DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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).
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Claim 1 of the current application is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of U.S. Patent No.11,012,054; claim 1 of US Pat. 10,541,673 and claim 1 of US patent 11,967,947. Although the claims at issue are not identical, they are not patentably distinct from each other. Please see the comparative analysis below:
The core inventive concept in all four sets of claims is a multiplexer/filter assembly utilizing a hybrid combination of Surface Acoustic Wave (SAW) and Bulk Acoustic Wave (BAW) resonators, where a series BAW resonator is positioned between the SAW resonators and a common node to improve performance (such as quality factor or loading loss) in a carrier aggregation environment.
Rejection over US 11,012,054 ('054 Patent)
Basis: Claim 1 of the current application and Claim 2 of the '054 patent both describe a multiplexer with a first acoustic wave filter comprising SAW resonators and a series BAW resonator coupled between those SAW resonators and a common node.
Reasoning: While the '054 patent specifies the resonators are on different dies , the current application describes this same arrangement in its independent claims. The "two-die" limitation of the '054 patent is either explicitly recited in current Claim 8 or would be considered an obvious design choice for the hybrid filter assembly described in current Claim 1.
2. Rejection over US 10,541,673 ('673 Patent)
Basis: Claim 1 of the '673 patent describes a hybrid filter where a "second type" resonator (BAW) is coupled between "first type" resonators (SAW) and a common node.
Reasoning: The '673 patent specifically claims the 70% SAW resonator threshold, which is also found in current Claim 4. The "higher quality factor" limitation in '673 describes the functional result of the specific physical architecture claimed in the current application.
3. Rejection over US 11,967,947 ('947 Patent)
Basis: Claim 1 of the '947 patent is nearly identical in architecture, featuring a first filter with SAW resonators and a series BAW resonator coupled to a common node.
Reasoning: The primary difference is the description of the second filter (using temperature-compensated SAW resonators in '947 vs. a hybrid BAW/SAW in the current application). However, substituting one known acoustic wave filter type for another within a multiplexer to achieve carrier aggregation is generally considered an obvious variation.
The following table compares Independent Claim 1 of the Current Application with the most similar independent claims of the reference patents.
Feature
Current
Claim 1
US 11,012,054 (Claim 2)
US 10,541,673 (Claim 1)
US 11,967,947 (Claim 1)
Device Type
Filter Assembly
Multiplexer
Filter Assembly
Filter Assembly
Key Component
Frequency multiplexing circuit
Common node
Common node
Common node
Filter 1 Construction
SAW resonators + series BAW resonator
SAW resonators (Die 1) + BAW resonator (Die 2)
Type 1 (SAW) + Type 2 (BAW) series resonator
SAW resonators + series BAW resonator
BAW Position
Between SAW and common node
Between SAW and common node
Between Type 1 and common node
Between SAW and common node
Filter 2 Construction
SAW resonators + series BAW resonator
Second BAW resonator on Die 2
Second acoustic wave filter
Non-TC SAW + TC SAW resonators
Performance/ Ratio Metrics
Not specified in Claim 1 (see Cl. 4)
Not specified in Claim 2 (see Cl. 8)
Type 1 resonators ge 70% of total
Not specified in Claim 1
Target Signal
Carrier Aggregation (split by circuit)
Carrier Aggregation (implied in Cl. 1)
Passband interference mitigation
Carrier Aggregation (see Cl. 7)
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, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Weissman et al. (US 2014/0003300 A1) in view Penunuri (US 6,424,238 B1) and further in view of Yan et al. (US 9,077,311 B2).
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Fig. 7B (left) of Weissman reproduced for ease of reference.
