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 without traverse of Group I (claims 1-15 and 19-20) in the reply filed on 01/23/2026 is acknowledged.
Priority
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in JP on 01/17/2022. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 07/10/2024 has been considered by the examiner.
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 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 6 of copending Application No. 18/769,482. Although the claims at issue are not identical, they are not patentably distinct from each other because of the rationale detailed below.
18/768,233
18/769,482
Claim 1
Claim 6
An antenna module comprising:
a sub-module including
a plurality of electronic components, each including a plurality of internal terminals,
(claim 1) A high-frequency module comprising: submodules,
each including electronic components, each including inner terminals, and
a first support that covers and supports the plurality of electronic components to expose the plurality of internal terminals, and
(claim 1) a first support member to cover and support the electronic components to expose the inner terminals;
a first conductive film that is disposed on at least a part of the first support;
(claim 1) wherein at least one of the submodules includes a first conductive film formed on at least part of the first support member.
at least one antenna;
(claim 6) at least one antenna component
a second support that supports the sub-module
(claim 1) a second support member to cover and support the submodules; and
and supports the antenna; and
(claim 6) at least one antenna component covered and supported by the second support member
a plurality of external terminals that are connected to the plurality of internal terminals and are exposed from the second support.
(claim 1) outer terminals coupled to respective ones of the inner terminals and exposed from the second support member
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 1-15 and 19-20 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.
Claim 1 recites the limitation "the antenna" in line 12 which renders the claim indefinite. There is insufficient antecedent basis for this limitation in the claim. For the purpose of examination, Examiner interprets as “the at least one antenna”.
Similar rejections would be applied to claims 3, 6, 8-10, 12, 15 and 19-20.
Claims 2-15 and 19-20 inherit the indefiniteness of claim 1 and are subsequently rejected.
Claim 5 recites the limitation “a region in which the second support is exposed from the second conductive film and at least one of the antenna components overlap in plan view” in lines 3-6 which renders the claim indefinite. There is insufficient antecedent basis for the limitation “the antenna components” in the claim. Claim 3 recited “an antenna component”, so it is not clear how there are a plurality of antenna components recited in claim 5. For the purpose of examination, Examiner interprets as best understood.
Claim 7 recites the limitation “the chip component” in line 8 which renders the claim indefinite. There is insufficient antecedent basis for the limitation in the claim. For the purpose of examination, Examiner interprets as “the surface-mounted chip component”.
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 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over Liao et al, US-20120062439-A1 (hereinafter Liao) in view of You, US-20220375884-A1.
Regarding claim 1, as best understood, Liao discloses the following:
an antenna module comprising:
a sub-module (120, 112-112b, 130, fig. 1) including
a plurality of electronic components (112a, 112b), each including a plurality of internal terminals (fig. 1 below),
a first support (120) that covers and supports the plurality of electronic components (112a-112b), and
a first conductive film (130) that is disposed on at least a part of the first support;
at least one antenna (150);
a second support (140) that supports the sub-module (120, 112-112b, 130, fig. 1) and supports the antenna (150).
Liao does not disclose the first support exposes the plurality of internal terminals, and a plurality of external terminals that are connected to the plurality of internal terminals and are exposed from the second support.
You suggests the first support (110, 100, fig. 10) exposes the plurality of internal terminals (fig. 10 below), and a plurality of external terminals (fig. 10) that are connected to the plurality of internal terminals and are exposed from the second support (300P, fig. 10).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide a plurality of external terminals as suggested in You to connect to the plurality of internal terminals taught in Liao as claimed for the purpose of electrically connecting the electronic components disposed in the first support to other components outside of the second support in order to form the circuitry for the antenna module to perform wireless communication.
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Regarding claim 2, Liao does not disclose wherein the plurality of internal terminals are exposed at a first surface of the first support, the plurality of external terminals are exposed at a second surface of the second support, and the first surface and the second surface face in a same direction.
You discloses wherein the plurality of internal terminals are exposed at a first surface of the first support (110, 100, fig. 10 above), the plurality of external terminals are exposed at a second surface of the second support (300P), and the first surface and the second surface face in a same direction (fig. 10 above).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the surfaces that the plurality of external terminals and internal terminals are exposed facing the same direction as suggested in You to the antenna module taught in Liao as claimed for the purpose of electrically connecting the electronic components disposed in the first support to other components outside of the second support in order to form the circuitry for the antenna module to perform wireless communication.
