method inventive feature applicant is/are intended to claim. Please be more specific.
“wherein the feature comprises a recess extending inwards from the surface of the resonator beam into the resonator beam, wherein the recess prevents the conductive material from being in electrical connection across the gap” (claim 10, line 1-3) directed to the feature and its structure elements associated therefrom, however, no active method limitation as to how “a recess” is formed in active method claim formats.
Similar to claim 10 above applied to claims 11-12 (see discussion as set forth in details of claim 10 above).
“forming the gap” (claim 13, line 3) does not agree with that in claim 6, line 7.
No active method limitation existed in claim 14, since no method limitation directed to how the surface of the resonator is a vertical surface is being defining prior to claim 14.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 6, 10-14 as best understood is/are rejected under 35 U.S.C. 103 as being unpatentable over Aoki et al (20120086311) in view of Milne et al (EP4276409).
Aoki et al discloses the claimed method comprising:
selective laser etching a feature into a resonator beam (23) adjacent to a surface of the resonator beam, wherein the resonator beam comprises a piezoelectric material 23 (see discussion in ¶ [0014], Fig. 11B);
depositing a conductive material 54 onto the surface of the resonator beam 23 adjacent to the feature (gap or groove), wherein a first electrode and a second electrode comprises the conductive material 54 (see Fig. 14B, and discussed at ¶ [0108]; and
forming, via the feature, a gap 51/52 within the conductive material on the surface of the resonator beam, wherein the gap electrically isolates the first electrode 54a from the second electrode 54b, respectively (see Fig. 15B, which depicts the above features as claimed).
If it is argued that the Aoki et al does not teach/suggest the specific etching associated with laser then Applicant(s) refer to Milne et al for the teaching of laser etching (see Fig. 5steps 502-5-8). Therefore, it would have been obvious to one having an ordinary skill in the art at the effective filing date of the invention to employ the Milne’ teaching as mentioned above onto invention of Aoki in order to facilitate the fabrication process by utilize the known and available process efficiency operation would result. The motivation for the combination can be found in either reference since both references is in same endeavor field invention.
The Aoki et al further discloses, regarding,
Claim 10, as best understood, regarding wherein the feature comprises a recess extending inwards from the surface of the resonator beam into the resonator beam, wherein the recess prevents the conductive material from being in electrical connection across the gap is met by the Aoki (see embodiment of Fig. 15B where the feature in form of recess 51/52).
Claim 12, as best understood, regarding, wherein the recess forms, within the resonator beam, at least one of a rectangular shape (see Fig. 15B).
Claim 13, regarding, wherein depositing the electrically conductive material onto the surface of the resonator beam occurs before selective laser etching the feature and forming the gap, wherein the feature comprises a portion of the piezoelectric material corresponding to a surface area of the gap that is selective laser etched and removed to form the gap is/are met by the combination teaching of Aoki et al or Milne et al. Since, no inventive method effort would have been when departing from Aoki et al /Milne et al and common general knowledge without exercising any inventive skills.
Claim 14, as best understood regarding, wherein the gap is less than or equal to 250 micrometers, wherein the surface of the resonator beam is a vertical surface of the resonator beam. It would have been an obvious matter of design choice and or Application intended purpose to make or form a particular gap that substantially less or equal to 250 micrometers, since such a modification of gap in a work piece/ component would have involved a mere change of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MINH N TRINH whose telephone number is (571)272-4569. The examiner can normally be reached M-TH ~5:00-3:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Thomas J Hong can be reached at 571-272-0993. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MINH N TRINH/ Primary Examiner, Art Unit 3729 mt
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