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 .
Response to Arguments
Applicant's arguments filed 7/14/2025 have been fully considered but they are not persuasive.
The Applicant argues with respect to the 35 USC 112(b) rejection made over the claim language reciting, “the at least one planar inductor is configured to increase an electrical connectivity length of the antenna loop portion…” stating the recitation of the planar inductor is structural, not functional, and there is specific structure recited which is sufficient to overcome the rejection. The Applicant further remarks “Thus, one of ordinary skill in the art would readily recognize that the structural basis for the increase of electrical length of the antenna loop portion is the planar inductor.”
The Applicant further argues that the prior art of record fails to appropriately teach or suggest, “wherein the at least one planar inductor is configured to increase an electrical connectivity length of the antenna loop portion so as to cause the loop antenna portion, when operating, to operate in an FM frequency band with a radiation pattern substantially the same as that of a dipole antenna in the FM frequency band and to extend an electric field of the loop antenna portion”.
In response: The examiner respectfully disagrees with the Applicant’s arguments. The Applicant’s arguments are considered not persuasive because the functional language relied upon (“configured to increase an electrical connectivity length… so as to cause the loop antenna portion… to operate in an FM frequency band with a radiation pattern substantially the same as that of a dipole antenna… and to extend an electric field of the loop antenna portion”) is not supported by any structural distinction beyond the mere inclusion of the planar inductor. The claims themselves attribute these functional results solely to the presence of the planar inductor within the system, without identifying any additional structure, configuration, or interaction hat would cause the inductor to perform differently than would be expected from its ordinary operation. In other words, the claim language effectively recites the intended result of including a planar inductor (i.e., increasing the electrical connectivity length and influencing antenna behavior, rather than any structural or operational feature that achieves such results in a non-conventional manner.). The Applicant has not identified any particular arrangement, material, geometry, or coupling structure that distinguishes the claimed planar inductor from those in the prior art or that would inherently impart these recited functional outcomes.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, it would have been obvious to one of ordinary skill in the art to realize the generic inductor of Chen as a planar inductor, as planar inductors represent a well-known and predictable variation of inductors commonly employed in circuit designs. The selection of a planar inductor in place of a generic inductor would have been a matter of design choice motivated by known benefits as previously recited, such as a compact form factor, ease of integration, etc. The modification merely substitutes one known inductor form for another known and equivalent type expected to perform the same inductor function, thereby yielding no unexpected results. The Applicant is further reminded that, with respect to ascertaining the level of ordinary skill in the art: “A person of ordinary skill in the art is also a person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 421, 82 USPQ2d at 1397. “In many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.” Id. At 420, 82 USPQ2d at 1397.
In response to applicant's argument that Gruner is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, both Chen and Gruner are directed toward signal processing and circuit systems involving inductive components. Furthermore, Gruner is relied upon solely to show that a planar inductor is a known and conventional form of inductor, not for any unrelated purpose. As such, one of ordinary skill in the art would have reasonably considered the planar inductor of Gruner as a suitable and equivalent type of inductor to employ within the system of Chen.
For these reasons, inter alia, the examiner believes the previous rejection of record should remain upheld. An updated action is presented below.
Claim Rejections - 35 USC § 112
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.
Claims 1-6, and 9 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Amended claim 1 recites, “wherein the at least one planar inductor is configured to increase an electrical connectivity length of the antenna loop portion so as to cause the loop antenna portion, when operating, to operate in an FM frequency band with a radiation pattern substantially the same as that of a dipole antenna in the FM frequency band…” which fails to clearly define the structural aspects of the claimed apparatus. An apparatus claim must define what a device is, rather than what a device does. "While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. See MPEP § 2113; In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997); In re Swinehart, 439 F.2d 210, 212-13, 169 USPQ 226, 228-29 (CCPA 1971); In re Danly, 263 F.2d 844, 847, 120 USPQ 528, 531 (CCPA 1959). “[A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original, MPEP §2114). Here, the claim recites functional results (e.g., increasing an electrical connectivity length, causing operation in an FM frequency band with a particular radiation pattern, and extending an electric field) without clearly specifying the structural modifications that achieve these effects. It is unclear what physical characteristics or structural features of the planar inductor contribute to these claimed benefits, rendering the scope of the claim indefinite.
