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 .
REISSUE PROCEDURAL REMINDERS
Disclosure of other proceedings. Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceed-ing in which the Patent Under Reissue is or was involved. These proceedings would include interferences, reissues, reexaminations, and litigation.
Disclosure of material information. Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is mate-rial to patentability of the claims under consideration in this reissue appli-cation.
These disclosure obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Manner of making amendments. Applicant is reminded that changes to the Instant Application must comply with 37 C.F.R. § 1.173, such that all amendments are made in respect to the Patent Under Reissue as opposed to any prior changes entered in the Instant Application. All added material must be underlined, and all omitted material must be enclosed in brackets, in accordance with Rule 173. Applicant may submit an appendix to any response in which claims are marked up to show changes with respect to a previous set of claims, however, such claims should be clearly denoted as “not for entry.”
Claim Priority and Interpretation
The US Patent application No. 17/170,353 (now Patent No.11,677,133) has been filed on February 8, 2021. The application is a continuation of application No. 16/295,615 filed on March 7, 2019 (now Patent No. 10,971,793) which is a continuation of application No. 15/276,725 filed on September 26, 2016 (now Patent No. 10,283,835) which claims priority to the provisional application No. 62/233,115 filed on September 25, 2015.
Accordingly, the effective filing date appears to be September 25, 2015.
During examination, claims are given the broadest reasonable interpretation consistent with the specification and limitations in the specification are not read into the claims. See MPEP § 2111 et seq.
Upon review of the original specification and prosecution history, the examiner has found no instances where applicants have included lexicographic definitions, either express or implied. Therefore, for the purposes of claim interpretation, the examiner concludes that there are no claim terms for which Applicants are acting as their own lexicographer. See MPEP § 2111.01.IV.
Additionally, upon review of the pending claims, the examiner finds no instances where the claim terms explicitly include functional language which would invoke 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on August 15, 2024 along with the reissue application has been acknowledged. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claims Objections
Claims 1-12, 14-15, 17, 20-21 and 23 are objected for not complying with the requirements set forth in 37 CFR 1.173. More specifically, the amendment does not comply with the following guidelines:
(b) Making amendments in a reissue application. An amendment in a reissue application is made either by physically incorporating the changes into the specification when the application is filed, or by a separate amendment paper. If amendment is made by incorporation, markings pursuant to paragraph (d) of this section must be used. If amendment is made by an amendment paper, the paper must direct that specified changes be made, as follows ...
(2) Claims. An amendment paper must include the entire text of each claim being changed by such amendment paper and of each claim being added by such amendment paper. For any claim changed by the amendment paper, a parenthetical expression “amended,” “twice amended,” etc., should follow the claim number. Each changed patent claim and each added claim must include markings pursuant to paragraph (d) of this section, except that a patent claim or added claim should be canceled by a statement canceling the claim without presentation of the text of the claim …
(d) Changes shown by markings. Any changes relative to the patent being reissued which are made to the specification, including the claims, upon filing, or by an amendment paper in the reissue application, must include the following markings:
(1) The matter to be omitted by reissue must be enclosed in brackets; and
(2) The matter to be added by reissue must be underlined, except for amendments submitted on compact discs (§§ 1.96 and 1.821(c)). Matter added by reissue on compact discs must be preceded with “<U>” and end with “</U>” to properly identify the material being added.
In this instance, the objected claims, include double square brackets “[[]]” instead of single square brackets “[]”. Appropriate correction is required.
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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 10,971,793. Although the claims at issue are not identical, they are not patentably distinct from each other because they are both directed to a deployable antenna structure comprising similar elements arranged in a similar manner.
