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 .
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claim 9 is provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 12 of copending Application No. 18/635,320 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
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.
Claims 1, 12, 13 and 17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 12 and 13 of co-pending Application No. 18/635,320.
This is a provisional nonstatutory double patenting rejection.
As set forth below, the chart identifies which claims from the current application corresponds to conflicting claims found in the co-pending application.
Current Application
Co-pending application 18/635,320
1
12
12
12
13
13
17
12
As disclosed in the chart above, the co-pending application claims 12 and 13 substantially recite the same limitations recited in claims 1, 12, 13 and 17 of the current application as listed above. However, the following differences between the co-pending application and the current application claims are present as set forth below:
The co-pending application claim 12 has the additional limitation of “a first dielectric material layer disposed between the first electrode structure and the piezoelectric material” which isn’t required in claim 1 of the present application;
The co-pending application claim 12 “acoustic reflector” will correspond to the present application claim 12 “means for promoting propagation of surface acoustic wave in a first direction” and the “acoustic absorber” will correspond to the present application claim 12 “limiting propagation of surface acoustic waves on the substrate in second direction”; and
The co-pending application claim 12 recites an apparatus while the present application claim 17 recited a generic method. However, the apparatus structure will read on the co-pending application claim 17 method since the generic method of the present application claim 17 will result in the structure recited in co-pending application claim 12.
Therefore, claims 12 and 13 of the co-pending application meets claims 1, 12, 13 and 17 of the present application under an “anticipation” analysis in an obviousness-type double patenting rejection.
Claim 8 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 12 of copending Application No. 18/635,320 in view of Komatsu et al. (US2014/0144237 A1).
This is a provisional nonstatutory double patenting rejection.
As discussed above, the co-pending application claim 12 meets claim 1 of the present application. However, in regards to claim 8 of the present application, the co-pending application claim 12 does not teach: wherein the piezoelectric material is made of lithium niobate or zinc oxide or gallium nitride or aluminum nitride or lithium tantalate or quartz (claim 12 of the co-pending application piezoelectric material is “generic”).
Komatsu et al. teaches in Figs. 1A and 1B an acoustic wave device comprising a piezoelectric layer (602). Based on paragraph [0058], the piezoelectric layer is made from lithium niobate.
At the time of filing, it would have been obvious to one of ordinary skill in the art to have modified the co-pending application claim 12 and have replaced the generic piezoelectric material with the specific piezoelectric material of lithium niobate as taught by Komatsu et al. (See Paragraph [0058]) because such a modification would have been a well-known in the art substitution of art-recognized alternative/equivalent for a piezoelectric material that able to perform the same function.
Claims 1, 11-13 and 17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of co-pending Application No. 18/635,341.
This is a provisional nonstatutory double patenting rejection.
The co-pending application claim 8 substantially recite the same limitations recited in claims 1, 11-13 and 17 of the current application. However, the following differences between the co-pending application and the current application claims are present as set forth below:
The co-pending application claim 8 has the additional limitation of “wherein: the piezoelectric material has a first dielectric strength, and the dielectric material region has a second dielectric strength greater than the first dielectric strength.” which isn’t required in claim 1 of the present application;
The co-pending application claim 8 “acoustic reflector” will correspond to the present application claim 12 “means for promoting propagation of surface acoustic wave in a first direction” and the “acoustic absorber” will correspond to the present application claim 12 “limiting propagation of surface acoustic waves on the substrate in second direction”; and
The co-pending application claim 8 recites an apparatus while the present application claim 17 recited a generic method. However, the apparatus structure will read on the co-pending application claim 17 method since the generic method of the present application claim 17 will result in the structure recited in co-pending application claim 8.
Therefore, claim 8 of the co-pending application meets claims 1, 11-13 and 17 of the present application under an “anticipation” analysis in an obviousness-type double patenting rejection.
Claim 8 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of copending Application No. 18/635,341 in view of Komatsu et al. (US2014/0144237 A1).
This is a provisional nonstatutory double patenting rejection.
As discussed above, the co-pending application claim 8 meets claim 1 of the present application. However, in regards to claim 8 of the present application, the co-pending application claim 8 does not teach: wherein the piezoelectric material is made of lithium niobate or zinc oxide or gallium nitride or aluminum nitride or lithium tantalate or quartz (claim 8 of the co-pending application piezoelectric material is “generic”).
