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 .
Response to Amendment
The amendment filed 11/21/2021 has been entered.
Claims 21-30 are new.
Claims 1-10 are cancelled.
Claims 19-20 are amended.
Claims 11-30 are pending.
Double Patenting
The non-statutory 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 non-statutory 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 non-statutory 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 non-statutory 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.
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Claims 11-30 are provisionally rejected on the ground of non-statutory double patenting as being unpatentable over claim 6-11 and 17-21 of co-pending Application No. 18/514,989 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both claims involve having substrate, membrane layers, electrode layers and piezoelectric layers described with different wording but resulting in the same structure.
This is a provisional non-statutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 11-18, 21, 24-30 are rejected under 35 U.S.C. 103 as being unpatentable over Akkaraju (US 20190316958 A1) in view of Aabid "A Systematic Review of Piezoelectric Materials and Energy Harvesters for Industrial Applications" (2021).
Regarding claim 11, Akkaraju teaches a substrate with a cavity [Fig 4B has Substrate #402 and cavity #404];
a membrane layer suspended from the substate and above the cavity [membrane layer #406 in Fig 4B suspended from substrate above cavity];
a first electrode disposed on the membrane layer [Bottom electrode #408 in Fig 4B];
a first piezoelectric layer disposed between the first electrode and a_ second electrode [Piezoelectric layer #410 between first electrode #408 and second electrode #412]; ...
Akkaraju does not explicitly teach and a second piezoelectric layer disposed between the second electrode and a third electrode.
Aabid teaches that and a second piezoelectric layer disposed between the second electrode and a third electrode [Abstract; Fig 6 shows a stacked layer of piezoelectric layers and electrodes]
It would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to have modified the MUT in Akkaraju with the stacked layers in Aabid to have multiple piezoelectric and electrode layers, creating more elements and thus more pressure waves.
Moreover, it would have been obvious to one having ordinary skill in the art at the time the invention was made to have more piezoelectric layers, since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8.
Regarding claim 21, Akkaraju teaches a substrate with a cavity[Fig4B has Substrate #402 and cavity #404];
a membrane layer suspended from the substate and above the cavity[membrane layer #406 in Fig 4B suspended from substrate above cavity];
and wherein each MUT comprises a ….. of piezoelectric layers that are each disposed between respective electrode layers to form an alternating layered structure for performing an ultrasound imaging procedure [Bottom electrode #408 in Fig 4B with Piezoelectric layer #410 between first electrode #408 and second electrode #412; Title, Fig 1 and Background shows ultrasonic use though this is an intended use and does not contain much patentable weight]; ...
Akkaraju does not explicitly teach and a plurality of piezoelectric layers.
Aabid teaches a plurality of piezoelectric layers [Abstract; Fig 6 shows a stacked layer of piezoelectric layers and electrodes]
It would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to have modified the MUT in Akkaraju with the stacked layers in Aabid to have multiple piezoelectric and electrode layers. Doing so would have more elements and therefore more pressure waves.
Moreover it would have been obvious to one having ordinary skill in the art at the time the invention was made to have more piezoelectric layers, since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8.
Regarding claim 27, Akkaraju teaches a substrate with a cavity [Fig4B has Substrate #402 and cavity #404];
a membrane layer suspended from the substate and above the cavity[membrane layer #406 in Fig 4B suspended from substrate above cavity];
and wherein each MUT comprises a ….. of piezoelectric layers that are each disposed between respective electrode layers to form an alternating layered structure for performing an ultrasound imaging procedure, the MUT having a symmetric shape when seen in top view. [Bottom electrode #408 in Fig 4B with Piezoelectric layer #410 between first electrode #408 and second electrode #412. Title, Fig 1 and Background shows ultrasonic use though this is an intended use and does not contain much patentable weight; Fig 4A shows it is symmetric]; ...
Akkaraju does not explicitly teach and a plurality of piezoelectric layers.
Aabid teaches a plurality of piezoelectric layers [Abstract; Fig 6 shows a stacked layer of piezoelectric layers and electrodes]
It would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to have modified the MUT in Akkaraju with the stacked layers in Aabid to have multiple piezoelectric and electrode layers. Doing so would have more elements and therefore more pressure waves.
Moreover it would have been obvious to one having ordinary skill in the art at the time the invention was made to have more piezoelectric layers, since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8.
Regarding claim 12, Akkaraju does not explicitly teach further comprising at least a third piezoelectric layer and a fourth electrode.