Additionally, the phrase, “increases an electrical connectivity length” lacks a clear structural basis. It is not apparent how or by what mechanism the planar inductor itself increases an electrical connectivity length or how this increase leads to the claimed radiation pattern. Without objective structural limitations, the claim effectively reads as an attempt to claim a result rather than a concrete structural implementation, which fails to provide clear boundaries for one skilled in the art to determine the metes and bounds of the claim. Similarly, the phrase, “to operate in an FM frequency band with a radiation pattern substantially the same as that of a dipole antenna in the FM frequency band,” lacks a clear structural basis. It is unclear as to what role or presence “a dipole antenna” plays with respect to the claimed structure. That is, it is unclear if the Applicant intends to include a “dipole antenna” within the structure of the claim; however, it appears as though the Applicant is attempting to merely recite “a dipole antenna” as an analogy of a similar radiation pattern with which the structure of the claim may be “substantially” similar to. The Applicant should clearly define what the radiation pattern actually is, without resorting to an example of what it may be, by alluding to structure outside of the scope of the claim. Accordingly, because the claim fails to provide sufficient structural limitations and instead relies on results-oriented language, it is considered indefinite under 35 U.S.C. 112(b).
In summation: the claim limitation, as addressed above, renders the claim indefinite because the claim fails to specify the reference point relative to which the electrical connectivity length is increased, it does not recite how the planar inductor is structurally or functionally arranged to produce such an increase, and does not define the extent or bounds of the alleged increase. As a result, the metes and bounds of the claim are unclear, and one of ordinary skill in the art would not be able to determine with reasonable certainty what configurations fall within the scope of the claim. The limitation therefore recites a desired result without providing sufficient claim language to define the means by which the result is achieved, thereby leaving the scope of the claim open to subjective interpretation.
For the purposes of examination, the examiner will interpret the claims as best understood. In this instance, the presence of an inductor, such as a planar inductor utilized for impedance matching purposes, connected to a “loop antenna portion” would achieve the claimed results.
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) 1-3, 5, 10, 12-14, and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chen et al. (U.S. Patent Publication Number 2018/0283913) in view of Gruner et al. (U.S. Patent Publication Number 2020/0169230).
Regarding Claim 1:
Chen et al. discloses an antenna (Fig. 5, antenna 501 with impedance matching 502) for harvesting energy from frequency modulation (FM) radio signals (Fig. 5, energy harvesting module 301 and its related discussion), comprising: a loop antenna portion of the antenna (Fig. 5, antenna 501 and its related discussion; see, at least, paragraph 0065 which discloses “the antenna may include… a loop antenna”. As addressed above, antenna 501 seen as “a loop antenna portion” of the “antenna”) coupled to an energy harvester (Fig. 5, charge pump 503 with charge tank 504, and their related discussion; see, at least, paragraphs 0065-0067, 0071-0076, etc. which disclose charge tank 504 comprising energy storage in the form of a capacitor); and at least one inductor connected to the loop antenna portion so as to provide impedance matching to the energy harvester, wherein the at least one inductor is configured to increase an electrical connectivity length of the antenna loop portion so as to cause the loop antenna portion, when operating, to operate in an FM frequency band with a radiation pattern substantially the same as that of a dipole antenna in the FM frequency band and to extend an electric field of the loop antenna portion (Fig. 5, inductor of matching circuit 502 and its related discussion; see, at least, paragraphs 0071-0076, claim 6, etc. which disclose the matching circuit 502 includes a capacitor and an inductor used for impedance matching.) and, wherein the loop antenna portion (501) and the at least one inductor (inductor of 502) are adapted to resonate at an FM frequency band (Fig. 5, antenna 501 with inductor of matching circuit 502, and their related discussion; see, at least, Abstract, paragraphs 0065-0067, 0071-0076, claim 6, etc. which disclose the system operating within said frequency band in order to harvest FM energy.).
