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, 6-13 and 17-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7, 9, 19, 20 and 21 of U.S. Patent No. 11,671,070 B2.
As set forth below, the chart identifies which claims from the current application corresponds to conflicting claims found in the cited US Patent.
Current Application
USPAT 11,671,070 B2
1
1
6
7
7
2
8
3
9
4
10
5
11
6
12
9
13
9
17
19
18
20
19
21
As disclosed in the chart above, the US patent claims 1-7, 9, 19, 20 and 21 substantially recite the same limitations recited in claims 1, 6-13 and 17-19 of the current application as listed above. However, the following differences between the US patent claims and the current application claims are present as set forth below:
Claim 1 of the US patent has the additional limitations of requiring the piezoelectric layer to be a “single crystal” and the piezoelectric layer having a portion forming a “diaphragm” which isn’t required in claim 1 of the current application;
Claim 7 of the US patent has the additional limitations of requiring the piezoelectric layer to be a “single crystal” and the piezoelectric layer having a portion forming a “diaphragm” which isn’t required in claim 6 of the current application;
Claim 9 of the US patent has the additional limitations of requiring the piezoelectric layer to be a “single crystal” and the piezoelectric layer having a portion forming a “diaphragm” which isn’t required in claim 12 of the current application; and
Claim 19 of the US patent has the additional limitations of requiring the piezoelectric layer to be a “single crystal” and the piezoelectric layer having a portion forming a “diaphragm” which isn’t required in claim 17 of the current application.
Therefore, claims 1-7, 9, 19, 20 and 21 of the patent meets claims 1, 6-13 and 17-19 of the present application under an “anticipation” analysis in an obviousness-type double patenting rejection.
Claims 1, 2, 6-12 and 17-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7, 11 and 15-17 of U.S. Patent No. 12,101,078 B2.
As set forth below, the chart identifies which claims from the current application corresponds to conflicting claims found in the cited US Patent.
Current Application
USPAT 12,101,078 B2
1
1
2
1
6
2
7
3
8
4
9
5
10
6
11
7
12
11
17
15
18
16
19
17
As disclosed in the chart above, the US patent claims 1-7, 11 and 15-17 substantially recite the same limitations recited in claims 1, 2, 6-12 and 17-19 of the current application as listed above. However, the following differences between the US patent claims and the current application claims are present as set forth below:
Claim 1 of the US patent has the additional limitation of requiring the piezoelectric layer to have a portion forming a “diaphragm” which isn’t required in claim 1 of the current application;
Claim 11 of the US patent has the additional limitation of requiring the piezoelectric layer to have a portion forming a “diaphragm” which isn’t required in claim 12 of the current application; and
Claim 15 of the US patent has the additional limitation of requiring the piezoelectric layer to have a portion forming a “diaphragm” which isn’t required in claim 17 of the current application.
Therefore, claims 1-7, 11 and 15-17 of the patent meets claims 1, 2, 6-12 and 17-19 of the present application under an “anticipation” analysis in an obviousness-type double patenting rejection.
Claims 3-5, 16 and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1, 11 and 15 of U.S. Patent No. 12,101,078 B2 in view of Kando et al. (USPAT 9,748,923 B2, Cited by Applicant).
As discussed above, the US patent claims 1, 11 and 15 recites all the limitations recited in the current application claims 1, 12 and 17 respectively. Furthermore, claim 1 of the US patent also recites all the limitation recited in claim 5 of the present application.
The US patent claim 1 does not teach: in regards to claim 3, wherein each of the plurality of acoustic resonators further comprises a substrate coupled to the piezoelectric layer by one or more layers of intermediate materials; and in regards to claim 4, wherein the one or more layers of intermediate materials are at least one of an oxide and a metal;
The US patent claim 11 does not teach: in regards to claim 16, wherein each of the plurality of acoustic resonators further comprises a substrate coupled to the piezoelectric layer by one or more layers of intermediate materials, and the one or more layers of intermediate materials are at least one of an oxide and a metal; and
The US patent claim 15 does not teach: in regards to claim 20, wherein each of the plurality of acoustic resonators further comprises a substrate coupled to the piezoelectric layer by one or more layers of intermediate materials, and the one or more layers of intermediate materials are at least one of an oxide and a metal.
Kando et al. teaches in Fig. 3A an acoustic resonator comprising a substrate (2) coupled to a piezoelectric layer (4) by an intermediate layer (3). Based Column 19, lines 1-12, the intermediate layer is made from silicon oxide which provide the benefit of frequency adjustment.
At the time of filing, it would have been obvious to one of ordinary skill in the art to have modified the US patent claims 1, 11 and 15 and have added an intermediate layer made from silicon oxide between the piezoelectric layer and substrate for each of the acoustic resonators of the respective claims, because such a modification would have provided the benefit of frequency adjustment/tuning as taught by Kando et al. (See Column 19, lines 1-12).
Therefore, claims 1, 11 and 15 of the US patent in view of Kando et al. meets claims 3-5, 16 and 20 of the present application under an obviousness-type double patenting rejection.
Allowable Subject Matter
Claims 14 and 15 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.
No art rejection was made for any of the current application independent claims. Reason for the indication of allowable subject matter will be provided once the double patenting rejections set forth above are overcome.
Conclusion
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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/JORGE L SALAZAR JR/Primary Examiner, Art Unit 2843