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 (Maintained)
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, 2, 11 and 15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 3, 4 and 15 of co-pending application 18/635,933.
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 18/635,933
1
3
2
3
11
4
15
15
As disclosed in the chart above, the co-pending application claims 3, 4, and 15 substantially recites the same limitations recited in claims 1, 2, 11 and 15 of the current application. However: the following differences between the application claims and the co-pending claims are present as set forth below:
Claims 3 and 15 of the co-pending application has the additional limitation of the location of the “at least one temperature compensation layer.”
Therefore, claims 3, 4 and 15 of the co-pending application meets claims 1, 2, 11 and 15 of the present application under obviousness-type double patenting rejection.
Claims 8, 9, 14 and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over Claim 3 of co-pending application 18/635,933 B2 in view of Wang et al. (US2022/0263495 A1, Reference of Record)
In regards to claim 8:
As discussed above, claim 3 of the co-pending application teaches the claimed limitation as recited in claim 1 of the present application. However, claim 3 of the co-pending application does not teach: in regards to claim 8, wherein the at least one temperature compensation layer is a silicon oxide layer.
Wang et al. teaches in Fig. 1 a bulk acoustic wave device comprising a temperature compensation layer (18). Wang et al. teaches in Paragraph [0056], that the temperature compensation layer is made from a silicon oxide layer.
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 3 and have replaced the generic temperature compensation layer with the specific silicon oxide temperature compensation layer of Wang et al. because such a modification would have been a well-known in the art substitution of art-recognized alternative/equivalent for a temperature compensation material that able to perform the same function.
Therefore, claim 3 of the co-pending application in view of Wang et al. meets claim 8 of the present application under obviousness-type double patenting rejection.
In regards to claim 9:
As discussed above, claim 3 of the co-pending application teaches the claimed limitation as recited in claim 1 of the present application. However, claim 3 of the co-pending application does not teach: in regards to claim 9, wherein the piezoelectric layer includes aluminum nitride.
Wang et al. teaches in Fig. 1 a bulk acoustic wave device/filter comprising a piezoelectric layer (14). Wang et al. teaches in Paragraph [0054], that the piezoelectric layer is made from aluminum nitride.
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 3 and have replaced the generic piezoelectric layer with the specific aluminum nitride piezoelectric layer of Wang et al. because such a modification would have been a well-known in the art substitution of art-recognized alternative/equivalent for a piezoelectric layer that able to perform the same function
Therefore, claim 3 of the co-pending application in view of Wang et al. meets claim 9 of the present application under obviousness-type double patenting rejection.
In regards to claim 14:
As discussed above, claim 3 of the co-pending application teaches the claimed limitation as recited in claim 1 of the present application. However, claim 3 of the co-pending application does not teach: in regards to claim 14, wherein a resonant frequency of the overtone mode is in a range from 5 gigahertz to 12 gigahertz.
Wang et al. teaches in Fig. 1 a bulk acoustic wave device/filter having an overtone as a main mode (see Abstract). Wang et al. teaches in Paragraph [0064], that the bulk acoustic wave device can be designed to have a resonant frequency of the overtone mode to be in a range from 5 gigahertz to 12 gigahertz.
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 3 and have designed the overtone mode of the bulk acoustic wave resonator to have a resonant frequency in the range from 5 gigahertz to 12 gigahertz as suggested by Wang et al. because such a modification would have been an obvious design consideration to achieve a desired frequency response.
Therefore, claim 3 of the co-pending application in view of Wang et al. meets claim 14 of the present application under obviousness-type double patenting rejection.
In regards to claim 20:
Claim 3 of the co-pending application teaches most of the limitation recited in claim 20 of the present application. However, claim 3 of the co-pending application does not teach: in regards to claim 20, wherein the filter is part of a radio frequency module having a radio frequency circuitry and a package structure enclosing the filter and the radio frequency circuity.
Wang et al. teaches in Fig. 1 a bulk acoustic wave device/filter having an overtone as a main mode (see Abstract). Based on Fig. 13 and Paragraph [0095], the bulk acoustic wave filter is used in a front-end frequency module having addition radio frequency circuitry (173) which is all located on a package structure (176).
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 3 and have used the acoustic wave device/filter of co-pending application claim 3 in a frequency module located on a package structure as taught by Wang et al. (See Fig. 13) because such a modification would have been a well-known in the art intended use for a bulk acoustic wave device for the benefit of forming a front-end module.
Therefore, claim 3 of the co-pending application in view of Wang et al. meets claim 20 of the present application under obviousness-type double patenting rejection.
Allowable Subject Matter
Claims 3-7, 10, 12, 13 and 16-19 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.
Reason for the indication of allowable subject matter will be provided once the double patenting rejection set forth above is overcome.
Response to Arguments
Applicant's arguments filed 3/18/2026, page 7, have been fully considered but they are not persuasive.
On page 7 of the applicant’s remarks, the applicant stated that a terminal disclaimer was filed to overcome the non-statutory double patenting of record.
The examiner finds this remark unpersuasive since no terminal disclaimer was filed with the response. Therefore, the double patenting rejections of record have 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.
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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.
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/JORGE L SALAZAR JR/Primary Examiner, Art Unit 2843
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