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 .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-2 and 4-7 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. Claim 1 contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. As currently amended by the Applicant, claim 1 now improperly requires that “the material modification area is physically separated from the material removal area”.
Claims 2 and 4-7 are rejected by virtue of their dependence upon the newly added unsupported new matter.
The Applicant has pointed to pars. [0030 and 0032] as well as figure 5 as purportedly providing support for this limitation. However there is nothing in those paragraphs which disclose this very specific new limitation. In fact, par. [0030] seems to expressly contradict this newly added and unsupported limitation. Par. [0030] discloses: “The material removal area 16 is represented by a recess 16c, and the material modification area 18 is represented by a gray scale block. The shape, size, and distribution of the material removal area 16 and the material modification area 18 are not limited to those shown in the figure, and the material removal area 16 and the material modification area 18 are not limited to have consistent or inconsistent shapes or sizes” (emphasis added). Instant par. [0032] appears to also contradict this new unsupported limitation of claim 1: “a patterned processing zone is formed on the surface and/or in the interior of the piezoelectric material of the oscillator piezoelectric structure in the embodiment of the present invention, and the patterned processing zone includes a material removal area and/or a material modification area” (emphasis added). In no way do these paragraphs support the newly added limitation which explicitly recites and requires that the “material modification area is physically separated from the material removal area”. These paragraphs indicate that the two “areas” can be on the surface or in the interior and that they are not limited in location or distribution by the figure. Thus the amended limitation is clearly unsupported new matter.
Further, it is not at all clear that the cited figure provides any support for the new claim language, especially given the fact that the specification makes no mention of this quite specific limitation at all. It is clear that fig. 5 only shows one alternative type of material removal area and that one alternative is the recess (16c). Even in that instance, as noted above, the Specification states that the locations of the two “areas” are not defined by the drawing (element 16c in specification par. [0028] and in fig. 5 is only directed to: “recesses 16c (shown in the subsequent FIG. 5)”). However, claim 1 discloses that the material removal area may be a blind hole (16a, not shown in fig. 5 at all), through hole (16b, not shown in fig. 5 at all), groove (not numbered in specification, and not shown in in any drawing figure at all) or a combination thereof (shown nowhere in the drawings and also not numbered). In any of these alternative instances that are explicitly recited in the claim there is no support whatsoever for this new matter. Further, as noted above there is nothing in the specification which supports such a limitation or describes fig. 5 as showing such a limitation, and patent drawing figures are not drawn to scale (as is explicitly recited in instant par. [0030]), and it is not even clear in the figure that the bottoms of recesses (16c) are actually physically separated from the material modification areas in the first place. Accordingly, the limitation is found to be unsupported new matter and is improperly included in the claims.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claims 5-6 are rejected under 35 U.S.C. 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claim 5 discloses “The oscillator piezoelectric structure according to claim 1, wherein on the upper surface or the lower surface of the piezoelectric material containing the patterned processing zones, the patterned processing zones are distributed evenly or in a matrix” (lines 1-5; emphasis added). Claim 5 depends from claim 1 which recites the alternative language: “a plurality of patterned processing zones formed on at least one of the upper surface, the lower surface and the interior” (lines 4-5; emphasis added). The alternative language of claim 1 expressly indicates that the “patterned processing zones” can be reasonably interpreted as being formed only in the “interior” of the piezoelectric material and not on either the upper or lower surface. When one takes this entirely reasonable interpretation of antecedent claim 1, then claim 5 becomes meaningless and indefinite. This is because claim 5 only supports the interpretations of claim 1 as reciting that the patterned processing zones are on the outer surfaces and does not support or provide further limitations if the zones are in the interior. It is permissible to have more than one possible interpretation of a claim and the claim still be definite (see, e.g. claim 1); however, if the scope or metes and bounds cannot be determined for any of the reasonable interpretations of the claimed alternatives, then the claim is indefinite.