While Chen discloses a generic inductor, Chen fails to teach the inductor may be selected to be a planar inductor.
However, Gruner et al. discloses at least one planar inductor to provide impedance matching to the energy harvester (Fig. 2, impedance matching branch including filter 34a comprising planar inductor, and their related discussion; see, at least, paragraphs 0014-0015, 0048-0050, claim 13, etc. which disclose the utilization of a planar inductor). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings of Chen to realize the generic inductor of Chen with a planar inductor, as taught within Gruner, to maximize space through a cost-efficient, compact and space-efficient design.
Regarding Claim 2:
Modified Chen teaches the limitations of the preceding claim 1. Modified Chen, in further view of Chen, discloses a capacitance portion, wherein the capacitance portion is configured to provide electrical capacitance to the loop antenna portion (Fig. 5, capacitor of matching circuit 502 and its related discussion; see, at least, paragraphs 0071-0076).
Regarding Claim 3:
Modified Chen teaches the limitations of the preceding claim 2. Modified Chen, in further view of Chen, discloses wherein the capacitance portion optimizes impedance matching to the energy harvester (Fig. 5, capacitor of matching circuit 502 and its related discussion; see, at least, paragraphs 0071-0076 which disclose the matching circuit 502 includes a capacitor and an inductor used for impedance matching for enhancing the impedance match between the output of the antenna 501 and the downstream circuitry.).
Regarding Claim 5:
Modified Chen teaches the limitations of the preceding claim 1. Modified Chen, in further view of Gruner, discloses wherein the at least one planar inductor includes an electrical conductor shaped with multiple turns (Fig. 5, planar inductors 50, 52, and their related discussion; see, at least, paragraph 0059 which discloses the inductors provided as planar inductors having multiple turns. It is further noted that turns are needed to realize an inductor).
Regarding Claim 10:
Chen et al. discloses a battery-less wireless device (Fig. 3, system 110 and its related discussion; energy harvesting module 301 comprises charge tank 504 which includes energy storage as discussed within paragraph 0068 as one or more capacitors), comprising: a harvesting antenna (Fig. 5, antenna 501 with impedance matching 502) for harvesting energy from frequency modulation (FM) radio signals (Figs. 3 and 5, energy harvesting module 301 comprising antenna 501 with impedance matching 502, and their related discussion; see, at least, Abstract, paragraphs 0065-0067, 0071-0076, claim 6, etc. which disclose the antenna harvests energy from an FM energy signal); a communication antenna for receiving and transmitting signals using a low energy communication protocol (Fig. 3, communication module 302 and its related discussion; see, at least, paragraphs 0052-0056, etc. which disclose the communication module communicating via low energy communication protocols such as NFC, RFID, etc.); and an energy harvester (Fig. 5, charge pump 503 with charge tank 504, and their related discussion; see, at least, paragraphs 0065-0067, 0071-0076, etc. which disclose charge tank 504 comprising energy storage in the form of a capacitor) coupled to the harvesting antenna (Fig. 5, antenna 501 with impedance matching 502), wherein the energy harvester powers the wireless device by harvesting FM radio signals impinging upon a loop antenna portion of the harvesting antenna (Figs. 3 and 5, energy harvesting module 301 comprising antenna 501, charge pump 503 with charge tank 504, and their related discussion; see, at least, paragraphs 0065-0067, 0071-0076, claim 6, etc. which disclose the charge tank will supply stored energy, received from antenna 501 being a loop antenna portion as previously discussed, to power the system 110), wherein the loop antenna portion (Fig. 5, antenna 501) of the harvesting antenna (Fig. 5, antenna 501 with impedance matching 502) is impedance matched to the energy harvester and the communication antenna using at least one inductor that is part of the harvesting antenna to provide the impedance matching (Fig. 5, antenna 501, inductor of matching circuit 502, and their related discussion; see, at least, paragraphs 0071-0076 which disclose the matching circuit 502 includes a capacitor and an inductor used for impedance matching between the output of the antenna 501 and the downstream circuitry.). While Chen discloses a generic inductor, Chen fails to teach the inductor may be selected to be a planar inductor.
