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 .
Election/Restrictions
Claim 13 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 1/15/26.
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 1-12 and 14-20 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 1, it is unclear what is meant by a “topographically discriminating manner”. Does this require milling in a certain pattern? Milling to a certain even height? The disclosure does not teach what is meant by this term.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-4, 8-12, 14, 15, and 17-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claim(s) recite(s) computing a thickness correction.
The limitation of computing a correction thickness, as drafted, is a process that under its broadest reasonably interpretation, covers performance of the limitation in the mind. Nothing in the claim precludes the step from being practically performed in the mind. For example, “computing a thickness correction” in the context of the claim encompasses the user manually calculating the thickness correction If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind, then it falls under the “mental processes” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
This judicial exception is not integrated into a practical application because it only recites three other elements, measuring the thickness of the intermediate layer, measuring the thickness of the piezoelectric layer, and milling. These are recited with a high level of generality such that it amounts to no more than mere instructions to apply the exception. Accordingly, the additional elements do not integrate the abstract idea into a practical application because it does not impose meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea.
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the measuring of both the intermediate layer thickness of the piezoelectric layer thickness are well-understood, routine and conventional as shown by Nakahata et al.(US Publication 2003/0011280) which shows measuring the thickness of the piezoelectric layer[0083] and the intermediate layer[0040]. The additional element of milling the piezoelectric device amounts to no more than mere instructions to apply the exception and is well-understood, routine and conventional as shown by applicant’s admitted prior art, which teaches that it is known to use ion beams to mill a piezoelectric layer.(Pg. 1, ll. 28-30) Mere instructions to apply an exception using generic tools cannot provide an inventive concept. The claims are not patent eligible.
Regarding claim 8, all the additional steps of providing a carrier, providing a piezoelectric donor, bonding the donor to the carrier, and thinning the donor are well-understood routine and conventional as shown by applicant’s admitted prior art.(Pg 1)
Allowable Subject Matter
Claims 5, 6, and 16 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 and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: the prior art does not teach or reasonably suggest adjusting a duration of the ion beam milling at multiple positions depending on the thickness of the piezoelectric layer desired which is determined using the measurement of the thicknesses and the calculation of the thickness correction.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BARBARA J MUSSER whose telephone number is (571)272-1222. The examiner can normally be reached 7:30-4:30 M-Th; 7:30-3:30 second Fridays.
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BARBARA J. MUSSER
Primary Examiner
Art Unit 1746
/BARBARA J MUSSER/ Primary Examiner, Art Unit 1746