Claim 6 is further rejected as indefinite, because the claim discloses “The oscillator piezoelectric structure according to claim 1, wherein within the interior of the piezoelectric material, the patterned processing zones are distributed evenly or in a matrix at a predetermined depth below the upper surface” (lines 1-4; emphasis added). Claim 6 is indefinite for effectively the same reasons as claim 5. Claim 6 only further defines the claimed product in the alternative interpretation whereby the patterned processing zones are within the interior of the piezoelectric and does not support or further define the product in the reasonable instance wherein the zones are formed on either or both of the exterior surfaces and not formed in the interior.
For both of these claims, the Applicant is strongly encouraged to determine the actual scope of the intended inventive concept and to recite that scope and its associated limitations.
NOTE: Claims 5-6 have been interpreted and examined as best understood according to the 112(b) rejections, above.
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 (fig. 15: top, as viewed), a lower surface (fig. 15: bottom) 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 at least one of the upper surface, the lower surface and the interior, 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 defined by at least one blind hole, through hole (through holes, 124), recess, groove, or a combination thereof in which material has been removed from the piezoelectric material, and the material modification area is physically separated (fig. 18: holes, 124, and horizontal dicing lines do not contact one another) from the material removal area (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 the *material lattice structure has been altered* relative to surrounding material to thus define the material properties of the piezoelectric material, wherein a resonance frequency of oscillation is defined by the shape and 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 naturally understood 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.
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 claim 4, Dunn discloses the oscillator piezoelectric structure according to claim 1, wherein the patterned processing zones are arranged in a peripheral area of the at least one surface and the interior of the piezoelectric material (fig. 18-19).
Regarding claim 5, Dunn discloses the oscillator piezoelectric structure according to claim 1, wherein on the upper surface or the lower surface of the piezoelectric material containing the patterned processing zones, 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 within the interior of the piezoelectric material, the patterned processing zones are distributed evenly or in a matrix at a predetermined depth 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 “discloses only material-removal features such as holes, and the Examiner has acknowledged that any lattice disturbance in Dunn would merely constitute incidental processing damage along the sidewalls of the holes. Dunn fails to disclose or teach: (1) a material modification area that is structurally independent from the material removal area, (2) a region in which the lattice structure is intentionally altered without removing material (i.e., a 'material modification area'), and (3) physical separation between the material modification area and the material removal area by unprocessed material.” Respectfully, the Examiner disagrees with all of the above assertions. First, it is noted that Dunn does not disclose “only material-removal features such as holes”, but instead discloses the holes and the dicing lines. Further, there is nothing in the claim which differentiates the “material modification areas” from areas where material is removed. That is, removing material clearly and explicitly satisfies the limitation of material modification. Further, as made abundantly clear in the above updated prior art rejection of claim 1, the instant disclosure states that formation of “material modification layers” is nothing more than laser, dry etching (e.g., plasma or ion beam), wet etching, machining, heat treatment, or a combination thereof” (instant specification, par. 0009). And Dunn discloses that the cited “material modification layers” are formed by laser or machining. As such, it is quite clear that the identical methods of the prior art and the instant disclosure would predictably result in the same materials properties changes as claimed. It is entirely irrelevant whether the modification of Dunn was directly intentional or “incidental processing damage” as argued. What is relevant is that the claimed method is expressly anticipated by Dunn and the results of the identical methods would be identical. Whether or not lattice structure is “intentionally” modified or incidentally modified is simply not germane to the actual method of the claims. Intent is not a patentable method limitation; the actual steps of the method are what carry patentable weight.
Applicant then additionally discusses the purported merits of the invention with no evidentiary support and without any evidence that such merits are not disclosed by Dunn. These conclusory statements are not found to be persuasive as they amount to a mere allegation of patentability.
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 the concurrently mailed PTO-892, as all of those cited references are considered to be pertinent to the claimed invention. For example, Barenburg et al. (US 20030034535 A1) is held to be of particular relevance to the claimed invention as it discloses that lattice structure modification is old and well-known (pars. 0068-0071).
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 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