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 1-15 and 17-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 and 16-20 of U.S. Patent No. 12,166,468 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 12,166,468 B2
1
1
2
2
3
11
4
4
5
5
6
6
7
7
8
8
9
9
10
10
11
3
12
12
13
20
14
13
15
14
17
16
18
17
19
18
20
19
As disclosed in the chart above, the US patent claims 1-14 and 16-20 substantially recite the same limitations recited in claims 1-15 and 17-20 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 and 12 recites “wherein the thickness of the interleaved fingers is greater than or equal to 1.17 times a thickness of the piezoelectric plate and less than or equal to 1.7 time the thickness of the piezoelectric plate”, which includes values which overlap with the present application claims 1 and 16 which recites “wherein the thickness of the interleaved fingers is greater than or equal to 0.6 times a thickness of the piezoelectric plate and less than or equal to 1.7 time the thickness of the piezoelectric plate”.
Therefore, claims 1-14 and 16-20 of the patent meets claims 1-15 and 17-20 of the present application under an “anticipation” analysis in an obviousness-type double patenting rejection.
Claim 16 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 20 Patent No. 12,166,468 B2 in view of Ajima (US2017/0141758 A1).
As disclosed above, the US patent claim 20 meets the claim limitations recited in claim 13 of the present application. However, the patent claim 20 does not teach: in regard to claim 16, wherein the interleaved fingers of the respective IDTs are substantially aluminum.
Ajima teaches in Fig. 4A an acoustic resonator device comprising an IDT electrode (9) including a plurality of interleaved fingers (9a,9b). Ajima teaches in paragraph [0040], that the IDT electrode and fingers are made from an aluminum film (i.e. the IDT electrode only being made from aluminum, meaning the IDT electrode is made from “substantially aluminum).
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 20 and have replaced the generic material of the IDT electrodes and interleaved finger with an aluminum film because such a modification would have been a well-known in the art substitution of art-recognized alternative/equivalent for a film that can be used in an acoustic wave resonator that able to perform the same function as taught by Ajima.
Therefore, claim 20 of the US patent in view of Ajima meets claim 16 of the present application under obviousness-type double patenting rejection.
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.
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/JORGE L SALAZAR JR/Primary Examiner, Art Unit 2843