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
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 12-14 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 9-11 of prior U.S. Patent No. 11,621,697 B2. This is a statutory double patenting rejection.
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 1-11, 15-19 and 23 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 and 11-15 of U.S. Patent No. 11,624,697 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 11,621,697 B2
1
1 or 9
2
1
3
1
4
2
5
3 or 9
6
4
7
5
8
6 or 9
9
7 or 9
10
8 or 9
11
9
15
9 or 12
16
13
17
12
18
14
19
15
23
11
As disclosed in the chart above, the US patent claims 1-9 and 11-15 substantially recite the same limitations recited in claims 1-11, 15-19 and 23 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 is a “band-pass filter with a frequency band about a center frequency f0” which isn’t required in current application claim 1;
Claim 9 of the US patent has the additional limitation of comprising a duplexer having “an antenna node”, a transmit node” and “a receive node” which isn’t required in current application claims 1 or 15; and
Claim 12 of the US patent has the additional limitation of wherein the first assembly is a “band-pass filter with a frequency band about a center frequency f0” which isn’t required in current application claim 15.
Therefore, claims 1-9 and 11-15 of the patent meets claims 1-11, 15-19 and 23 of the present application under an “anticipation” analysis in an obviousness-type double patenting rejection.
Claims 1-18 and 23 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 and 15-19 of U.S. Patent No. 12,081,196 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 12,081,196 B2
1
1
2
2
3
3
4
4
5
5
6
6
7
7
8
8
9
9
10
10
11
11
12
15
13
16
14
17
15
1 or 12
16
18
17
18
18
19
23
8
As disclosed in the chart above, the US patent claims 1-12 and 15-19 substantially recite the same limitations recited in claims 1-18 and 23 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 15 of the current application; and
Claim 15 of the US patent has the additional limitation of comprising a “wireless device” which isn’t required in claim 12 of the current application;
Therefore, claims 1-12 and 15-19 of the patent meets claims 1-18 and 23 of the present application under an “anticipation” analysis in an obviousness-type double patenting rejection.
Claim Objections
Claims 6, 7, 16, 18 and 19 are objected to because of the following informalities:
Claim 6, line 2, the examiner suggests inserting --including the one or more bulk acoustic wave resonators-- after the recitation of “a plurality of BAW resonators” to provide a proper nexus.
Claim 7, line 2, the examiner suggests inserting --additional-- before the recitation of “BAW resonators” to properly distinguish these recited “BAW resonators” from the previous recited “BAW resonators” defined in claim 1, from which this claim depends from.
Claim 16, line 1, the examiner suggests rewriting “each BAW resonator” to --each of the one or more BAW resonators-- to provide a more proper description.
Claim 18, line 1, the examiner suggests rewriting “each SAW resonator” to --each of the one or more SAW resonators-- to provide a more proper description.
Claim 19, line 2, the examiner suggests rewriting “the SAW resonator” to --each of the one or more SAW resonators-- to provide a more proper description.
Claim 19, line 2, the examiner suggests rewriting “the BAW resonator” to --each of the one or more BAW resonators-- to provide a more proper description.
Claim 19, line 3, the examiner suggests rewriting “the same material” to --a same material-- to avoid an antecedent issue.
Appropriate correction is required.
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 15-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Link et al. (US2015/0236840 A1).
In regards to claims 1 and 15, Link et al. teaches in Fig. 9 a filter/multiplexer device comprising: a chip substrate (not labeled but present, see Paragraph [0021]); and a filter circuit implemented on the substrate, and including an input node (CC) and an output node (right output from RX,TX), the filter circuit further including a first assembly (Right TX) having one or more bulk acoustic wave (BAW) resonators implemented electrically between the input node and the output node, and configured to filter a signal, the filter circuit further including a second assembly (Left RX) having one or more surface acoustic wave (SAW) resonators implemented electrically relative to the first assembly (See Paragraph [0021] which discloses that the TX filter is formed from bulk acoustic resonators and the RX filter is formed from surface acoustic resonators), and configured to suppress one or more harmonics resulting from the filtering of the signal by the first assembly (See Paragraphs [0127] and [0133] in which the absorption path in the RX filter is designed to remove intermodulation noise/harmonics resulting from the filtering of the signal by the first assembly).
In regards to claim 2, based on Paragraph [0003], the TX/First filter has an associated band pass/pass band which will necessarily have a center frequency fo associated with the TX filter.
In regards to claims 16 and 17, based on related Fig 1B, each of the BAW resonators includes a piezoelectric material (PL) implemented between a lower electrode (EL1) and an upper electrode (EL2), and since each of the BAW resonators are located on a surface of the substrate (CH), the lower electrode will be located on an upper surface of the substrate.
In regards to claim 18, based on related Fig. 1A, each of the SAW resonators include a piezoelectric material (present but not labeled) implemented over the chip substrate and an interdigital transducer structure (EL1 and EL2) implemented over the piezoelectric material.
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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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.
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/JORGE L SALAZAR JR/Primary Examiner, Art Unit 2843