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.
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Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/676242 in view of Esquius Mortote US 11,942,923.
The copending application ‘242 similarly discloses a frequency extraction filter comprising: a resonator coupled to a first node; a phase shifter coupled to a second node; the resonator and the phase shifter are positioned between the first and second nodes; impedance between the first and second nodes has an order of four or more (thus including five or more); at least two notches for rejections; passive/active phase shifter; phase shifter is transmission line, a high pass network phase shifter, a low pass network phase shifter, an all pass network phase shifter, a reflection type phase shifter, a vector based phase shifter; the phase shifter introduces at least one reflection zero and at least one transmission zero to improve insertion loss and rejection; a first, second, third hybrid structures; the frequency response includes at least three reflection zeros and at least two transmission zeros; wireless communication device including extraction filter and antenna.
The copending application ‘242 does not explicitly disclose the resonator and the phase shifter are connected in parallel.
Esquius Mortote exemplarily discloses a filter with resonator in parallel with phase shifter (Fig. 1).
At the time of the filing, it would have been obvious to one of ordinary skill in the art to have alternately made the resonator in parallel with the phase shifter. The modification is obvious as an alternate connection of the resonator and the phase shifter to provide a filter circuitry.
This is a provisional nonstatutory double patenting rejection.
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 1-11, 17-20 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 1 and 17 each recites “impedance between the first and second nodes has an order of five or more”. It is not clear what is the meaning of “an order of five or more”. Is the “impedance between the first and second nodes”, which is a value (e.g., ([0090]), supposed to be in a range like --five or more ohms--, or in some form of comparison an unspecified reference so that like --five times or more-- or --magnitude order of five or more-- (105+)? Further explanation and/or amendment supported by the original specification is required.
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.
Claim(s) 1-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Esquius Morote US 11,942,923 in view of Uzunov US 2012/0161862.
1. A frequency extraction filter (Figs. 1, 8, 9, etc.) comprising:
a resonator (EAR1) coupled to a first node (P1); and
a phase shifter (PS) connected to the resonator in parallel, the phase shifter coupled to a second node (P2) such that the resonator and the phase shifter are positioned between the first and second nodes.
Esquius Morote does not disclose impedance between the first and second nodes has an order of five or more.
Uzunov discloses a filter comprising resonators (340, 350) that may have impedance in third order or higher ([0023], [0024]) to minimize effects of the input signal from resistances external to the filter circuit.
At the time of the filing, it would have been obvious to one of ordinary skill in the art to have made the impedance of the resonator between the first and second nodes (thus effectively affected the impedance between the first and second nodes) to be third or higher orders (covering five or more). The modification would have been obvious to minimize effects of the input signal from resistances external to the filter circuit as taught by Uzunov ([0023], [0024]).
2. The frequency extraction filter of claim 1 wherein the impedance between the first and second nodes at least two notches for rejections (Esquius Morote: Fig. 13, the impedance would have a notch at the low frequency side and another notch at the high frequency side).
3. The frequency extraction filter of claim 1 wherein the phase shifter is a passive phase shifter (Esquius Morote: e.g., Fig. 2, inductance element, which is passive).
4. The frequency extraction filter of claim 3 wherein the passive phase shifter is a transmission line, a high pass network phase shifter, a low pass network phase shifter, an all pass network phase shifter, or a reflection type phase shifter (Esquius Morote: Figs. 2, 5-7, 11, etc.; Col. 8 lines 4-7).
Claim(s) 5, 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over the resultant combination of Esquius Morote US 11,942,923 in view of Uzunov US 2012/0161862 as applied to claim 1 above, and further in view of Chayat US 2024/0085522.
5, 6. The resultant combination discloses the invention as discussed in claim 1 above, but does not explicitly disclose for claim 5: the phase shifter is an active phase shifter; and for claim 6: the active phase shifter is a vector based phase shifter.
Chayat exemplarily disclose in communication circuitry, a phase shifter can be active phase shifter including vector based phase shifter ([0156], diodes, tunable, vector-sum).
At the time of the filing, it would have been obvious to one of ordinary skill in the art to have replaced the generic phase shifter with an active phase shifter including vector based phase shifter. The modification would have been obvious as a simple substitution of parts (MPEP 2143(I)(B)) and tunability.
Claim(s) 9, 10, 17-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over the resultant combination of Esquius Morote US 11,942,923 in view of Uzunov US 2012/0161862 as applied to claim 1 above, and further in view of Esquius Morote US 11,990,893.