US Patent No. 11,677,133
US Patent No. 10,971,793
Claim 1: A deployable antenna structure configured to deploy from an undeployed state to a deployed state, comprising:
Claim 1: A deployable structure for use in establishing a reflectarray antenna comprising: … and a deployment mechanism for transitioning the flexible electrical element from the undeployed state towards the deployed state
a flexible electrical element including at least one antenna membrane on the flexible electrical element;
a feed antenna for use in a reflectarray antenna (i.e. antenna membrane); a flexible electrical element for use in a reflectarray antenna;
a plurality of extendable structures dispensable from a rolled format in the undeployed state to a linear format in the deployed state;
an energy providing device for use in transitioning the endless pantograph structure (i.e. a plurality of extendable structures) from the undeployed state towards the deployed state;
an enclosing structure including a base;
a base (it would have been obvious to one of ordinary skill in the art that a base which houses multiple antenna elements as disclosed in the claim can be an enclosing structure when antenna is in undeployed state).
and a plurality of extendable structures dispensers operatively coupled to the base, the plurality of extendable structures tape dispensers being adapted to transition the flexible electrical element from the undeployed state towards the deployed state,
wherein each tape of the plurality of tapes is adapted to transition from an undeployed state in which the endless pantograph structure is located at a first position relative to the base towards a deployed state in which the endless pantograph structure is located at a second position relative to the base that is a greater distance from the base than the first position and the tape has a linearly extending portion (wherein tapes are retracted from respective dispensers)
wherein each of the plurality of extendable structures is operatively coupled at a first end to the flexible electrical element and at a second end to one of the plurality of extendable structures dispensers,
a plurality of tapes with each tape having a first end that is operatively connected to the base (i.e. dispenser) and a second end that is operatively connected to the endless pantograph structure … wherein the endless pantograph structure is operatively engaged to the flexible electrical element
and wherein the flexible electrical element is folded in the enclosing structure in the undeployed state and is unfolded in the deployed state to form a substantially flat antenna membrane surface, the flexible electrical element extended away from the base by the plurality of extendable structures when deploying to the deployed state.
when the flexible electrical element is in the deployed state and presenting a flat surface, have an offset feed positional relationship characterized by the boresight of the feed antenna not being parallel to a line perpendicular to the flat surface of the deployed, flexible electrical element.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 10,283,835. Although the claims at issue are not identical, they are not patentably distinct from each other because to a deployable antenna structure comprising similar elements arranged in a similar manner.
US Patent No. 11,677,133
US Patent No. 10,283,835
Claim 1: A deployable antenna structure configured to deploy from an undeployed state to a deployed state, comprising:
Claim 1: A deployable structure for use in establishing a reflectarray antenna comprising: … and a deployment mechanism for transitioning the flexible electrical element from the undeployed state towards the deployed state
a flexible electrical element including at least one antenna membrane on the flexible electrical element;
a feed antenna for use in a reflectarray antenna (i.e. antenna membrane); a flexible electrical element for use in a reflectarray antenna;
a plurality of extendable structures dispensable from a rolled format in the undeployed state to a linear format in the deployed state;
an energy providing device for use in transitioning the endless pantograph structure (i.e. a plurality of extendable structures) from the undeployed state towards the deployed state;
an enclosing structure including a base;
a base (it would have been obvious to one of ordinary skill in the art that a base which houses multiple antenna elements as disclosed in the claim can be an enclosing structure when antenna is in undeployed state).
and a plurality of extendable structures tape dispensers operatively coupled to the base, the plurality of extendable structures dispensers being adapted to transition the flexible electrical element from the undeployed state towards the deployed state,
wherein each tape of the plurality of tapes is adapted to transition from an undeployed state in which the endless pantograph structure is located at a first position relative to the base towards a deployed state in which the endless pantograph structure is located at a second position relative to the base that is a greater distance from the base than the first position and the tape has a linearly extending portion (wherein tapes are retracted from respective dispensers)
wherein each of the plurality of extendable structures is operatively coupled at a first end to the flexible electrical element and at a second end to one of the plurality of extendable structures dispensers,
a plurality of tapes with each tape having a first end that is operatively connected to the base (i.e. dispenser) and a second end that is operatively connected to the endless pantograph structure … wherein the endless pantograph structure is operatively engaged to the flexible electrical element
and wherein the flexible electrical element is folded in the enclosing structure in the undeployed state and is unfolded in the deployed state to form a substantially flat antenna membrane surface, the flexible electrical element extended away from the base by the plurality of extendable structures when deploying to the deployed state.
when the flexible electrical element is in the deployed state and presenting a flat surface, have an offset feed positional relationship characterized by the boresight of the feed antenna not being parallel to a line perpendicular to the flat surface of the deployed, flexible electrical element.
