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 amendment filed on 01/20/2026 has been entered. Claims 11-25, 27-28, 30-32 are currently pending.
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 11-25, 27-28, 30-32 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6, 9-11 of U.S. Patent No. 11,139,588.
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims at issue in the instant application overlap in scope with a claim in a potentially conflicting claim or claims of the reference patent, and one of ordinary skill in the art would, on reading the potentially conflicting patent, “at once envisage” the invention claimed in the instant application.
"In construing the claims of the reference patent or application, a determination is made as to whether a portion of the specification, including the drawings and claims, is directed to subject matter that is within the scope of a reference claim." See MPEP § 804 (II)(B)(1). In the reference patent, the scope of the invention defined by claims 1, 6, 9-11 encompasses the subject matter shown in figure 7. Moreover, "situations where the claim in the application being examined (1) is directed to a species or sub-genus covered by a generic claim in a potentially conflicting patent or application, or (2) overlaps in scope with a claim in a potentially conflicting claim or claims of the patent or application but the potentially conflicting claims cannot be said to anticipate the examined claims … require an obviousness analysis unless one of ordinary skill in the art would, on reading the potentially conflicting patent or application, at once envisage the invention claimed in the examined application. See AbbVie Inc. v. Kennedy Institute of Rheumatology Trust, 764 F.3d 1366, 112 USPQ2d 1001 (Fed. Cir. 2014)." See MPEP § 804 (II)(B)(2). Accordingly, the explicit disclosure in the reference patent, in figure 7, of the features recited by pending claims 11-25, 27,28, and 30-32 provide sufficient evidence for one of ordinary skill in the art to "at once envisage" every feature recited by the claims. Thus, the conflicting claim(s) in the reference patent anticipates claims 11-25, 27-28, and 30-32.
Claims 11-25, 27-28, 30-32 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4,7, 10, 13 of U.S. Patent No. 11,811,133.
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims at issue in the instant application overlap in scope with a claim in a potentially conflicting claim or claims of the reference patent, and one of ordinary skill in the art would, on reading the potentially conflicting patent, “at once envisage” the invention claimed in the instant application.
"In construing the claims of the reference patent or application, a determination is made as to whether a portion of the specification, including the drawings and claims, is directed to subject matter that is within the scope of a reference claim." See MPEP § 804 (II)(B)(1). In the reference patent, the scope of the invention defined by claims 1, 4,7, 10, 13 encompasses the subject matter shown in figure 7. Moreover, "situations where the claim in the application being examined (1) is directed to a species or sub-genus covered by a generic claim in a potentially conflicting patent or application, or (2) overlaps in scope with a claim in a potentially conflicting claim or claims of the patent or application but the potentially conflicting claims cannot be said to anticipate the examined claims … require an obviousness analysis unless one of ordinary skill in the art would, on reading the potentially conflicting patent or application, at once envisage the invention claimed in the examined application. See AbbVie Inc. v. Kennedy Institute of Rheumatology Trust, 764 F.3d 1366, 112 USPQ2d 1001 (Fed. Cir. 2014)." See MPEP § 804 (II)(B)(2). Accordingly, the explicit disclosure in the reference patent, in figure 7, of the features recited by pending claims 11-25, 27,28, and 30-32 provide sufficient evidence for one of ordinary skill in the art to "at once envisage" every feature recited by the claims. Thus, the conflicting claim(s) in the reference patent anticipates claims 11-25, 27-28, and 30-32.
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)(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 11-13, 17-18, 24, 27-28, 30-32 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Kim et al. (US 2019/0165449, hereby referred as Kim).
Regarding claim 11, Kim teaches the following:
an electronic device comprising:
a housing having sidewalls (the plane of element 111 that is perpendicular to element 120, figure 1) and a dielectric layer (the plane of element 111 that is parallel to element 120, figure 1) coupled to the sidewalls;
a display (element 120, figure 1) mounted to the sidewalls opposite the dielectric layer;
a substrate (element 141, figures 1-2) having a surface facing the dielectric layer (as shown in figure 1, paragraph [0039]);
an antenna having a radiating patch (element 146, figure 2) embedded in the substrate and having a parasitic patch (element 147, figure 2) at the surface of the substrate and overlapping the radiating patch, the antenna being configured to convey radio-frequency signals through the dielectric layer (paragraph [0039]); and
an integrated circuit (element 142, figure 2) mounted to the substrate and communicatively coupled with the antenna, wherein the substrate is interposed between the integrated circuit and the dielectric layer (as shown in figures 1-2).
Regarding claim 12, Kim as referred in claim 11 teaches the following:
wherein the radiating patch (element 146, figure 2) is directly fed (through feed lines 144-145, figure 2).
Regarding claim 13, Kim as referred in claim 11 teaches the following:
further comprising an antenna feed terminal (where 145b connects to 146, figure 2) on the radiating patch (element 146, figure 2).