Regarding Claims 1 and 11, Weissman discloses a filter assembly (722, Fig. 7B) and corresponding method of filtering (Fig. 11) comprising:
a frequency multiplexing circuit (Diplexer 779, §0093) coupled between an antenna (Primary Antenna 790, §0086) and a common node (input end of the of the diplexer 779) that separates a carrier aggregation signal (listed in Fig. 2A-2D separating low band, mid band and high band, §0025-§0029) into a first radio frequency carrier in a first pass band (Uplink band A, down link band A, down link band B, Fig. 7B) and a second radio frequency carrier in a second passband (Uplink band B, down link band C, down link band D, Fig. 7B);
a first acoustic wave filter (a triplexer 731 for bands A and B, §0093) coupled to the common node (input end of diplexer 779, §0093), the first acoustic wave filter (Triplexer 731 includes a TX filter 733 for band A, an RX filter 735 for band A, and an RX filter737 for band B, §0093) filters the first radio frequency carrier and includes a first plurality of surface acoustic wave resonators (each of the TX and RX filters is implemented with a plurality of surface acoustic wave (SAW) filters and a plurality of bulk acoustic wave (BAW) filters, §0054) and at least a first series bulk acoustic wave resonator (each of the TX and RX filters is implemented with a plurality of surface acoustic wave (SAW) filters and a plurality of bulk acoustic wave (BAW) filters, §0054) coupled between the first plurality of surface acoustic wave resonators and the common node; and
a second acoustic wave filter (a triplexer 741 for bands C and D, §0093) coupled to the common node, the second acoustic wave filter filters (Triplexer 741 includes a TX filter 743 for band C, an RX filter 745 for band C, and an RX filter 747 for band D, §0093) the second radio frequency carrier and includes a second plurality of surface acoustic wave resonators (each of the TX and RX filters is implemented with a plurality of surface acoustic wave (SAW) filters and a plurality of bulk acoustic wave (BAW) filters, §0054) and at least a second series bulk acoustic wave resonator (each of the TX and RX filters is implemented with a plurality of surface acoustic wave (SAW) filters and a plurality of bulk acoustic wave (BAW) filters, §0054) coupled between the second plurality of surface acoustic wave resonators and the common node.
Weissman, however, is not explicit about connectivity of the combination of SAW and BAW filters in each of the first and second acoustic wave filters.
In a similar field of endeavor Penunuri teaches in Figs. 4-6 different series and shunt combinations of multiple SAW and BAW resonators in each filter 78, 90 and 110. Which includes a first plurality of surface acoustic wave resonators (116 in filter 110, §0054) and at least a first series bulk acoustic wave resonator (112 in Fig. 6 for filter 110, §0054) coupled between the first plurality of surface acoustic wave resonators (116) and the common node (designated by the examiner as N1 in Fig. 6 of Penunuri); Similarly Yan teaches series and shunt combinations of SAW and BAW resonators in filters 600 and 700 in Figs. 5 and 6 respectively (col. 5, lines 35-62).
[AltContent: textbox (N2)][AltContent: textbox (N1)]
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Fig. 6 of Penunuri annotated by the examiner for ease of reference.
It would have been obvious to a person of ordinary skill in the art (PHOSITA) to substitute the series SAW resonator closest to the antenna in Weissman with a BAW resonator as taught by Penunuri to achieve higher power handling and lower loss at the common node.
Claim 11 is an independent method claim that requires separating a carrier aggregation signal into first and second RF carriers using a multiplexing circuit, and then filtering each carrier using a hybrid SAW-plurality/series-BAW filter as stated in claim 1 structurally. Weissman provides the functional framework for this method. Figure 11 and §0148 describe a "process for supporting carrier aggregation" that includes "filtering a first RF signal... prior to transmission" and "filtering a second RF signal... prior to transmission".
While Weissman’s Figure 11 shows these signals going to different antennas, Figures 7A and 8A demonstrate the method of "separating a carrier aggregation signal" using diplexers and triplexers at a single antenna interface. The step of filtering using a SAW plurality and a series BAW resonator is the functional result of a PHOSITA implementing the hybrid filter of Penunuri at the multiplexing nodes identified in Weissman. The motivation is the same as in the structural claim: to prevent the thermal drift and electrode migration that would occur if the process relied solely on SAW resonators for the multi-band carriers.
Claims 2 and 12: Extension of Multiplexing Capability
Claim 2 structurally and claim 12 method-wise requires "at least two additional acoustic wave filters coupled to the common node." This requirement is explicitly satisfied by the multi-band architectures disclosed in Weissman. In Figure 7B, Weissman illustrates an antenna interface circuit (722) where a primary antenna (790) is coupled to a diplexer (779). The diplexer separates low-band and high-band signals, which are then further partitioned by triplexers 731 and 741. Paragraph explains that triplexer 731 includes a TX filter (733), an RX filter (735), and another RX filter (737). Similarly, triplexer 741 includes its own set of three filters.
