DETAILED ACTION
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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 05/12/2026 has been entered.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-2 and 4-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Dunn et al. (US 10,128,431 B1).
Regarding claim 1, Dunn discloses an oscillator piezoelectric structure (Title; Abstract; figs. 6 and/or 16: all), comprising: a piezoelectric material (120) (lead zirconate titanate, i.e. PZT) (fig. 12; col. 5, lines 8-12; col. 7, lines 35-37), having an upper surface (figs. 15, 17 and 19: bottom, as viewed), a lower surface (figs. 15, 17 and 19: top, as viewed) and an interior (fig. 15: interior, between top and bottom) extending between the upper surface and the lower surface, a plurality of patterned processing zones (124 and horizontal dicing lines in fig. 18) formed on the piezoelectric material, and each of the patterned processing zones comprising a material removal area (portion where material has been removed to form holes, 124) and a material modification area (horizontal dicing lines), wherein the material removal area is formed on the upper surface (fig. 19) and is defined by a recess (124) in which material has been removed from the piezoelectric material, and the material modification area is formed in the interior (fig. 18; col. 5, lines 33-36; col. 7, lines 35-39; cols. 7-8, lines 65-67 and 1-8) and comprises a region of the piezoelectric material in which a *material lattice structure has been altered* relative to surrounding material to thus define material properties of the piezoelectric material, wherein a resonance frequency of oscillation is defined by a shape and a size of the patterned processing zones, and **a spatial-filter effect that eliminates unnecessary oscillation modes is provided (col. 5, lines 18-22; col. 6, lines 13-22; col. 7, lines 59-62).
*NOTE: The instant specification explicitly discloses that the “material modification” is caused by “laser, dry etching (e.g., plasma or ion beam), wet etching, machining, heat treatment, or a combination thereof”. Dunn explicitly discloses that the dicing lines, cited as the material modification area, are formed by laser. As such, given that the material modification area of Dunn is formed in exactly the same manner and using the exact same method as the material modification area of the claim, it is clear to any POSITA that the sidewalls of the dicing lines must have had their material lattice structure affected by the laser cutting; further, the piezoelectric is poled thus affecting the internal structure; also, it is naturally expected that the resonance frequency of oscillation of any piezoelectric is dependent upon its shape and size and therefore modified whenever either or both of those are changed.
**NOTE: this limitation, directed to “a spatial-filter effect that eliminates unnecessary oscillation modes is provided”, is not necessarily indefinite, but it provides absolutely no discernable information to define the claimed product in any manner whatsoever. Further, it is entirely impossible to even guess what may or may not be considered an “unnecessary oscillation mode”, as this is a completely subjectively defined concept. Further still, the reader is left to guess how the “spatial-filter effect” is achieved, how it would define any structure, and how it would eliminate anything. As such, this language is found to be informative, but not pertinent to the definition of the claimed product. The product of Dunn is identical to the actually disclosed features and structures of the claimed product and is therefore held to also anticipate this intended use limitation. Respectfully, the Applicant is advised that it has been held by the courts that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. Ex parte Masham 2 USPQ2d 1647 (1987). Accordingly, a recitation of the intended use of an invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See In re Casey, 370 F.2d 576, 152 USPQ 235 (CCPA 1967) and In re Otto, 312 F.2d 937, 939, 136 USPQ 458, 459 (CCPA 1963).
Regarding claim 2, Dunn discloses the oscillator piezoelectric structure according to claim 1, wherein the material removal area and the material modification area are formed by laser, dry etching, wet etching, machining, heat treatment, or a combination thereof (machining and laser: col. 8, lines 1-3).
Regarding the claim recitation that “the material removal area and the material modification area are formed by laser, dry etching, wet etching, machining, heat treatment, or a combination thereof”, the applicant is advised that, even though product-by-process claims can be limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In this case, the cited limitations failed to distinguish the claimed structure from the patented oscillator piezoelectric structure of Dunn. See MPEP § 2113.