Aabid teaches that further comprising at least a third piezoelectric layer and a fourth electrode. [Abstract; Fig 6 shows a stacked layer of piezoelectric layers and electrodes].
Regarding claim 13, Akkaraju does not explicitly teach wherein additional piezoelectric layers and/or electrodes added to the MUT increases an amplitude/dB output of the MUT.
Aabid teaches that wherein additional piezoelectric layers and/or electrodes added to the MUT increases an amplitude/dB output of the MUT. [Abstract; Fig 6 shows a stacked layer of piezoelectric layers and electrodes; Table 1 has stacked type having higher output ]
Regarding claim 14, Akkaraju does not explicitly teach wherein each piezoelectric layer is disposed between two electrodes such that one of the two electrodes is disposed above the piezoelectric layer and the other of the two electrodes is disposed below the piezoelectric layer.
Aabid teaches that wherein each piezoelectric layer is disposed between two electrodes such that one of the two electrodes is disposed above the piezoelectric layer and the other of the two electrodes is disposed below the piezoelectric layer. [Abstract; Fig 6 shows a stacked layer of piezoelectric layers and electrodes]
Regarding claim 15, Akkaraju, as modified, teaches that wherein a top electrode is an electrode of the MUT that is furthest from the membrane layer. [Fig 4B has top electrode #412 furthest from membrane #406]
Regarding claim 16, Akkaraju, as modified, teaches wherein at least the top electrode has first and second ends along a first axis. [Fig 4A has lines #450 and #452 as its axis; 0045]
Regarding claim 17, Akkaraju, as modified, teaches wherein all of the electrodes have first and second ends along a first axis. [Fig 4A has lines #450 and #452 as its axis; 0045 and Fig 4B shows all stacked meaning they have the same shape and axis]
Regarding claim 18, Akkaraju, as modified, teaches wherein one or more of the first end of the top electrode or the second end of the top electrode is defined by a radius of curvature R. [Fig 4A has curved ends]
Regarding claims 24, Akkaraju, as modified, does not explicitly teach wherein each MUT comprises at least two piezoelectric layers and at least three electrode layers.
Aabid teaches wherein each MUT comprises at least two piezoelectric layers and at least three electrode layers[Abstract; Fig 6 shows a stacked layer of piezoelectric layers and electrodes that read on the claim]
Regarding claims 25 and 29, Akkaraju, as modified, teaches, wherein each MUT comprises a rounded shape when seen in top view[Fig 4A has a rounded shape]
Regarding claims 26 and 30, Akkaraju, as modified, teaches, wherein each MUT comprises a circular electrode structure when seen in top view[0045 has electrode in shape of a circle]
Regarding claim 28, Akkaraju, as modified, teaches….. a circular electrode structure[0045 has electrode in shape of a circle]
Akkaraju, as modified, does not explicitly teach wherein each MUT comprises at least two piezoelectric layers and at least three electrode layers.
Aabid teaches wherein each MUT comprises at least two piezoelectric layers and at least three electrode layers[Abstract; Fig 6 shows a stacked layer of piezoelectric layers and electrodes that read on the claim]
Claims 19-20, 22-23 are rejected under 35 U.S.C. 103 as being unpatentable over Akkaraju (US 20190316958 A1) in view of Aabid" A Systematic Review of Piezoelectric Materials and Energy Harvesters for Industrial Applications " (2021) as applied to claims 15 and 21 above, and further in view of Jennings (US 2021/0278927 A1).
Regarding claim 19, Akkaraju, as modified, teaches wherein when seen in top view, the top electrode may be substantially ovular or oblong, with a long side and a short side, and a width of the electrode may vary along an axis bisecting the long side of the electrode such that close to a midpoint of the top electrode, the electrode may be thinner than on the first and second ends, .... when seen in top view [Fig 4B has the electrode oblong with short and long side and axis and midpoint and varying width; As an example from 9B, the electrode has a thinner width in the middle than the ends].
Akkaraju does not explicitly state a concave shape. [Though Figs 8B, 9B and 10B have top view with inbetween parts being smaller width meaning concave]
However, it would have been obvious to one having ordinary skill in the art to have modified Akkaraju to be concave, since it has been held that where routine testing and general experimental conditions are present, discovering the optimum or workable ranges until the desired effect is achieved involves only routine skill in the art. See, In re Aller, 105 USPQ 233. Moreover, Applicant should note that nothing of record, nor known in the art, suggests that using the specific shape yields any previously unexpected results.
Jennings teaches that a concave shape [0074; Fig 7C has a concave shape].
