DETAILED ACTION
Election/Restrictions
Between Species I and II, applicant’s election with traverse of Species I, claim 2; and Species II, claims 3, 4 and 6 are non-elected in the reply filed on 11-26-24 is acknowledged. (Notes: there was a mistake made by examiner that claim 12 should be also belong to Species II, a gap is arranged inside the resin layer, same as claim 3.)
Between Species III and IV, applicant’s election without traverse of Species IV, claims 8, 18 and 20; and Species III, claims 7, 11, 17 and 19 are non-elected in the reply filed on 11-26-24 is acknowledged.
Applicant's election with traverse between Species I and II, and the traversal is on the ground(s): A) the requirement is improper since the alleged species are
neither independent nor distinct, as required for a proper restriction; and B) fig. 8 and fig. 9 do not depict different embodiments of the invention, and they are merely enlarged views of different portions of the same substrate of fig. 2.
The arguments are not found persuasive because
A) For example, claims 2 and 3 of Species I and II are clearly independent (see claims list) and distinct (claim 2 has limitations of wherein the circuit component includes a substrate, and wherein the gap is arranged at at least one of a position between the substrate of the circuit component and the resin layer and a position between the substrate of the circuit component and the shield layer; and claim 3 has limitations of the gap is arranged within an adjacent region inside the resin layer adjacent to the circuit component).
B) Fig. 8 and 9 are different embodies of the circuit board of fig. 2; fig. 8 shows a gap is arranged between resin layer and component; and fig. 9 shows a gap is arranged within an adjacent region inside the resin layer.
Because these inventions are independent or distinct for the reasons given above and there would be a serious burden on the examiner if restriction were not required; the distinct characteristics require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search queries); and/or the prior art applicable to one group would not likely be applicable to another group; and/or the groups are likely to raise different non-prior art issues under 35 U.S.C. 101 and/or 35 U.S.C. 112, first paragraph, therefore, the restriction for examination purposes as indicated is proper.
The requirement is still deemed proper and is therefore made FINAL; and therefore, claims 1-2, 5, 8-10, 14 10 and 20 will be examined.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claim 1 is rejected under 35 U.S.C. 112(a), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains to make and/or use the invention.
In Claim 1 the limitation of “a mounting substrate having a first main surface and a second main surface, the first main surface and the second main surface facing each other.”, which contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains to make and/or use the invention.
The following is a quotation of the second paragraph of 35 U.S.C. 112:
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 5 and 14 are rejected under 35 U.S.C. 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
Claims 5 and 14 recite the limitations of "the main surface of the circuit component”, which lacks of anticipated base of the limitation, there is no limitation of "a main surface of the circuit component” anywhere before; and furthermore, there is “a main surface of the mounting substrate” in claim 1, the limitation as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the important feature of “wherein the circuit component includes a substrate, and wherein the gap is arranged at at least one of a position between the substrate of the circuit component and the resin layer and a position between the substrate of the circuit component and the shield layer” of claim 2, must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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.
Claim(s) 1-2, 8-9 and 17 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Okamoto et al. (US5672414).
Re Claim 1, Okamoto show and disclose
A high frequency module comprising:
a mounting substrate (85, fig. 9) having a first main surface (top) and a second main surface (bottom), the first main surface and the second main surface facing each other (see 112 rejection above);
a circuit component (7, fig. 9) mounted on the first main surface of the mounting substrate;
a resin layer (filled resin, fig. 9) disposed on the first main surface of the mounting substrate and covering at least a part of an outer peripheral surface of the circuit component (fig. 9); and
a shield layer (71A, fig. 9) covering at least a part of the resin layer and a main surface of the circuit component farther from the mounting substrate (fig. 9),
wherein a gap is arranged at at least one of a position between the circuit component and the resin layer, a position between the circuit component and the shield layer (fig. 9), a position inside the resin layer, and a position inside the shield layer.
