DETAILED ACTION
Response to Amendment
1. Applicant's amendment filed on 04/08/26 has been received and entered in the case. The arguments against the outstanding rejections under 35 USC 112(a) and 35 USC 103 are not deemed to be persuasive, and therefore these rejections are maintained and repeated, as set forth below.
Information Disclosure Statements
2. The information disclosure statement (IDS) submitted on 03/26/26 has been considered by the examiner. The IDS filed on 02/16/26 has not been considered, however, because references D1 through D3, cited in the EPO search report, have not been provided by applicant.
Claim Rejections - 35 USC § 112(a)
3. 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 does not include any description or disclosure of filtering a signal comprising the steps recited on lines 3-16 of independent claim 1, i.e., there is no description or disclosure of the limitation of passing a signal into a first interdigitated electrode...end portion of the first finger, nor is there any description or disclosure of exciting a piezoelectric material with the signal only through the first plurality of fingers, nor is there any description or disclosure 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 lacks adequate description in the originally filed specification.
Claim Rejections - 35 USC § 103
4. 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 Kando et al, USPAP 2009/0295507, in view of applicant's admitted prior art.
As to claim 1, Kando et al discloses, in figures 1A-1C, a first interdigitated electrode (31) comprising a first plurality of fingers, each finger of the first plurality comprising 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 a second interdigitated electrode (32) comprising a plurality of second fingers, each second finger of the second plurality comprising 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 terminal end of the second finger, wherein each of the first plurality of fingers has a respective opposite one of the second plurality of second fingers, each pair of the first finger and second finger has a gap (33) therebetween. As to the recitation of a method of filtering a signal with a surface acoustic wave (SAW) filter recited on lines 1-2 of claim 1, note that this is just intended use preamble language, but it would have been obvious to one of ordinary skill in the art that the surface acoustic wave structure of Kando et al could obviously be used to perform filtering of a signal, which would obviously include passing a signal into the first interdigitated electrode. As to the limitation of exciting a piezoelectric material with the signal, as noted in the parent case, interdigitated electrodes of a surface acoustic wave structure are typically formed on a piezoelectric substrate. As to the limitation of exciting the piezoelectric material only through the first plurality of fingers, this limitation would have been obvious to one of ordinary skill in the art in view of applicant's admitted prior art in paragraph [0022], that it was conventional that one of a pair of interdigitated electrodes may be a dummy electrode, i.e., one of ordinary skill in the art could obviously make Kando et al's second interdigitated electrode 32 a dummy electrode, and this would result in the above-noted obvious piezoelectric substrate being excited only with the above-noted signal passing through the first plurality of fingers. As to the limitation of receiving a filtered signal from the piezoelectric material at all fingers of the second interdigitated electrode, this will be the inherent result of the operation of Kando et al's figures 1A-1C when first and second interdigitated electrodes 31 and 32 are formed on a piezoelectric substrate (obvious, as noted above), a signal is passed to first interdigitated electrode 31 (also obvious, as noted above), and second interdigitated electrode 32 is formed as a dummy electrode (also obvious, as noted above).
As to claims 2 and 3, as shown in figure 1A of Kando et al, the first interdigitated electrode 31 is apodized with a wave pattern in a length direction of the SAW filter.
As to claims 4 and 5, as shown in figures 1A-1C of Kando et al, the second width is greater than the first width but less than three times the first width, and the second width is greater than the first width by less than 2.5 times the first width.
As to claims 6 and 7, because the relationship between the dimensions of the terminal end portions of Kando et al's interdigitated fingers 31 and 32 compared to the width and length of these fingers is essentially the same as in applicant's invention, the limitations of these two claims will be inherent in the SAW structure of this reference.
As to claim 8, although Kando et al does not disclose that gap 33 has the distance recited in this claim, such would have been obvious to one of ordinary skill in the art who would have easily recognized that the gap between the first and second interdigitated fingers can be set to any desired distance, without any unexpected changes in the operation thereof, the reason being that 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).
As to claim 9, note figures 11 and 14 of Kando et al which show the terminal end portions of the first and second fingers comprising rounded corner portions.
As to claims 10 and 11, as noted above it would have been obvious to one of ordinary skill in the art that the SAW structure disclosed by Kando et al could obviously be used to implement a filter (as per claim 10), and one of ordinary skill in the art would have easily recognized that such a filter could be used within a transmitter of a mobile communication device (as per claim 11), i.e., these would be obvious intended uses of the Kando et al surface acoustic wave structure illustrated in figures 1A-1C.
