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 .
DETAILED ACTION
Continued Examination Under 37 CFR 1.114
1. A request for continued examination, in the “Request for Continued Examination (RCE)” filed on 08/25/2026, under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 08/25/2026 has been entered.
Status of Claims
2. Applicant's amendment of claims 1-2 in “Claims” filed on 07/28/2026 with the “Request for Continued Examination (RCE)” filed on 08/25/2026, have been acknowledged and entered by Examiner.
This office action considers claims 1-45 pending for prosecution, wherein claims 18-45 are withdrawn from further consideration, and claims 1-17 are presented for examination.
Claim Rejections - 35 USC § 112
3. Applicant’s argument, in the “Applicant Arguments/Remarks Made in an Amendment” filed on 07/28/2026, see “Claim 2 has been amended to recite "the component or the circuit". Claim 1 provides antecedent basis for the amendment. Accordingly, Applicant respectfully submits that the rejection of claims 2-10 under 35 U.S.C. § 112(b) should be withdrawn” (remarks on page 2), has been considered and is persuasive.
In view of that along with the relevant amendment to claims 2-10, in the file “Claims” filed on 07/28/2026, the 35 U.S.C. § 112(b) rejection to claims 2-10 has been withdrawn.
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 of this title, 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.
Notes: when present, semicolon separated fields within the parenthesis (; ;) represent, for example, as (30A; Fig 2B; [0128]) = (element 30A; Figure No. 2B; Paragraph No. [0128]). For brevity, the texts “Element”, “Figure No.” and “Paragraph No.” shall be excluded, though; additional clarification notes may be added within each field. The number of fields may be fewer or more than three indicated above. These conventions are used throughout this document.
4. Claims 1-4 and 13 are rejected under 35 U.S.C.103 as being unpatentable over Miwa et al. (US 20150116040 A1; hereinafter Miwa).
Regarding claim 1, Miwa teaches a device (see the entire document, specifically Fig. 1+; [0022+], and as cited below), comprising:
a metal-insulator-metal (MIM) capacitor (110; Fig. 7; [0046, 0043]) comprising a substrate (104; Fig. 7; [0042]), an upper metal plate (110c; Fig. 7; [0043]), a lower metal surface (110a; Fig. 7; [0043]) attached to a first surface of the substrate (104), and a via (114; Fig. 7; see [0045, 0026, 0031]) in the substrate (104; Fig. 7; [0042]),
wherein the upper metal plate (110c; Fig. 7; [0043]) of the MIM capacitor (110]) serves as a wire bonding surface (see Fig. 7; see [0045]; where additional upper electrode 110c is connected to MIM component 20 by additional bonding wire 118) without a separate bond pad between the MIM capacitor (110; Fig. 7; [0045]) and a component (20; Fig. 7; [0045]) or a circuit, and wherein the lower metal surface (110a; Fig. 7; [0043]) of the MIM capacitor (110; Fig. 7; [0046, 0043]) is (see below for “over”) the via (114; Fig. 7; see [0045, 0026, 0031]) .
As noted above, Miwa does not expressly disclose “wherein the lower metal surface of the MIM capacitor is over the via”, though Miwa does teach a via (114; Fig. 7; see [0045, 0026, 0031]) in the substrate (104; Fig. 7; [0042]), where the via 114; Fig. 7; see [0045, 0026, 0031]) is connected to the lower metal surface (110a; Fig. 7; [0043]) and case (12) to provide a ground connection to the lower metal surface (110a; Fig. 7; [0043]) of the capacitor.
