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
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, 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, Reference of Record).
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.
Allowable Subject Matter
Claims 2-7, 9, 10, 14-16, 18 and 19 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.
Response to Arguments
Applicant’s arguments, see pages 6-8, filed 4/2/2026, with respect to the rejections of record have been fully considered and are found partially persuasive.
On page 6 of the applicant’s remarks, the applicant stated that the claims are still under examination, therefore the provisional non-statutory double patenting rejections should be held in abeyance until the claims are otherwise indicated to be allowable.
The examiner, based on the amendment made to claims 1, 12 and 17, has withdrawn the provisional non-statutory double patenting rejection under copending application 18/635,320. However, the examiner has maintained the provisional non-statutory double patenting rejection under copending application 18/635,341 since copending application 18/635,341 has been amended in the same manner as the present application has.
On pages 7-8 of the applicant’s remark, the applicant stated that the rejection of record of Gorisse in view of Yip, as discussed in the office action mailed on 1/5/2026 does not teach in regards to claims 1, 12 and 17, “wherein a first circuit included in or electrically coupled to the piezoelectric transmitter is galvanically isolated from a second circuit included in or electrically coupled to the piezoelectric receiver” since the resonators of Gorisse share a common ground reference.
The examiner finds the applicant’s remark persuasive, based on the amendment made to claims 1, 12 and 17, and therefore has withdrawn the prior art rejection of record.
This action has been made final since the provisional non-statutory double patenting rejection of record under copending application 18/635,320 has been maintained.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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.
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, Andrea Lindgren Baltzell can be reached on 571-272-5918. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JORGE L SALAZAR JR/Primary Examiner, Art Unit 2843
Prosecution Insights