9, 10. The resultant combination discloses the invention as discussed in claim 1 above, including the resonator and the phase shifter together defines a first hybrid structure (i.e., viewed as a unit or a stage), but does not explicitly disclose for claim 9: the frequency extraction filter further comprising a second resonator and a second phase shifter together defining a second hybrid structure, wherein the first and second hybrid structures are coupled to one another (two units or stages) and for claim 10: a third resonator and a third phase shifter together defining a third hybrid structure, wherein the first, second, and third hybrid structures are electrically coupled (three units or stages).
Esquius Morote ‘893 exemplarily disclose a filter apparatus (Fig. 6, item 650) including multiple apparatuses serially connected in the signal path (Figs. 6, 7, etc.; Col. 11 lines 24-34).
At the time of the filing, it would have been obvious to one of ordinary skill in the art to have a plurality of units or stages. The modification would have been obvious as matter of design to obtain desired characteristics as taught in Esquius Morote ‘893 (Col. 11 lines 24-34) and/or simple duplication (MPEP 2144.04(VI)(B)).
17-19. For brevity, the combination of Esquius Morote ‘923, Uzunov, and Esquius Morote ‘893 discussed above similarly discloses the invention (see claims 1, 9, 10), including mobile communication (Esquius Morote ‘923: Col. 10 lines 12), but does not explicitly disclose an antenna coupled to the first node.
Esquius Morote ‘893 exemplarily disclose a wireless communication device (abstract) including a filter (Fig. 6, 9A, etc.) with a first node (654) coupled to an antenna (antenna connection port 654; 954).
At the time of the filing, it would have been obvious to one of ordinary skill in the art to have made an antenna coupled to the first node. The modification would have been obvious as an implementation of the filter for use in wireless communication as taught by Esquius Morote ‘893 (abstract; Figs. 6, 9A, etc.).
Claim(s) 9-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ella US 12,267,063 in view of Uzunov US 2012/0161862 and Esquius Morote US 11,990,893.
9-11. Ella discloses a frequency extraction filter (Figs. 1, 3-3, etc.) comprising:
a resonator (324-2) coupled to a first node (306-1); and
a phase shifter (328) connected to the resonator in parallel, the phase shifter coupled to a second node (P2) such that the resonator and the phase shifter are positioned between the first and second nodes;
another resonator (324-1) coupled in series with the phase shifter;
the resonator, another resonator, and phase shifter together define a hybrid structure (define a unit or stage).
Ella does not disclose impedance between the first and second nodes has an order of five or more; for claim 9: the frequency extraction filter further comprising a second resonator and a second phase shifter together defining a second hybrid structure, wherein the first and second hybrid structures are coupled to one another (two units or stages) and for claim 10: a third resonator and a third phase shifter together defining a third hybrid structure, wherein the first, second, and third hybrid structures are electrically coupled (three units or stages); for claim 11: the second resonator and the second phase shifter are connected in series, and the third resonator and the third phase shifter are connected in series.
Uzunov discloses a filter comprising resonators (340, 350) that may have impedance in third order or higher ([0023], [0024]) to minimize effects of the input signal from resistances external to the filter circuit.
At the time of the filing, it would have been obvious to one of ordinary skill in the art to have made the impedance of the resonator between the first and second nodes (thus effectively affected the impedance between the first and second nodes) to be third or higher orders (covering five or more). The modification would have been obvious to minimize effects of the input signal from resistances external to the filter circuit as taught by Uzunov ([0023], [0024]).
Esquius Morote ‘893 exemplarily disclose a filter apparatus (Fig. 6, item 650) including multiple apparatuses serially connected in the signal path (Figs. 6, 7, etc.; Col. 11 lines 24-34).
At the time of the filing, it would have been obvious to one of ordinary skill in the art to have a plurality of units or stages (hybrid structures). The modification would have been obvious as matter of design to obtain desired characteristics as taught in Esquius Morote ‘893 (Col. 11 lines 24-34) and/or simple duplication (MPEP 2144.04(VI)(B)). As a result, the filter would have a plurality of units or stages (hybrid structures of claimed) and that including second/third resonator and second/third phase shifter connected in series (Ella: Fig. 3-3; Esquius Morote ‘893: Col. 11 lines 24-34).
Allowable Subject Matter
Claims 12-16 would be allowable if rewritten or amended to overcome the rejection(s) under double patenting set forth in this Office action.
Claims 7, 8 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, and double patenting set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Conclusion
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/A.W/Examiner, Art Unit 2843
/ANDREA LINDGREN BALTZELL/Supervisory Patent Examiner, Art Unit 2843