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 Amendment
The amendments filed on August 18th 2025 have been entered. Claims 1,3-7,9-16 and 19-23 are currently pending. Applicants’ amendments to claims have overcome the objections set forth in the Non-Final Office Action mailed on May 06th 2025.
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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claim 23 and 23 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The claim recites the first and second capacitors comprise a first and second inductance however, the specifications and drawings never teach that the first and second capacitors can have a first and second inductance value. As such these first and second inductance values constitute new matter.
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.
Claim 3 and 22-23 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.
Claim 3 recites the limitation "a second antenna collar". There is insufficient antecedent basis for this limitation in the claim. The claim only recites a first collar, not a first antenna collar, and furthermore it is unclear what an antenna collar is as well as the difference between a collar and an antenna collar. For the purposes of examination, the examiner, as best understood, will interpret the claim to mean “ a second collar comprising the second antenna”.
Claims 22-23 recite the limitation “the first capacitor has a first inductance” and “the second capacitor has a second inductance” which render the claim indefinite. It is unclear as to how the capacitors can have a first and second inductance since they are capacitors and the specifications/drawings do not teach this concept. For the purposes of examination, the examiner, as best understood, will interpret the limitation to mean the first and second capacitor have a first and second capacitance to bring the claims more in line with what is taught in paragraphs 52-56 of the specifications.
Claim 23 recites the limitation “the second signal path comprises … a second parallel inductor-capacitor circuit that is tuned to reject the first frequency” and “the second signal path comprises the first parallel inductor-capacitor circuit allowing the first frequency to pass through the first parallel inductor-capacitor circuit” which renders the claim indefinite. The term “a second parallel inductor capacitor” and “the first parallel inductor capacitor” lack antecedent basis in the claim since a first parallel inductor capacitor is never claimed. Furthermore it is unclear how the parallel inductor capacitor can be configured to reject a first frequency band but then allow the first frequency band later on and how this helps tune the antenna to a second frequency band. For the purposes of examination, the examiner as best understood, will interpret the claim to mean “the second signal path comprises … a first parallel inductor-capacitor circuit that is tuned to reject the first frequency” and “the second signal path comprises the first parallel inductor-capacitor circuit allowing the second frequency to pass through the first parallel inductor-capacitor circuit.
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, 7, 9-13, 16, and 18-22 are rejected under 35 U.S.C. 103 as being unpatentable over Griffing et al. (IDS Reference US 20190049614A1) in view of Taherian et al (US 20120068712 A1).
Regarding Claim 1, Griffing et al. discloses an subassembly configured for attachment to a tole for use in a borehole, the subassembly (Downhole tool 219 or tool body 102 serves as a tool for use in a borehole wherein an a downhole receiver 300 may serve as a subassembly attached to the tool; Paragraph 25-60 as well as figure 2-3 and 19 of Griffing et al.) and comprising:
a first antenna configured to transmit or receive a signal to or from a second antenna located on the tool and (Downhole receiver 300 may comprise an antenna 302 that can be a transmitter or receiver that is configured to transmit or receive to a second antenna located on the resistivity tool 1905 which can be disposed on the downhole tool 219 or tool body 102; Paragraph 25-60 and 86-89 as well as figure 2-3 and 19 of Griffing et al.) ;
a tuning module configured to tune the first antenna to a first frequency or a second frequency, wherein the first frequency corresponds to a first predetermined distance between the first antenna and the second antenna (Downhole receiver 300 includes an antenna assembly 302 with a first antenna 602 which can be connected to a tuning assembly, which can tune the antenna to operate at a first frequency 702 or a second frequency like 704, frequencies f1-f3 in figure 11 also work, wherein the distance between the first antenna 602 and a second antenna on tool 1905 would inherently correspond to the frequency of operation like a first frequency; Paragraph 38 and 47-61 as well as figure 6-7 of Griffing et al.) and ; and
Griffing et al. fails to explicitly disclose the second frequency corresponds to a second predetermined distance between the first antenna and the second antenna.
