DETAILED ACTION
Response to Appeal Brief
1. In view of the appeal brief filed on 07/23/26, PROSECUTION IS HEREBY REOPENED. New grounds of rejection under 35 USC 103 are set forth below.
To avoid abandonment of the application, appellant must exercise one of the following two options:
(1) file a reply under 37 CFR 1.111 (if this Office action is non-final) or a reply under 37 CFR 1.113 (if this Office action is final); or,
(2) initiate a new appeal by filing a notice of appeal under 37 CFR 41.31 followed by an appeal brief under 37 CFR 41.37. The previously paid notice of appeal fee and appeal brief fee can be applied to the new appeal. If, however, the appeal fees set forth in 37 CFR 41.20 have been increased since they were previously paid, then appellant must pay the difference between the increased fees and the amount previously paid.
A Supervisory Patent Examiner (SPE) has approved of reopening prosecution by signing below:
/REGIS J BETSCH/ SPE, Art Unit 2836
Claim Rejections - 35 USC § 112(a)
2. The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 1-9 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claims contain subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, at the time the application was filed, had possession of the claimed invention.
The originally filed specification and drawings clearly do not include any description or disclosure supporting the limitations of filtering a signal comprising the steps recited on lines 3-15 of independent claim 1 (see claim 1 in the appendix to the appeal brief), i.e., there is no description or disclosure of the limitation of exciting a piezoelectric material with the signal only through the first plurality of fingers, nor is there any description or disclosure or figure(s) supporting the limitation of receiving a filtered signal from the piezoelectric material...end of the second finger. In view of this, the invention defined by claims 1-9 of the present application clearly lacks adequate written description in the originally filed specification, i.e., such limitations are clearly prohibited new matter and should therefore be deleted from claims 1-9 in response to this office action.
It is also noted that the present application is a continuation of parent case 17/452,825 (see paragraph [0001] of the present application), and there is similarly no description or disclosure or drawing(s) supporting the limitation of filtering a signal comprising the steps recited on lines 3-15 of independent claim 1 of the present application (again see claim in the appendix to the appeal brief), i.e., there is no description or disclosure or drawing(s) in the parent case supporting the limitation of exciting a piezoelectric material with the signal only through the first plurality of fingers, nor is there any description or disclosure or figure(s) in the parent case supporting the limitation of receiving a filtered signal from the piezoelectric material...end of the second finger. In view of this, the invention defined by claims 1-9 of the present application clearly lacks adequate written description in the originally filed specification, i.e., such limitations are clearly prohibited new matter and should therefore be deleted from claims 1-9 in response to this office action.
Claim Rejections - 35 USC § 103
3. The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-11 are rejected under 35 U.S.C. 103 as being unpatentable over applicant’s admitted prior art (AAPA) in view of Daimon et al, WO 2019/172374.
As to claim 1, AAPA discloses a method of filtering a signal with a surface acoustic wave (SAW) filter (see paragraph [0003] of applicant specification which describes using a SAW filter), the method comprising:
passing a signal into a first interdigitated electrode comprising a first plurality of fingers (see figure 1B of the instant drawings, which is indicated as being admitted prior art, where the above-noted signal is passed into a first interdigitated electrode (the claimed first interdigitated electrode is either interdigitated electrode 106 or interdigitated electrode 108) comprising a first plurality of fingers (note that both interdigitated electrodes 106 and 108 comprise a first plurality of fingers);
exciting a piezoelectric material (the claimed piezoelectric material is the piezoelectric material forming piezoelectric layer 104 in figure 1A which is also indicated as being admitted prior art) with the signal only through the first plurality of fingers (note the disclosure in paragraph [0022] of the instant specification, which is also indicated as being admitted prior art, i.e., this portion of applicant’s specification indicates that one of the two interdigitated electrodes 106 and 108 may be a dummy electrode, note that this disclosure in AAPA means that only one of the two interdigitated electrodes 106 and 108 is used to excite the piezoelectric material forming the piezoelectric layer 104 shown in AAPA figure 1B, e.g., if the dummy electrode is interdigitated electrode 108, the above-noted piezoelectric material is excited with the signal only being applied to the first plurality of fingers which form the first interdigitated electrode 106);
receiving a filtered signal from the piezoelectric material at all fingers of a second interdigitated electrode comprising a second plurality of second fingers (as noted above, in AAPA the piezoelectric material is excited with the signal only through the first plurality of fingers of interdigitated electrode 106 and, in response to such excitement, all of the fingers of the second interdigitated electrode, i.e., the fingers of the dummy electrode 108) will receive a filtered signal from the piezoelectric material during operation of the surface acoustic wave filter shown in AAPA figures 1A and 1B),
wherein each of the first plurality of fingers has a respective opposite one of the second plurality of second fingers, and each pair of first finger and second finger has a gap therebetween (as clearly shown in AAPA figure 1B, each of the first plurality of fingers of first interdigitated electrode 106 has a respective opposite one of the second plurality of fingers of the second interdigitated electrode 108, and each pair of first finger and second finger has a gap therebetween, i.e., gap 116, as shown in instant figure 1B and indicated on the last two lines of paragraph [0023] of the originally filed specification).