Response to Arguments
5. Applicant's arguments filed on 04/08/26 have been fully considered but they are not persuasive.
Applicant's first argument is that "[a]pplicant concedes that there is no verbatim support for the claim language in the specification. However, U.S. patent law does not require verbatim support to satisfy the Written Description requirement. While there is no in haec verba requirement, newly added claims or claim limitations must be supported in the specification through express, implicit, or inherent disclosure."
Applicant's first argument is not persuasive because, as noted above, the limitations recited on lines 3-16 of originally filed claim 1 are clearly not supported anywhere in the originally filed specification or drawings, i.e., the originally filed specification and drawings clearly do not support the limitations recited on lines 3-16 of claim 1 through express, implicit or inherent disclosure. Because there is no disclosure of these limitations anywhere in the originally filed specification or drawings, the rejection under 35 USC 112(a) is still deemed to be proper.
Applicant's second argument is that the rejection under 35 USC 112(a) "ignores the fundamental functions of SAW filters, known since the time of Lord Rayleigh. The standard is whether a person skilled in the art would recognize that Applicant had the invention in its possession at the time of filing. Thus, the general knowledge of how a SAW filter works is implicit in the specification. Casual perusal of a textbook or even Wikipedia...indicates that electronic devices employing SAWs normally use one or more interdigital transducers (IDTs) to convert acoustic waves to electrical signals and vice versa by exploiting the piezoelectric effect of certain materials."
Applicant's second argument is not persuasive for the same reason noted above, i.e., the limitations recited on lines 3-16 of originally filed claim 1 are clearly not supported anywhere in the originally filed specification or drawings, i.e., the originally filed specification and drawings clearly do not support the limitations recited on lines 3-16 of claim 1 through express, implicit or inherent disclosure. Because there is no disclosure of these limitations anywhere in the originally filed specification or drawings, the rejection under 35 USC 112(a) is still deemed to be proper.
Applicant's third argument is that "the ordinary [sic] skilled artisan would know that the SAW filter operates by passing a signal into the first IDT, exciting the piezoelectric material, and receiving the signal at the second IDT. That is basic SAW technology that any ordinarily skilled artisan would understand and know."
Applicant's third argument is not persuasive for the same reason noted above, i.e., the limitations recited on lines 3-16 of originally filed claim 1 are clearly not supported anywhere in the originally filed specification or drawings, i.e., the originally filed specification and drawings clearly do not support the limitations recited on lines 3-16 of claim 1 through express, implicit or inherent disclosure. Because there is no disclosure of these limitations anywhere in the originally filed specification or drawings, the rejection under 35 USC 112(a) is still deemed to be proper.
Applicant's fourth argument is that "[t]he novelty of the present disclosure lies in the structure of the interdigitated electrodes, which are disclosed throughout the specification as filed, as evidenced by the issued claims in the parent application."
Applicant's fourth argument is not persuasive for the same reason noted above, i.e., the limitations recited on lines 3-16 of originally filed claim 1 are clearly not supported anywhere in the originally filed specification or drawings, i.e., the originally filed specification and drawings clearly do not support the limitations recited on lines 3-16 of claim 1 through express, implicit or inherent disclosure. Because there is no disclosure of these limitations anywhere in the originally filed specification or drawings, the rejection under 35 USC 112(a) is still deemed to be proper.
Applicant's fifth argument is that "[c]laim 1 recites exciting a piezoelectric material with the signal only through the first plurality of fingers but the first plurality of fingers has the requirement that each finger having [sic] the specific two width requirements. Likewise, claim 1 recites receiving a filtered signal from the piezoelectric material at all fingers of a second interdigitated electrode where each finger of the second interdigitated electrode has the specific two width requirements. Thus, the language of the claim requires that all fingers have just the two widths."
Applicant's fifth argument is not persuasive because Kando et al's figures 1A-C clearly meet the language of the claims regarding each of the first plurality of fingers comprising 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 of the finger, note the illustration of the first fingers 31 shown in figures 1A and 1B of Kando et al. Applicant should note that the shapes of the fingers shown in figures 1A and 1B of Kando et al are essentially the same as the shapes of the fingers shown in figure 4 of Murata, WO 2019/172374 which was applied against the claims in the parent case 17/452,825 (note attachment A included with the final rejection mailed on 01/16/24 which clearly shows that the fingers have two different widths, i.e., a first width along first length L1 and a second greater width along second length L2).
As to the argument that "all fingers have just the two widths", note that claim 1 does not recite that all fingers have just the two widths, i.e., applicant appears to be reading limitations from the specification into the claims.
