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 .
Election/Restrictions
Applicants election with traverse of the invention of Species A, Claims 1 through 11, in the reply filed on January 4, 2026 is acknowledged. The traversal is on the ground(s) that both species are sufficiently related such that there would be no undue burden to search and examine both Species A and B altogether. This is not found persuasive because the searches for each species would be non-coextensive, meaning the search for the first aspect in Claim 1 would be completely different from the search required for the second aspect of Claim 12, and vice versa.
The requirement is still deemed proper and is therefore made FINAL.
Claims 12 through 22 have been withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on January 4, 2026.
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 through 11 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.
In Claim 1, it is unclear what is meant by the phrase of “the circuit substrate being disposed in the second insulating substrate” (line 12). With emphasis on the term of “in”, the phrase appears to contradict the specification, which renders the claim as indefinite. For example, page 26 of the specification states that element 210 is a “second insulating layer”. Page 44 of the specification states that element 30A is the “circuit substrate”. Yet, when one looks at applicants’ Figure 40, how is it possible for the circuit substrate 30A to be disposed in the second insulating substrate 210. It would appear to be the other way around, as the second insulating substrate 210 is disposed in the circuit substrate 30A.
In Claim 2, “the power feeding terminal of the communication integrated circuit” (lines 2-3) lacks positive antecedent basis. For purposes of examination, it appears that the phrase is referring to “power feeding circuit for connection of the circuit substrate” (lines 13-14 of Claim 1).
In Claim 9, the following phrases each lack positive antecedent basis: “the thickness direction” (lines 6-7), “the first side” (line 11), and “the second side” (lines 20-21).
In Claim 10, the following phrases each lack positive antecedent basis: “the thickness direction” (lines 6-7), “the first side” (line 8), and “the second side” (line 11).
In Claim 11, “the thickness direction” (lines 6-7) lacks positive antecedent basis.
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 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Publication 2020/0058606 to Tsai et al (hereinafter “Tsai”).
Claim 1: Tsai discloses a production method of a communication apparatus (e.g. Fig. 10A) comprising:
forming an antenna substrate (e.g. 120) which includes a first insulating substrate (e.g. 100, Fig. 5), an antenna (e.g. 110), and a power feeding path (e.g. 108, ¶ [0022]), the first insulating substate being made from an electrically insulating material in a form of a plate (e.g. ¶ [0016]), the antenna being mounted on the first insulating substrate, the power feeding path being arranged in the first insulating substrate in connection with the antenna;
forming a circuit substrate (e.g. 200) which is discrete from the antenna substrate, the circuit substrate including a second insulating substrate (e.g. 210, Fig. 7) and a communication integrated circuit (e.g. 220, Fig. 9A, ¶ [0053]) ), the second insulating substrate being made from an electrically insulating material in a form of a plate, the circuit substrate being disposed in the second insulating substrate and having a power feeding terminal (e.g. 212 or 214) for connection of the circuit substrate with the antenna through the power feeding path, the communication integrated circuit working to emit a signal from the antenna or receive a signal through the antenna (e.g. ¶¶ [0052], [0053]); and
joining the antenna substrate and the circuit substrate together simultaneously with connection of the power feeding terminal with the power feeding path (e.g. Fig. 10A, ¶ [0057]).
It is noted that the circuit substrate (e.g. 200) of Tsai is disposed in the second insulating substrate (e.g. 210) to the same extent that the applicants’ circuit substrate is disposed in the second insulating substrate.
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 2 is rejected under 35 U.S.C. 103 as being unpatentable over Tsai in view of U.S. Publication 2019/0157208 to Lin et al (hereinafter “Lin”).
Tsai discloses the claimed production method as relied upon above in Claim 1, further including wherein the connection of the power feeding terminal (e.g. 212, 214) for connection with the circuit substrate, with the power feeding path is achieved through a conductive member (e.g. 118, Fig. 10A), and each of the power feeding terminal for the connection of the circuit substrate and the conductive member is made from a conductive material containing copper (e.g. ¶¶ [0051], [0029]).
Tsai does not mention what the conductive material is for the power feeding path.
However, the use of copper as the conductive material for a power feeding path is well-known in the art. Lin discloses a method of producing a communication apparatus (Fig. 2) that includes a power feeding path (e.g. 156) that is made of copper [0032].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have formed the power feeding path of Tsai with the copper material taught by Lin, to achieve an art-recognized equivalent power feeding path having the same purpose in an antenna substrate.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter:
The prior art does not teach an electromagnetic shield conductor (in Claim 3), or first and second electromagnetically shield conductors (in each of Claims 9, 10 and 11).
Accordingly, Claims 3 through 11 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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
a) Japanese Patent Publication, JP 2012-182682 discloses a production method that includes an antenna substrate (e.g. 30, Fig. 1) joined with a circuit substrate (e.g. 20, see SOLUTION).
b) Non-Patent Literature IEEE Publication to Yordanov et al, entitled "On-Chip Monolithic Integrated Antennas Using CMOS Ground Supply Planes", discloses a communication apparatus (Fig. 1) that includes an antenna and an antenna substrate (see entire document).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to A. DEXTER TUGBANG whose telephone number is (571)272-4570. The examiner can normally be reached Mon - Fri 8:00 am to 5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, JESSICA HAN can be reached at (571) 272-2078. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/A. DEXTER TUGBANG/Primary Examiner
Art Unit 2896
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