DETAILED ACTION
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
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 10, 13, 22-27 is/are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1, 11, and 20-25 of prior U.S. Patent No. 11736085. This is a statutory double patenting rejection.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 12160219. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims recite the same subject matter.
As to claim 1, Patent 121602195 claim 1 teaches the same semiconductor die, thin film layer, air cavity. Claim 1 is merely broader than that of Patent 12160219 claim 1 reciting a “film” instead of a “rib” which is a film recited in claim 1. As such claim 1 of Patent 11736085 anticipates claim 1 of the current Application.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Stokes et al (Pub 2017/0077385, further referred to as Stokes).
As to claim 1, Stokes teaches a device, comprising (fig 3 and 7B):
a semiconductor die (40);
a first film on the semiconductor die (44B);
an air cavity (Fig 7B, Air Gap) between the semiconductor die and the first film (paragraph 45) ; and
a second film (44A) on a surface of the first film opposite the air cavity.
Claim(s) 1 and 3 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Choy et al (Pub 2020/009935, further referred to as Choy)
As to claim 1, Choy teaches a device, comprising (fig 1A):
a semiconductor die (102);
a first film on the semiconductor die (122);
an air cavity (148, paragraph 33) between the semiconductor die and the first ; and
a second film (128) on a surface of the first film opposite the air cavity.
As to claim 3, Choy teaches the first film comprises a polymer layer (paragraph 45) having a thickness ranging from 1 micron to 100 microns (paragraph 34)
Claim Rejections - 35 USC § 103
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.
Claim(s) 2 and 4-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Stokes.
As to claim 2, Stokes teaches a device, comprising (fig 3 and 7B):
semiconductor die (40);
a first film on the semiconductor die (44B);
an air cavity (Fig 7B, Air Gap) between the semiconductor die and the first film (paragraph 45) ; and
a second film (44A) on a surface of the first film opposite the air cavity;
where the second film is a metal layer (paragraph 36).
Stokes does not explicitly teach the second film having a thickness ranging from 1 micron to 100 microns.
Stokes further teaches the thickness being greater than 50 nanometers and to be set based on a user desired frequency operating level (paragraph 36). As would have been recognized by a person of ordinary skill in the art choosing a thickness ranging from 1 micron to 100 microns is done merely a design choice to choosing a user desired thickness to operating at a user desired level. As such it would have been obvious to a person of ordinary skill in the art before the filing date of the invention to modify the metal layer thickness taught in Stokes to a range of 1 micron to 100 micron as doing so would be mere matter of design choice to choosing a user desired thickness to operate at a user desired level
As to claim 4, Stokes teaches the semiconductor die comprise a resonator device wherein at least a portion of it resides in the cavity (58, the active region includes the cavity). As would have been recognized by a person of ordinary skill in the art choosing a size to be in the microns to produce an MEMS system is done merely a design choice to choosing a user desired thickness to operating at a user desired level.
As to claim 5, Stokes teaches a bulk acoustic resonator (paragraph 35).
As to claim 6, Stokes teaches the resonator is electrically driven (paragraph 41). It would be obvious to a person of ordinary skill in the art to use a second semiconductor die as it would be a mere matter of design choice to choosing a notoriously well known in the art secondary circuit to provide electrical power to the resonator of Stokes.
As to claim 7, Stokes teaches the resonator is electrically driven (paragraph 41). It would be obvious to a person of ordinary skill in the art to use a driver as it would be a mere matter of design choice to choosing a notoriously well known in the art secondary circuit to provide electrical power to the resonator of Stokes.
As to claims 8 and 9, Stokes teaches the resonator is electrically driven (paragraph 41). It would be obvious to a person of ordinary skill in the art to use bumps or wire bonds as it would be a mere matter of design choice to choosing a notoriously well known in the art secondary circuit connection to provide electrical power to the resonator of Stokes.
Claim(s) 10, 11, and 13-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Stokes in view of Wang et al (Pub 2021/0111702, further referred to as Wang).
As to claim 10, Stokes teaches a device, comprising (fig 3 and 7B):
semiconductor die (40);
a first film on the semiconductor die (44B);
a second film (44A) on a surface of the first film.
Stokes does not teach a trench.
Wang teaches forming a device (fig 4), in which a semiconductor die (130) includes a trench (135) around platform of the semiconductor die (inner portion with walls 132), with a first film formed on the die (122). As such it would have been obvious to a person of ordinary skill in the art before the filing date of the invention to combine the resonator taught in Stokes with the trench taught in Wang in order to improve quality in BAW resonators.
As to claim 11, Stokes teaches where the second film is a metal layer (paragraph 36).
As to claim 13, Stokes teaches a BAW resonator (paragraph 35). Wang teaches the BAW resonator includes the platform (140, paragraphs 61 and 62) would have been recognized by a person of ordinary skill in the art choosing a size to be in the microns to produce an MEMS system is done merely a design choice to choosing a user desired thickness to operating at a user desired level.
As to claim 14, Stokes teaches a BAW resonator (paragraph 35).
As to claim 15, Wang wherein the trench extends underneath the platform (136 and 137, paragraph 69).
As to claim 16, Stokes further comprising a third film between the first film and the semiconductor die (paragraph 13 can be made of one or more layers).
As to claim 17, Stokes teaches the resonator is electrically driven (paragraph 41). It would be obvious to a person of ordinary skill in the art to use a second semiconductor die as it would be a mere matter of design choice to choosing a notoriously well known in the art secondary circuit to provide electrical power to the resonator of Stokes.
As to claim 18, Stokes teaches the resonator is electrically driven (paragraph 41). It would be obvious to a person of ordinary skill in the art to use a driver as it would be a mere matter of design choice to choosing a notoriously well known in the art secondary circuit to provide electrical power to the resonator of Stokes.
As to claims 19 and 20, Stokes teaches the resonator is electrically driven (paragraph 41). It would be obvious to a person of ordinary skill in the art to use bumps or wire bonds as it would be a mere matter of design choice to choosing a notoriously well known in the art secondary circuit connection to provide electrical power to the resonator of Stokes.
Claim(s) 10 and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Stokes in view of Wang et al (Pub 2021/0111702, further referred to as Wang).
As to claim 10, Choy teaches a device, comprising (fig 1A):
a semiconductor die (102);
a first film on the semiconductor die (122);
a second film (128) on a surface of the first film.
Choy does not teach a trench.
Wang teaches forming a device (fig 4), in which a semiconductor die (130) includes a trench (135) around platform of the semiconductor die (inner portion with walls 132), with a first film formed on the die (122). As such it would have been obvious to a person of ordinary skill in the art before the filing date of the invention to combine the resonator taught in Choy with the trench taught in Wang in order to improve quality in BAW resonators.
As to claim 12, Choy teaches the first film comprises a polymer layer (paragraph 45).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEFFREY M SHIN whose telephone number is (571)270-7356. The examiner can normally be reached M-F 9am-6pm PST.
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/JEFFREY M SHIN/ Primary Examiner, Art Unit 2849