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, 4-6, 8-9, 15-23, and 31-35 are pending.
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 and 31 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, and 21 of U.S. Patent No. 12,316,304. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1, 2, and 21 of ‘304 recite all of the limitations in claims 1 and 31 of the instant application including: “a silicon substrate, wherein the silicon substrate has a cavity formed in a portion of a surface of the silicon substrate, wherein the second piezoelectric surface of the piezoelectric substrate shares a boundary with the surface of the silicon substrate, aligned such that the second IDT fits within the cavity without contacting the silicon substrate”. Claims 1 and 31 have been rejected under an “anticipatory type” analysis rejection.
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.
Claims 31-33 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sakurai et al. US 2017/0353173, as cited by the Applicant.
As per claims 31-33, Sakurai et al. discloses in Figs. 6a, 6b, and 7 a RF filter (e.g. Paragraph 49, device 300 which is a ladder filter), comprising:
as per claim 31, a piezoelectric substrate (e.g. piezoelectric substrates 12 and 13) having a first piezoelectric surface and a second piezoelectric surface (e.g. top surface of substrate 12 and bottom surface of substrate 13 respectively) opposite the first piezoelectric surface; a first electroacoustic resonator comprising a first IDT (Fig. 3 and Paragraph 46, one or more series resonators S1 that are acoustic resonators 20 in Fig. 3 which include IDT 21) disposed over the first piezoelectric surface of the piezoelectric substrate; and a second electroacoustic resonator comprising a second IDT (Fig. 3 and Paragraph 46, one or more parallel resonators P1 that are acoustic resonators 22 in Fig. 3 which include IDT 23) disposed over the second piezoelectric surface of the piezoelectric substrate; wherein the second electroacoustic resonator is electrically coupled to the first electroacoustic resonator (Resonators 20 and resonators 22 are electrically coupled together.), and wherein a filter characteristic of the RF filter is based on electroacoustic coupling between the first electroacoustic resonator and the second electroacoustic resonator through the piezoelectric substrate (Paragraph 53; Skirt characteristics and a bandwidth of the filter are affected by decreasing or increasing an electromechanical coupling coefficient therein.);
as per claim 32, wherein the piezoelectric substrate comprises a first piezoelectric layer (e.g. substrate 12), the first piezoelectric layer comprising the first piezoelectric surface; and
as per claim 33, wherein the piezoelectric substrate further comprises a second piezoelectric layer (e.g. substrate 13) comprising the second piezoelectric surface; and a spacer layer (e.g. support substrate 11) positioned between and in contact with the first piezoelectric layer and the second piezoelectric layer.
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, 4-6, 15-16, 19, and 21-22 are rejected under 35 U.S.C. 103 as being unpatentable over Sakurai et al. US 2017/0353173 in view of Komiyama et al. US 2019/0356297, both cited by the Applicant.
As per claims 1, 4-6, 15-16, 19, and 21-22, Sakurai et al. discloses in Figs. 6a, 6b, and 7 a RF filter (e.g. Paragraph 49, device 300 which is a ladder filter), comprising:
as per claim 1, a piezoelectric substrate (e.g. piezoelectric substrates 12 and 13) having a first piezoelectric surface and a second piezoelectric surface (e.g. top surface of substrate 12 and bottom surface of substrate 13 respectively) opposite the first piezoelectric surface; a first electroacoustic resonator comprising a first IDT (Fig. 3 and Paragraph 46, one or more series resonators S1 that are acoustic resonators 20 in Fig. 3 which include IDT 21) disposed over the first piezoelectric surface of the piezoelectric substrate; and a second electroacoustic resonator comprising a second IDT (Fig. 3 and Paragraph 46, one or more parallel resonators P1 that are acoustic resonators 22 in Fig. 3 which include IDT 23) disposed over the second piezoelectric surface of the piezoelectric substrate; wherein the second electroacoustic resonator is electrically coupled to the first electroacoustic resonator (Resonators 20 and resonators 22 are electrically coupled together.);
as per claim 4, wherein the piezoelectric substrate comprises a first piezoelectric layer (e.g. substrate 12), the first piezoelectric layer comprising the first piezoelectric surface;
as per claim 6, wherein the piezoelectric substrate further comprises a second piezoelectric layer (e.g. substrate 13) comprising the second piezoelectric surface; and a spacer layer (e.g. support substrate 11) positioned between and in contact with the first piezoelectric layer and the second piezoelectric layer;