It would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to have modified the MUT in Akkaraju with the sensor in Jennings to create a concave shape, as to allow alternative embodiments to change the properties of the sensor.
Regarding claim 20, Akkaraju, as modified, teaches wherein when seen in top view, the top electrode may be substantially ovular or oblong, with a long side and a short side, and a width of the electrode may vary along an axis bisecting the long side of the electrode such that close to a midpoint of the top electrode, the electrode may be thicker than on the first and second ends, ... when seen in top view[Fig 4B has the electrode oblong with short and long side and axis and midpoint and varying width and as an example from Fig 7B, 8B, 10B all have a thicker width in the middle].
Akkaraju does not explicitly state a convex shape [Though Fig 4B, 6B is top view and side appear to be convex]
However, it would have been obvious to one having ordinary skill in the art to have modified Akkaraju to be convex, since it has been held that where routine testing and general experimental conditions are present, discovering the optimum or workable ranges until the desired effect is achieved involves only routine skill in the art. See, In re Aller, 105 USPQ 233. Moreover, Applicant should note that nothing of record, nor known in the art, suggests that using the specific claimed shape yields any previously unexpected results.
Jennings teaches that a convex shape [0074; Fig 7B has a convex shape].
It would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to have modified the MUT in Akkaraju with the sensor in Jennings to create a convex shape. Doing so would be alternative embodiments to change the properties of the sensor.
Regarding claims 22, Akkaraju, as modified, teaches wherein when seen in top view, the MUT has an elongate shape and opposing sides that are ….[Figs 8B, 9B and 10B have top view with inbetween parts being smaller width meaning concave]
Akkaraju does not explicitly state a concave shape. [Though Figs 8B, 9B and 10B have top view with inbetween parts being smaller width meaning concave]
However, it would have been obvious to one having ordinary skill in the art to have modified Akkaraju to be concave, since it has been held that where routine testing and general experimental conditions are present, discovering the optimum or workable ranges until the desired effect is achieved involves only routine skill in the art. See, In re Aller, 105 USPQ 233. Moreover, Applicant should note that nothing of record, nor known in the art, suggests that using the specific shape yields any previously unexpected results.
Jennings teaches that a concave shape [0074; Fig 7C has a concave shape].
It would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to have modified the MUT in Akkaraju with the sensor in Jennings to create a concave shape. Doing so would be alternative embodiments to change the properties of the sensor.
Regarding claims 23, Akkaraju, as modified, teaches wherein when seen in top view, the MUT has an elongate shape and opposing sides that are ….[Fig 4B, 6B is top view and side appear to be convex]
Akkaraju does not explicitly state a convex shape [Fig 4B, 6B is top view and side appear to be convex]
However, it would have been obvious to one having ordinary skill in the art to have modified Akkaraju to be convex, since it has been held that where routine testing and general experimental conditions are present, discovering the optimum or workable ranges until the desired effect is achieved involves only routine skill in the art. See, In re Aller, 105 USPQ 233. Moreover, Applicant should note that nothing of record, nor known in the art, suggests that using the specific claimed shape yields any previously unexpected results.
Jennings teaches that a convex shape [0074; Fig 7B has a convex shape].
It would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to have modified the MUT in Akkaraju with the sensor in Jennings to create a convex shape. Doing so would be alternative embodiments to change the properties of the sensor.
Response to Arguments
Applicant's arguments filed 11/21/2025 have been fully considered but they are not persuasive.
In response to applicant's argument that Aabid has functions in energy harvesting, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
In response to applicant's arguments against the references individually, one cannot show non-obviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Regarding applicant’s arguments on pages 5-7 of the remarks, Applicant is reading the prior art overly narrowly. It is the teachings of Akkaraju and Aabid as a whole that renders the claim obvious. Applicant is claiming multiple layers and electrodes which is what the references teach.
In response to applicant's argument that Aabid is non-analogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, Aabid on page 2 clearly cites use in ultrasonic and the word sensor appears over 50 times in the reference meaning a person of ordinary skill would consider the teachings of Aabid to be relevant to the art..
Moreover, the applicant has not addressed the rejection of duplication of essential parts and only focuses on Aabid.
Applicant's remaining arguments amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references. Rejections are maintained – and no allowable subject matter can be identified at this time.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 VIKAS NMN ATMAKURI whose telephone number is (571)272-5080. The examiner can normally be reached Monday-Friday 7:30am-5:30pm.
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/VIKAS ATMAKURI/Examiner, Art Unit 3645
/JAMES R HULKA/Primary Examiner, Art Unit 3645