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 .
Double Patenting
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.
Claims 1-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-27 of U.S. Patent No. 11,799,194. Although the claims at issue are not identical, they are not patentably distinct from each other as shown below:
Current Claims
U.S. Patent No. 11,799,194
Claim 1
Claim 1 or Claim 9 or Claim 15 or Claim 21
Claim 2
Claim 1 or Claim 9 or Claim 15 or Claim 21
Claim 3
Claim 1 or Claim 9 or Claim 15 or Claim 21
Claim 4
Claim 1 or Claim 9 or Claim 15 or Claim 21
Claim 5
Claim 1 or Claim 9 or Claim 15 or Claim 21
Claim 6
Claim 2 or Claim 10 or Claim 16 or Claim 22
Claim 7
Claim 3 or Claim 21
Claim 8
Claim 4 or Claim 9 or Claim 15 or Claim 23
Claim 9
Claim 5 or Claim 11 or Claim 17 or Claim 27
Claim 10
Claim 6 or Claim 12 or Claim 18 or Claim 24
Claim 11
Claim 7 or Claim 13 or Claim 19 or Claim 26
Claim 12
Claim 8 or Claim 14 or Claim 20 or Claim 25
Claims 1, 5-6, 9-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4-5, 13-14, 16, and 18 of U.S. Patent No. 11,799,194. Although the claims at issue are not identical, they are not patentably distinct from each other as shown below:
Current Claims
U.S. Patent No. 11,799,194
Claim 1
Claim 1 or Claim 16
Claim 5
Claim 14 or Claim 16
Claim 6
Claim 1 or Claim 16
Claim 9
Claim 13 or Claim 16
Claim 10
Claim 5
Claim 11
Claim 4 or Claim 18
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 “wherein the second conductive region is substantially symmetric to the first conductive region” of claim 8 and “wherein the antenna array includes multiple antenna elements arranged in a third direction which is perpendicular to a first direction from the front plate to the rear plate, and is perpendicular to a second direction toward which the first surface faces” of claim 11 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 § 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 2-3, 7-8 and 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.
Claims 2-3 and 7-8 use the terms “first conductive region” and “second conductive region”. The specification fails to set forth or describe these features, and it is unclear as to what these limitations are claiming. A region is an area of an element, not a tangible element itself. Claim 8 claims that the first and second conducive regions are symmetric, and the only mention of symmetry in the spec is in paragraph [137] and has to do with the conductive coating layer and the conducive material/support member. It appears that the applicant is trying to claim the conductive coating layer 655 placed on an inside surface of the second glass 20 as a “region”, and conductive material or conductive support member of the display 640 as a region. In claims 1 and 9 of the parent case, US Patent 11,799,194 they are being claimed as a first conductive element and a second conductive element. The use of “region” now implies that the applicant intends for it to be different from portion, and it is unclear as to what that difference in scope is. For the purposes of examination, any conductive area or element inside that mobile communication device that fits the specifics of the claims will be construed as reading on the claims.
Claims 7-8 recite the limitations "the first conductive region" and “the second conductive region”. There is insufficient antecedent basis for these limitations in these claims. Claim 7 will be construed as “wherein a first conductive region prevents signals generated by the antenna array from being transmitted through the front plate, and wherein a second conductive region prevents signals generated by the antenna array from being transmitted through the rear plate”, and claim 8 will be construed as being dependent on claim 7, for the purposes of examination.
Claim 11 recites wherein the antenna array includes multiple antenna elements arranged in a third direction which is perpendicular to a first direction from the front plate to the rear plate, and is perpendicular to a second direction toward which the first surface faces. The first direction of from the front plate to the rear plate can be understood to be the Z axis of figure 1. However, it is unclear as to what the second direction would be as it is just “a second direction toward which the first surface faces”. This makes it unclear as to what the third direction is supposed to be as it’s perpendicular to both the first and second directions. The drawings and specification provide no clarity to these directions, so it is indefinite as it is not understood what the claim is trying to capture.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-3, 5-6, 9, 12 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Mow et al. (US 2018/0026341, hereby referred as Mow).
Regarding claim 1, Mow teaches the following:
a mobile communication device comprising:
a front plate (element 172, figures 7-8) forming at least a portion of a front surface of the mobile communication device;
a rear plate (bottom portion of element 12, figures 7-8) forming at least a portion of a rear surface of the mobile communication device;
a side member (side portion of element 12, figures 7-8) forming a side surface of the mobile communication device, the side member comprising a first conductive portion (portion of 12 on the side that is to the left of element 20, figure 7), a second conductive portion (portion of 12 on the side that is to the right of element 20, figure 7), and a non-conductive portion (element 20, figure 7) located between the first conductive portion and the second conductive portion (“portions of plastic-filled slot 20 in metal housing wall 12”, paragraph [0048], figure 7);
a printed circuit board (PCB) (element 150, figures 7) including a first surface facing the non-conductive portion and a second surface opposite to the first surface (as shown in figure 7); and
an antenna array (elements 40/40’ on element 150A, figures 7-8) disposed on the first surface of the PCB (as shown in figure 8), facing the non-conductive portion to transmit or receive signals through the non-conductive portion (paragraph [0048] and [0052]).
Regarding claim 2, as best understood, Mow as referred in claim 1 teaches the following:
further comprising a first conductive region (portion of element 170, figure 8, “Display 14 may be a touch screen display that incorporates a layer of conductive capacitive touch sensor electrodes”, paragraphs [0020] and [0055]) located between the front plate and the antenna array (elements 40/40’ on element 150A, figure 7).