As has been repeatedly held by the CAFC, "the scope of the claims in patent applications [is determined] not solely on the basis of the claim language, but upon giving claims their broadest reasonable construction in light of the specification as it would be interpreted by one of ordinary skill in the art." In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
The Court also indicated that "claim terms should be given their broadest reasonable meaning in their ordinary usage as such claim terms would be understood by one skilled in the art by way of definitions and the written description." In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
Applicant should especially note the holding in In re Zletz, 893 F.2d 319, 322 (Fed. Cir. 1989), where the Court indicated that "[d]uring ex parte prosecution, claims must be interpreted as broadly as their terms reasonably allow since applicants have the power during the administrative process to amend the claims to avoid the prior art."
The Federal Circuit has also indicated that "[c]laim terms are presumed to have their customary and ordinary meaning unless there is an express intention to impart novel meaning to the claim terms." Sunrace Roots Enterprise Co., Ltd. v. SRAM Corp., 336 F.3d 1298, 1302 (Fed. Cir. 2003).
Finally, it has been held that "[a]lthough claims are interpreted in light of the specification, limitations from the specification are not read into the claims." In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
Applicant's sixth argument is that "[i]n contrast, every embodiment of Kando has at least some fingers within the one or the other of the interdigitated electrodes that has the side bumps. Thus, in contrast to the claim language that requires that the excitation of the piezoelectric material is only through the first plurality that has two widths, electrode 31 of Kando excites piezoelectric material 2 using at least some fingers that have the side bumps. The use of the side bumps fingers to excite the piezoelectric material is not what is claimed."
Applicant's sixth argument is not persuasive for the same reason noted above, i.e., Kando et al's figures 1A-C clearly meet the language of the claims regarding each of the first plurality of fingers comprising 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 of the finger, note the illustration of the first fingers 31 shown in figures 1A and 1B of Kando et al. As noted above, the shapes of the fingers shown in figures 1A and 1B of Kando et al are essentially the same as the shapes of the fingers shown in figure 4 of Murata, WO 2019/172374 which was applied against the claims in the parent case 17/452,825 (note attachment A included with the final rejection mailed on 01/16/24 which clearly shows that the fingers have two different widths, i.e., a first width along first length L1 and a second greater width along second length L2).
As to the argument regarding "side bumps", again nothing in claim 1 indicates that applicant's filtering method does not include "side bumps". Again, applicant appears to be reading in limitations from the specification which are not in the claims.
As noted above, "the scope of the claims in patent applications [is determined] not solely on the basis of the claim language, but upon giving claims their broadest reasonable construction in light of the specification as it would be interpreted by one of ordinary skill in the art." In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
The Court also indicated that "claim terms should be given their broadest reasonable meaning in their ordinary usage as such claim terms would be understood by one skilled in the art by way of definitions and the written description." In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
Applicant should especially note the holding in In re Zletz, 893 F.2d 319, 322 (Fed. Cir. 1989), where the Court indicated that "[d]uring ex parte prosecution, claims must be interpreted as broadly as their terms reasonably allow since applicants have the power during the administrative process to amend the claims to avoid the prior art."
The Federal Circuit has also indicated that "[c]laim terms are presumed to have their customary and ordinary meaning unless there is an express intention to impart novel meaning to the claim terms." Sunrace Roots Enterprise Co., Ltd. v. SRAM Corp., 336 F.3d 1298, 1302 (Fed. Cir. 2003).
Finally, it has been held that "[a]lthough claims are interpreted in light of the specification, limitations from the specification are not read into the claims." In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
Applicant's seventh argument is that "every embodiment of Kando receives the signal from piezoelectric material 2 using fingers of electrode 32, which have side bumps. Since claim 1 requires that all fingers have the two width requirement, Kando does not teach this claim element."
Applicant's seventh argument is not persuasive for the same reason noted above, i.e., Kando et al's figures 1A-C clearly meet the language of the claims regarding each of the first plurality of fingers comprising 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 of the finger, note the illustration of the first fingers 31 shown in figures 1A and 1B of Kando et al. As noted above, the shapes of the fingers shown in figures 1A and 1B of Kando et al are essentially the same as the shapes of the fingers shown in figure 4 of Murata, WO 2019/172374 which was applied against the claims in the parent case 17/452,825 (note attachment A included with the final rejection mailed on 01/16/24 which clearly shows that the fingers have two different widths, i.e., a first width along first length L1 and a second greater width along second length L2).
As to the argument regarding "side bumps", again nothing in claim 1 indicates that applicant's filtering method does not include "side bumps". Again, applicant appears to be reading in limitations from the specification which are not in the claims.