Not disclosed by AAPA are the limitations in claim 1 that each finger of the first plurality of fingers comprises a substantially uniform first width along a longitudinal axis of the finger for a first length and a second width along the longitudinal axis of the finger for a second length at a terminal end portion of the finger, and each second finger of the second plurality of fingers comprises a substantially uniform third width along a second longitudinal axis of the second finger for a third length and a fourth
width along the second longitudinal axis of the second finger for a fourth length at a second end of the second finger.
Daimon et al discloses, in figure 2, that each finger of a first plurality of fingers comprises a substantially uniform first width along a longitudinal axis of the finger for a first length and a second width along the longitudinal axis of the finger for a second length at a terminal end portion of the finger, and each second finger of a second plurality of fingers comprises a substantially uniform third width along a second longitudinal axis of the second finger for a third length and a fourth width along the second longitudinal axis of the second finger for a fourth length at a second end of the second finger.
It would have been obvious to one of ordinary skill in the art before the effective filing date of applicant’s invention to combine the above-noted teachings of applicant’s admitted prior art with the surface acoustic wave device of Daimon et al such that the terminal ends of the fingers shown in AAPA figure 1B are formed as shown in figure 2 of Daimon et al, the motivation for such a combination being to obtain the advantages associated with forming the terminal ends of the fingers as taught by Daimon et al.
As to claim 2, in the method of filtering a signal with a surface acoustic wave filter as indicated in applicant’s admitted prior art and modified using the above-noted teachings of Daimon et al, passing the signal into the first interdigitated electrode 106 comprises passing the signal into a first electrode that is apodized in a length direction of the SAW filter.
As to claim 3, in the method of filtering a signal with a surface acoustic wave filter as indicated in applicant’s admitted prior art and modified using the above-noted teachings of Daimon et al, passing the signal into the first interdigitated electrode 106 comprises passing the signal into a first interdigitated electrode that is apodized with a wave pattern in a length direction of the SAW filter.
As to claim 4, in the method of filtering a signal with a surface acoustic wave filter as indicated in applicant’s admitted prior art and modified using the above-noted teachings of Daimon et al, passing the signal into the first interdigitated electrode 106 comprises passing the signal into a first interdigitated electrode wherein the second width is greater than the substantially uniform first width but less than three times the substantially uniform first width, note figure 2 of Daimon et al which shows the width of the terminal end portions of each finger being greater than the uniform first width but less than three times the substantially uniform first width. Moreover, it has long been held that discovering an optimum value of a result effective variable involves only routine skill in the art, see In re Boesch, 617 F.2d 272, 205, 205 USPQ 215 (CCPA 1980), and also note section IV of MPEP 2144.04 which indicates that differences in size, proportion and/or shape would have been obvious to one of ordinary skill in the art absent any criticality of the specifically recited size, proportion or shape.
As to claims 5-8, although neither AAPA nor Daimon et al discloses the specific dimensions of the first and second interdigitated electrodes as recited in these claims, such specific dimensions would have been obvious to one of ordinary skill in the art before the effective filing date of applicant’s invention because, as noted above, it has long been held that discovering an optimum value of a result effective variable involves only routine skill in the art, see In re Boesch, 617 F.2d 272, 205, 205 USPQ 215 (CCPA 1980), and also note section IV of MPEP 2144.04 which indicates that differences in size, proportion and/or shape would have been obvious to one of ordinary skill in the art absent any criticality of the specifically recited size, proportion or shape.