as per claim 15, wherein the spacer layer comprises a dielectric material (Paragraph 28, sapphire);
as per claim 16, wherein the first piezoelectric layer and the second piezoelectric layer are made from a same piezoelectric material (Paragraph 54; Piezoelectric substrates 12 and 13 are made of the same material.);
as per claim 19, wherein the first electroacoustic resonator and the second electroacoustic resonator are part of a ladder filter (Paragraph 49; The device 300 which includes the resonators S1 and P1 are part of a ladder filter.);
as per claim 21, wherein a filter characteristic of the RF filter is based on electroacoustic coupling between the first electroacoustic resonator and the second electroacoustic resonator through the piezoelectric substrate (Paragraph 53; Skirt characteristics and a bandwidth of the filter are affected by decreasing or increasing an electromechanical coupling coefficient therein.); and
as per claim 22, wherein the first IDT and the second IDT overlap in a vertical direction such that a vertical projection across the piezoelectric substrate of an area on the first piezoelectric surface that includes the first IDT overlaps with an area on the second piezoelectric surface that includes the second IDT (Fig. 7; As shown, the IDT within resonators S1 and P1 overlap one another in a vertical direction thereof such that at least a portion of areas of the resonators overlap one another.).
However, Sakurai et al. does not disclose wherein a thickness of the piezoelectric substrate is less than 20 times a minimum of a pitch of the first IDT and a pitch of the second IDT.
Komiyama et al. exemplarily discloses in Figs. 1a-1b an acoustic resonator comprising a piezoelectric substrate 12 which has a thickness that is greater than 0.2 times the average pitch of fingers 15 therein (Paragraph 67 of Komiyama et al.). Before the effective filing date, it would have been obvious to one of ordinary skill in the art to have designed each of the piezoelectric substrates within Sakurai et al. to have been any value equal to a thickness that is greater than 0.2 times an average pitch of fingers therein, such as for example a well-known 0.5 times an average pitch of the fingers therein, as being an obvious design consideration of yielding predictable results as exemplarily taught by Komiyama et al. As an obvious consequence of the modification, the combination would have necessarily included: as per claims 1 and 5, wherein a thickness of the piezoelectric substrate is less than 20 times (i.e. between 0.4 times and 2 times) a minimum of a pitch of the first IDT and a pitch of the second IDT.
Claims 20 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over the above combination, as applied to claim 1, and Panasik US Patent 6,441,703, also cited by the Applicant, and all taken in combination.
As per claims 20 and 23, the above combination discloses the RF filter of claim 1, but does not disclose wherein the RF filter is integrated into an RF front-end of a transceiver; and an antenna; and processing circuitry, wherein the antenna and the processing circuitry are communicatively coupled via the RF filter, and wherein the RF filter is configured to filter RF signals traveling between the antenna and the processing circuitry.
Panasik discloses in Fig. 1 an RF front end transceiver 10 comprising filters 16 and 18 which are acoustic ladder filters (Col. 4 lines 40-44 of Panasik). Before the effective filing date, it would have been obvious to one of ordinary skill in the art to have replaced each of the generic ladder filters of Panasik with the specific acoustic ladder filter of the above combination as being obvious art substitutions of equivalents.
As an obvious consequence of the modifications, the combination would have necessarily included: wherein the RF filter is integrated into an RF front-end of a transceiver (e.g. RF front end transceiver 10 of Panasik); and an antenna (e.g. antenna 12 of Panasik); and processing circuitry (e.g. circuitry 20, 22, 24, 26, and 28 of Panasik), wherein the antenna and the processing circuitry are communicatively coupled via the RF filter (In the resultant circuit, the defined “processing circuitry” and the antenna 12 are coupled together via the filters 16 and 18 of Panasik to filter signals there-between.), and wherein the RF filter is configured to filter RF signals traveling between the antenna and the processing circuitry.
Allowable Subject Matter
Claims 8-9, 17-18, and 34-35 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
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/RAKESH B PATEL/Primary Examiner, Art Unit 2843
