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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/17/2025 has been entered.
Terminal Disclaimer
The Applicant stated in the remarks filed on 12/17/2025 that a terminal disclaimer has been submitted, but there is no record or filing of such a terminal disclaimer and therefore the obviousness double patenting rejection has been sustained, as set forth below.
Double Patenting
The double patenting rejection pertaining to independent claim 1 is not withdrawn.
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.
Claim 1, rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6 and 7 U.S. Patent No. 11876273 in view of Masao (JP 2017228721), references of record.
Claim 1 states:
A filter comprising:
Application Claim No.
Application Limitation
Corresponding Reference Limitation
Reference Claim No.
Claim 1
RF connector
RF signal connector
Claim 1
Claim 1
Predetermined electrical signal line
Configured to electrically connect
Claim 1
Claim 1
Filter body
Dielectric body
Claim 1
Claim 1
Impedance matching space
Terminal insertion port
Claim 1
Claim 1
Relevant PCB
External device
Claim 1
Claim 1
Annular gasket made of rubber
Elastic member; Two-stacked o-rings (which are well known in the art to be made of rubber and if the annular gasket is elastic, it would inherently be rubber)
Claims 1 and 6-7
Claim 1
Attachment area
Outer circumferential surface
Claims 1 and 6
Kim does not disclose in Claims 1 and 6:
At least a portion of the first side surface of the filter body comprises a concave-convex portion.
Masao shows in Figure 3B:
A gasket (“o-ring”, 15) attached to a body structure (“first case member”, 3) through a concave-convex (i.e. zig-zag shape, “concave/convex shape portion”, 20) interface that necessarily results in an increase attachment area
Accordingly, this structure corresponds to:
At least a portion of the first side surface of the filter body comprises a concave-convex portion that is claimed.
At the time of filing, it would have been obvious to have replaced the gasket assembly as taught in Masao in place of the elastic member in claims 1 and 6 in the filter of Park. Such a modification would have been obvious to provide the benefit of substituting equivalent elements with equivalent structures that perform the same function.
Claim Objections
Claims 6 and 10 are objected to because of the following informalities:
Claim 6, Line 2, “forming process of processing” should read -- forming process for processing --;
Claim 10, Line 2, “plating process of plating” should read – plating process for plating --.
Appropriate correction is required.
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 6 and 8-12 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. Claims 8-10 and 12 depend upon rejected claim 6 and inherit the deficiency thereby.
Claim 6 recites the limitation "the annular concave-convex portion" in Lines 9-10. There is insufficient antecedent basis for this limitation in the claim.
Claim 11, Line 1, “wherein resin” is unclear to one of ordinary skill in the art how this recitation of “resin” is related to the “resin” previously recited in Claim 6 from which this claim depends and thus it is unclear whether it is the same resin or a different resin entirely, thereby leaving the boundaries of the claim unclear.
Claim 11, Lines 1-2, “the molding material” is unclear to one of ordinary skill in the art how this recitation of “molding material” is related to the “a molding material” previously recited in Claim 6 from which this claim depends and thus it is unclear whether it is the same molding material or a different type of material entirely, thereby leaving the metes and bounds of the claim unclear.
Appropriate correction is required.
Response to Arguments
Applicant's arguments filed 12/17/2025 have been fully considered but they are not persuasive.
The applicant argues:
On Page 6, the applicant states that a terminal disclaimer has been submitted and the non-statutory double patenting rejections should be withdrawn
In response to the applicant’s arguments above:
The examiner notes that the terminal disclaimer has not been submitted and the double-patenting rejection remains as stated above.
Applicant’s arguments, see pages 6-12, filed 12/17/2025, with respect to Claim 1 have been fully considered and are persuasive. The 35 U.S.C. 103 rejection of Claim 1 has been withdrawn, however the examiner has noted that there are 112(b) issues as described above.
Allowable Subject Matter
Claims 3, 5 and 13-17 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.
Claim 4 is allowed.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ABIGAIL YALDO whose telephone number is (703)756-1784. The examiner can normally be reached Monday - Friday 7 AM - 4 PM.
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/ABIGAIL AMIR YALDO/Examiner, Art Unit 2843
/ANDREA LINDGREN BALTZELL/Supervisory Patent Examiner, Art Unit 2843