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, 2, 4-14 and 29 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 11,624,697 B2 (Reference of Record).
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 11,621,697 B2
1
1 or 9
2
1 or 9
4
2
5
3 or 9
6
4
7
5
8
6 or 9
9
7 or 9
10
8 or 9
11
9
12
9
13
10
14
10
29
1
As disclosed in the chart above, the US patent claims 1-10 substantially recite the same limitations recited in claims 1, 2, 4-14 and 29 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 wherein the first assembly comprises “one or more bulk acoustic wave resonators” and the second assembly comprises “one or more surface acoustic wave resonators” which isn’t required in claims 1 and 29 of the present application; and
Claim 9 of the US patent has the additional limitation of wherein the receive filter comprises “one or more bulk acoustic wave resonators” and the transmit filter comprises “one or more surface acoustic wave resonators” which isn’t required in claims 1 and 12 of the current application.
Therefore, claims 1-10 of the patent meets claims 1, 2, 4-14 and 29 of the present application under an “anticipation” analysis in an obviousness-type double patenting rejection.
Claims 1, 2, 4-14 and 29 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4-11 and 15-17 of U.S. Patent No. 12,081,196 B2 (Reference of Record).
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 12,081,196 B2
1
1
2
1
4
4
5
5
6
6
7
7
8
8
9
9
10
10
11
11
12
15
13
16
14
17
29
1
As disclosed in the chart above, the US patent claims 1, 4-11 and 15-17 substantially recite the same limitations recited in claims 1, 2, 4-14 and 29 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 a “package substrate” and “a radio-frequency integrated circuit” which isn’t required in claims 1 or 29 of the current application; and
Claim 15 of the US patent has the additional limitation of being a ‘wireless device” which isn’t required in claim 12 of the current application.
Therefore, claims 1, 4-11 and 15-17 of the patent meets claims 1, 2, 4-14 and 29 of the present application under an “anticipation” analysis in an obviousness-type double patenting rejection.
Claim Rejections - 35 USC § 112
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 3 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, 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 3, line 1, note that claim 3 was amended to remove the claim dependency from any claim (previously claim 3 depended on claim 2), therefore causing ambiguity to what claim 3 depends on. Correction is required.
Allowable Subject Matter
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, see pages 7-8, filed 6/29/2026, with respect to the rejections of record have been fully considered and are found partially persuasive.
On page 6 of the applicant’s remarks, the applicant stated that the claims are still under examination, therefore the provisional non-statutory double patenting rejections should be held in abeyance until the claims are otherwise indicated to be allowable.
The examiner has maintained the non-statutory double patenting rejection of record and has added a new rejection under non-statutory double patenting for new claim 29 as disclosed above.
On page 8 of the applicant’s remark, the applicant stated that the rejection of record under Link (US2015/0236840, Reference of Record), as disclosed in the office action mailed on 1/27/2026 does not teach in regards to amended claim 1, wherein the first assembly has a “band-pass filter about a center frequency fo” and the second assembly suppress “a second harmonic having a frequency of 2fo.”
The examiner finds the applicant’s remark persuasive, based on the amendment made to claim 1 and therefore has withdrawn the prior art rejection of record.
Note a new rejection of record has been made under 35 USC 112(b) for claim 3 as disclosed above, due to the amendment made to claim 3.
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 JORGE L SALAZAR JR whose telephone number is (571)-272-9326. The examiner can normally be reached between 9am - 6pm Monday-Friday.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JORGE L SALAZAR JR/Primary Examiner, Art Unit 2843
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