However, the Applicant has not presented persuasive evidence that the claimed “wherein the lower metal surface of the MIM capacitor is over the via” is for a particular purpose that is critical to the overall claimed invention (i.e. the invention would not work without “wherein the lower metal surface of the MIM capacitor is over the via” as opposed wherein the lower metal surface of the MIM capacitor is adjacent to the via.as is taught in Miwa). Also, the Applicant has not shown that “wherein the lower metal surface of the MIM capacitor is over the via” as opposed wherein the lower metal surface of the MIM capacitor is adjacent to the via.as is taught in Miwa produces a result that was new or unexpected enough to patentably distinguish the claimed invention over the cited prior art. Though paragraph [0087] of the instant disclosure discloses “I Lower metal surface 504 is electrically coupled to substrate bottom metal layer 512 with one or more vias 306, and thereby can provide a ground connection to substrate bottom metal layer”, prior art of record Miwa does teach a via (114; Fig. 7; see [0045, 0026, 0031]) in the substrate (104; Fig. 7; [0042]), where the via 114; Fig. 7; see [0045, 0026, 0031]) is connected to the lower metal surface (110a; Fig. 7; [0043]) and case (12) to provide a ground connection to the lower metal surface (110a; Fig. 7; [0043]) of the capacitor. Therefore, no rationale is given that the invention will not function without “wherein the lower metal surface of the MIM capacitor is over the via” as opposed wherein the lower metal surface of the MIM capacitor is adjacent to the via. Thus, the claimed “wherein the lower metal surface of the MIM capacitor is over the via” is not critical to the invention.
Examiner would like to note that MPEP §2144.04.IV(B) guideline, where change of shape is a Legal Precedent as Source of Supporting Rationale. See In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.).
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In view of the above, as there is no persuasive evidence that the particular configuration of “wherein the lower metal surface of the MIM capacitor is over the via” is significant. Thus, the claimed limitation of “wherein the lower metal surface of the MIM capacitor is over the via” is a matter of choice which a person of ordinary skill in the art would have found obvious as per MPEP §2144.04.IV(B) guideline. Therefore, the claimed limitation of “wherein the lower metal surface of the MIM capacitor is over the via” is not patentable over Miwa.
Regarding claim 2, Miwa teaches all of the features of claim 1.
Miwa further teaches wherein the upper metal plate (110c; Fig. 7; [0043]) of the MIM capacitor is configured to attach with at least one wire bond (118; see [0045, 0048]) to the component (30; Fig. 7; [0027-0028]; where wire 118 is attached to component 30 via layer 20c and wire 42) or the circuit on a separate surface (12; Fig. 7; [0026]) in a package.
Regarding claim 3, Miwa teaches all of the features of claim 2.
Miwa further teaches wherein the separate surface (12; Fig. 7; [0026]) in the package comprises one of a substrate, a die, a submount, and a carrier (12; Fig. 7; [0026]).
Regarding claim 4, Miwa teaches all of the features of claim 2.
Miwa further teaches wherein the component (30; Fig. 3; see [0027-0028]) or the circuit comprises a gallium nitride (GaN) based high-electron-mobility transistor (HEMT).
Regarding claim 13, Miwa teaches all of the features of claim 1.
Miwa further teaches wherein the device (in view of [0027-0028]) comprises a gallium nitride (GaN) based high-electron-mobility transistor (HEMT).
5. Claims 5-7 are rejected under 35 U.S.C.103 as being unpatentable over Miwa et al. (US 20150116040 A1; hereinafter Miwa), in view of Zhu et al. (US 20190356274 A1; hereinafter Zhu).
Regarding claim 5, Miwa teaches all of the features of claim 2.
Miwa does not expressly teach “wherein the component or the circuit comprises an integrated passive device (IPD) comprising one or more passive electronic components”.
However, in the analogous art, Zhu teaches electronic devices ([Abstract]), wherein (Fig. 1+; [0005+]) IPD assembly (480; Fig. 6; [0082]) also may include a base semiconductor substrate 682 (e.g. a silicon substrate, a silicon carbide substrate, a GaN substrate, or another type of semiconductor substrate, which may be referred to as an “IPD substrate” herein) and a build-up structure 684 of alternating dielectric and patterned conductive layers, where portions of the patterned conductive layers are electrically connected using conductive vias. These electrical components may be electrically connected to conductive bond pads (e.g., bond pads 418, 533) at the top surface of the IPD assembly (480; Fig. 6; [0082]), and also may be electrically connected to the conductive flange 406 (e.g., to ground) using through substrate vias to a conductive layer 686 on a bottom surface of the IPD assembly 480.