Regarding claim 4, Dunn discloses the oscillator piezoelectric structure according to claim 1, wherein the material removal areas of the patterned processing zones are arranged in a peripheral area of the upper surface (fig. 19: 124 is at a periphery of the “upper”, i.e. bottom, surface, as viewed).
Regarding claim 5, Dunn discloses the oscillator piezoelectric structure according to claim 1, wherein the material removal areas of the patterned processing zones are distributed evenly or in a matrix (fig. 18).
Regarding claim 6, Dunn discloses the oscillator piezoelectric structure according to claim 1, wherein the material modification areas of the patterned processing zones are distributed evenly or in a matrix at a predetermined depth (from zero depth to completely through the structure) below the upper surface (fig. 18).
Regarding claim 7, Dunn discloses the oscillator piezoelectric structure according to claim 1, wherein the piezoelectric material comprises quartz, ceramic, or polyvinylidene fluoride (ceramic PZT: col. 5, lines 27-31).
Response to Arguments
Applicant's arguments filed 11/26/2025 have been fully considered but they are not persuasive.
Regarding the rejection of claim 1 to Dunn, the Applicant has argued that:
Dunn fails to anticipate the presently claimed oscillator piezoelectric structure. Dunn is directed to the wafer-level manufacturing of a multi-layer PZT microactuator, rather than forming patterned processing zones in a piezoelectric material for modulating resonance frequency and providing a spatial-filter effect.
This argument is not compelling for a number of reasons. First, the Applicant has been informed on more than one occasion that the claims are not directed to a method of using a product. The claims are explicitly and statutorily directed to a product. As such, while the intended capabilities and intended functionality of the product are informative, they must result in a structural difference in order to be given patentable weight. In the instant claims, the actual structures of the product do not differentiate in any manner whatsoever from the structures of the product of Dunn. There is literally nothing in the claimed product which provides enablement or structure for “modulating resonance frequency and providing a spatial-filter effect”. The product, as recited in claim 1, is nothing more than a piezoelectric material having a plurality of recesses and a plurality of nebulously disclosed “material modification areas”. The piezoelectric device claimed does not even have any electrodes, leads, lands, traces, circuitry or electronic components which would enable it to do anything at all other than sit, immobile. The claims purport that they are directed to an “oscillator piezoelectric structure”; however, they are actually directed to a structure capable of being used in an oscillator piezoelectric device, the structure being nothing more than a piezoelectric layer with recesses and a modified lattice section. Such a product simply cannot be an oscillator, because there is not a single structure for inducing oscillation. As such, it is quite clear that the structures of Dunn are expressly and entirely anticipatory of the disclosed structures of claim 1.
Applicant continues by stating that:
In the Office action, Dunn's through-holes are mapped to the claimed material removal area and Dunn's wafer-level dicing lines are mapped to the claimed material modification area. However, Dunn's through-holes are electrical-via features, and Dunn's dicing lines are singulation features used to separate adjacent devices at the wafer level. These are manufacturing features serving different purposes, not the claimed patterned processing zones of a final oscillator piezoelectric structure. Dunn therefore fails to disclose that each patterned processing zone comprises both a material removal area and a material modification area.
This argument is also not at all compelling. Once again, the Applicant is reminded that the claims are not directed to a method of using the product. Because there is no indication that the intended capabilities of the product define its structure in any manner, it is simply not relevant what the “purposes” of the product are. The claim requires a piezoelectric material, which is explicitly recited by Dunn. The claim requires material removal areas, which are recesses, and which are explicitly recited by Dunn; the cited openings, 124, are without question recesses. The claim requires material modification areas, the material modification areas being nothing more than areas where the lattice structure is modified in some manner. The instant disclosure explicitly states that such modification is performed by laser. Dunn explicitly discloses that the cited modification areas are ablated with a laser. Accordingly, the exact same structure as those claimed have been cited and demonstrated to be anticipated by Dunn. Until the Applicant discloses claim language which clearly differentiates over the structures of Dunn, it is simply not germane how the Applicant would like the product to be used.