However, Gruner et al. discloses at least one planar inductor configured to provide the impedance matching (Fig. 2, impedance matching branch including filter 34a comprising planar inductor, and their related discussion; see, at least, paragraphs 0014-0015, 0048-0050, claim 13, etc. which disclose the utilization of a planar inductor). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings of Chen to realize the generic inductor of Chen with a planar inductor, as taught within Gruner, to maximize space through a cost-efficient, compact and space-efficient design.
Regarding Claim 12:
Modified Chen teaches the limitations of the preceding claim 10. Modified Chen further discloses wherein the at least one planar inductor extends an electric field of the loop antenna portion, wherein the loop antenna portion and the at least one planar inductor resonate at an FM frequency band (Chen: Fig. 5, antenna 501 with inductor of matching circuit 502, and their related discussion; see, at least, Abstract, paragraphs 0065-0067, 0071-0076, claim 6, etc. which disclose the system operating within said frequency band in order to harvest FM energy.).
Regarding Claim 13:
Modified Chen teaches the limitations of the preceding claim 12. Modified Chen, in further view of Chen, discloses wherein the harvesting antenna further comprising: a capacitance portion, wherein the capacitance portion is configured to provide electrical capacitance to the loop antenna portion (Fig. 5, capacitor of matching circuit 502 and its related discussion; see, at least, paragraphs 0071-0076).
Regarding Claim 14:
Modified Chen teaches the limitations of the preceding claim 12. Modified Chen, in further view of Chen, discloses wherein the capacitance portion of the harvesting antenna is selected to optimize impedance matching to the energy harvester (Fig. 5, capacitor of matching circuit 502 and its related discussion; see, at least, paragraphs 0071-0076 which disclose the matching circuit 502 includes a capacitor and an inductor used for impedance matching for enhancing the impedance match between the output of the antenna 501 and the downstream circuitry. See also the teachings of Gruner, paragraph 0051 for example, which discusses deriving the capacitance and inductance values for the respective filters in order to achieve the desired impedance matching).
Regarding Claim 16:
Modified Chen teaches the limitations of the preceding claim 12. Modified Chen, in further view of Gruner, discloses wherein the at least one planar inductor includes an electrical conductor shaped with multiple turns (Fig. 5, planar inductors 50, 52, and their related discussion; see, at least, paragraph 0059 which discloses the inductors provided as planar inductors having multiple turns. It is further noted that turns are needed to realize an inductor).
Claim(s) 4 and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chen et al. (U.S. Patent Publication Number 2018/0283913) in view of Gruner et al. (U.S. Patent Publication Number 2020/0169230) and in further view of Dobrovolny (U.S. Patent Number 4,461,040).
Regarding Claims 4 and 15:
Modified Chen teaches the limitations of the preceding claims 2 and 13, respectively. Modified Chen fails to teach wherein the capacitance portion is realized as a capacitive pad.
However, Dobrovolny discloses wherein the capacitance portion is realized as a capacitive pad (Fig. 1, capacitive pads 107, 109, and their related discussion; see, at least, Col. 2, lines 35-64). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings of Modified Chen to realize the capacitance portion as a capacitive pad, as taught within Dobrovolny, to allow for fine-tuning of the respective impedance at higher frequencies, thereby ensuring optimal signal transfer.
Claim(s) 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chen et al. (U.S. Patent Publication Number 2018/0283913) in view of Gruner et al. (U.S. Patent Publication Number 2020/0169230) and in further view of Wilson et al. (U.S. Patent Publication Number 2021/0313283).
Regarding Claim 17:
Modified Chen teaches the limitations of the preceding claim 16. Modified Chen fails to teach wherein the antenna is structured on a multi-layer substrate.