Regarding claim 17, Kim teaches the following:
an electronic device comprising:
a housing having peripheral housing structures (the plane of element 111 that is perpendicular to element 120, figure 1) and a dielectric layer (the plane of element 111 that is parallel to element 120, figure 1) mounted to the peripheral housing structures;
a display (element 120, figure 1) mounted to the peripheral housing structures opposite the dielectric layer;
a substrate (element 141, figures 1-2) having a first surface facing the dielectric layer and a second surface opposite the first surface and facing the display (as shown in figure 1, paragraph [0039]);
an antenna having a directly fed patch (element 146, figure 2) embedded in the substrate and having one or more parasitic patches (element 147, figure 2) at the surface of the substrate and overlapping the directly fed patch, the antenna being configured to convey radio-frequency signals through the dielectric layer (paragraph [0039]); and
an integrated circuit (element 142, figure 2) mounted to the first surface of the substrate and communicatively coupled with the antenna, wherein the substrate is interposed between the integrated circuit and the dielectric layer (as shown in figures 1-2).
Regarding claim 18, Kim as referred in claim 17 teaches the following:
the one or more parasitic patches (element 147, figure 2) having a first portion extending along a first axis and a second portion extending along a second axis orthogonal to the first axis (as shown in figures 1-3).
Regarding claim 24, Kim as referred in claim 17 teaches the following:
wherein the radio-frequency signals are at a frequency between 10 GHz and 300 GHz (paragraphs [0037]-[0038]).
Regarding claim 27, Kim as referred in claim 11 teaches the following:
wherein the radio-frequency signals are at a frequency between 10 GHz and 300 GHz (paragraphs [0037]-[0038]).
Regarding claim 28, Kim as referred in claim 11 teaches the following:
wherein the display is touch-sensitive (paragraph [0148]).
Regarding claim 30, Kim as referred in claim 11 teaches the following:
further comprising: a ground layer (GND, figure 2) in the substrate (paragraph [0056]), wherein the directly fed patch is interposed between the ground layer and the one or more parasitic patches (as shown in figure 2).
Regarding claim 31, Kim as referred in claim 11 teaches the following:
further comprising: a radio-frequency transmission line path (elements 144-145, figure 2) embedded in the substrate, wherein the radio-frequency transmission line path communicatively couples the integrated circuit (element 142, figure 2) with the radiating patch (element 146, figure 2) of the antenna, and
the integrated circuit (element 142, figure 2) and the radio-frequency transmission line path (elements 144-145, figure 2) are configured to convey the radio- frequency signals.
Regarding claim 32, Kim as referred in claim 31 teaches the following:
wherein the integrated circuit (element 142, figure 2) comprises transceiver circuitry configured to transmit the radio-frequency signals (paragraph [0048]).
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 14-15, 22-23, and 25 are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (US 2019/0165449, hereby referred as Kim) in view of Li et al. (US 2014/0292591, hereby referred as Li).
Regarding claim 14, Kim as referred in claim 11 teaches the electronic device with the exception for the following:
further comprising: an additional dielectric layer between the dielectric layer and the substrate, the antenna being configured to convey the radio-frequency signals through the additional dielectric layer.
Li suggests the teachings of an additional dielectric layer (element 76, figure 10) between the dielectric layer (of element 46, figure 10) and the substrate (element 52, figure 10), the antenna being configured to convey the radio-frequency signals through the additional dielectric layer (the adhesive 76 would inherently allow radio-frequency signals to go through it).
It would have been obvious to one of ordinary skill in the art before the effective filing date to have the electronic device of Kim to include an additional dielectric layer between the dielectric layer and the substrate, and for the antenna being configured to convey the radio-frequency signals through the additional dielectric layer as suggested by the teachings of Li in order to provide an adhesive to securely connect the dielectric layer and the substrate which can prevent any movement which may shift the elements out of place.
Regarding claim 15, the combination of Kim and Li as referred in claim 14 teaches the following:
wherein the additional dielectric layer comprises adhesive (Li, element 76, figure 10).
Regarding claim 22, Kim as referred in claim 17 teaches the electronic device with the exception for the following:
further comprising: an additional dielectric layer between the dielectric layer and the substrate, the antenna being configured to convey the radio-frequency signals through the additional dielectric layer.
Li suggests the teachings of an additional dielectric layer (element 76, figure 10) between the dielectric layer (of element 46, figure 10) and the substrate (element 52, figure 10), the antenna being configured to convey the radio-frequency signals through the additional dielectric layer (the adhesive 76 would inherently allow radio-frequency signals to go through it).
It would have been obvious to one of ordinary skill in the art before the effective filing date to have the electronic device of Kim to include an additional dielectric layer between the dielectric layer and the substrate, and for the antenna being configured to convey the radio-frequency signals through the additional dielectric layer as suggested by the teachings of Li in order to provide an adhesive to securely connect the dielectric layer and the substrate which can prevent any movement which may shift the elements out of place.