However, Taherian et al. does disclose the second frequency corresponds to a second predetermined distance between the first antenna and the second antenna (Receiver module 61 may be attached to the tool used in the borehole wherein module 61 transmits and receives form a transmitter module 55 wherein 61 can operate in lower frequency bands like 1 Khz to higher bands like 2 MHz wherein as distance between module 55 and 61 decreases, a lower band may be used as seen in figures 2 wherein the distance between 61 and 66 is smaller and figure 4 wherein the distance has increased this showing two frequency bands of operation corresponding to distance between antennas; Paragraph 41-56 and figure 2-5 of Taherian et al.).
Therefore, it would have been obvious before the effective filling date of the claimed invention to a person having ordinary skill in the art modify the antenna as taught by Griffing et al. to have the second frequency corresponds to a second predetermined distance between the first antenna and the second antenna as taught by Taherian et al. so during operation, signal loss can be compensated for as the tool is used in deeper depths of investigation (Paragraph 45 and 56 of Taherian et al.).
Examiner’s note - Regarding the recitation that an element is “configured to” perform a function, it is the position of the office that such limitations are not positive structural limitations, and thus, only require the ability to so perform. In this case the prior art applied herein is construed as at least possessing such ability. When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01, I.).
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Regarding Claim 3 as best understood, Griffing et al. further discloses comprising a first collar having no electronics or minimum electronics, wherein the tool comprises a second antenna collar having electronics to send control and communication signals among antennas. (Components like receiver 300 and resistivity tool 1905 may be co-located on 1 or more collars and thus placed on different collars and first antenna 602 may comprise a minimum amount of electronics while antennas of tool 1905 can comprise the same amount of electronics while also having addition ones in the form of electronic apparatus 1965, display units 1955, and controller 1925; Paragraphs 47 and 86-90 as well as figure 6 and 19 of Griffing et al.).
Regarding Claim 7, Griffing et al. further discloses the tuning module includes a microcontroller configured to actively select a first signal path and a second signal path of a plurality of signal paths to the first antenna, wherein the first signal path is configured to tune the first antenna to the first frequency and the second signal path is configured to tune the first antenna to the second frequency (Switching elements which determine the signal path of the first antenna are controlled by a processor 312 which selects the path based on the frequency desired and can select a first signal path to tune the antenna to a first frequency F1 or a second path to tune the antenna to a second frequency F2 wherein a microcontroller would be inherent to the processor 312; Paragraph 60-61 of Griffing et al.).
Examiner’s note - Regarding the recitation that an element is “configured to” perform a function, it is the position of the office that such limitations are not positive structural limitations, and thus, only require the ability to so perform. In this case the prior art applied herein is construed as at least possessing such ability. When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01, I.).
Regarding Claim 9, Griffing et al. further discloses wherein the first signal path and the second signal path each include a capacitor, and wherein the capacitors are connected in parallel to the first antenna (First antenna may be tuned via parallel tuning with a capacitive element in parallel with antenna and this parallel tuning may be further expanded to have multiple capacitive elements for tuning in multiple frequencies wherein we can have a first and second signal path with a first and second capacitor C1 and C2; Paragraph 47-48 and 59 as well as figure 7-8 and 10 of Griffing et al.).
Regarding Claim 10, Griffing et al. further discloses the first signal path and the second signal path each include a respective capacitor, and wherein the respective capacitors are connected in series to the first antenna (First antenna may be tuned via series tuning with a capacitive element in series with antenna and this series tuning may be further expanded to have multiple capacitive elements for tuning in multiple frequencies wherein we can have a first and second signal path with a first and second capacitor C1 and C2; Paragraph 57-59 as well as figure 8-7 of Griffing et al.).
Regarding Claim 11, Griffing et al. further discloses comprising a communication bus connected to the microcontroller wherein the communication buss is configured to connect to one or more components disposed on the tool. (Downhole tool 219 with all previously disclosed electronics may be connected to a bus 1927 that includes other electrical components like 1965 and bus connects to the components disposed on the tool; Paragraph 86-94 of Griffing et al.).