Applicant then argues that:
Dunn does not expressly disclose any "material modification area" as claimed.
The present invention defines the material modification area as a region in which the material lattice structure of the piezoelectric material is changed so as to change its material properties. In the Office action, the rationale for the prior art rejection of claim 1 appears to rely on an inference that laser dicing in Dunn would inherently alter the sidewall lattice structure. However, such an inference does not constitute an express disclosure of the claimed structural feature, nor does Dunn identify such a region as part of a patterned processing zone for resonance modulation. Anticipation requires that each and every claim element be disclosed in a single reference, arranged exactly as recited in the claim.
There are numerous glaring fallacies in this argument. First, it is absolutely not required that in an anticipatory prior art reference “each and every claim element be disclosed in a single reference, arranged exactly as recited in the claim”. This argument is not based in any statutory requirement, or even in any guideline for rejections.
Second, it would be literally impossible to ablate any substance known with a laser without modifying at least one of its material properties. This is simply a fact of what laser cutting or ablation does, if it didn’t modify one or more material properties, then it wouldn’t be ablation.
Third, the rationale for rejection is not “based on an inference”; it is based upon physics. If you cut something, the physical properties at the cut are necessarily and unavoidably modified. If you cut something with a laser, the same is true, with the addition of heating causing changes which are also unavoidable and entirely understood by any POSITA with knowledge of piezoelectric materials. For instance, Hirai et al. (US 2014/0176646 A1) explicitly discloses that “the approach of forming the first piezoelectric film 74 first and then patterning it…affects the crystals growing to form the second and subsequent piezoelectric films… even if the patterning process forma an extremely thin altered layer on the top surface.” (par. 0084). Further, it is well understood that it is impossible to ablate the piezoelectric product using a laser without heating it by virtue of the laser application. Moreover, Koruk (DE 10353509 A1) demonstrates that: “Quartz crystals for electronic-optical circuits, piezo elements, devices, with predetermined vibration characteristics in the vicinity of resonant circuits, frequency converters, in particular for microprocessor and / or transmitter / receiver for electromagnetic waves, characterized in that a targeted, defined , Geometric crystal lattice change of the quartz crystals is generated with a special photon laser machine and causes by the new reproducible, permanent property, a specific optical and electrical vibration behavior”. Even further still, JP-H0432788-A discloses that: “At this time, the field where it was irradiated with laser beam 8… only the field where it was irradiated with laser beam 8 will differ in the mode of vibration of the lattice by unradiated changes, and change of the field portion irradiated with laser beam 8 appears in vibration to which it has received with piezoelectric element 12.”
Perhaps most importantly: the Applicant’s own disclosure makes it expressly and unarguably clear that it is common knowledge that the exact laser processing of Dunn will naturally and unavoidably change the physical properties of the piezoelectric layer. The Applicant disclosed in no uncertain terms that: “Taking the piezoelectric material as a quartz crystal as an example, the lattice structure of the quartz crystal is changed through the irradiation of the laser, thereby changing the material properties of the quartz crystal in some areas. In addition, the pattern process is not limited to laser. In other embodiments not shown, dry etching (e.g., plasma or ion beam), wet etching, machining, heat treatment, or a combination thereof may also be used” (emphasis added). This is not “inference” or speculation, this is the exact language disclosed by the Applicant and which agrees entirely with that disclosed by Hirai, Koruk, and JP-H0432788-A. Further, this is not a new or surprising result, as Hirai, Koruk, and JP-H0432788-A were published in 2014, 2005 and 1992, respectively. The Applicant’s argument is therefore not compelling.
Applicant has also argued that:
the Examiner's reliance on wafer-level dicing lines in Dunn appears to be misplaced because those lines are used to singulate the wafer into individual devices. A singulation line between adjacent devices is not equivalent to a patterned processing zone intentionally formed in the piezoelectric material of an oscillator structure to modulate resonance frequency. Dunn therefore fails to disclose the claimed structure as a whole.
