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 .
Election/Restrictions
Applicant's election with traverse of invention I in the reply filed on 05/23/2026 is acknowledged. The traversal is on the ground(s) that claim the specifics of the subcombination can be found in the dependent claims. This is not found persuasive because “the presence of a claim to combination ABsp does not alter the propriety of a restriction requirement properly made between combination ABbr and subcombination Bsp. Claim ABbr is an evidence claim which indicates that the combination does not rely upon the specific details of the subcombination for its patentability. If a restriction requirement can be properly made between combination ABbr and subcombination Bsp, any claim to combination ABsp would be grouped with combination ABbr” (see mpep 806.05(c)(II)(B)). Regarding claims 31 and 32, there is still specifics in each that the other does not have, such as being a reconfigurable antenna in claim 31, whereas claim 32 requires an antenna configured to capture an emission of an electromagnetic energy in a radio frequency (RF) spectrum from an electronic device, the antenna at least including an array of antenna elements disposed on the antenna substrate.
The requirement is still deemed proper and is therefore made FINAL.
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 19, 22-25, 28, and 32-35 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5, 7, 13, 15, 16, 17 of U.S. Patent No. 11,069,952. Although the claims at issue are not identical, they are not patentably distinct from each other because they disclose essentially the same subject matter.
Claim 19, 22-25, 32-35 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 3, 5, 9, 14 of U.S. Patent No. 12,040,531. Although the claims at issue are not identical, they are not patentably distinct from each other because they disclose essentially the same subject matter.
Claim Objections
Claim 27 is objected to because of the following informalities:
Claim 27 states “further comprising connector mounted…” when it should state “further comprising a connector mounted…”.
Appropriate correction is required.
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.
Claim 25 is 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.
Claim 25 recites “an antenna”, however claim 19, which claim 15 is dependent on, already claimed “an antenna”. It is unclear if this is the same antenna or if this is claiming an additional antenna. For the purposes of examination, it is being construed as the same antenna.
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(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 19-20 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Kim (US 2008/0266193).
Regarding claim 19, Kim teaches the following:
an antenna card, comprising:
an antenna substrate (element 112, figures 1-2) being a printed circuit board (PCB);
an antenna (elements 102/104, figures 1-2) disposed on the antenna substrate and configured to capture an emission of an electromagnetic energy in a radio frequency (RF) spectrum from an electronic device (paragraphs [0025]-[0026]); and
an antenna connection member (elements 106/108, figures 1-2).
Regarding claim 20, Kim as referred in claim 19 teaches the following:
wherein the antenna comprises a dipole antenna (paragraph [0022]) and wherein the antenna card further comprises a low noise amplifier (LNA) mounted between the dipole antenna and the antenna connection member (paragraph [0022]) and a power connection to the LNA (inherent since an amplifier requires an external power connection to operate).
Claims 19 and 26 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Honcharencko (CA 2314852).
Regarding claim 19, Honcharencko teaches the following:
an antenna card, comprising:
an antenna substrate being a printed circuit board (PCB)(“ the antenna is formed on a printed circuit board ("PCB"; “The circuitry can be integrated directly into the wireless device 32 or contained in a separate expansion card, such as a PCMCIA card”);
an antenna (elements 14, figures 1-5) disposed on the antenna substrate and configured to capture an emission of an electromagnetic energy in a radio frequency (RF) spectrum from an electronic device (“reception paths of the transceiver”); and
an antenna connection member (the various connections connected to elements 14 as shown in figure 5).
Regarding claim 26, Honcharencko as referred in claim 19 teaches the following:
further comprising a steerable antenna controller (“Fig. 5 is a high level diagram of a steerable antenna array”) and RF emissions diagnosis card (the description of figure 5, the received signal is “processed to determine a direction to the source” by element 22 which provides a RF emissions diagnosis).
Claims 19 and 35 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Sward et al. (US 2003/0210199, hereby referred as Sward).
Regarding claim 19, Sward teaches the following:
an antenna card, comprising:
an antenna substrate (element 34, figures 1-3 and 8) being a printed circuit board (PCB);
an antenna (elements 41/43, figure 8) disposed on the antenna substrate and configured to capture an emission of an electromagnetic energy in a radio frequency (RF) spectrum from an electronic device (“signals being transceived by the antenna modules 41 and 4”, paragraph [0069]); and
an antenna connection member (element 46a/b and the wires connecting between the two, figure 8).
Regarding claim 35, Sward as referred in claim 19 teaches the following:
wherein the antenna comprises a fractal antenna (paragraph [0041]) and further comprises an impedance matcher mounted in a circuit between the fractal antenna and the antenna connection member (figure 8, paragraphs [0066] and [0069]).
Claims 19, 23, 32-33 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Kachi et al. (TWI 280690, hereby referred as Kachi).
Regarding claim 19, Kachi teaches the following:
an antenna card, comprising:
an antenna substrate (element 24, figures 1-2) being a printed circuit board (PCB)(“ The bottom plate on which the bottom plate 24 is mounted is, for example, a PWB (printed circuit board), a PCB (printed circuit board), or the like.”);
an antenna (element 23, figures 1-2) disposed on the antenna substrate and configured to capture an emission of an electromagnetic energy in a radio frequency (RF) spectrum from an electronic device (“signal receiving/transmitting device”); and
an antenna connection member (element 27, figures 1-2).
Regarding claim 23, Kachi as referred in claim 19 teaches the following:
wherein the antenna connection member comprises a backplane connector (element 27, figures 1-2) attached to the antenna substrate.
