CTNF 18/940,507 CTNF 90556 Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia 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 08-33 AIA 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, 4, 6, 9 and 19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 5 and 9 of U.S. Patent No. 12,255,633 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 12,255,633 B2 1 1 4 3 6 5 9 1 19 9 As disclosed in the chart above, the US patent claims 1, 3, 5 and 9 substantially recite the same limitations recited in claims 1, 4, 6, 9 and 19 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 claim 1 has the additional limitation of the series and shunt resonators being “XBARs”, which isn’t required in claim 1 of the present application; and The US patent claim 9 has the additional limitation of having “a plurality of cavities” which isn’t required in claim 19 of the present application. Therefore, claims 1, 3, 5 and 9 of the patent meets claims 1, 4, 6, 9 and 19 of the present application under an “anticipation” analysis in an obviousness-type double patenting rejection. 08-36 AIA Claim s 7 and 8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,255,633 B2 in view of Nishihara et al. (USPAT 9,240,768 B2) . As discussed above, claim 1 of the US patent meets the claim limitations recited in claim 1 of the present application. However, claim 1 of the US patent does not teach: in regards to claim 7 , wherein the shunt bulk acoustic resonator is on a first chip and the series bulk acoustic resonator is on a second chip; and in regards to claim 8 , wherein the first chip of the shunt bulk acoustic resonator is electrically connected to the second chip of the series bulk acoustic resonator in a ladder filter circuit. Nishihara et al. teaches in fig. 5 a bandpass ladder filter comprising a plurality of shunt resonators (P1-P3) located on a first chip/package (62) and a plurality of series resonators (S1-S4) located on a second chip (60), in which the plurality of shunts and series resonators are electrically connected to each other via wiring (66). Nishihara et al. teaches in column 9, lines 5-11, that having the shunt and series resonators on different chip/packages improves the device temperature stability. 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 1 and have split the bandpass ladder filter on two chips, in which the shunt bulk resonators are located on a first chip and the series resonators are located on a second chip, both chips electrically connected via wiring as taught by Nishihara et al. in Fig. 5 because such a modification would have provided the benefit of improving the device temperature stability (see column 9, lines 5-11). Therefore, claim 1 of the US patent in view of Nishihara et al. meets claims 7 and 8 of the present application under obviousness-type double patenting rejection . Claim Objections 07-29-01 AIA Claim s 3, 4 and 9 are objected to because of the following informalities: Claim 3, line 2 ; and claim 4, lines 1-2; the examiner suggests rewriting “an LN-equivalent thickness” to -- the LN-equivalent thickness-- to avoid an antecedent issue. Claim 9, lines 3-4 , the examiner suggests rewriting “the LN-equivalent thickness” to -- a LN-equivalent thickness-- to avoid an antecedent issue . Appropriate correction is required. Claim Rejections - 35 USC § 112 07-30-02 AIA The following is a quotation of 35 U.S.C. 112(b): (b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention. The following is a quotation of 35 U.S.C. 112 (pre-AIA), second paragraph: The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention. 07-34-01 AIA Claim s 5 and 10 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention. Claim 5, lines 1-2 , note that the recitation of “wherein the LN layer of the series bulk acoustic resonator has a thickness less than or equal to the thickness of the LN layer of the series bulk acoustic resonator ” causes ambiguity in the claim since it comparing the thickness of the same “LN layer of the series bulk acoustic resonator” to itself. Correction is required. Upon the resolution of the 35 USC 112(b) issue noted, the examiner may apply prior art rejection(s) as deemed appropriate. Claim 10, line 2 , note that the recitation of “ the dielectric layer of the shunt bulk acoustic resonator” lacks proper antecedent basis since no “dielectric layer” has been defined for the shunt bulk acoustic resonator in the chain of dependency. Correction is required. Claim Rejections - 35 USC § 103 07-20-aia AIA 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. 07-20-02-aia AIA 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. 