Komatsu et al. teaches in Figs. 1A and 1B an acoustic wave device comprising a piezoelectric layer (602). Based on paragraph [0058], the piezoelectric layer is made from lithium niobate.
At the time of filing, it would have been obvious to one of ordinary skill in the art to have modified the co-pending application claim 8 and have replaced the generic piezoelectric material with the specific piezoelectric material of lithium niobate as taught by Komatsu et al. (See Paragraph [0058]) because such a modification would have been a well-known in the art substitution of art-recognized alternative/equivalent for a piezoelectric material that able to perform the same function.
Claim Interpretation
Note that the rejections below groups the apparatus claim with corresponding method claims, since the method claims are generic forming steps in which the apparatus structure would anticipate such steps.
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-3, 5, 8 and 10-19 are rejected under 35 U.S.C. 103 as being unpatentable over Gorisse et al. (US2013/0214878 A1) in view of Yip (US2003/0214371 A1).
In regards to claims 1, 10 and 17, Gorisse et al. teaches in Figs. 8 and 9 a piezoelectric isolator comprising:
A substrate comprising a piezoelectric material (Fig. 8: Piezo);
A piezoelectric transmitter (Fig. 8: R1E), disposed on the substrate, having a first electrode structure (top electrode);
A piezoelectric receiver (R1s or R2s), disposed on the substrate, having a second electrode structure (respective top electrode), wherein the piezoelectric transmitter is acoustically coupled to the piezoelectric receiver at least partially through the piezoelectric material;
An acoustic reflector (Cp2, see Paragraph [0055], where Cp2 is designed to have the highest possible reflection coefficient), wherein the piezoelectric transmitter is disposed between the acoustic reflector (Cp2) and the piezoelectric receiver (R1s or R2s); and
Based on related Fig. 9 and Paragraph [0059], the transmitter and receivers’ electrodes are each formed from an IDT electrode structure forming a “first” IDT for the transmitter and a “second” IDT for either of the receivers.
In regards to claims 2 and 18, based on Fig. 8, wherein the acoustic reflector (Cp2) comprises a periodic structure.
In regards to claim 5, based on Fig. 8, the piezoelectric transmitter (R1E) defines a primary axis of acoustic propagation that is parallel to a direction of maximum piezoelectric coupling of the substrate (the acoustic propagation will follow the path of Cp1 for maximum piezoelectric coupling between the transmitter and receiver(s), therefore the acoustic propagation primary axis between the transmitter and a respective receiver will be parallel to a direction of maximum piezoelectric coupling of the substrate).
In regards to claim 8, based on paragraph [0026], the piezoelectric material is made from lithium niobate.
In regards to claim 11, based on Fig. 8 and Paragraph [0024], the region (Cp1) is formed of a dielectric material inserted in the piezoelectric material, based on Fig. 8, the region (Cp1) is disposed between the piezoelectric transmitter (R1E) and the piezoelectric receiver (R1s or R2s), wherein: the piezoelectric material without (Cp1) dielectric will have a first dielectric strength, and the dielectric material region with (CP1) will necessarily have a second dielectric strength different from the first dielectric strength.
In regards to claims 12 and 13, Gorisse et al. teaches in Figs. 8 and 9 a piezoelectric isolator, comprising: a substrate comprising a piezoelectric material (Fig. 8: Piezo);
A piezoelectric transmitter (Fig. 8: R1E) disposed on the substrate;
A piezoelectric receiver (R1s or R2s), disposed on the substrate, acoustically coupled to the piezoelectric transmitter at least partially through the piezoelectric material; and
Means for promoting propagation of surface acoustic waves (reflector Cp2, see Paragraph [0055], where Cp2 is designed to have the highest possible reflection coefficient) in a first direction on the substrate.
In regards to claim 14, based on Fig. 8, the piezoelectric transmitter (R1E) is disposed between the acoustic reflector (Cp2) and the piezoelectric receiver (R1s or R2s).
In regards to claim 15, based on Fig. 8, wherein the acoustic reflector (Cp2) comprises a periodic structure.