Examiner’s note - Regarding the recitation that an element is “configured to” perform a function, it is the position of the office that such limitations are not positive structural limitations, and thus, only require the ability to so perform. In this case the prior art applied herein is construed as at least possessing such ability. When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01, I.).
Regarding Claim 12, Griffing et al. discloses a subassembly configured for attachment to a tool for use in a borehole, the subassembly comprising (Downhole tool 219, or tool body 120 serve as a tool for use in a downhole comprising a downhole receiver 300 and resistivity tool 1905 where either can serve as a subassembly configured to be attached to the tool; Paragraph 25-60 as well as figure 2-3 and 19 of Griffing et al.): a tuning module configured to tune a plurality of antennas on the subassembly (Both receiver 300 and resistivity tool 1905 can be configured to have multiple antennas which can all be configured to have a tuning assembly that is controlled by a processor 312 which is a part of processing unit 1920 thus acting as an tuning module; Paragraph 47, 86, 97, and 123 as well as figures 1, 3,, and 19 of Griffing et al.) to different respective frequencies, wherein each respective frequency is different than any initial frequency to which each of the plurality of antennas was tuned and the plurality of antennas each configured to transmit or receive signals at the respective frequency (The tuning assembly of these antennas can be designed with 3 switches and capacitors thus creating 3 paths to tune the antenna to 3 different frequencies wherein the antenna can be at an initial frequency f1 and then re-tuned to a new frequency at f2 and can be configured to transmit or receive signals at this new frequency; Paragraph 59-61 as well as figure 10 of Griffing et al.).
Examiner’s note - Regarding the recitation that an element is “configured to” perform a function, it is the position of the office that such limitations are not positive structural limitations, and thus, only require the ability to so perform. In this case the prior art applied herein is construed as at least possessing such ability. When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01, I.).
Regarding Claim 13, Griffing et al. further discloses the tuning module includes a first signal path of a plurality of signal paths to a first antenna of the plurality of antennas, the first signal path including a first capacitor configured to passively retune the first antenna to a first new frequency. (Tuning module can comprise a first signal path with capacitor C1 that can retune the first antenna 600 of a plurality to a first new frequency if the antenna was tuned to an original frequency like F3; Paragraph 47, 59-61, and 123 as well as figure 6-10 of Griffing et al.).
Examiner’s note - Regarding the recitation that an element is “configured to” perform a function, it is the position of the office that such limitations are not positive structural limitations, and thus, only require the ability to so perform. In this case the prior art applied herein is construed as at least possessing such ability. When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01, I.).
Regarding Claim 16, Griffing et al. further disclose the tuning module includes a microcontroller configured to actively select a first signal path of a plurality of signal paths to a first antenna of the plurality of antennas and actively select a second signal path of the plurality of signal paths, wherein the first signal path is configured to retune the first antenna to a first new frequency and the second signal path is configured to retune the first antenna to a second new frequency (Switching elements which determine the signal path of the first antenna are controlled by a processor 312 which selects the path based on the frequency desired and can select a first signal path to re-tune the antenna to a first frequency F1 from an original frequency like F3 or can select a second signal path to re-tune the antenna to a second frequency F2 different from F1 and F3 wherein a microcontroller would be inherent to the processor wherein a microcontroller would be inherent to the processor 312; Paragraph 60-61 of Griffing et al.).
Examiner’s note - Regarding the recitation that an element is “configured to” perform a function, it is the position of the office that such limitations are not positive structural limitations, and thus, only require the ability to so perform. In this case the prior art applied herein is construed as at least possessing such ability. When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01, I.).