As to claim 9, the limitation that the terminal end portion of the first interdigitated electrode comprises a rounded corner portion also does not distinguish patentably over AAPA in view of Daimon et al, note that it has also long been held that simply changing the shape of an object would have been obvious to one of ordinary skill in the art absent persuasive evidence that the particular shape was significant, see In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
As to claims 10 and 11, the limitations of these claims are rejected using the same reasoning and analysis as set forth above in the rejection of claim 1 (note that AAPA includes the use of the SAW structures shown in instant figures 1A and 1B as radio frequency filters, as indicated on the first two lines of paragraph [0003] of the instant specification, and note further that AAPA is for use in a mobile communication device comprising a transmitter including a SAW filter, note the disclosure of an electronic device on lines 7-8 of paragraph [0003] of the instant specification, where such an electronic device can obviously be a mobile communication device, note that such an electronic device is used in a wireless network, as also indicated in this paragraph, and finally note that such a mobile communication device comprises a transceiver, as indicated on line 4 of this paragraph, wherein such a transceiver is known in the art to typically include both a transmitter and a receiver).
Response to Arguments
4. Applicant's arguments filed on 07/23/26 have been fully considered but they are not persuasive.
Applicant argues that “the Patent Office has not engaged Appellant’s arguments and evidence and relies on repeated assertions that the limitations recited are not clearly supported through express, implicit, or inherent disclosure. Since the burden is on the Patent Office, and the Patent Office has not met its burden, the claims meet the Written Description requirement and the rejection is improper.”
This argument is not persuasive because applicant’s arguments are clearly not evidence of where there is support in the originally filed specification and/or drawings for what is recited in claims 1-9, i.e., applicant merely points out of what was known in the prior art and also points out what is described in the originally filed specification and drawings. Applicant clearly did not point out where in the originally filed specification and/or drawings there is any disclosure of what is recited in independent claim 1, i.e., there is no disclosure anywhere in the originally filed specification and/or drawings of exciting a piezoelectric material with a signal only through the first plurality of fingers, nor is there any disclosure of receiving a filtered signal from the piezoelectric material at all fingers of a second interdigitated electrode comprising a second plurality of second fingers. Because of this, applicant’s claims 1-9 are clearly not supported by the originally filed specification and/or drawings, nor are such limitations supported anywhere in the specification, drawings or claims of applicant’s parent case 17/452,825.
Again, applicant’s rebuttal argument against the examiner’s prima facie rejection based on lack of written description (prohibited new matter) is to merely indicate what is described in applicant’s originally filed specification and drawings, and to indicate what was known in the art prior to the effective filing date of applicant’s invention, and then applicant follows this by making the conclusory statement that claims 1-9 meet the requirements of 35 USC 112(a). This argument fails because nowhere in the originally filed specification and drawings (or, indeed, anywhere in the parent case 17/452,825) is there any support for exciting a piezoelectric material with a signal only through the first plurality of fingers, nor is there any disclosure in the specification and/or drawings of receiving a filtered signal from the piezoelectric material at all fingers of a second interdigitated electrode comprising a second plurality of second fingers. The examiner pointed this out repeatedly to applicant throughout the prosecution history and has therefore clearly presented a prima facie case of lack of written description (prohibited new matter) against claims 1-9.
For applicant to properly rebut such a rejection, applicant needs to point out where in the originally filed specification and/or drawings there is supporting disclosure of exciting a piezoelectric material with a signal only through the first plurality of fingers, and supporting disclosure of receiving a filtered signal from the piezoelectric material at all fingers of a second interdigitated electrode comprising a second plurality of second fingers. Applicant clearly has not done this, and instead has merely described what was known in the art before the effective filing date of applicant’s invention and argues that what was well-known in the art before the effective filing date of applicant’s invention combined with what is indicated throughout applicant’s specification and drawings provides support for the assertion that applicant had possession of the invention recited in claims 1-9. Again, this argument fails because there is no disclosure anywhere in the originally filed specification and/or drawings of exciting a piezoelectric material with a signal only through the first plurality of fingers, nor is there any disclosure anywhere in the originally filed specification and/or drawings of receiving a filtered signal from the piezoelectric material at all fingers of a second interdigitated electrode comprising a second plurality of second fingers.
Action is Non-final
5. In view of the above-noted new grounds of rejection under 35 USC 103, this office action is hereby made non-final.
Conclusion
6. Any inquiry concerning this communication or earlier communications from the examiner should be directed to KENNETH B WELLS whose telephone number is (571)272-1757. The examiner can normally be reached Monday-Friday, 8:30am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, REGIS J BETSCH, can be reached at (571)270-7101. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KENNETH B WELLS/Primary Examiner, Art Unit 2836 September 14, 2026
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