It would have been obvious to one with ordinary skill in the art, before the effective filing date of the claimed invention, to incorporate Zhu’s silicon carbide IPD assembly into Miwa’s device, and thereby, modified Miwa’s (by Zhu) device will have
wherein the component (Miwa 30; Fig. 7; [0027-0028] in view of Zhu {480, 682}; Fig. 6; [0082]; silicon carbide IPD substrate) or the circuit comprises an integrated passive device (IPD) comprising one or more passive electronic components
The ordinary artisan would have been motivated to modify Miwa in the manner set forth above, at least, because this inclusion provides an IPD device with a silicon carbide IPD assembly and substrate (Zhu [0082]) that allows for the IPD device to connected to external layers, which increases the functionality of the device.
Regarding claim 6, modified Miwa (by Zhu) teaches all of the features of claim 5.
Modified Miwa (by Zhu) further teaches wherein the IPD (in view of Zhu {480, 682}; Fig. 6; [0082]; silicon carbide IPD substrate) comprises silicon carbide (SiC) components (in view of Zhu {480, 682}; Fig. 6; [0082]; silicon carbide IPD substrate)
Regarding claim 7, modified Miwa (by Zhu) teaches all of the features of claim 6.
Modified Miwa (by Zhu) further teaches wherein the MIM capacitor (Miwa 110; Fig. 7; [0046, 0043]) comprises a shunt capacitor (see [0046-0048]).
5. Claims 8-10 are rejected under 35 U.S.C.103 as being unpatentable over Miwa et al. (US 20150116040 A1; hereinafter Miwa), in view of Noori et al. (US 20210313284 A1; hereinafter Noori).
Regarding claim 8, Miwa teaches all of the features of claim 2.
Miwa further teaches wherein the component (30; Fig. 7; [0027-0028]) or the circuit comprises (see below for “a monolithic microwave integrated circuit (MMIC)”).
As noted above, Miwa does not expressly disclose “wherein the component or the circuit comprises a monolithic microwave integrated circuit (MMIC)”.
However, in the analogous art, Noori teaches integrated circuit devices ([0002]), wherein (Fig. 1A; [0024+]) a passive device (110; Fig. 1A; [0062]) is coupled to an active die (105; Fig. 1A; [0062]), where the active die (105; Fig. 1A; [0061-0062]) is an MMIC.
It would have been obvious to one with ordinary skill in the art, before the effective filing date of the claimed invention, to modify Miwa’s component with Noori’s MMIC component, and thereby, modified Miwa’s (by Noori) device will have wherein the component (Miwa 30; Fig. 7; see [0028]) or the circuit comprises a monolithic microwave integrated circuit (MMIC) (in view of Noori 105; Fig. 1A; [0061-0062])
The ordinary artisan would have been motivated to modify Miwa in the manner set forth above, at least, because this inclusion provides an MMIC die, where MMIC devices can be used for RF power products for 5G and base-station applications (Noori [0061-0062]).
Regarding claim 9, modified Miwa (by Noori) teaches all of the features of claim 8.
Modified Miwa (by Noori) further teaches wherein the MMIC (in view of Noori 105; Fig. 1A; [0061-0062]) comprises a Group III nitride- based material on silicon carbide (SiC) (in view of Noori see [0063]).
Regarding claim 10, modified Miwa (by Noori) teaches all of the features of claim 9.
Modified Miwa (by Noori) further teaches wherein the MIM capacitor (Miwa 110; Fig. 7; [0046, 0043]) comprises a series blocking capacitor or a shunt direct current (DC) bypass capacitor (Miwa [0046-0048] view of Noori see [0060]).
6. Claim 11 is rejected under 35 U.S.C.103 as being unpatentable over Miwa et al. (US 20150116040 A1; hereinafter Miwa), in view of Dutta et al. (US 20210151428 A1; hereinafter Dutta).
Regarding claim 11, Miwa teaches all of the features of claim 1.
Miwa further teaches wherein the substrate (104; Fig. 7; [0042]) comprises (see below for “silicon carbide (SiC)”).
As noted above, Miwa does not expressly disclose “wherein the substrate comprises silicon carbide (SiC)”.