Regarding Claim 18, Griffing et al. further discloses a method for tuning a first antenna of a plurality of antennas mounted on a subassembly configured to couple with a downhole tool, the method comprising (Downhole tool 219, or tool body 120, comprising a downhole receiver 300 and resistivity tool 1905 serves as a subassembly and comprise multiple antennas coupled to the downhole tool wherein they can be tuned and the method to tune would be inherent to the method of operating the device; Paragraph 26-29 and 37 as well as figure 2-3 and 19 of Griffing et al.): determining a first frequency and a second frequency, wherein the first frequency corresponds to a first distance between the first antenna and a second antenna mounted on the downhole tool (Downhole receiver 300 includes an antenna assembly 302 with a first antenna 602 antenna to operate at a first frequency 702 or a second frequency like 704, frequencies f1-f3 in figure 11 also work, wherein the distance between the first antenna 602 and a second antenna on tool 1905 would inherently correspond to the frequency of operation like a first frequency and bands of operation would be pre-determined; Paragraph 38 and 47-61 as well as figure 6-7 of Griffing et al.); and adding a tuning module to the subassembly, the tuning module configured to tune the first antenna to the first frequency and the second frequency(Downhole tool 219 comprises multiple antennas including a receiver 300 comprising an antenna assembly 302 with a first antenna 602 which can be connected a tuning assembly, which can tune the antenna to operate at a first frequency band 706 a second frequency like 704, frequencies f1-f3 in figure 11 also work,; Paragraph 38 and 47-61 as well as figure 6-7 of Griffing et al.).
Griffing et al. fails to explicitly disclose the second frequency corresponds to a second distance between the first antenna and the second antenna.
However, Taherian et al. does disclose the second frequency corresponds to a second distance between the first antenna and the second antenna (Receiver module 61 may be attached to the tool used in the borehole wherein module 61 transmits and receives form a transmitter module 55 wherein 61 can operate in lower frequency bands like 1 Khz to higher bands like 2 MHz wherein as distance between module 55 and 61 decreases, a lower band may be used as seen in figures 2 wherein the distance between 61 and 66 is smaller and figure 4 wherein the distance has increased this showing two frequency bands of operation corresponding to distance between antennas; Paragraph 41-56 and figure 2-5 of Taherian et al.).
Therefore, it would have been obvious before the effective filling date of the claimed invention to a person having ordinary skill in the art modify the antenna as taught by Griffing et al. to have the second frequency corresponds to a second distance between the first antenna and the second antenna as taught by Taherian et al. so during operation, signal loss can be compensated for as the tool is used in deeper depths of investigation (Paragraph 45 and 56 of Taherian et al.).
Examiner’s note - Regarding the recitation that an element is “configured to” perform a function, it is the position of the office that such limitations are not positive structural limitations, and thus, only require the ability to so perform. In this case the prior art applied herein is construed as at least possessing such ability. When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01, I.).
Regarding Claim 19, Griffing et al. further discloses the tuning module including: comprises: a microcontroller connected to a first switch and a second switch, each switch connected to a respective signal path configured to tune the first antenna to the first frequency or the second frequency (Switching elements 1008-1012 which determine the signal path of the first antenna are controlled by a processor 312 which selects the path based on the frequency desired and can select a signal path to tune the antenna to a frequency like a first frequency f1 or second frequency f2 wherein a microcontroller would be inherent to the processor 312; Paragraph 60-61 of Griffing et al.).
Examiner’s note - Regarding the recitation that an element is “configured to” perform a function, it is the position of the office that such limitations are not positive structural limitations, and thus, only require the ability to so perform. In this case the prior art applied herein is construed as at least possessing such ability. When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01, I.).
Regarding Claim 20, Griffing et al. further discloses the tuning module includes a tuning network configured to passively tune the first antenna to the first frequency or the second frequency (Tuning module can include multiple signal paths forming a tuning network wherein the first antenna can be tuned to multiple frequencies F1-F3 based on the path chosen; Paragraph 50-61 and figure 10 of Griffing et al.).
Examiner’s note - Regarding the recitation that an element is “configured to” perform a function, it is the position of the office that such limitations are not positive structural limitations, and thus, only require the ability to so perform. In this case the prior art applied herein is construed as at least possessing such ability. When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01, I.).