07-21-aia AIA Claim s 1, 4, 6, 9, 10 and 16-19 are rejected under 35 U.S.C. 103 as being unpatentable over Yantchev et al. (USPAT 10,790,802 B2, cited by applicant) . In regards to claims 1 and 19 , Yantchev et al. teaches in Fig. 10 a bandpass filter comprising: A plurality of series bulk acoustic wave resonators (1010A-1010D) and a plurality of shunt bulk acoustic wave resonators (1020A-1020C) in a ladder filter circuit, wherein based on related Figs. 1-2, each of the series and shunt bulk acoustic wave resonators comprises: A substrate (120); A lithium niobate (LN) layer (110) (see column 5, lines 1-3) bonded to the substrate by one or more intermediate oxide layers (intermediate oxide layer is not shown but disclosed in column 11, lines 8-19) and, the lithium niobate layer over a cavity (140); A conductor pattern comprising an interdigital transducer (130) on the LN layer; and A dielectric layer (214) over the interdigital transducer and between the interdigital transducer on the LN layer. In regards to claim 6 , based on column 8, lines 30-31, wherein the LN layer has Euler angles [0°, 0°, 90°]. In regards to claim 9 , based on Fig. 10, the shunt bulk acoustic resonator is one of a plurality of shunt bulk acoustic resonators (1020A-1020C) in the bandpass filter, and the series bulk acoustic resonator is one of a plurality of series bulk acoustic resonators (1010A-1010D) in the bandpass filter, and based on column 10, table between lines 30-35, the LN-equivalent thickness of any one of the shunt resonators is more than the LN-equivalent thickness of any one of the series resonators (table shows the shunt resonator having a dielectric thickness greater than the series resonators, therefore the LN-equivalent thickness of any one of the shunt resonators is more than the LN- equivalent thickness of any one of the series resonators). In regards to claim 10 , based on column 5, lines 56-59, wherein the dielectric layer on both the series and shunt bulk acoustic resonators is silicon oxide. In regards to claim 16 , based on Figs. 1 and 2, each of the series and shunt bulk acoustic resonators comprises an interdigital transducer (130) having interleaved fingers. In regards to claim 17 , based on Figs. 1 and 2 and column 5, lines 23-37, a pitch of the series bulk acoustic resonator is a center-to-center distance between two adjacent interleaved fingers of the series bulk acoustic resonator, the pitch of the shunt bulk acoustic resonator is a center-to-center distance between two adjacent interleaved fingers of the shunt bulk acoustic resonator, and the pitch of the series bulk acoustic resonator is different than the pitch of the shunt bulk acoustic resonator (see column 10, table between lines 30-35, in which the pitch “p” of the series bulk acoustic wave resonator is different from the “p” of the shunt resonators). In regards to claim 18 , based on Figs. 1 and 2 and column 5, lines 23-37, a pitch of the series bulk acoustic resonator is a center-to-center distance between two adjacent interleaved fingers of the series bulk acoustic resonator and a mark of the series bulk acoustic resonator is a width of one of the interleaved fingers of the series bulk acoustic resonator, the pitch of the shunt bulk acoustic resonator is a center-to-center distance between two adjacent interleaved fingers of the shunt bulk acoustic resonator and a mark of the shunt bulk acoustic resonator is a width of one of the interleaved fingers of the shunt bulk acoustic resonator, and wherein the pitch of each of the series and shunt bulk acoustic resonators is between 2 and 20 times the mark. Yantchev et al. does not teach: in regards to claims 1 and 19 , wherein the LN layer and the dielectric layer of the series bulk acoustic wave resonator has an LN-equivalent thickness less than or equal to 375 nanometers, the LN-equivalent thickness of the series bulk acoustic resonator is given by: teqa = tp + ka(tfsd) where teqa is the LN-equivalent thickness of the LN layer series bulk acoustic resonator, tp is the thickness of the LN layer of the series bulk acoustic resonator, ka is a proportionality constant for the series bulk acoustic resonator and ka = 0.52, and tfsd is a thickness of the dielectric layer; in regards to claim 4 , wherein the series bulk acoustic resonator has an LN-equivalent thickness less than or equal to 365 nm However, Yantchev et al. teaches in column 5, lines 1-8, that the LN layer has a thickness of 300 nm to 700 nm (tp) to achieve a desired frequency between 3.4 GHz to 6 GHz. Yantchev et al. further teaches in column 5, lines 49-64, that the dielectric layer (214) is made from silicon oxide and has any desired thickness between 0 to 500 nm, in which silicon oxide will inherently have a proportionality constant (ka) equal to 0.52. At the time of filing, it would have been obvious to one of ordinary skill in the art to have modified the invention of Yantchev et al. and have designed each of the series acoustic resonators of Yantchev et al. to have any desired thickness for the LN layer to be between 300 nm to 700 nm (e.g. 300 nm) and have any desired thickness for the dielectric silicon oxide layer to be between 0 to 500 nm (e.g. 100 nm) because such a modification would have provided the benefit of achieving a desired frequency response between 3.4 GHz to 6 GHz as suggested by Yantchev et al. (see column 5, lines 1-8). As an obvious consequence of the modification, when the LN layer is selected to have a thickness of 300nm, and the silicon layer is selected to have a thickness of 100 nm, teqa (LN-equivalent thickness) of each of the series bulk acoustic wave resonators would equal to 352 nm. (tega = 300nm + 0.52(100 nm)) . 