Claims 3 and 13: Series Resonator Topology
Claim 3 structurally and claim 13 method-wise specifies that the "first plurality of surface acoustic wave resonators include at least a series surface acoustic wave resonator in series with the series bulk acoustic wave resonator." This topology is a standard implementation of the ladder network filters taught by Penunuri. In Figure 6, Penunuri illustrates an acoustic wave ladder filter (110) comprising a series of interconnected resonators. The diagram shows BAW resonators (112) and SAW resonators (116) arranged in a ladder sequence. Paragraph of Penunuri confirms that the SAW die can include "multiple SAW resonators".
Claims 4 and 14: Optimization of Resonator Distribution
Claim 4 structurally and claim 14 method-wise requires that the "first plurality of surface acoustic wave resonators implement at least 70% of resonators of the first acoustic wave filter." While Weissman and Penunuri do not explicitly cite a "70%" figure, this distribution is a direct consequence of the design trade-offs disclosed in Penunuri. Penunuri teaches that SAW resonators are generally smaller and more cost-effective but suffer from thermal drift, whereas BAW resonators are more robust but may have lower coupling coefficients in certain configurations.
In a high-order RF filter, such as a 7-pole or 9-pole ladder filter required for the stringent LTE band rejections described in Weissman , a designer would use BAW resonators only where absolutely necessary—typically for the one or two resonators closest to the antenna where power and heat are most intense. If a designer uses two BAW resonators (one series and one shunt) at the antenna node to provide stability, and uses five SAW resonators for the remaining poles of a 7-pole filter to maintain high selectivity and reduce cost, the SAW resonators would account for 71.4% of the total resonator count. Thus, implementing "at least 70%" using SAW resonators is an obvious optimization of the cost-performance balance taught by Penunuri’s and Yan’s hybrid approach.
Claims 5 and 15: High-Order Filter Complexity
Claim 5 structurally and claim 15 method-wise specifies that the "first plurality of surface acoustic wave resonators include at least five resonators." The necessity of using "at least five" resonators is standard in the art of designing filters for cellular bands, where sharp transition bands are required to prevent self-interference. Penunuri’s Figure 6 and paragraph explicitly describe a ladder filter (110) that can incorporate a die (118) with "four SAW resonators" (116), coupled with another set of resonators to form a complete filter. Claim 1
As Weissman notes in paragraph , LTE bands cover up to 200 MHz and often have very narrow guard bands between transmit and receive frequencies. Achieving sufficient rejection in these environments requires higher-order filters, typically 5, 7, or 9 poles. Given Penunuri’s teaching that the SAW die (118) supports a "plurality" of resonators and specifically illustrating a four-SAW configuration (116), extending this plurality to five resonators to meet the selectivity requirements of the bands listed in Weissman’s Table 1 (e.g., Band 17 and Band 4) is a routine engineering task.
Claims 6 and 16: Hybrid Ladder Network Placement
Claim 6 structurally and claim 16 method-wise requires that the "first acoustic wave filter includes at least a shunt bulk acoustic wave resonator," and that the "first series bulk acoustic wave resonator is coupled between the shunt bulk acoustic wave resonator and the first plurality of surface acoustic wave resonators." This topology is a specific variation of the ladder circuit disclosed in Penunuri. Figure 1 of Penunuri shows a ladder network with a series resonator (12) and a shunt resonator (14). Figure 6 further illustrates that these can be a mix of SAW (116) and BAW (112).
As established in the sample rejection, placing a series BAW resonator at the common node is obvious for power handling. In a standard ladder "Pi" or "T" section, a series element is coupled to a shunt element. Penunuri teaches that both series and shunt positions can be filled by BAW resonators (112) to provide a thermally stable "notch" in the filter response. Coupling the series BAW between a shunt BAW and a downstream plurality of SAW resonators is the conventional way to create a thermally robust front-end "L-section" before transitioning to the more selective SAW internal stages.
Claims 7 and 17: Thermal Compensation Scheme
Claim 7 structurally and claim 17 method-wise specifies that the SAW resonators are "non-temperature compensated" and the series BAW resonator is "temperature compensated." This choice is directly motivated by the thermal physics described in Penunuri. Penunuri’s background section (Col. 1) explains that SAW resonators suffer from "excessive drift... due to high temperature coefficients," while BAW resonators maintain stability at "elevated temperatures".