Regarding claim 3, as best understood, Liao does not disclose wherein the antenna is configured by an antenna component including a radiating element and an antenna terminal, and the antenna component is covered with and supported by the second support to expose the antenna terminal at the second surface.
You suggests wherein the antenna is configured by an antenna component including a radiating element (201, fig. 10) and an antenna terminal (fig. 10 below), and the antenna component is covered with and supported by the second support (300P) to expose the antenna terminal at the second surface (fig. 10).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the antenna terminal as suggested in You to the antenna module taught in Liao as claimed for the purpose of electrically connecting the radiating element covered inside the second support to other components outside of the second support in order to form the circuitry for the antenna module to perform wireless communication.
[AltContent: textbox (Antenna terminal)][AltContent: arrow]
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Claims 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over Liao and You as applied to claim 3 above, and further in view of Mikata, US-20190372210-A1.
Regarding claim 4, the combination of Liao and You does not disclose wherein the second support includes a top surface that faces in a direction opposite to the second surface, and the antenna module further comprises a second conductive film disposed on the top surface.
Mikata suggests wherein the second support (18, fig. 3B) includes a top surface that faces in a direction opposite to the second surface (fig. 3B below), and the antenna module further comprises a second conductive film (20) disposed on the top surface (fig. 3B).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide a second conductive film as suggested in Mikata to the antenna module taught in Liao and You as claimed for the purpose of reducing the interference generated from the electronic components and preventing the radio waves transmitted or received by the antenna from being attenuated (Mikata, para [0039]).
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Regarding claim 5, as best understood, the combination of Liao and You does not disclose wherein the second conductive film is disposed in a partial region of the top surface, and a region in which the second support is exposed from the second conductive film and at least one of the antenna components overlap in plan view.
Mikata suggests wherein the second conductive film (20, fig. 3B) is disposed in a partial region of the top surface (fig. 3 above), and a region in which the second support is exposed from the second conductive film and at least one of the antenna components (12) overlap in plan view.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide region in which the second support is exposed from the second conductive film overlap with at least one the antenna components as suggested in Mikata to the antenna module taught in Liao and You as claimed for the purpose of preventing the interference of the conductive film to the antenna component’s performance.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Liao and You as applied to claim 3 above, and further in view of So et al, US-20190057944-A1 (hereinafter So).
Regarding claim 6, as best understood, Liao does not disclose the antenna module according to Claim 3, further comprising: a first feed line that is disposed on the second surface and connects one of the plurality of external terminals to the antenna; and a ground plane that is disposed in a region of the second surface that does not overlap the first feed line.
You discloses the antenna module according to Claim 3, further comprising: a first feed line (420, fig. 10) that is disposed on the second surface (fig. 10) and connects one of the plurality of external terminals to the antenna (201, para [0090]); and a ground plane (para [0038]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide a first feed line as taught in You to the antenna module taught in Liao as claimed for the purpose of providing signal to the antenna in order to perform wireless communication.
The combination of Liao and You does not disclose the ground plane that is disposed in a region of the second surface that does not overlap the first feed line.
So suggests the ground plane (112aG, fig. 16) that is disposed in a region of the surface (layer 112a, fig. 5, para [0122]) that does not overlap the first feed line (112aF, fig. 16).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the ground plane in a region of the second surface that does not overlap the first feed line as suggested in So to the antenna module taught in Liao and You as claimed for the purpose of separating the first feed line from the ground plane in order to avoid short circuit between the feed line and the ground plane to form an antenna circuitry to perform wireless communication.
Claims 7 and 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over Liao and You as applied to claims 2 and 3 above, and further in view of Han, US-20210051797-A1.
Regarding claim 7, as best understood, the combination of Liao and You does not disclose the antenna module according to Claim 3, further comprising: a surface-mounted chip component that is supported by the second support and includes an electrode terminal exposed at the second surface, wherein when the second surface is viewed in plan, the sub-module is disposed between the antenna component and the chip component.