Regarding Claim 21, Griffing et al. further discloses wherein the first antenna forms a circuit between an input conductor and a return conductor (Circuit receives an input signal like 608 or 808 in the input conductor formed by a line and a corresponding to it is another line that would serve as the output conductor; Paragraph 47-61 and figure 6-10 of Griffing et al.); and wherein the tuning module splits the input conductor into a first signal path corresponding to the first frequency and a second signal path corresponding to the second frequency, wherein the tuning module being configured to tune the first antenna to at least one of the first frequency or the second frequency comprises the tuning module being configured to tune the first antenna to the first frequency by selecting the first signal path and to tune the first antenna to the second frequency by selecting the second signal path (Tuning module can include multiple signal paths forming a tuning network wherein the first antenna can be tuned to multiple frequencies F1-F3 based on the signal path chosen wherein said tuning module at least includes a first and second signal path for a first and second frequency; Paragraph 50-61 and figure 10 of Griffing et al.).
Examiner’s note - Regarding the recitation that an element is “configured to” perform a function, it is the position of the office that such limitations are not positive structural limitations, and thus, only require the ability to so perform. In this case the prior art applied herein is construed as at least possessing such ability. When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01, I.).
Regarding Claim 22 as best understood, Griffing et al. further discloses wherein the first signal path comprises a first capacitor and a first switch, wherein the first capacitor has a first inductance, wherein the second signal path comprises a second capacitor and a second switch, wherein the second capacitor has a second inductance (Tuning assembly of first antenna 600/1014 can include multiple switches 1008-1012 and capacitors C1-C3 to form multiple signal paths shown by tuning points 1002-1006 wherein its tunes the antenna to operate in 3 frequencies f1c-f3c via the 3 paths with each path having a capacitor and said capacitors would each have a capacitance; Paragraph 59-61 as well as figure 10-11 of Griffing et al.), and wherein the tuning module being configured to select the first signal path comprises the tuning module being configured to close the first switch and open the second switch and wherein the tuning module being configured to select the second signal path comprises the tuning module being configured to open the first switch and close the second switch (Selecting a signal path would require closing the switch of that path to select that tuning element to tune the antenna and opening the switch of the other paths to prevent selecting there tuning elements and as such a first and second signal path selection require closing the first or second switch; Paragraph 59-61 as well as figure 10-11 of Griffing et al.).
Examiner’s note - Regarding the recitation that an element is “configured to” perform a function, it is the position of the office that such limitations are not positive structural limitations, and thus, only require the ability to so perform. In this case the prior art applied herein is construed as at least possessing such ability. When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01, I.).
Claim(s) 4-6, 14-15, and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Griffing et al. (IDS Reference US 20190049614A1) in view of Taherian et al (US 20120068712 A1) and Beste et al. (US 7038455B2).
Regarding Claim 4, Griffing et al. further discloses the subassembly of claim 1, wherein the tuning module is configured to passively tune the first antenna to the first frequency and the second frequency via a first signal path and a second signal path, the tuning module including: the first signal path configured to tune the first antenna to the first frequency, the first signal path including a first capacitor; and the second signal path configured to tune the first antenna to a second frequency, the second signal path including a second capacitor (Tuning assembly of first antenna 600/1014 can include multiple switches 1008-1012 and capacitors C1-C3 to form multiple signal paths shown by tuning points 1002-1006 wherein its tunes the antenna to operate in 3 frequencies f1c-f3c via the 3 paths with each path having a capacitor; Paragraph 59-61 as well as figure 10-11 of Griffing et al.).
Griffing et al. and Taherian et al. fails to disclose the second signal path including a first inductor-capacitor (LC) resonant circuit.
However, Beste et al. does disclose a second signal path including a first inductor-capacitor (LC) resonant circuit (Antenna 10 operates at 2 frequencies due to 2 paths with the second path comprising a LC circuit 16; Paragraph 11 and figure 1 of Beste et al.).