This is yet another uncompelling and erroneous argument. It is not at all relevant why Dunn has performed the laser treatment, especially given that the claims are not directed to a method. What is relevant is if the structure of Dunn is anticipatory of the claimed structures, which the examiner has repeatedly and thoroughly demonstrated to be the case. The singulation lines of Dunn are absolutely equivalent to the patterned processing zone of the claim because the claim has done nothing to differentiate from the prior art. The Applicant has repeatedly attempted to differentiate their product from the product of the prior art by arguing that the product was formed in different manner and/or for a different purpose and/or with a different intended set of capabilities. None of these arguments are compelling. What the Applicant has not done is to demonstrate that the actual structures of the claim are different from those of Dunn and therefore the rejection remains proper. It is simply not relevant that the regions of the claim were formed “intentionally”, or that the Applicant would like the regions to be used “to modulate resonance frequency, because the product is not claimed in a manner which distinguishes it from the prior art structurally.
Applicant further argues that: “Dunn's through-holes (124) are electrical-via features that pass entirely through the material, not surface recesses”. This argument is not compelling, because there is nothing in the claim which discloses any “surface recesses”, which is not an industry term anyhow, but more importantly, is an improper importation of limitations into the claim even though they are not recited. Further, even if “surface” recesses were claimed, it is abundantly clear that the openings (24 or 124) do not extend entirely through the product of Dunn, and instead are blind openings, which expressly anticipate a “surface” recess.
The Applicant next argues that:
Dunn's dicing lines are merely wafer-level singulation features utilized to physically separate adjacent devices. Consequently, these dicing lines inherently define the exterior perimeter of the singulated device, which directly contradicts the amended limitation requiring the material modification area to be formed in the interior.
This is yet another instance of improperly reading limitations from the Specification into the claims even though such limitations are not disclosed in the claims. The “interior” of the product is not defined in the claim with nearly the specificity of the argument (and does not find support in the original disclosure as argued anyhow). It is quite clear that the dicing lines of Dunn are absolutely in the interior of the overall product of Dunn as shown in fig. 18. That subsequent processing is performed by Dunn is simply not relevant, especially given that the claims are not directed to a method. Further, the dicing of the product of Dunn causes modification along the entire vertical direction as seen in fig. 19, which includes the middle of the product in the vertical direction and the middle is certainly part of the “interior” in that direction. As such, this argument, like all of the arguments presented by the Applicant, is not compelling.
The Applicant then continues by repeating the already presented and rebutted arguments. These redundant arguments remain uncompelling.
Finally, Applicant has asserted that:
When the oscillator piezoelectric structure is applied to an oscillator, the resonance frequency of oscillation can be defined by the shape and size of the patterned processing zone formed on the piezoelectric material. Therefore, the oscillation frequency can be controlled more accurately, and the oscillator piezoelectric structure can also have the function of a spatial filter to block other unnecessary modes and their corresponding frequencies.
This argument is also not compelling. The purported benefits of the product do not define its structure and thus do not differentiate the product of the claims from the product of Dunn.
The Applicant is strongly encouraged to determine what the actual inventive concept is, with respect to the product claimed, and to disclose as much in the claims. If the Applicant cannot define the product in the claims in such a manner as to differentiate it structurally from the prior art, then it is simply not novel.
According to the updated prior art rejection above and the response herein, all currently presented claim limitations have been clearly shown to be anticipated and all arguments on the merits have been answered and rebutted.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Please refer to both Eda (US-5668057-A) and Hirai (US-20140176646-A1), which are particularly relevant to the claimed product.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jeffrey T Carley whose telephone number is (571)270-5609. The examiner can normally be reached Monday - Friday, 9:00 am - 5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Thomas Hong can be reached at (571)272-0993. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JEFFREY T CARLEY/Primary Examiner, Art Unit 3729
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