Han suggests the antenna module according to Claim 3, further comprising: a surface-mounted chip component (fig. 11) that is supported by the second support (10) and includes an electrode terminal exposed at the second surface (12), wherein when the second surface is viewed in plan, the sub-module (1b) is disposed between the antenna component (60) and the chip component (fig. 11).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the surface-mounted chip component as suggested in Han to the antenna module taught in Liao and You as claimed for the purpose of providing more electronic components to the antenna module in order to provide more functions to the antenna module.
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Regarding claim 10, as best understood, Liao discloses the antenna module according to Claim 2, further comprising: a module substrate (111, fig. 1) on which the second support (140) that supports the sub-module and the antenna is mounted (fig. 1).
The combination of Liao and You does not disclose a connector that is mounted on a same surface as a surface of the module substrate on which the second support is mounted; and a third conductive film that is disposed in a region of a surface of the second support, the surface facing a side of the connector.
Han suggests a connector (1a, fig. 3, para [0073]) that is mounted on a same surface as a surface of the module substrate (10) on which the second support is mounted; and
a third conductive film (30) that is disposed in a region of a surface of the second support, the surface facing a side of the connector (fig. 3).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide a third conductive film as suggested in Han to the antenna module taught in Liao and You as claimed for the purpose of preventing the interference between the connector and the components inside the second support.
Regarding claim 11, the combination of Liao and You does not disclose the antenna module according to Claim 10, further comprising: an external antenna component that is mounted on the same surface as the surface of the module substrate on which the second support is mounted, wherein the third conductive film is disposed in a region of the surface of the second support, the surface facing the external antenna component.
Han suggests the antenna module according to Claim 10, further comprising: an external antenna component (25, fig. 2) that is mounted on the same surface as the surface of the module substrate (91) on which the second support is mounted (40),
wherein the third conductive film (30) is disposed in a region of the surface of the second support, the surface facing the external antenna component (fig. 2).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide an external antenna as suggested in Han to the antenna module taught in Liao and You as claimed for the purpose of enabling the antenna module to operate in different frequency bands depending on the requirements of the application.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Liao and You as applied to claim 2 above, and further in view of Ito et al, US-20160149300-A1 (hereinafter Ito).
Regarding claim 8, as best understood, the combination of Liao and You does not disclose wherein the antenna includes a radiating element configured with a metal pattern disposed on the second surface.
Ito suggests wherein the antenna (5, fig. 23) includes a radiating element (51) configured with a metal pattern disposed on the second surface (fig. 23).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the radiating element taught in Liao and You to be disposed on the second surface as suggested in Ito as claimed, since it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 86 USPQ 70 (CCPA 1950). The motivation stems from the need to protect the radiating element from being exposed to the outer surface.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Liao and You as applied to claim 2 above, and further in view of Takizawa et al, US-20190379139-A1 (hereinafter Takizawa).
Regarding claim 9, as best understood, Liao discloses wherein the second support includes a top surface that faces in a direction opposite to the second surface, and a side surface that connects the top surface to the second surface (fig. 1).
The combination of Liao and You does not disclose the antenna includes a radiating element configured with a metal pattern disposed on the side surface.
Takizawa suggests the antenna includes a radiating element (70d, fig. 1C) configured with a metal pattern disposed on the side surface (fig. 1C).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the radiating element taught in Liao and You on the side surface as suggested in Takizawa as claimed, since it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 86 USPQ 70 (CCPA 1950). The motivation stems from the need to orient the radiating direction to the desired direction depending on the requirements of the application.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Liao and You as applied to claim 2 above, and further in view of Ueda, US-20180053735-A1.
Regarding claim 12, as best understood, Liao discloses the antenna module according to Claim 2, further comprising: a module substrate (111, fig. 1) on which the second support (140) that supports the sub-module and the antenna is mounted (fig. 1).
The combination of Liao and You does not disclose an external radiating element configured with a metal pattern disposed on the module substrate; and a second feed line that is disposed in the module substrate and connects one of the plurality of external terminals to the external radiating element.
Ueda suggests an external radiating element (15, fig. 1) configured with a metal pattern disposed on the module substrate (10); and a second feed line (16) that is disposed in the module substrate and connects one of the plurality of external terminals (12) to the external radiating element (15).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide an external antenna as suggested in Ueda to the antenna module taught in Liao and You as claimed for the purpose of enabling the antenna module to operate in different frequency bands depending on the requirements of the application.