Regarding claim 3, as best understood, Mow as referred in claim 1 teaches the following:
further comprising a second conductive region (element 164, figure 8) located between the rear plate and the antenna array (elements 40/40’ on element 150A, figure 7).
Regarding claim 5, Mow as referred in claim 1 teaches the following:
wherein the signals have a millimeter wave frequency (paragraph [0048]).
Regarding claim 6, Mow as referred in claim 1 teaches the following:
wherein the antenna array (elements 40/40’ on element 150A, figure 7) is fully overlapped with the non-conductive portion (element 20, figure 7) when viewed in a direction toward the side surface (paragraph [0048]).
Regarding claim 9, Mow as referred in claim 1 teaches the following:
further comprising a communication circuit (elements 152, figure 7) configured to transmit or receive the signals through the antenna array, and wherein the communication circuit is disposed on the second surface (as shown in figure 7).
Regarding claim 12, Mow as referred in claim 1 teaches the following:
wherein the front plate (element 172, figures 7-8) or the rear plate comprises at least one of glass and polymer (“a clear display cover layer 172 (e.g., a layer of glass”, paragraph [0055]).
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.
Claims 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over Mow et al. (US 2018/0026341, hereby referred as Mow) in view of Khripkov et al. (US 2017/0201011, hereby referred as Khripkov).
Regarding claim 7, as best understood, Mow as referred in claim 1 teaches the mobile communication device with the exception for the following:
wherein a first conductive region prevents signals generated by the antenna array from being transmitted through the front plate, and wherein a second conductive region prevents signals generated by the antenna array from being transmitted through the rear plate.
However, Mow does suggest that shielding structures can be used (paragraph [0048]).
Khripkov suggests the teachings of wherein a first conductive region (element 161, figures 32-33) prevents signals generated by the antenna array (elements 141, figures 32-33) from being transmitted through the front plate (element 102, figure 1), and wherein a second conductive region (element 163, figures 32-33) prevents signals generated by the antenna array from being transmitted through the rear plate (element 103, figure 1).
It would have been obvious to one of ordinary skill in the art before the effective filing date to have modified Mow to include a first conductive region that prevents signals generated by the antenna array from being transmitted through the front plate, and a symmetric second conductive region that prevents signals generated by the antenna array from being transmitted through the rear plate around the antenna array as suggested by the teachings of Khripkov and Mow which would act as a guide to direct the transmitted waves towards the non-conductive portion of the side member and would reduce any interference that may occur with other components in the mobile communication device.
Regarding claim 8, as best understood, the combination of Mow and Khripkov as referred in claim 7 teaches the following:
wherein the second conductive region (Khripkov, element 163, figures 32-33) is substantially symmetric to the first conductive region (Khripkov, element 161, figures 32-33).
Claims 4 and 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over Mow et al. (US 2018/0026341, hereby referred as Mow).
Regarding claim 4, Mow as referred in claim 1 teaches the mobile communication device with the exception for the following:
further comprising a conductive plate located between the front plate and the rear plate, and substantially parallel with the PCB such that the PCB is located between the conductive plate and the side surface and is disposed on the conductive plate, and wherein the second surface of the PCB faces the conductive plate.
However, Mow does teach that the antennas can be Yagi dipole antennas with a reflector (paragraph [0042]-[0043]). It is known in the antenna art, that a planar Yagi antenna has a grounding plate on the opposite side of the positive fed dipole and directors.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to have the antennas of Mow to be a Yagi dipole antenna, which would further comprise a conductive plate located between the front plate and the rear plate, and substantially parallel with the PCB such that the PCB is located between the conductive plate and the side surface and is disposed on the conductive plate, and wherein the second surface of the PCB faces the conductive plate as suggested by the teachings of Mow (paragraphs [0042]-[0043]) which can provide enhanced signal directionality and gain when compared to standard dipoles which would improve the communication of the mobile communication device.
Regarding claim 10, Mow as referred in claim 1 teaches the mobile communication device with the exception for the following:
wherein the antenna array includes a plurality of patch antennas.
However, Mow does teach that the antennas can also be patch antennas (paragraphs [0037], [0048]).
It would have been obvious to one of ordinary skill in the art before the effective filing date to have the antenna array of Mow to include a plurality of patch antennas as suggested by the teachings of Mow which can provide a more directional radiation pattern also provide a better gain than the dipole antennas.
Regarding claim 11, as best understood, Mow as referred in claim 1 teaches the mobile communication device with the exception for the following:
wherein the antenna array includes multiple antenna elements arranged in a third direction which is perpendicular to a first direction from the front plate to the rear plate, and is perpendicular to a second direction toward which the first surface faces.
However, Mow does teach that the antenna array (elements 40, figure 7) includes multiple antenna elements arranged a first direction (elements 40’ on element 150A are arranged in a Z direction), a second direction (elements 40’ on element 150B are arranged in a Y direction), and a third direction (elements 40” on element 150B are arranged in a X and Y direction). Mow also suggests that the antennas can be dipoles or patch antennas (paragraphs [0037], [0048]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to have the antenna array of Mow to include multiple antenna elements arranged in a third direction which is perpendicular to a first direction from the front plate to the rear plate, and is perpendicular to a second direction toward which the first surface faces as suggested by the teachings of Mow in order to allow for the antenna array to radiate towards different surfaces of the mobile communication device in order to allow for communications in all directions.
Additional Comments
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Khripkov et al. (US 2020/0203804, figure 6) also teaches the claimed invention of claim 1.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AB SALAM ALKASSIM JR whose telephone number is (571)270-0449. The examiner can normally be reached Monday-Thursday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Dameon Levi can be reached at (571) 272-2105. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AB SALAM ALKASSIM JR/Primary Examiner, Art Unit 2845