Therefore, it would have been obvious before the effective filling date of the claimed invention to a person having ordinary skill in the art modify the antenna as taught by Griffing et al. and Taherian et al. to have a second signal path including a first inductor-capacitor (LC) resonant circuit as taught by Beste et al. to enable dual-band reception or transmission (Paragraph 11 of Beste et al.).
Examiner’s note - Regarding the recitation that an element is “configured to” perform a function, it is the position of the office that such limitations are not positive structural limitations, and thus, only require the ability to so perform. In this case the prior art applied herein is construed as at least possessing such ability. When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01, I.).
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Regarding Claim 5, Griffing et al. further discloses the tuning module is configured to tune the first antenna via series tuning (First antenna may be tuned via series tuning with a capacitive element in series with antenna and this series tuning may be further expanded to have multiple capacitive elements for tuning in multiple frequencies; Paragraph 57-59 as well as figure 8-7 of Griffing et al.).
Examiner’s note - Regarding the recitation that an element is “configured to” perform a function, it is the position of the office that such limitations are not positive structural limitations, and thus, only require the ability to so perform. In this case the prior art applied herein is construed as at least possessing such ability. When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01, I.).
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Regarding Claim 6, Griffing et al. further discloses wherein the tuning module is configured to tune the first antenna via parallel tuning (First antenna may be tuned via parallel tuning with a capacitive element in parallel with antenna and this parallel tuning may be further expanded to have multiple capacitive elements for tuning in multiple frequencies; Paragraph 47-48 and 59 as well as figure 7-8 and 10 of Griffing et al.).
Examiner’s note - Regarding the recitation that an element is “configured to” perform a function, it is the position of the office that such limitations are not positive structural limitations, and thus, only require the ability to so perform. In this case the prior art applied herein is construed as at least possessing such ability. When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01, I.).
Regarding Claim 14, Griffing et al. further discloses the tuning module further includes: a second signal path of the plurality of signal paths including a second capacitor, the second signal path configured to passively retune the first antenna of the plurality of antennas to a second new frequency (Tuning module may include a second path with a second capacitor C2 that can re-tune the first antenna to a second new frequency F2 which is different from F1 and F3; Paragraph 47, 59-61, and 123 as well as figure 6-10 of Griffing et al.).
Griffing et al. and Taherian et al. fails to disclose the second signal path including a first inductor-capacitor (LC) resonant circuit.
However, Beste et al. does disclose a second signal path including a first inductor-capacitor (LC) resonant circuit (Antenna 10 operates at 2 frequencies due to 2 paths with the second path comprising a LC circuit 16; Paragraph 11 and figure 1 of Beste et al.).
Therefore, it would have been obvious before the effective filling date of the claimed invention to a person having ordinary skill in the art modify the antenna as taught by Griffing et al. and Taherian et al. to have a second signal path including a first inductor-capacitor (LC) resonant circuit as taught by Beste et al. to enable dual-band reception or transmission (Paragraph 11 of Beste et al.).
Examiner’s note - Regarding the recitation that an element is “configured to” perform a function, it is the position of the office that such limitations are not positive structural limitations, and thus, only require the ability to so perform. In this case the prior art applied herein is construed as at least possessing such ability. When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01, I.).
Regarding Claim 15, Griffing et al. further discloses the tuning module further includes: a second signal path of the plurality of signal paths including a second capacitor, the second signal path configured to passively retune the first antenna of the plurality of antennas to a second new frequency (Tuning module may include a second path with a second capacitor C2 that can re-tune the first antenna to a second new frequency F2 which is different from F1 and F3; Paragraph 47, 59-61, and 123 as well as figure 6-10 of Griffing et al.).
Griffing et al. and Taherian et al. fails to disclose the second signal path including a first inductor-capacitor (LC) resonant circuit.
However, Beste et al. does disclose a second signal path including a first inductor-capacitor (LC) resonant circuit (Antenna 10 operates at 2 frequencies due to 2 paths with the second path comprising a LC circuit 16; Paragraph 11 and figure 1 of Beste et al.).
