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 .
Claim Rejections - 35 USC § 112 (a)
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.
Claims 1-20 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 enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Regarding Claims 1 and 11, the claims recite that at least one radial stub is integrated into an interior region of the conductive trace and connected to one of the sides of the gap while also having a base of the stub connected to the interior region of the trace. It is not disclosed in the original specification and drawings how a stub can be both connected to one of the two sides of the gap while also having a base connected to an interior region of the trace and having a tip of the stub disposed within the interior region of the trace such that one of ordinary skill would be able to make and use the invention. How can a stub be connected to two different portions of the trace? The original disclosure appears to teach stubs connected to the two sides of the gap (e.g. stubs 503 and 505 in Fig. 5) and a stub (e.g. 501 in Fig. 5) connected to the trace in an interior region and having its tip in the interior region which is different from the connections of a stub in the claims.
Also, in Claims 1 and 11, in the case where the phrase ”at least on radial stub” is only one stub connected to the trace, it is not disclosed in the original specification and drawings how one of ordinary skill would make or use the invention to have plural resonant frequencies. It appears from the applicant’s original disclosure that plural stubs would be required of different sizes for the device to resonate at plural frequencies since a fundamental property of stubs is that they resonate at a particular frequency based on their size/length. Accordingly, the phrase “at least one” appears to be improper since one stub would not appear to result in the claimed function of plural frequencies which would require more than one stub.
Dependent claims inherit the defects of the claims from which they depend.
Claim Rejections - 35 USC § 112 (b)
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 5-10 and 15-20 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
In Claims 5-10 and 15-20, it is not clear how the radial stubs recited in claims 5-10 and 15-20 relate to the stubs in Claims 1 and 11 respectively (i.e. proper antecedent basis is lacking). Are the stubs recited in Claims 5-10 and 15-20 additional stubs or are they the same stub(s) recited in respective claims 1 and 11 but merely being further defined?
Response to Arguments
Applicant’s arguments with respect to claims 1-20 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant’s amendments necessitated the new 112 1st enablement rejections and 112 2nd rejections as detailed above.
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 STEPHEN E JONES whose telephone number is (571)272-1762. The examiner can normally be reached 9AM to 5PM.
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, Andrea Lindgren Baltzell can be reached at 571-272-5918. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Stephen E. Jones/Primary Examiner, Art Unit 2843
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