A PHOSITA would recognize that temperature-compensated SAW (TC-SAW) resonators—which typically require additional material layers like SiO2 to counteract the TCF of the piezoelectric crystal—are more expensive and complex to manufacture. Instead of compensating the entire SAW plurality, the designer would follow Penunuri’s teaching to use an inherently temperature-stable BAW resonator (which is "temperature compensated" by its material nature, such as AlN) for the series entry point where the most heat is generated by the TX signal. Using standard, non-temperature compensated SAW resonators for the rest of the plurality allows the filter to meet performance targets at a lower cost.
Claims 8 and 18: Multi-Die Hybrid Assembly
Claim 8 structurally and claim 18 method-wise requires the SAW plurality to be on a "first die" and the BAW resonators to be on a "second die." This is an explicit, primary teaching of Penunuri. The Abstract states: "The acoustic wave filter includes a substrate (20) supporting a first die (18) and a second die (18). The first die (18) and second die (18) include either a Surface Acoustic Wave (SAW) resonator or a Bulk Acoustic Wave (BAW) resonator".
Paragraph of Penunuri explains that these are "preferably disposed upon individual substrates... to form a pair of dies". This architectural choice is driven by the fact that SAW and BAW devices use fundamentally different manufacturing processes—SAW devices are typically lithographed on piezoelectric crystals, whereas BAW/FBAR devices are deposited as thin films on silicon or sapphire wafers. Penunuri’s method of mounting these different dies on a common ceramic substrate (20) to form a single "filter 10" is the exact structure claimed in Claim 8.
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Fig. 6 of Yan showing typical one port SAW filters in series. While BAW filters connected in Shunt.
Claim 9: Conventional Resonator Port Configuration
Claims 9 structurally and claim 19 method-wise specifies that at least one of the SAW resonators is a "one-port resonator." A one-port SAW resonator is the most fundamental building block of a ladder filter. As disclosed in Yan, a "one-port SAW resonator" consists of a single interdigitated transducer (IDT) placed between two grating reflectors, used as a frequency-determining impedance element.
Yan’s ladder networks in Figures 5, and 6 illustrate individual resonators acting as series or shunt impedance blocks. In the art of acoustic wave filter design, these blocks are conventionally implemented as one-port resonators to create the poles and zeros of the filter's transfer function. A PHOSITA, implementing the "plurality of surface acoustic wave resonators" in the resultant combination of filter assembly of Weissman, ladder filter structured in view of Penunuri and Yan would naturally use one-port SAW resonators to construct the ladder topology as shown in Figs. 5 and 6 of Yan because of the simplicity and prevalence of this type of designs.
Claims 10 and 20: Balanced and Wideband Filtering
Claim 10 structurally and claim 20 method-wise requires at least one of the SAW resonators to be a "double mode surface acoustic wave resonator" (DMS). While Penunuri emphasizes ladder configurations, the technical field encompasses longitudinal-coupled resonators—of which the DMS is a primary example—as standard components for providing wide bandwidth and balanced outputs.
A DMS filter operates by acoustic coupling between multiple IDTs within a single resonant cavity, allowing for a broader passband and the ability to convert a single-ended signal into a balanced (differential) signal. Weissman’s receiver circuits, shown in Figure 3 as LNAs (342), often require balanced inputs to improve noise immunity. A PHOSITA would find it obvious to substitute a portion of the SAW plurality on Penunuri’s die with a DMS section to achieve these known benefits of wide bandwidth and balanced-to-unbalanced (balun) transformation.
Conclusion
The prior arts, Rousu (US20140307599) made of record and not relied upon is considered pertinent to applicant's disclosure. Rousu teaches frequency multiplexing sharing of the antenna by two or more frequency band allocations to enable simultaneous use of different radio access technologies, MIMO or Carrier Aggregation through a single antenna.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HAFIZUR RAHMAN whose telephone number is (571)270-0659. The examiner can normally be reached M-F: 10-6.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jessica Han can be reached on (571) 272-2078. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HAFIZUR RAHMAN/Primary Examiner, Art Unit 2843.
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