However, in the analogous art, Dutta teaches electronic circuits ([0001]), wherein (Fig. 2; [0024+]) a silicon carbon layer (208; Fig. 2; [0041]) below a MIM capacitor, where the silicon carbon layer (208; Fig. 2; [0041]) may have a thermal expansion coefficient suitably close to the first transistor, which may reduce strains on the GaN structure.
It would have been obvious to one with ordinary skill in the art, before the effective filing date of the claimed invention, to modify Miwa’s substrate layer with Dutta’s silicon carbide layer, and thereby, modified Miwa’s (by Dutta) device will have wherein the substrate (Miwa 17; Fig. 3; [0023, 0026]) comprises silicon carbide (SiC) (in view of Dutta 208; Fig. 2; [0041]).
The ordinary artisan would have been motivated to modify Miwa in the manner set forth above, at least, because this inclusion provides a silicon carbon layer with a thermal expansion coefficient suitably close to the first transistor, which may reduce strains on a GaN structure (Dutta [0041]).
7. Claims 12 and 14-17 are rejected under 35 U.S.C.103 as being unpatentable over Miwa et al. (US 20150116040 A1; hereinafter Miwa), in view of the following statement.
Regarding claim 12, Miwa teaches all of the features of claim 1.
Miwa further teaches wherein the MIM capacitor (110; Fig. 7; [0046, 0043]); see [Abstract, 0044, 0048-0050]; the capacitance values of the additional MIM capacitors 108, 110, 112 are different from each other, a varying range of the capacitance values can be increased, and impedance matching can be performed in wider frequency bands) has a capacitance (see below for “in a range of about 1 to 1000 pF”).
As noted above, Miwa does not expressly disclose wherein the MIM capacitor has a capacitance in a range of about 1 to 1000 pF”
However, it has been held that “wherein the MIM capacitor has a capacitance in a range of about 1 to 1000 pF” will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such wherein the MIM capacitor has a capacitance in a range of about 1 to 1000 pF is critical, “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation”. In re Aller, 220 F. 2d 454, 105 USPQ 233, 235 (CCPA 1955). In this case, there is nothing in the present application to indicate that the claimed containing wherein the MIM capacitor has a capacitance in a range of about 1 to 1000 pF is critical and will achieve unexpected results over the range outside of the claimed range. Therefore, it would have been obvious to have wherein the MIM capacitor has a capacitance in a range of about 1 to 1000 pF as claimed in device because having the wherein the MIM capacitor has a capacitance in a range of about 1 to 1000 pF can be optimized during routine experimentation depending upon a particular application which is desired.
The applicants have not established the criticality (see next paragraph below) of said first predetermined amount.
The specification contains no disclosure of either the critical nature of the claimed distance or any unexpected results arising therefrom. Where patentability is said to be based upon particular chosen dimensions or upon another variable recited in a claim, the applicant must show that the chosen dimensions are critical. In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990).
Regarding claim 14, Miwa teaches all of the features of claim 1.
Miwa further teaches wherein the device (Fig. 7; [0046-0047]; high-frequency signals) (see below for “is configured to operate at frequencies greater than 1 GHz”).
As noted above, Miwa does not expressly disclose “wherein the device capacitance is configured to operate at frequencies greater than 1 GHz”
However, it has been held that “wherein the device capacitance is configured to operate at frequencies greater than 1 GHz” will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such wherein the device capacitance is configured to operate at frequencies greater than 1 GHz is critical, “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation”. In re Aller, 220 F. 2d 454, 105 USPQ 233, 235 (CCPA 1955). In this case, there is nothing in the present application to indicate that the claimed containing wherein the device capacitance is configured to operate at frequencies greater than 1 GHz is critical and will achieve unexpected results over the range outside of the claimed range. Therefore, it would have been obvious to have wherein the device capacitance is configured to operate at frequencies greater than 1 GHz as claimed in device because having the wherein the device capacitance is configured to operate at frequencies greater than 1 GHz can be optimized during routine experimentation depending upon a particular application which is desired.
The applicants have not established the criticality (see next paragraph below) of said first predetermined amount.
