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.
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.
Claims 1-9, 12 and 14-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 and 12-17 of U.S. Patent No. 12,126,316 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 12,126,316 B2
1
1 or 12
2
16
3
3
4
4
5
5
6
6
7
2
8
3
9
3
12
3
14
12
15
14
16
13
17
17
18
16
19
15
20
16
As disclosed in the chart above, the US patent claims 1-6 and 12-17 substantially recite the same limitations recited in claims 1-9, 12 and 14-20 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, 3 and 12 has the additional limitation of wherein the piezoelectric layer has a portion forming “a diaphragm” over the cavity, which isn’t required in claims 1, 8 and 14 of the present application;
Claims 2 and 12 of the present application recites wherein the first and second metal layer material are either “the same or different” which isn’t recited in either of claims 16 and 3 of the patent, respectively, however, there are only two options available for the first and second metal layers materials (i.e. they either have the be the same or different), therefore claims 16 and 3 of the patent would necessarily meet one of those two options.
Therefore, claims 1-6 and 12-17 of the patent meets claims 1-9, 12 and 14-20 of the present application under an “anticipation” analysis in an obviousness-type double patenting rejection.
Claims 10, 11 and 13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of U.S. Patent No. 12,126,316 B2 in view of Plesski et al. (US10,491,192 B1, Cited by Applicant).
In regards to claims 10 and 13:
As disclosed above, claim 3 of the US patent meets the limitations recited in claim 8 of the present application. However, claim 3 of the US patent does not teach: in regards to claim 10, wherein the piezoelectric layer and the device conductor pattern are configured such that radio frequency signals applied to the device conductor pattern excite a primary shear acoustic mode in the piezoelectric layer, wherein a propagation of the primary shear acoustic mode is normal to a primarily lateral direction of atomic motion in the piezoelectric layer; and in regards to claim 13, wherein a thickness of the piezoelectric layer ts is between 100 nm and 1000 nm.
Plesski et al. teaches in Fig. 1 a transversely-existing film bulk acoustic wave resonators (XBAR) comprising a piezoelectric layer (110) having an interdigital electrode (130) located on a top surface. Based on column 3, lines 60-67, column 4, lines 1-2, 27-33, and 64-67 and column 5, lines 1-18, the XBAR is designed to operate in high frequency ranges between 3.4 GHz to 6 GHz in which the XBAR is designed to excite a primary shear acoustic mode in the piezoelectric layer, wherein a propagation of the primary shear acoustic mode is normal to a primarily lateral direction of atomic motion in the piezoelectric layer, and wherein the piezoelectric layer has a thickness between 100 nm to 1500 nm.
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 3, and have designed the acoustic resonator device to operate as an XBAR (i.e. exciting a primary shear acoustic mode and having a piezoelectric layer thickness between 100 nm to 1500 nm) as taught by Plesski et al. because such a modification would have provided the benefit of operating the acoustic resonator device in a high frequency range between 3.4 GHz to 6 GHz as suggested by Plesski et al. (see column 4, lines 27-33).
Therefore, claim 3 of the US patent in view of Plesski et al. meets claims 10 and 13 of the present application under obviousness-type double patenting rejection.
In regards to claim 11:
As disclosed above, claim 3 of the US patent meets the limitations recited in claim 8 of the present application and recites some of the limitations recited in claim 11 of the present application. However, claim 3 of the US patent does not teach: in regards to claim 11, a passivation layer over the interleaved fingers of the IDT and disposed over the cavity.
Plesski et al. teaches in Fig. 1 a transversely-existing film bulk acoustic wave resonators (XBAR) comprising a piezoelectric layer (110) having an interdigital electrode (130) located on a top surface above a cavity. Based on column 11, lines 61-67, Plesski et al. teaches that a passivation layer can be located over the interdigital electrode (i.e. including interleaved fingers”) and disposed over a cavity.
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 3, and have added a passivation layer above the interdigital electrode and disposed over the cavity as taught by Plesski et al. (see column 11, lines 61-67) because such a modification would have provided the benefit of passivation, thereby protecting the IDT electrode from the external environment.
Therefore, claim 3 of the US patent in view of Plesski et al. meets claim 11 of the present application under obviousness-type double patenting rejection.
Allowable Subject Matter
No art rejection has been made from claims 1-20. Reason for the indication of allowable subject matter will be provided once the double patenting rejection set forth above is overcome.
Conclusion
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Andrea Lindgren Baltzell can be reached on 571-272-5918. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JORGE L SALAZAR JR/Primary Examiner, Art Unit 2843
Prosecution Insights