Re Claim 2, Okamoto show and disclose
The high frequency module according to Claim 1, wherein the circuit component includes a substrate (4, fig. 9), and wherein the gap is arranged at at least one of a position between the substrate of the circuit component and the resin layer and a position between the substrate of the circuit component and the shield layer (fig. 9).
Re Claim 8, Okamoto show and disclose
The high frequency module according to Claim 1, wherein the gap (gap in 74A, fig. 9) is arranged along a thickness direction of the shield layer inside the shield layer (fig. 9), and overlaps with an interface between the circuit component and the resin layer in the thickness direction of the shield layer (fig. 9).
Re Claim 9, Okamoto show and disclose
The high frequency module according to Claim 1, wherein a thickness of a part of the shield layer provided on the main surface of the circuit component is set to a first thickness (thickness of 71A in area with top component 7, fig. 9), wherein a thickness of a part of the shield layer provided on a main surface of the resin layer farther from the mounting substrate is set to a second thickness (thickness of 71A with gap in 74A, fig. 9), and wherein the first thickness is more than the second thickness (fig. 9).
Re Claims 17, Okamoto show and disclose
The high frequency module according to Claim 2, wherein the gap (gap in center of layer 74A, fig. 9) is arranged along a thickness direction of the shield layer inside the shield layer (fig. 9), and does not overlap with an interface between the circuit component and the resin layer in the thickness direction of the shield layer (fig. 9).
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 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Okamoto et al.
Re Claim 10, Okamoto show and disclose
The high frequency module according to Claim 1,
Okamoto disclosed claimed invention except for the high frequency module is used in a communication apparatus module, and a signal processing circuit connected to the high frequency module and performs signal processing on a high frequency signal, since Okamoto disclosed the high frequency module, and the high frequency module is capable to be used in a communication apparatus module, and connect to a signal processing circuit to perform signal processing on a high frequency; therefore, it would have been obvious to one having ordinary skill in the art before the effective filling date of the claimed invention to use the high frequency module in a communication, in order to make a complete working system for the electronic device; and since this limitation is a intended-use limitation (be used in a communication apparatus module, and to perform signal processing on a high frequency); and since it has been held that 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 satisfying the claimed structural limitations. Ex parte Masham, 2 UAPQ2d 1647 (1987).
Claims 5, 14 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Okamoto et al., in view of Shiga (US5723904).
Re Claims 5 and 14, Okamoto show and disclose
The high frequency module according to Claims 1 and 2, respectively,
Okamoto does not disclose
wherein the main surface of the circuit component includes a plurality of ground marks.
Shiga teaches a device wherein
wherein the main surface of the circuit component includes a plurality of ground marks (the ground lines are located at the upper surface of the IC chip, [col. 3, line 53]).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filling date of the claimed invention to add ground lines on main surface of the circuit component as taught by Shiga, in order to make ground connections easily for the electronic device.
Re Claim 20, Okamoto show and disclose
The high frequency module according to Claim 5, wherein the gap (gap in center of layer 74A, fig. 9) is arranged along a thickness direction of the shield layer inside the shield layer (fig. 9), and does not overlap with an interface between the circuit component and the resin layer in the thickness direction of the shield layer (fig. 9).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US-6573028-B1 US-6521482-B1 US-6359341-B1 US-6285559-B1 US-6262513-B1 US-6054759-A US-5754402-A US-5359222-A US-5355016-A US-5352925-A US-4527010-A US-5371404-A US-6548880-B1 US-6320739-B1 US-6498422-B1 US-6396154-B1 US-6188297-B1 US-6054753-A US-5723875-A US-4933739-A US-20020044215-A1 US-20020001178-A1.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to XIAOLIANG CHEN whose telephone number is (571)272-9079. The examiner can normally be reached 9:00-5:00.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Timothy Dole can be reached on 571-272-2229. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/XIAOLIANG CHEN/Primary Examiner, Art Unit 2848
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