Claims 13 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Liao and You as applied to claim 1 above, and further in view of Kawamura et al, US-20110309893-A1 (hereinafter Kawamura).
Regarding claim 13, Liao discloses the antenna module according to Claim 1, further comprising:
a second sub-module (fig. 21H shows a plurality of sub-modules in fig. 1 which comprises 120, 112-112b, 130) including a plurality of second electronic components (112a, 112b, fig. 1) each including a plurality of second internal terminals (fig. 1 above), and a third support (120) that covers and supports the plurality of second electronic components (112a-112b); and
wherein the second sub-module is covered with and supported by the second support (140).
Liao does not disclose the third support exposes the plurality of second internal terminals; a plurality of second external terminals that are exposed at a surface of the second support opposite to a surface at which the plurality of external terminals are exposed, the plurality of second internal terminals are connected to the plurality of second external terminals.
You suggests the third support (110, 100, fig. 10) exposes the plurality of second internal terminals (fig. 10), and a plurality of second external terminals that are exposed at a surface of the second support (fig. 10 above), the plurality of second internal terminals are connected to the plurality of second external terminals (fig. 10).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide a plurality of second internal terminals taught in Liao to connect to the plurality of second external terminals as suggested in You as claimed, since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8 (CA7 1977). The motivation stems from the need to electrically connect the electronic components disposed in the first support to other components outside of the second support in order to form the circuitry for the antenna module to perform wireless communication.
The combination of Liao and You does not disclose the plurality of second external terminals that are exposed at a surface of the second support opposite to a surface at which the plurality of external terminals are exposed.
Kawamura suggests the plurality of second external terminals (9 of second sub-module 20b, fig. 10) that are exposed at a surface of the support opposite to a surface at which the plurality of external terminals are exposed (9 of sub-module 20a).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to arrange the second external terminals taught in Liao and You to be exposed at a surface of the support opposite to a surface at which the plurality of external terminals are exposed as suggested in Kawamura, since it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 86 USPQ 70 (CCPA 1950). The motivation stems from the need to transmit the signals from one sub-module to another sub-module and achieve high speed data transmission between the two sub-modules (Kawamura, para [0033]).
Regarding claim 15, as best understood, Liao discloses wherein the second support (140, fig. 1 and 21H) includes a first part that supports the sub-module and the antenna (150, fig. 21H below), and a second part that supports the second sub-module, and the first part is bonded to the second part (fig. 21H).
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Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Liao, You and Ito as applied to claim 8 above, and further in view of Takizawa et al, US-20190379139-A1 (hereinafter Takizawa).
Regarding claim 19, as best understood, Liao discloses wherein the second support includes a top surface that faces in a direction opposite to the second surface, and a side surface that connects the top surface to the second surface (fig. 1).
The combination of Liao, You and Ito does not disclose the antenna includes a radiating element configured with a metal pattern disposed on the side surface.
Takizawa suggests the antenna includes a radiating element (70d, fig. 1C) configured with a metal pattern disposed on the side surface (fig. 1C).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the radiating element taught in Liao, You and Ito on the side surface as suggested in Takizawa as claimed, since it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 86 USPQ 70 (CCPA 1950). The motivation stems from the need to orient the radiating direction to the desired direction depending on the requirements of the application.
Allowable Subject Matter
Claim 14 is 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.
Regarding claim 14, patentability exists, at least in part, with the claimed features of “wherein a surface of the sub-module, which faces in a direction opposite to the surface of the second support at which the plurality of external terminals are exposed, faces a surface of the second sub-module, which faces in a same direction as the surface of the second support at which the plurality of external terminals are exposed, without the second support interposed therebetween.”
However, the prior art of record, when taken alone or in combination, cannot be construed as reasonably teaching or suggesting all of the elements of the claimed invention as arranged, disposed, or provided in the manner as claimed by the Applicant.
Claim 20 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, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Claim 20 is considered allowable due to its respective dependency on claim 14.
Citation of Pertinent Art
Hoegerl et al, US-20070200748-A1 could read on claim 1
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANH N HO whose telephone number is (571)272-4657. The examiner can normally be reached M-F 8:00-5:00.
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/DAMEON E LEVI/Supervisory Patent Examiner, Art Unit 2845
/ANH N HO/Examiner, Art Unit 2845