DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Information Disclosure Statement
2. The information disclosure statement (IDS) submitted on 11/20/24 has been considered by the examiner.
Specification
3. The disclosure is objected to because of the following informalities: in paragraph [0001] of the instant specification, reference to parent case 17/452,825 should be updated so as to reflect the fact that this application has now issued as U.S. Patent No. 12,143,090. Also, on line 5 of paragraph [0003], the first occurrence of the word "that" should be changed to --the--. On line 5 of paragraph [0005], a comma should be inserted after the word "suppressed", and on the penultimate line of this paragraph, "Temperature coefficient" should be changed to
--Temperature Coefficient--. On the first line of paragraph [0011], the word "on" should be changed to --in--. On line 5 of paragraph [0021], a comma should again be inserted after the word "suppressed". On line 5 of paragraph [0027], "further, that as illustrated," should be changed to --further that, as illustrated,--. On the last line of paragraph [0029], a period should be inserted after the word "suppressed". On line 6 of paragraph [0033], the word "are" should be changed to --is--. On line 7 of paragraph [0034], the word "is" at the beginning of the line should be changed to --are--. On the second line of paragraph [0036], the word "some" should be deleted. On the second line of paragraph [0038], the word "or" should be changed to --and--.
Appropriate correction is required.
Drawings
4. The drawings are objected to because figures 1A, 1B and 2 need to be provided with "prior art" labels (note what is indicated in paragraphs [0022] through [0024] of the instant specification). Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
5. Claims 4-7 and 9 are objected to because of the following informalities:
On the second line of claim 4, "a" should be changed to --the-- (note that a first interdigitated electrode has already been recited in claim 1, on line 3 thereof).
On the second line of claim 5, "a" should be changed to --the-- (note that a first interdigitated electrode has already been recited in claim 1, on line 3 thereof).
On the second line of claim 6, "a" should be changed to --the-- (note that a first interdigitated electrode has already been recited in claim 1, on line 3 thereof).
On the second line of claim 7, "a" should be changed to --the-- (note that a first interdigitated electrode has already been recited in claim 1, on line 3 thereof).
On the second line of claim 9, "a" should be changed to --the-- (note that a first interdigitated electrode has already been recited in claim 1, on line 3 thereof).
Appropriate correction is required.
Claim Rejections - 35 USC § 112(a)
6. 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
7. 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 an intended use preamble language, but that 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.
Double Patenting
8. Claims 1-11 are also rejected on the ground of non-statutory double patenting as being unpatentable over the claims of U.S. Patent No. 12,143,090. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 10 and 11 of the present application are fully anticipated by what is recited in claims 1-19 of the '090 patent, and the limitations recited on lines 3-16 of claim 1 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 the second interdigitated electrode of applicant's previously claimed invention in the '090 patent a dummy electrode, which would obviously result in the piezoelectric substrate being excited only with the above-noted signal passing through the first plurality of fingers. As to the limitation in claim 1 of the present application of receiving a filtered signal from the piezoelectric material at all fingers of the second interdigitated electrode, this will similarly be the obvious inherent result when the first and second interdigitated electrodes of applicant's prior claims in the '090 patent are formed on a piezoelectric substrate and a signal is passed to the first interdigitated electrode.
The non-statutory 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 non-statutory 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 non-statutory 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 non-statutory 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.
Prior Art Not Relied Upon
9. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Applicant should also note that the limitations of claims 1-11 similarly would have been obvious from Murata, WO 2019/172374, in view of applicant's admitted prior art, using the same analysis as set forth above in the rejection based on Kando et al. Specifically, note that Murata discloses a first interdigitated electrode (114 in figure 4) 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 (116 in figure 4) 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 therebetween, and the limitation of filtering a signal with a surface acoustic wave (SAW) filter is just an intended use preamble language, but nevertheless would have been obvious to one of ordinary skill in the art that the surface acoustic wave structure of Murata could obviously be used to perform filtering of a signal, which would obviously include passing a signal into the first interdigitated electrode, and the limitation of exciting a piezoelectric material with the signal would have been obvious because 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, as noted above in the rejection based on Kando et al, such 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 Murata's second interdigitated electrode 116 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, and the limitation of receiving a filtered signal from the piezoelectric material at all fingers of the second interdigitated electrode again will be the inherent result of the operation of Murata's figures 2, 4 and 9-12 when first and second interdigitated electrodes 114 and 116 are formed on a piezoelectric substrate, a signal is passed to first interdigitated electrode 114, and Murata’s second interdigitated electrode 116 is formed as a dummy electrode (obvious, as noted above).
Note also figure 4 of Inoue et al (USP 11,171,627) which shows a surface acoustic wave structure with first and second interdigitated electrode fingers 44A and 44B which are apodized with a wave pattern in a length direction of the structure (note that it would have been obvious to one of ordinary skill in the art to form the interdigitated fingers with the claimed differing width terminal end portions in view of the above-noted teachings of Kando et al and Murata, and is also noted above, it would have been obvious from applicant's admitted prior art in paragraph [0022] of the instant specification to make the second interdigitated electrode a dummy electrode, which will inherently result in exciting the piezoelectric substrate in figure 4 of Inoue et al only through the first plurality of fingers 44A).
Conclusion
10. 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, LINCOLN DONOVAN can be reached at (571)272-1988. 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 January 16, 2026