Regarding claim 32, Kachi teaches the following:
an antenna card, comprising:
an antenna substrate (element 24, figures 1-2);
an antenna (element 23, figures 1-2) configured to capture an emission of an electromagnetic energy in a radio frequency (RF) spectrum from an electronic device (“signal receiving/transmitting device”), the antenna at least including an array of antenna elements (elements 23a and 23b, figures 1-2) disposed on the antenna substrate;
RF emissions processing controller (“23 is a signal receiving/transmitting device that is coupled to the wireless circuit”); and
a backplane connector operatively mounted on the antenna substrate (element 27, figures 1-2).
Regarding claim 33, Kachi as referred in claim 32 teaches the following:
wherein the antenna substrate (element 24, figures 1-2) comprises a printed circuit board (PCB)(“ The bottom plate on which the bottom plate 24 is mounted is, for example, a PWB (printed circuit board), a PCB (printed circuit board), or the like.”).
Claims 19, 27-28 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Hayes et al. (CN 101490701, hereby referred as Hayes).
Regarding claim 19, Hayes teaches the following:
an antenna card, comprising:
an antenna substrate (element 104, figures 1-4) being a printed circuit board (PCB)(“ a printed circuit board (PCB) 104 is mounted in the frame 110”);
an antenna (elements 152-154, figures 1-4) disposed on the antenna substrate and configured to capture an emission of an electromagnetic energy in a radio frequency (RF) spectrum from an electronic device (“may include one or more receiver or transceiver”); and
an antenna connection member (connection between elements 152-154 and 160, figures 1-4).
Regarding claim 27, Hayes as referred in claim 19 teaches the following:
further comprising connector mounted on the antenna substrate, the connector capable of allowing an addition of a replaceable emissions processor card (“one or more replaceable antenna circuits 162, 164, and 166 as later discussed, antenna circuit (s) 160. an antenna circuit (s) 160 (comprising one or more antenna circuits 162, 164, and 166) may include one or more receiver or transceiver, processing circuit, and/or other suitable circuit”).
Regarding claim 28, Hayes as referred in claim 19 teaches the following:
further comprising connectors mounted on the antenna substrate, the connectors capable of allowing a connection of an antenna module (“one or more replaceable antenna circuits 162, 164, and 166 as later discussed, antenna circuit (s) 160. an antenna circuit (s) 160 (comprising one or more antenna circuits 162, 164, and 166) may include one or more receiver or transceiver, processing circuit, and/or other suitable circuit”).
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 19, 22, 24-25 and 34 are rejected under 35 U.S.C. 103 as being unpatentable over Hsieh et al. (US 2017/0040712, hereby referred as Hsieh) in view of Kim (US 2008/0266193).
Regarding claim 19, Hsieh teaches the following:
an antenna card, comprising:
an antenna substrate (element 11, figures 1);
an antenna (element 111, figures 1) disposed on the antenna substrate and configured to capture an emission of an electromagnetic energy in a radio frequency (RF) spectrum from an electronic device (paragraph [0018]); and
an antenna connection member (elements extending from 111 to N1 and 112, figures 1).
Hsieh does not explicitly teach that the antenna substrate is printed circuit board.
Kim suggests the teachings of an antenna card with an antenna substrate (element 112, figures 1-2) being a printed circuit board (PCB).
It would have been obvious to one of ordinary skill in the art before the effective filing date to have the antenna substrate of Hsieh to be a printed circuit board (PCB) as suggested by the teachings of Kim as PCBs are well known substrates that can provide secure connections, thermal management, and ease the manufacturing the process since they can be mass produced.
Regarding claim 22, Hsieh as referred in claim 19 teaches the following:
wherein the antenna connection member comprises an RF connector (where it connects to N2, figures 1) attached to an edge of the antenna substrate, the RF connector being in an RF connection with the antenna (element 111, figures 1).
Regarding claim 24, Hsieh as referred in claim 19 teaches the following:
wherein the antenna connection member comprises an RF connector (which connects to N2, figures 1) and an RF cable (the rest of the antenna connection member, figures 1), the RF cable having one end thereof coupled to the RF connector (as shown in figures 1).
Regarding claim 25, Hsieh as referred in claim 19 teaches the following:
wherein the antenna connection member comprises a cable coupling an antenna (element 111, figures 1) to an RF connector (element N1, figures 1) positioned at a distance from the antenna substrate.
Regarding claim 34, Hsieh as referred in claim 19 teaches the following:
wherein the antenna connection member comprises:
a first RF connector (N2, figures 1) attached to an edge of the antenna substrate, the first RF connector being in an RF connection with the antenna (element 111, figures 1);
a second RF connector (N1, figures 1) disposed at a distance from the first RF connector.
Hsieh does not explicitly teach a cable in RF connections with both first and second RF connectors but teaches a connection between the two RF connectors which appears to be a microstrip line. However, it is well known in the antenna art that using cables to provide connection to an antenna is one of a finite amount of ways to provide a direct connection between two elements.
It would have been obvious to one of ordinary skill in the art before the effective filing date to have Hsieh as modified to include a cable in RF connections with both first and second RF connectors as suggested by the teachings of Hsieh and as well-known in the antenna art to provide a direct connection to the antenna to allow it to receive and transmit the signals and may allow for a better loss performance when compared to a microstrip line, and since it has been held that choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success is obvious. KSR International Co. v Teleflex Inc., 550 U.S.__, __, 82 USPQ2d 1385, 1395-97 (2007).
Allowable Subject Matter
Claims 21 and 29-30 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
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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/AB SALAM ALKASSIM JR/Primary Examiner, Art Unit 2845
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