Therefore, it would have been obvious before the effective filling date of the claimed invention to a person having ordinary skill in the art modify the antenna as taught by Griffing et al. and Taherian et al. to have a second signal path including a first inductor-capacitor (LC) resonant circuit as taught by Beste et al. to enable dual-band reception or transmission (Paragraph 11 of Beste et al.).
Examiner’s note - Regarding the recitation that an element is “configured to” perform a function, it is the position of the office that such limitations are not positive structural limitations, and thus, only require the ability to so perform. In this case the prior art applied herein is construed as at least possessing such ability. When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01, I.).
Regarding Claim 23 as best understood, Griffing et al. further disclose wherein the first signal path comprises a first capacitor having a first inductance, wherein the second signal path comprises a second capacitor having a second inductance (Tuning assembly of first antenna 600/1014 can include multiple switches 1008-1012 and capacitors C1-C3 to form multiple signal paths shown by tuning points 1002-1006 wherein its tunes the antenna to operate in 3 frequencies f1c-f3c via the 3 paths with each path having a capacitor and said capacitors would each have a capacitance; Paragraph 59-61 as well as figure 10-11 of Griffing et al.).
Griffing et al. and Taherian et al. fails to disclose wherein the second signal path comprises a second parallel inductor-capacitor circuit that is tuned to reject the first frequency, wherein the tuning module being configured to select the first signal path comprises the first parallel inductor-capacitor circuit rejecting the first frequency and wherein the tuning module being configured to select the second signal path comprises the first parallel inductor-capacitor circuit allowing the first frequency to pass through the first parallel inductor-capacitor circuit.
However, Beste et al. does disclose wherein the second signal path comprises a second parallel inductor-capacitor circuit that is tuned to reject the first frequency, wherein the tuning module being configured to select the first signal path comprises the first parallel inductor-capacitor circuit rejecting the first frequency and wherein the tuning module being configured to select the second signal path comprises the first parallel inductor-capacitor circuit allowing the first frequency to pass through the first parallel inductor-capacitor circuit (Antenna 10 operates at 2 frequencies due to 2 paths with the second path comprising a parallel LC circuit 16 wherein at selecting a first path for the first frequency the LC circuit 16 acts as a high impedance and thus rejects the first frequency and wherein at selecting a second path for the second frequency allows the frequency to pass through the LC circuit interacting with both capacitors; Paragraph 11 and figure 1 of Beste et al.).
Therefore, it would have been obvious before the effective filling date of the claimed invention to a person having ordinary skill in the art modify the antenna as taught by Griffing et al. and Taherian et al. to have wherein the second signal path comprises a second parallel inductor-capacitor circuit that is tuned to reject the first frequency, wherein the tuning module being configured to select the first signal path comprises the first parallel inductor-capacitor circuit rejecting the first frequency and wherein the tuning module being configured to select the second signal path comprises the first parallel inductor-capacitor circuit allowing the first frequency to pass through the first parallel inductor-capacitor circuit as taught by Beste et al. to enable dual-band reception or transmission (Paragraph 11 of Beste et al.) wherein the antenna can operate in a first and second frequency.
Examiner’s note - Regarding the recitation that an element is “configured to” perform a function, it is the position of the office that such limitations are not positive structural limitations, and thus, only require the ability to so perform. In this case the prior art applied herein is construed as at least possessing such ability. When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01, I.).
Response to Arguments
Applicant’s arguments with respect to claim(s) 1, 12, and 18 have been considered but are moot because the new ground of rejection does not rely on any combination of references
applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure
US 10633967 B2 discloses a subassembly designed to be attached to a tool for a borehole where location of the assembly can be moved down.
US 9618646 B2 discloses a subassembly with a receiver antenna spaced apart from a transmitter antenna wherein the distance affects the operating frequency.
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/DAMEON E LEVI/Supervisory Patent Examiner, Art Unit 2845
/GURBIR SINGH/Examiner, Art Unit 2845