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 .
THIS ACTION IS MADE FINAL
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, this action is 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.
Response to Arguments
The Examiner initiated a courtesy telephone interview with Applicant's counsel to discuss a potential obviousness-type double patenting (ODP) rejection of currently amended claim 1 over U.S. Patent No. 11,799,516, with the objective of facilitating compact prosecution and potentially avoiding the need for additional office actions.
Applicant's Position
Applicant declined to file a Terminal Disclaimer and instead requested issuance of a second non-final office action. Applicant's counsel argued that currently amended claim 1 incorporates subject matter from dependent claim 11, which the Examiner had previously identified in the first non-final office action as containing allowable subject matter. Counsel contended that claim 11 was not rejected for ODP in the prior office action, and therefore, the amended independent claim should similarly avoid such rejection.
Examiner's Response and Clarification
The Examiner clarified several critical distinctions regarding the allowability determination and ODP analysis:
Previous Allowability Finding
The Examiner explained that claim 11 was deemed allowable based on its patentability merits over the prior art of record, not due to any absence of ODP issues. The allowability determination was made solely on grounds of novelty and non-obviousness under 35 U.S.C. §§ 102 and 103.
Dependency and ODP Analysis
The Examiner noted that claim 11's ODP status was inherently problematic because it depended from independent claim 1, which had been rejected for ODP over U.S. Patent No. 11,799,516. Under established patent prosecution principles, dependent claims inherit the rejections of their parent independent claims unless the dependent claim adds patentably distinct subject matter sufficient to overcome the rejection.
Comparative Claim Analysis
The Examiner referenced the detailed claim comparison provided in the first non-final office action, which presented a side-by-side tabulation of:
Claim 1 of U.S. Patent No. 11,799,516
Claim 1 of the current application
This comparison demonstrated that the patented claim encompasses all limitations of both:
The current application's original claim 1, and
The current application's dependent claim 11
Current Amendment Analysis
The Examiner determined that the currently amended claim 1, which now incorporates the subject matter previously recited in claim 11, presents an obvious variant of the patented claim 1 of U.S. Patent No. 11,799,516. The amendment does not overcome the fundamental ODP issue but rather makes it more apparent.
Examiner's Determination
Based on the foregoing analysis and Applicant's refusal to file a Terminal Disclaimer, the Examiner determined that this office action should be made FINAL with respect to the ODP rejection of amended claim 1 over claim 1 of U.S. Patent No. 11,799,516.
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 1-8 and 13-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 and 13-16 of U.S. Patent No.11,799,516. The claims at issue are not patentably distinct from each other because the following table shows side by side comparison of claim 1 of the current application and the corresponding claim 1 of the US patent. It is evident that claim 1 of the current application (as amended) is substantially identical with claim 1 of the US patent and as such anticipates all limitations of claim 1 of the US patent.
Current Application 18/469,817
US Patent 11799516 B2
A radio frequency circuit, comprising:
a substrate;
a common terminal;
a first acoustic wave filter that is disposed on the substrate, is connected to the common terminal, and includes a first acoustic wave resonator;
a first LC filter that is disposed on the substrate, is connected to the common terminal via the first acoustic wave filter, and includes at least one of an inductor or a capacitor;
a second acoustic wave filter that is disposed on the substrate, is connected to the common terminal, and includes a second acoustic wave resonator;
a second LC filter that is disposed on the substrate, is connected to the common terminal via the second acoustic wave filter, and includes at least one of an inductor or a capacitor;
a first amplifier that is connected to the first LC filter and is disposed on the substrate; and
a second amplifier that is connected to the second LC filter and is disposed on the substrate, wherein at least one of a passband of the first acoustic wave filter or a passband of the second acoustic wave filter is a communication band of New Radio (NR).
And wherein:
(1) the passbands of the first acoustic wave filter and the second acoustic wave filter are
communication bands of New Radio (NR) less than or equal to 5 GHz, or
(2) the passband of the first acoustic wave filter is a communication band of NR less than
or equal to 5 GHz and the passband of the second acoustic wave filter is an unlicensed band of
Long Term Evolution (LTE), NR, or Wireless Local Area Network (WLAN) greater than or equal
to 5 GHz, or
(3) the passbands of the first acoustic wave filter and the second acoustic wave filter are
unlicensed bands of LTE, NR, or WLAN greater than or equal to 5 GHz.
A radio frequency circuit, comprising: a substrate;
a common terminal;
a first acoustic wave filter that is disposed on the substrate, is connected to the common terminal, and includes a first acoustic wave resonator;
a first LC filter that is disposed on the substrate, is connected to the common terminal via the first acoustic wave filter, and includes at least one of an inductor or a capacitor;
a second acoustic wave filter that is disposed on the substrate, is connected to the common terminal, and includes a second acoustic wave resonator;
a second LC filter that is disposed on the substrate, is connected to the common terminal via the second acoustic wave filter, and includes at least one of an inductor or a capacitor;
a first amplifier that is connected to the first LC filter and is disposed on the substrate; and
a second amplifier that is connected to the second LC filter and is disposed on the substrate, wherein (1) the first acoustic wave filter and the second acoustic wave filter have a passband that is a communication band of New Radio (NR) less than or equal to 5 GHz, or (2) the first acoustic wave filter has a passband that is a communication band of NR less than or equal to 5 GHZ and the second acoustic wave filter has a passband that is an unlicensed band of Long Term Evolution (LTE), NR, or Wireless Local Area Network (WLAN) greater than or equal to 5 GHZ, or (3) the first acoustic wave filter and the second acoustic wave filter have a passband that is an unlicensed band of LTE, NR, or WLAN greater than or equal to 5 GHz.
Although not shown in tabular form, other claims, i.e., 2-8 and 13-16 of the current application are substantially identical of the corresponding claims 2-8 and 13-16 of the US patent.
Allowable Subject Matter
Claims 1-8 and 13-16 would be allowable if rewritten or amended or a terminal disclaimer is timely filed in compliance with 37 CFR 1.321 (c) or 1.321 (d) to overcome the rejection(s) under obviousness nonstatutory double patenting, set forth in this Office action.
The claims are allowable because the closest prior art of record, the combination of Kato or Mori doesn’t teach explicitly the frequency bands of operation as claimed. Although frequency of operation of filters are well within the purview of design iterations, since the filters of the prior arts are designed for less than 3 GHz applications with particular acoustic and LC-circuit combinations along with the corresponding power amplifiers, the system design for 5-7 GHz would pose technical challenges for person of ordinary skill to tune Kato-Mori filters at almost double the intended frequencies.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HAFIZUR RAHMAN whose telephone number is (571)270-0659. The examiner can normally be reached M-F: 10-6.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bob Pascal can be reached on (571) 272-1769. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
/HAFIZUR RAHMAN/Primary Examiner, Art Unit 2843.