DETAILED ACTION
Notice to Applicant
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.
Claims 1-20 are pending.
Claim Objections
Claim 8 is objected to because of the following informalities: On line 1 of claim 8, the Examiner suggests changing “being” to --is-- for grammatical purposes. Appropriate correction is required.
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 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 and 18-20 of copending Application No. 19/176,707 in view of Reboud et al. US 2014/0083174.
As per claims 1-20, copending application ‘707 discloses an acoustic wave filter including a surface acoustic wave device and a method of manufacturing the surface acoustic wave device comprising all the limitations recited therein EXCEPT a Rayleigh mode is a main mode of the surface acoustic wave device.
Reboud et al. discloses that Rayleigh waves are the most common surface acoustic waves (Paragraph 94 of Reboud et al.). Before the effective filing date, it would have been obvious to one of ordinary skill in the art to have designed the filter including a surface acoustic wave device of ‘707 to have operated in any known mode, such as for example the most common Rayleigh mode, as a main mode as being an obvious design consideration of yielding expected results based on the exemplary teachings of Reboud et al. As an obvious consequence of the modification, the combination would have necessarily included a Rayleigh mode is a main mode of the surface acoustic wave device. This is a provisional nonstatutory double patenting rejection.
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.
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 1-2, 5, 7-9, 14-15, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Goto et al. US 2023/0378937 in view of Reboud et al. US 2014/0083174 and Komatsu et al. US 2019/0341911.
As per claims 1-2, 5, 7-9, 14-15, and 18, Goto et al. discloses in Figs. 5 and 6a an acoustic wave filter (Paragraph 2, filter therein) for filtering a radio frequency signal, including a surface acoustic wave device (e.g. DMS resonator and single mode resonator) and a method of manufacturing the device comprising:
as per claims 1 and 14, a piezoelectric layer (e.g. piezoelectric layer PIEZO); a first resonator (e.g. single mode resonator) and a second resonator (e.g. DMS resonator) in electrical communication with the piezoelectric layer, the first resonator having a different resonator type from the second resonator (One resonator is a single mode resonator and the other is a double mode resonator.); and a passivation layer (e.g. protective layer SiN) having a first thickness over the first resonator and a second thickness over the second resonator (The protective layer has a same thickness over the single mode and DMS resonators.);
as per claims 2 and 15, a temperature compensation layer (Paragraph 59, temperature compensating dielectric material layer SiO2) between the piezoelectric layer and the passivation layer;
as per claim 5, wherein the piezoelectric layer includes lithium niobate (Paragraph 58; PIEZO layer is formed of lithium niobate (LN).);
as per claim 7, wherein the first resonator is a one-port resonator (e.g. single mode resonator), and the second resonator is a multi-mode surface acoustic wave resonator (e.g. double mode DMS resonator);
as per claim 9, wherein the passivation layer has a first thickness over an active region of the one-port resonator (The protective layer has a thickness (i.e. “first thickness”) over electrode fingers (i.e. “active region”) of the single mode resonator.); and
as per claim 18, a plurality of resonators (e.g. single mode and DMS resonators) in electrical communication with a piezoelectric layer (e.g. piezoelectric layer PIEZO), the plurality of resonators including a first resonator (e.g. single mode resonator) and a second resonator (e.g. DMS resonator), the first resonator having a different resonator type from the second resonator; and a passivation layer (e.g. protective layer SiN) having a first thickness over the first resonator and a second thickness over the second resonator (The protective layer has a same thickness over the single mode and DMS resonators.).
However, Goto et al. does not disclose as per claims 1, 14, and 18, a Rayleigh mode is a main mode of the surface acoustic wave device, and the first thickness being different from the second thickness.
Reboud et al. discloses that Rayleigh waves are the most common surface acoustic waves (Paragraph 94 of Reboud et al.). Komatsu et al. exemplarily discloses in Figs. 1a-1b an acoustic wave device comprising a protection layer 110 over IDT electrodes 115, where the layer 110 has a different thickness over one of the resonators compared to the other resonators within the filter (Paragraph 44 of Komatsu et al.). Before the effective filing date, it would have been obvious to one of ordinary skill in the art to have designed the filter of Goto et al. to have operated in any known mode, such as for example the most common Rayleigh mode, as a main mode as being an obvious design consideration of yielding expected results based on the exemplary teachings of Reboud et al. It would have been further obvious to one of ordinary skill in the art to have designed the protection layer within the combination filter to have had a different thickness over one of the resonators, such as for example having a greater thickness over the single mode resonator compared to the other resonators (i.e. DMS resonator) within the filter, as exemplarily taught by Komatsu et al. with the motivation of providing the benefit of enhancing temperature coefficients of frequency of the edges of the filter passband as compared to similar filters having common dielectric thicknesses on all the resonators (Paragraph 44 of Komatsu et al.).
As an obvious consequence of the modification, the combination would have necessarily included: as per claims 1, 14, and 18, a Rayleigh mode is a main mode of the surface acoustic wave device, and the first thickness being different from the second thickness; and as per claim 8, wherein the first thickness is greater than the second thickness.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over the above combination, as applied to claim 5, and further in view of Kimura US 2023/0283259.
As per claim 6, the above combination discloses the surface acoustic wave device of claim 5, but does not disclose wherein the lithium niobate has a cut angle in a range between 118 degrees and 138 degrees.
Kimura et al. discloses in Fig. 1 an acoustic wave device comprising a piezoelectric layer 17 which is made of lithium niobate having a cut angle of 128 degrees (Paragraph 35 of Kimura et al.). Before the effective filing date, it would have been obvious to one of ordinary skill in the art to have replaced the generic lithium niobate piezoelectric layer of the combination circuit with the specific 128 degree cut lithium niobate piezoelectric layer of Kimura et al. as being an obvious art substitution of equivalence. As an obvious consequence of the modification, the combination would have necessarily included wherein the lithium niobate has a cut angle in a range between 118 degrees and 138 degrees (e.g. 128 degrees which is between 118-138 degrees).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RAKESH PATEL whose telephone number is (571)272-0961. The examiner can normally be reached 9AM-5PM EST M-F.
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/RAKESH B PATEL/Primary Examiner, Art Unit 2843
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