Gorisse et al. does not teach: in regards to claims 1 and 17, an acoustic absorber, wherein the piezoelectric receiver is disposed between the acoustic absorber and the piezoelectric transmitter; in regards to claims 3 and 19, wherein the acoustic absorber comprises a layer of absorbing material configured to attenuate acoustic waves; in regards to claim 12, limiting propagation of surface acoustic waves on the substrate in second direction opposite the first direction; in regards to claim 13, comprising an acoustic absorber; in regards to claim 14, wherein the piezoelectric receiver is disposed between the acoustic absorber and the piezoelectric transmitter; in regards to claim 16, wherein the acoustic absorber comprises a layer of absorbing material configured to attenuate acoustic waves.
Yip teaches in Fig. 2 a piezoelectric device comprising a piezoelectric transmitter (36) and a piezoelectric receiver (37). Based on Fig. 2 and Paragraph [0030], a respective acoustic absorber (36b and 37b) comprising an absorbing material is added to a respective side of the transmitter and receiver outside a transmission path (i.e. the absorbers are located outside the transmission path between the transmitter and receiver). Based on Paragraph [0030], the absorbers provide the benefit of absorbing/attenuating unwanted acoustic energy leaking.
At the time of filing, it would have been obvious to one of ordinary skill in the art to have modified the invention of Gorisse et al. and have added a respective absorber layer to each of the transmitter and receivers, outside the acoustic propagation path, as taught by Yip in Fig. 2 because such a modification would have provided the benefit of absorbing/attenuating unwanted acoustic energy as suggested by Yip (See Paragraph [0030]). As an obvious consequence of the modification, each of the acoustic absorbers would limit propagation of surface acoustic waves on the substrate in second direction opposite the first direction and the piezoelectric receiver will be disposed between the acoustic absorber and the piezoelectric transmitter.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Gorisse et al. (US2013/0214878 A1) and Yip (US2003/0214371 A1) as applied to claim 1 above, and further in view of Ruile et al. (US2004/0247153 A1).
As discussed above, the combination of Gorisse et al. and Yip teaches the claimed invention as recited in claim 1. Based on Fig. 9 of Gorisse et al., fingers of each of the IDT transmitter/receivers have a rectangular shape. Therefore, the combination does not teach in regards to claim 4, wherein the first electrode structure comprises rounded corners.
Ruile et al. teaches in Fig. 4 an acoustic wave device comprising an IDT electrode structure comprising a plurality of fingers. Based on related Figs. 5(a) and 5(d) and paragraph [0049], an IDT electrode fingers can have rectangular edges or rounded corner edges.
At the time of filing, it would have been obvious to one of ordinary skill in the art to have modified the combination of Gorisse et al. and Yip and have alternatively designed the IDT fingers of both the receiver and transmitters (i.e. first and second electrode structures) to have a rounded corner edges instead of a rectangular edges because such a modification would have been a well-known in the art substitution of art-recognized alternative/equivalent for an acoustic wave IDT finger shape that able to perform the same function as taught by Ruile et al. (See Paragraph [0049]).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Gorisse et al. (US2013/0214878 A1) and Yip (US2003/0214371 A1) as applied to claim 1 above, and further in view of Shimizu et al. (US2010/0277036 A1).
As discussed above, the combination of Gorisse et al. and Yip teaches the claimed invention as recited in claim 1. Based on Fig. 9 of Gorisse et al., each of the transmitter/receivers have an IDT directly on the piezoelectric substate. Therefore, the combination does not teach in regards to claim 9, a first dielectric material layer disposed between the first electrode structure and the piezoelectric material.
Shimizu et al. teaches in Fig. 1 an acoustic wave device comprising a piezoelectric layer (2), an IDT (4) and a dielectric layer (3) located between the piezoelectric layer and the IDT electrode. Shimizu et al. teaches in Paragraph [0034], that having the dielectric layer between the piezoelectric layer and the IDT electrode provides the benefit of increasing the acoustic wave device surge withstand voltage.
At the time of filing, it would have been obvious to one of ordinary skill in the art to have modified the combination of Gorisse et al. and Yip as have added a dielectric film/layer between the piezoelectric layer and each of the transmitter and receivers IDT as shown by Shimizu et al. (See Fig. 1) because such a modification would have provided the benefit of increasing the acoustic wave device surge withstand voltage as taught by Shimizu et al. (See Paragraph [0034]).
Allowable Subject Matter
Claims 6 and 7 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JORGE L SALAZAR JR whose telephone number is (571)-272-9326. The examiner can normally be reached between 9am - 6pm Monday-Friday.
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/JORGE L SALAZAR JR/Primary Examiner, Art Unit 2843