Regarding claim 23, the combination of Kim and Li as referred in claim 22 teaches the following:
wherein the additional dielectric layer comprises adhesive (Li, element 76, figure 10).
Regarding claim 25, Kim as referred in claim 17 teaches the electronic device with the exception for the following:
wherein the substrate is coupled to the dielectric layer.
Li suggests the teachings of wherein the substrate (element 52, figure 10) is coupled (by way of element 76, figure 10) to the dielectric layer (of element 46, figure 10).
It would have been obvious to one of ordinary skill in the art before the effective filing date to have the substrate of Kim to be coupled to the dielectric layer as suggested by the teachings of Li in order to provide an adhesive to securely connect the dielectric layer and the substrate which can prevent any movement which may shift the elements out of place.
Claims 16, 19, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (US 2019/0165449, hereby referred as Kim) in view of Sudo et al. (US 2015/0194730, hereby referred as Sudo).
Regarding claim 16, Kim as referred in claim 11 teaches the electronic device with the exception for the following:
wherein the parasitic patch has a cross shape.
Sudo suggests the teachings of wherein the parasitic patch (element 16, figure 1) has a cross shape.
It would have been obvious to one of ordinary skill in the art before the effective filing date to have the parasitic patch of Kim to be a cross shape as suggested by the teachings of Sudo as altering the shape of a parasitic element is known in the antenna art which can be used to alter the resonant characteristics of the antenna such as the bandwidth and the radiation pattern.
Regarding claim 19, Kim as referred in claim 18 teaches the following:
further comprising: a first positive antenna feed terminal (where 145b connects to 146, figure 2) coupled to the directly fed patch (element 146, figure 2) and overlapping the first portion of the one or more parasitic patches (element 147, figure 2).
Kim does not teach a second positive antenna feed terminal coupled to the directly fed patch and overlapping the second portion of the one or more parasitic patches.
Sudo suggests the teachings of further comprising: a first positive antenna feed terminal (where element 14 connects to element 13, figures 1-3) coupled to the directly fed patch (element 13, figures 1-3) and overlapping the first portion of the one or more parasitic patches (element 16, figures 1-3); and a second positive antenna feed terminal (where element 15 connects to element 13, figures 1-3) coupled to the directly fed patch (element 13, figures 1-3) and overlapping the second portion of the one or more parasitic patches (element 16, figures 1-3).
It would have been obvious to one of ordinary skill in the art before the effective filing date to have the patch of Kim to include a second positive antenna feed terminal coupled to the directly fed patch and overlapping the second portion of the one or more parasitic patches as suggested by the teachings of Sudo which can be used to allow the patch antenna to be dual polarized which can allow for diversity between the different polarizations.
Regarding claim 21, Kim as referred in claim 17 teaches the electronic device with the exception for the following:
wherein the one or more parasitic patches have a cross shape.
Sudo suggests the teachings of wherein the parasitic patch (element 16, figure 1) has a cross shape.
It would have been obvious to one of ordinary skill in the art before the effective filing date to have the parasitic patch of Kim to be a cross shape as suggested by the teachings of Sudo as altering the shape of a parasitic element is known in the antenna art which can be used to alter the resonant characteristics of the antenna such as the bandwidth and the radiation pattern.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (US 2019/0165449, hereby referred as Kim) in view of Sudo et al. (US 2015/0194730, hereby referred as Sudo), and further in view of Mow et al. (US 2015/0280771, hereby referred as Mow).
Regarding claim 20, Kim as referred in claim 19 teaches the electronic device with the exception for the following:
further comprising a phased antenna array that includes the antenna.
However, Kim does teach that the antenna utilizes millimeter waves (paragraph [0002], and [0009]-[0011]) and is an array (paragraph [0038]), and it is known that phased antenna arrays use millimeter wave antennas.
Mow suggests the teachings of further comprising a phased antenna array that includes the antenna (paragraphs [0044]). Mow also suggests when the antennas are against the rear of the housing (paragraph [0042]), and that the antennas can include parasitic elements (paragraphs [0070])
It would have been obvious to one of ordinary skill in the art before the effective filing date to have the antenna of the combination of Kim and Sudo to be included in a phased array as suggested by the teachings of Kim and Mow which can allow the antenna to be steered in certain direction as desired which can improve the transmission and reception of the electronic device.
Additional Comments
Noori et al. (US 2019/0027802) and Paulotto et al. (US 2019/0020121) are publications that were filed prior the effective filing date of the current application, and are assigned to the same applicant but have a different inventive entity. These reference can also read on the current claims, and it is requested that the applicant evoke an exception, if it is appropriate, to prevent these references from being used in any subsequent office action.
Response to Arguments
Applicant’s arguments with respect to the claims have been considered but are moot because the new ground of rejection does not rely on the 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.
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
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