The specification contains no disclosure of either the critical nature of the claimed distance or any unexpected results arising therefrom. Where patentability is said to be based upon particular chosen dimensions or upon another variable recited in a claim, the applicant must show that the chosen dimensions are critical. In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990).
It is the Examiner’s position that the limitation of " wherein the device capacitance is configured to operate at frequencies greater than 1 GHz” is a functional limitation of the apparatus claimed. While features of an apparatus may be recited either structurally or functionally, claims directed to apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431- 32 (Fed. Cir. 1997); see also 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); MPEP 2114. Furthermore, because the device of Miwa has all of the structural limitations of the claimed invention the device is capable of operating in the manner claimed by the applicant. A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987).
Moreover, as per MPEP 2112.01.I guideline, where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). In this case, Miwa teaches the structure of claim 1 as detailed above. Thus, Miwa teaches all of the structural elements of the claimed product, and when the structure recited in a reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent.
Regarding claim 15, Miwa teaches all of the features of claim 1.
Miwa further teaches wherein the device (Fig. 7; [0046-0047]; high-frequency signals) (see below for “is configured to operate at frequencies greater than 2.5 GHz”).
As noted above, Miwa does not expressly disclose “wherein the device capacitance is configured to operate at frequencies greater than 2.5 GHz”
However, it has been held that “wherein the device capacitance is configured to operate at frequencies greater than 2.5 GHz” will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such wherein the device capacitance is configured to operate at frequencies greater than 2.5 GHz is critical, “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation”. In re Aller, 220 F. 2d 454, 105 USPQ 233, 235 (CCPA 1955). In this case, there is nothing in the present application to indicate that the claimed containing wherein the device capacitance is configured to operate at frequencies greater than 2.5 GHz is critical and will achieve unexpected results over the range outside of the claimed range. Therefore, it would have been obvious to have wherein the device capacitance is configured to operate at frequencies greater than 2.5 GHz as claimed in device because having the wherein the device capacitance is configured to operate at frequencies greater than 2.5 GHz can be optimized during routine experimentation depending upon a particular application which is desired.
The applicants have not established the criticality (see next paragraph below) of said first predetermined amount.
The specification contains no disclosure of either the critical nature of the claimed distance or any unexpected results arising therefrom. Where patentability is said to be based upon particular chosen dimensions or upon another variable recited in a claim, the applicant must show that the chosen dimensions are critical. In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990).
It is the Examiner’s position that the limitation of " wherein the device capacitance is configured to operate at frequencies greater than 2.5 GHz” is a functional limitation of the apparatus claimed. While features of an apparatus may be recited either structurally or functionally, claims directed to apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431- 32 (Fed. Cir. 1997); see also 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); MPEP 2114. Furthermore, because the device of Miwa has all of the structural limitations of the claimed invention the device is capable of operating in the manner claimed by the applicant. A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987).
Moreover, as per MPEP 2112.01.I guideline, where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). In this case, Miwa teaches the structure of claim 1 as detailed above. Thus, Miwa teaches all of the structural elements of the claimed product, and when the structure recited in a reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent.
Regarding claim 16, Miwa teaches all of the features of claim 1.
Miwa further teaches wherein the device (Fig. 7; [0046-0047]; high-frequency signals) (see below for “is configured to operate at frequencies greater than 3.1 GHz”).
As noted above, Miwa does not expressly disclose “wherein the device capacitance is configured to operate at frequencies greater than 3.1 GHz”
However, it has been held that “wherein the device capacitance is configured to operate at frequencies greater than 3.1 GHz” will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such wherein the device capacitance is configured to operate at frequencies greater than 3.1 GHz is critical, “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation”. In re Aller, 220 F. 2d 454, 105 USPQ 233, 235 (CCPA 1955). In this case, there is nothing in the present application to indicate that the claimed containing wherein the device capacitance is configured to operate at frequencies greater than 3.1 GHz is critical and will achieve unexpected results over the range outside of the claimed range. Therefore, it would have been obvious to have wherein the device capacitance is configured to operate at frequencies greater than 3.1 GHz as claimed in device because having the wherein the device capacitance is configured to operate at frequencies greater than 3.1 GHz can be optimized during routine experimentation depending upon a particular application which is desired.