07-21-aia AIA Claim s 7 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Yantchev et al. (USPAT 10,790,802 B2, cited by applicant) in view of Nishihara et al. (USPAT 9,240,768 B2) . As disclosed above, Yantchev et al. teaches the claimed invention as recited in claim 1. Yantchev et al. ladder filter layout is generic, therefore does not teach: in regards to claim 7 , wherein the shunt bulk acoustic resonator is on a first chip and the series bulk acoustic resonator is on a second chip; and in regards to claim 8 , wherein the first chip of the shunt bulk acoustic resonator is electrically connected to the second chip of the series bulk acoustic resonator in a ladder filter circuit. Nishihara et al. teaches in fig. 5 a bandpass ladder filter comprising a plurality of shunt resonators (P1-P3) located on a first chip/package (62) and a plurality of series resonators (S1-S4) located on a second chip (60), in which the plurality of shunts and series resonators are electrically connected to each other via wiring (66). Nishihara et al. teaches in column 9, lines 5-11, that having the shunt and series resonators on different chip/packages improves the device temperature stability. At the time of filing, it would have been obvious to one of ordinary skill in the art to have modified the invention of Yantchev et al. and have split the ladder filter on two chips, in which the shunt bulk resonators are located on a first chip and the series resonators are located on a second chip, both chips electrically connected via wiring as taught by Nishihara et al. in Fig. 5 because such a modification would have provided the benefit of improving the device temperature stability (see column 9, lines 5-11) . 07-21-aia AIA Claim s 11-15 are rejected under 35 U.S.C. 103 as being unpatentable over Yantchev et al. (USPAT 10,790,802 B2, cited by applicant) in view of Matsuda et al. (US2010/0148887 A1) . As disclosed above, Yantchev et al. teaches the claimed invention as recited in claim 1. Yantchev et al. does not teach: in regards to claim 11 , wherein the shunt bulk acoustic resonator is composed of a plurality of sub-resonators, that are a same length as each other; in regards to claim 12 , wherein the sub-resonators are connected in parallel to each other; in regards to claim 13 , wherein the sub-resonators are connected in series to each other; in regards to claim 14 , wherein the series bulk acoustic resonator is composed of a plurality of sub-resonators that are a same length as each other; and in regards to claim 16 , wherein the plurality of sub-resonators are connected in parallel to each other. Matsuda et al. teaches in Fig. 1A a ladder band pass filter comprising a plurality of series resonators (S1-S3) and shunt resonators (P1-P3). Based on Fig. 1A and paragraph [0124], a resonator can comprise a plurality of sub-resonators (split resonators S11/S12 and P1/P3) in which each of the sub-resonators are either connected in parallel to each other (S11/S12) or connected in series to each other (S2/S3), in which each sub-resonator in a group has the same dimensions/length. Based on paragraph [0121], having a resonator formed by a plurality of sub-resonators provides the benefit raising the filter power durability. At the time of filing, it would have been obvious to one of ordinary skill in the art to have modified the invention of Yantchev et al. and have designed each of the series resonators or parallel resonators to be formed by a plurality of sub-resonators that are either connected in series or parallel to each other as taught by Matsuda et al. (see Fig. 1A) because such a modification would have provided the benefit of raising the filter power durability (see Paragraph [0121]) . Allowable Subject Matter 12-151-08 AIA 07-43 12-51-08 Claim s 2, 3 and 20 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. 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 Application/Control Number: 18/940,507 Page 2 Art Unit: 2843 Application/Control Number: 18/940,507 Page 3 Art Unit: 2843 Application/Control Number: 18/940,507 Page 4 Art Unit: 2843 Application/Control Number: 18/940,507 Page 5 Art Unit: 2843 Application/Control Number: 18/940,507 Page 6 Art Unit: 2843 Application/Control Number: 18/940,507 Page 7 Art Unit: 2843 Application/Control Number: 18/940,507 Page 8 Art Unit: 2843 Application/Control Number: 18/940,507 Page 9 Art Unit: 2843 Application/Control Number: 18/940,507 Page 10 Art Unit: 2843
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