However, Wilson et al. discloses wherein the antenna is structured on a multi-layer substrate (Figs. 16A-16E, multi-level RF circuit having an upper level 101 and a lower level 105, and their related discussion; see, at least, Abstract, paragraphs 0041, 0067, 0073-0074, etc.). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings of Modified Chen to structure the antenna on a multi-layer substrate, as taught within Wilson, to facilitate a compact, space-saving, and efficient design.
Claim(s) 9 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chen et al. (U.S. Patent Publication Number 2018/0283913) in view of Gruner et al. (U.S. Patent Publication Number 2020/0169230) and in further view of Hur et al. (U.S. Patent Publication Number 2018/0006366).
Regarding Claims 9 and 20:
Modified Chen teaches the limitations of the preceding claims 1 and 12, respectively. While Modified Chen, in view of Gruner, discloses the components are printed on a substrate (see, for example, paragraph 0015), Modified Chen fails to teach wherein at least the loop antenna portion and the at least one planar inductor are printed on a substrate, wherein the substrate is any one of: low temperature co-fired ceramic (LTCC), polyethylene terephthalate (PET), and paper.
However, Hur et al. discloses wherein at least the loop antenna portion and the at least one planar inductor are printed on a substrate, wherein the substrate is any one of: low temperature co-fired ceramic (LTCC), polyethylene terephthalate (PET), and paper (see, at least, claim 5 which discloses the antenna device including a substrate selected as polyethylene terephthalate (PET)). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings of Modified Chen to print the respective structure on a PET substrate, as taught within Hur, to utilize the PET’s strong, and lightweight plastic which may offer a wide range of uses and implementations for said structure.
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chen et al. (U.S. Patent Publication Number 2018/0283913) in view of Gruner et al. (U.S. Patent Publication Number 2020/0169230) and in further view of Khlat (U.S. Patent Publication Number 2016/0020636).
Regarding Claim 11:
Modified Chen teaches the limitations of the preceding claim 10. While Modified Chen discloses communication using a low energy communication protocol, Modified Chen fails to teach wherein the energy communication protocol is a Bluetooth low energy (BLE).
However, Khlat discloses wherein the energy communication protocol is a Bluetooth low energy (BLE) (see, at least, paragraph 0039 which discloses the selection of a Bluetooth low-energy protocol for wireless communication). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings of Modified Chen to communicate via Bluetooth low energy, as taught within Khlat, to facilitate bidirectional communication at a reduced power consumption rate and in a cost-effective manner.
Allowable Subject Matter
Claim 6 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Claims 7-8 are allowed.
The following is an examiner’s statement of reasons for allowance:
Independent claim 7 is currently considered to be in condition for allowance, as claim 7, now presented in independent form, recites, “wherein the multi-layer substrate includes at least a first layer and a second layer, wherein the first layer includes the loop antenna portion and a capacitance portion, and the second layer includes the capacitance portion, wherein the first layer is stacked on top of the second layer.” Said limitation, when taken into consideration with the claim language in its entirety, appears to be directed towards a non-obvious improvement over the prior art of record.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Claims 18-19 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.
Dependent claim 18 recites subject matter deemed to be directed towards a non-obvious improvement over the prior art of record. While the prior art of record discloses a multi-layer substrate, the prior art of record fails to appropriately teach or suggest “wherein the first layer includes the at least one planar inductor and the capacitance portion, and the second layer includes the capacitance portion, wherein the first layer is stacked on top of the second layer” as currently presented. It appears as though if said limitations, taken in their entirety (including the claims from which they depend), were to be incorporated within the independent claims as currently presented, said subject matter would be eligible for allowance. Claim 19 is objected to as being dependent upon claim 18.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH N INGE whose telephone number is (571)270-7705. The examiner can normally be reached 10:00-4:00 EST.
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/JOSEPH N INGE/Examiner, Art Unit 2836 /REXFORD N BARNIE/Supervisory Patent Examiner, Art Unit 2836