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.
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Claims 1-7 and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 and 14 of U.S. Patent No. 12,126,318 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 12,126,318 B2
1
1
2
2
3
3
4
4
5
5
6
6
7
6
20
14
As disclosed in the chart above, the US patent claims 1-6 and 14 substantially recite the same limitations recited in claims 1-7 and 20 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:
The US patent claims 1 and 14 has the additional limitation of having the first and second cavity “in” the substrate.
Therefore, claims 1-6 and 14 of the patent meets claims 1-7 and 20 of the present application under an “anticipation” analysis obviousness-type double patenting rejection.
Claim 8 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,126,318 B2 in view of Plesski et al. (USPAT 10,491,192 B2, Cited by Applicant).
As discussed above, the US patent claim 1 meets claim 1 of the present application. However, claim 1 of the US patent does not teach: in regards to the present application claim 8, wherein the filter device has a ladder filter architecture, and wherein the first IDT is part of a series resonator and the second IDT is part of a shunt resonator.
Plesski et al. teaches in Fig. 14 an acoustic wave ladder filter device comprising a plurality of series IDT resonators (1410A-1410C) and a plurality of shunt IDT resonators (1420A and 1420B). Based on related Fig. 15, the ladder filter architecture produces a bandpass filter.
At the time of filing, it would have been obvious to one of ordinary skill in the art to have modified the US Patent claim 1 and have used the first and second IDT resonators of claim 1 to form a ladder filter (e.g. the first IDT forming series resonators and the second IDT forming shunt resonators) because such a modification would have provided the benefit of forming a ladder filter to form a bandpass filter as taught by Plesski et al. (see Figs. 14 and 15).
Therefore, claim 1 of the patent in view of Plesski et al. meets claim 8 of the present application under 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.
Claims 6, 7, 15 and 19 are 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 6, line 2 and claim 15, lines 1-2, note that the recitation of “0≤td1” causes ambiguity in the claim, since if “td1” (thickness of the “decoupling layer in the first portion of the piezoelectric layer, see claims 1 and 10) is equal to zero, the “decoupling layer” in the first portion would not exist, which wouldn’t be consistent with what recited in claims 1 and 10, from which these claims depend from, respectively. Correction is required.
Claims 7 and 19, line 1 of each claim: note that the recitation of “td1 is zero” causes ambiguity in the claim, since if “td1” (thickness of the “decoupling layer in the first portion of the piezoelectric layer, see claims 1 and 10) is zero, the “decoupling layer” in the first portion would not exist, which wouldn’t be consistent with what recited in claims 1 and 10, from which these claims depend from, respectively. Correction is required.
Allowable Subject Matter
Claim 9 is 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.
Claims 15 and 19 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Claims 10-14 and 16-18 are allowed.
The following is a statement of reasons for the indication of allowable subject matter:
The most relevant prior art reference is Burak (US2016/0087187 A1). Burak teaches in Figure 7A and 7B an acoustic resonator device comprising the following:
A substrate (Fig.7B: 205);
A piezoelectric plate (630) having parallel front/top and back/bottom surfaces, the back/bottom surface indirectly attached to the substrate (205);
A dielectric layer (650) made from silicon carbide (See Paragraph [0042]) on the front/top surface of the piezoelectric plate and a metal interdigital transducer (IDT) (510 and 520) formed on the dielectric layer such that interleaved fingers of the IDT are over a portion of the piezoelectric plate suspended across a cavity (208) formed in the substrate (the examiner interprets the dielectric layer 650 to correspond to the claimed “decoupling dielectric layer” since dielectric layer separates/decouples the IDT electrode from the piezoelectric substrate top surface).
Burak teaches in Paragraph [0005], lines 1-4, that the depicted resonator is used in a ladder filter in which a ladder filter will necessarily comprises of a plurality of series and shunted resonators.
However, in regards to claim 10, Burak does not teach where the decoupling layer of the shunt resonator has at thickness td2 that is different than thickness td1. Thus, the applicant’s claimed invention has been determined to be novel and non-obvious over the prior art. By virtue of dependency from either claim 10, claims 11-19 have also been determined to be novel and non-obvious over the prior art.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Shimizu et al. (US2010/0277036 A1) teaches in Fig. 1 and acoustic wave device comprising a decoupling layer (3) located between an IDT electrode (4) and a piezoelectric substrate (2).
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