The applicants have not established the criticality (see next paragraph below) of said first predetermined amount.
The specification contains no disclosure of either the critical nature of the claimed distance or any unexpected results arising therefrom. Where patentability is said to be based upon particular chosen dimensions or upon another variable recited in a claim, the applicant must show that the chosen dimensions are critical. In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990).
It is the Examiner’s position that the limitation of " wherein the device capacitance is configured to operate at frequencies greater than 3.1 GHz” is a functional limitation of the apparatus claimed. While features of an apparatus may be recited either structurally or functionally, claims directed to apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431- 32 (Fed. Cir. 1997); see also 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); MPEP 2114. Furthermore, because the device of Miwa has all of the structural limitations of the claimed invention the device is capable of operating in the manner claimed by the applicant. A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987).
Moreover, as per MPEP 2112.01.I guideline, where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). In this case, Miwa teaches the structure of claim 1 as detailed above. Thus, Miwa teaches all of the structural elements of the claimed product, and when the structure recited in a reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent.
Regarding claim 17, Miwa teaches all of the features of claim 1.
Miwa further teaches wherein the device (Fig. 7; [0046-0047]; high-frequency signals) (see below for “is configured to operate at frequencies greater than 5 GHz”).
As noted above, Miwa does not expressly disclose “wherein the device capacitance is configured to operate at frequencies greater than 5 GHz”
However, it has been held that “wherein the device capacitance is configured to operate at frequencies greater than 5 GHz” will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such wherein the device capacitance is configured to operate at frequencies greater than 5 GHz is critical, “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation”. In re Aller, 220 F. 2d 454, 105 USPQ 233, 235 (CCPA 1955). In this case, there is nothing in the present application to indicate that the claimed containing wherein the device capacitance is configured to operate at frequencies greater than 5 GHz is critical and will achieve unexpected results over the range outside of the claimed range. Therefore, it would have been obvious to have wherein the device capacitance is configured to operate at frequencies greater than 5 GHz as claimed in device because having the wherein the device capacitance is configured to operate at frequencies greater than 5 GHz can be optimized during routine experimentation depending upon a particular application which is desired.
The applicants have not established the criticality (see next paragraph below) of said first predetermined amount.
The specification contains no disclosure of either the critical nature of the claimed distance or any unexpected results arising therefrom. Where patentability is said to be based upon particular chosen dimensions or upon another variable recited in a claim, the applicant must show that the chosen dimensions are critical. In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990).
It is the Examiner’s position that the limitation of " wherein the device capacitance is configured to operate at frequencies greater than 5 GHz” is a functional limitation of the apparatus claimed. While features of an apparatus may be recited either structurally or functionally, claims directed to apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431- 32 (Fed. Cir. 1997); see also 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); MPEP 2114. Furthermore, because the device of Miwa has all of the structural limitations of the claimed invention the device is capable of operating in the manner claimed by the applicant. A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987).
Moreover, as per MPEP 2112.01.I guideline, where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). In this case, Miwa teaches the structure of claim 1 as detailed above. Thus, Miwa teaches all of the structural elements of the claimed product, and when the structure recited in a reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent.
Response to Arguments
The finality of the previous Office Action has been withdrawn pursuant to 37 CFR 1.114 in respect with the request for continued examination, in the “Request for Continued Examination (RCE)” filed on 08/25/2026, under 37 CFR 1.114
Applicant's arguments filed in the “Applicant Arguments/Remarks Made in an Amendment” on 07/28/2026 have been fully considered, but they are not persuasive, because of the following: Applicant's amendments of claim 1 necessitated the shift in new grounds of rejection detailed in sections above. The shift in grounds of rejection renders the Applicant's arguments moot.
Please see the analysis of rejection for claims above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Omar Mojaddedi whose telephone number is 313-446-6582. The examiner can normally be reached on Monday – Friday, 8:00 a.m. to 4:00 p.m..
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Julio J. Maldonado, can be reached on 571-272-1864. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/OMAR F MOJADDEDI/Examiner, Art Unit 2898
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