Objection to the Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o)1. Correction of the following is required: claim 1 recites “flexible electrical element including at least one antenna membrane on the flexible electrical element”.
Since specification does not recite phrase “flexible electrical element” and it does not clearly illustrate a placement of this element with respect to other antenna elements, mentioning this phrase for the first time in the claim is not sufficient.
Furthermore, the Examiner also notes that during the prosecution of the Patent application No. 17/170,353, the Patent Owner has filed remarks on January 5, 2023 and on page 7 asserted the following:
“With regard to the claim language "flexible electrical element, "the term was explicitly mentioned in the Applicant's parent Provisional Application No.62/233,115 ( hereinafter, "Provisional Application") at [Para 32] and in FIG. 1D. [Para 32] recites, compressible and flexible dielectric structure is located between the first and second flexible membranes and operates to maintain a desired spacing between the first and second flexible membranes when the first flexible electrical element 26 is deployed." This is further evident in the analogous FIG. 1D and paragraph [0036] of the instant Application”.
The Examiner did not find the above argument persuasive because [Para 32] does not support phrase “flexible electrical element”. More specifically, electrical element implies that the electricity can be conducted via such element, while “dielectric” suggests the opposite.
For instance, according to Merriam-Webster Dictionary the word “electrical” is defined as “of, relating to, or operated by electricity”. On the other hand, Britannica dictionary defines word “dielectric” as “insulating material or a very poor conductor of electric current”.
If the Patent Owner means for electrical element to correspond to the dielectric element as recited in paragraph [0032], then the claim language should be congruent with the terminology used in the disclosure and therefore claims should be amended to recite just that.
As explained in MPEP 2173.03, “Applicant will be required to make appropriate amendment to the description to provide clear support or antecedent basis for the claim terms provided no new matter is introduced, or amend the claim”.
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 1-23 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.
In this instance, as explained in the section above, claim 1 recites “flexible electrical element” and the original disclosure does not mention it let alone explains its position with respect to other antenna elements. Since this appears to the be integral part of the antenna structure and it is mentioned multiple times through out the claim, clear description of this element is essential, so that metes and bounds of the claimed invention can be ascertained.
Furthermore, as explained above, the Patent Owner submitted in the remarks filed on January 5, 2023 during the prosecution of the application No. 17/170,353, that the “flexible electrical element” corresponds to a “flexible dielectric element”, therefore, for the purposes of advancing prosecution, the Examiner interprets this element as dielectric spacer.
Allowable Subject Matter
Claims 1-23 would be allowed contingent upon overcoming objections and rejections as recited above.
The following is a statement of reasons for the indication of allowable subject matter:
With respect to claim 1, the prior art of record does not anticipate nor render obvious a deployable antenna structure comprising: a flexible electrical element including at least one antenna membrane on the flexible electrical element; a plurality of extendable structures dispensable from a rolled format in the undeployed state to a linear format in the deployed state; an enclosing structure including a base; and a plurality of dispensers operatively coupled to the base, the plurality of tape dispensers being adapted to transition the flexible electrical element from the undeployed state towards the deployed state, wherein each of the plurality of extendable strustures is operatively coupled at a first end to the flexible electrical element and at a second end to one of the plurality of dispensers, and wherein the flexible electrical element is folded in the enclosing structure in the undeployed state and is unfolded in the deployed state to form a substantially flat antenna membrane surface, the flexible electrical element extended away from the base by the plurality of extendable structures when deploying to the deployed state.
With respect to claims 2-23, those claims would also be allowed by the virtue of their dependency on claim 1.
Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANGELA M LIE whose telephone number is (571)272-8445. The examiner can normally be reached on M-F, 5:30 am - 2:00 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Andrew Fischer can be reached on 571-272-6779.
All correspondence relating to this reissue proceeding should be directed:
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/ANGELA M LIE/Primary Examiner, Art Unit 3992
Conferees:
/LUKE S WASSUM/Primary Examiner, Art Unit 3992
/ANDREW J. FISCHER/Supervisory Patent Examiner, Art Unit 3992
1 See MPEP 2173.03