As noted above, "the scope of the claims in patent applications [is determined] not solely on the basis of the claim language, but upon giving claims their broadest reasonable construction in light of the specification as it would be interpreted by one of ordinary skill in the art." In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
The Court also indicated that "claim terms should be given their broadest reasonable meaning in their ordinary usage as such claim terms would be understood by one skilled in the art by way of definitions and the written description." In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
Applicant should especially note the holding in In re Zletz, 893 F.2d 319, 322 (Fed. Cir. 1989), where the Court indicated that "[d]uring ex parte prosecution, claims must be interpreted as broadly as their terms reasonably allow since applicants have the power during the administrative process to amend the claims to avoid the prior art."
The Federal Circuit has also indicated that "[c]laim terms are presumed to have their customary and ordinary meaning unless there is an express intention to impart novel meaning to the claim terms." Sunrace Roots Enterprise Co., Ltd. v. SRAM Corp., 336 F.3d 1298, 1302 (Fed. Cir. 2003).
Finally, it has been held that "[a]lthough claims are interpreted in light of the specification, limitations from the specification are not read into the claims." In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
Applicant's eighth argument is that "[t]he AAPA likewise does not teach or suggest the two width requirement for either electrode and the requirement that all the fingers of both electrodes comply with these two width limitations."
Applicant's eighth argument is not persuasive for the same reason noted above, i.e., Kando et al's figures 1A-C clearly meet the language of the claims regarding each of the first plurality of fingers comprising 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 of the finger, note the illustration of the first fingers 31 shown in figures 1A and 1B of Kando et al. As noted above, the shapes of the fingers shown in figures 1A and 1B of Kando et al are essentially the same as the shapes of the fingers shown in figure 4 of Murata, WO 2019/172374 which was applied against the claims in the parent case 17/452,825 (note attachment A included with the final rejection mailed on 01/16/24 which clearly shows that the fingers have two different widths, i.e., a first width along first length L1 and a second greater width along second length L2).
Applicant's ninth argument is that "[c]laim 10 differs in that each adjacent finger of the two electrodes has the two width requirement. Again, in contrast, Kando teaches adjacent fingers that have the side bumps. No embodiment of Kando meets the adjacent finger requirements. The APA does not cure this deficiency. Accordingly, the combination of Kando and the APA does not teach or suggest every element, and the Office Action does not establish a prima facie obviousness for claim 10."
Applicant's ninth argument is not persuasive for the same reason noted above, i.e., Kando et al's figures 1A-C clearly meet the language of the claims regarding each of the first plurality of fingers comprising 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 of the finger, note the illustration of the first fingers 31 shown in figures 1A and 1B of Kando et al. As noted above, the shapes of the fingers shown in figures 1A and 1B of Kando et al are essentially the same as the shapes of the fingers shown in figure 4 of Murata, WO 2019/172374 which was applied against the claims in the parent case 17/452,825 (note attachment A included with the final rejection mailed on 01/16/24 which clearly shows that the fingers have two different widths, i.e., a first width along first length L1 and a second greater width along second length L2).
As to the argument regarding "side bumps", again nothing in claim 1 indicates that applicant's filtering method does not include "side bumps". Again, applicant appears to be reading in limitations from the specification which are not in the claims.
As noted above, "the scope of the claims in patent applications [is determined] not solely on the basis of the claim language, but upon giving claims their broadest reasonable construction in light of the specification as it would be interpreted by one of ordinary skill in the art." In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
The Court also indicated that "claim terms should be given their broadest reasonable meaning in their ordinary usage as such claim terms would be understood by one skilled in the art by way of definitions and the written description." In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
Applicant should especially note the holding in In re Zletz, 893 F.2d 319, 322 (Fed. Cir. 1989), where the Court indicated that "[d]uring ex parte prosecution, claims must be interpreted as broadly as their terms reasonably allow since applicants have the power during the administrative process to amend the claims to avoid the prior art."
The Federal Circuit has also indicated that "[c]laim terms are presumed to have their customary and ordinary meaning unless there is an express intention to impart novel meaning to the claim terms." Sunrace Roots Enterprise Co., Ltd. v. SRAM Corp., 336 F.3d 1298, 1302 (Fed. Cir. 2003).
Finally, it has been held that "[a]lthough claims are interpreted in light of the specification, limitations from the specification are not read into the claims." In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
Action is Final
6. THIS ACTION IS MADE FINAL. 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 or reply expire later than SIX MONTHS from the mailing date of this final action.
Conclusion
7. 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 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 2842 April 16, 2026
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