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 obviousness-type 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claim 1 is rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-5 of U.S. Patent No. 11,765,814. Although the conflicting claims are not identical, they are not patentably distinct from each other because the subject matter recited in the claims of the instant application are now broader than the features included in the claims of the ‘814 patent. For example, claim 1 of the instant application now recites some of the features in claim 1 of the ‘814 patent (such as the substrate and the first and second overlapping filters), but does not include features relating to the transmitter and the receiver as in claim 1 of the ‘814 patent. Therefore, as the instant claims are a broader version of the patented claims, these claim sets anticipate each other and are rejected under obviousness-type double patenting.
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 § 103
The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Pub. 2017/0012603 to Reisner in view of U.S. Patent 11,201,119 to Leitgeb and U.S. Patent Pub. 2003/0169575 to Ikuta.
Regarding claim 1 as amended, Reisner teaches:
a substrate having multiple layers with a first layer at an upper side of the substrate and a second layer underneath the first layer, the first layer including an upper surface, the second layer including an upper surface such that a cavity is defined by the first layer and a rectangular shaped floor provided by the upper surface of the second layer, (see figures 10-11, 18, paragraphs [0015]-[0017], [0027]-[0030]) including a multiple layers (paragraphs [0091]–[0096]) and regarding the “cavity” i.e., the second filter lies within a “cavity” of the first filter, see figures 10-14 and 18; and see paragraphs [0077]-[0078]) and the support structures (172, 176, 220) for the first filter device).
a stopper layer implemented on the upper surface of the second layer to form a boundary around the cavity (see 174 in Fig. 10 section [0078]).
Regarding the amended features below of contact pads and support structures:
“a first set of contact pads implemented on the upper surface of the first layer so as to be within a first rectangular region that overlaps with the rectangular floor of the cavity,
a second set of contact pads implemented on the rectangular shaped floor of the cavity,
first and second sets of support structures implemented over the first and second sets of contact pads, respectively”,
see paragraphs [0077]-[0078] of Reisner and the support structures (172, 176, 220) for the first filter device, regarding the contact pins, see Figs. 5-7B as described in sections [0063] to [0067] and [0071] to [0072], which show input contact pads and antenna pads (134, 136) and Figs.10-14 as described in sections [0076] to [0081], which show the mounting of the filters and antennas and their contact pads in the rectangular cavity.
Therefore, although Reisner teaches two antenna pins in Fig. 6 (one on each TX) and Fig. 6 does show 2 input pins in the corners of the rectangle, as the two antenna pins are not in the corners of the rectangular cavity (see also section [0080], which teaches that this type of mounting (Fig. 6) is also shown in Fig. 12, if using only 1 TX filter, it would have been obvious to mount two antenna pins in the corners of a rectangular cavity for stability purposes, as having contact pads/pins at all 4 corners of a rectangular shaped cavity floor is more stable than the 3 mounts as shown in Fig. 7B.
For completeness however, in order to show electrical contact pins at all 4 corners of stacked structures, Leitgeb is added.
In an analogous art, Leitgeb teaches a high frequency chip and antenna stacked structure shown in Fig. 1A, where the rectangular cavity underneath has connections as shown in Fig. 1B which have the connection electrodes 153/163 at all four corners of the rectangular area. See column 14, line 25 to column 15, line 60.
Therefore, as Reisner teaches 2 antenna and 2 input pins in Fig. 6 (and shows only three of four conners with connectors) and as Leitgeb teaches electrical contact pads in all four conners it would have been obvious to modify Reisner with the connector arrangement of Leitgeb, as the four corners of connectors offers more stability in mounting than the three connector pads/pins shown in Fig. 7B of Reinser.
Regarding the amended features of:
“transmit and receive surface acoustic wave filter devices positioned over the first and second sets of support structures, respectively, such that the receive surface acoustic wave filter device is mounted on the substrate so as to be in a space defined by an underside of the transmit surface acoustic wave filter device and the first set of support structures, each of the first set of support structures dimensioned to provide sufficient height in the space to accommodate the receive surface acoustic wave filter device”,
“surface acoustic wave filter device including two output pins each connected to the respective one of the two input pins of the first set of contact pads, the receive surface acoustic wave filter device including two input pins each connected to the respective one of the two output pins of the second set of contact pads”,
see Figs. 1-4 of Reisner, which teach transmit and receive filters, and see the first and second stage filters 130a-b, mounted on the substrate with respective support structures, such that at least a portion of the second filter device is positioned in a space defined by an underside of the first filter device (i.e., the second filter lies within a first filter, see figures 10-14 and 18; and see paragraphs [0077]-[0078]) and the support structures (172, 176, 220) for the first filter device) and although sections [0026] and [0058] of Reisner teach surface acoustic wave filters, Ikuta is added to more explicitly teach the use of surface acoustic wave filters.
In an analogous art, Ikuta teaches a multi-level RF device which includes surface acoustic wave filters. As shown in Figs. 1 and 5-8, and as described in paragraphs [0048]-[0055], [0060]-[0069] and [0100]-[0112], Ikuta teaches that the stacked filter devices are surface acoustic wave filters, as now recited.
Therefore, as Reisner does mention surface acoustic wave filters and as Ikuta explicitly teach multi-level filters which are surface acoustic wave filters, it would have been obvious to one of ordinary skill in the art to use these types of filters in Reisner, for the reasons as in the cited sections of Reisner and Ikuta.
Response to Arguments
Applicant’s arguments have been considered but are not persuasive. As described above, the combination of Reisner and Ikuta would teach and/or render obvious using surface acoustic wave filters, as now recited.
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/STEVEN S KELLEY/Primary Examiner, Art Unit 2646
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