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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 24 July 2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Double Patenting
The non-statutory 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 non-statutory obviousness-type 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); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
Claims 1, 2 and 8 of U.S. Patent Application No. 18/782,753 (‘753 application) is non-provisionally rejected on the grounds of non-statutory obviousness-type double patenting as being unpatentable over claim 3, 5 and 9 of U.S. Patent No. 12,105,131 (‘131 patent). A comparison of the conflicting claims is shown in the table below.
U.S. Patent No. 12,105,131
Reference Claim
U.S. Patent Application No. 18/782,753 Conflicting Claim
Claim 3. A testing device for testing an
antenna, comprising:
a housing; an antenna module for
holding the antenna and disposed under the housing,
comprising: a base; and a flexible film disposed on the base;
a receiving module disposed on the housing and comprising:
a substrate;
a coupling radiation element disposed on the substrate;
and
a support disposed on the substrate and having an opening, wherein the antenna is partially exposed from the opening,
wherein the coupling radiation element
comprises: a coupling portion;
a first branch connecting to the coupling portion; and
a first opening recess formed between the coupling portion and the first branch.
Claim 1. A testing device for testing an antenna, comprising:
a housing; an antenna module for holding the antenna and disposed under the housing; and
a receiving module disposed on the housing and comprising:
a substrate;
a coupling radiation element disposed on the substrate,
comprising: a coupling portion; and
a first branch connecting to the coupling portion; and
a support disposed on the substrate.
Claim 5. The testing device as claimed in claim 1, further comprising: a first feeding radiation element disposed on the receiving module; and
a coupling wiring wherein the first feeing radiation element and the second feeding radiation element are
electrically connected to the coupling radiation element.
Claim 2. The testing device as claimed in claim 1, further comprising a first feeding radiation element disposed on the receiving module and
electrically connected to the coupling radiation element.
Claim 9. A testing device for testing an antenna, comprising:
a housing, comprising:
a body having an opening; and
a connecting element disposed on the body;
an antenna module for holding the antenna and disposed under the housing, comprising: a base; and a flexible film disposed on the base;
a receiving module disposed in the opening
and comprising:
a first substrate; and
a first coupling radiation element disposed on the first substrate, wherein the connecting element comprises:
a second substrate;
a first conductive via element disposed in the second substrate; and
second conductive via elements disposed in the second substrate, wherein the first conductive via element and the second conductive via elements have different lengths.
Claim 8. A testing device for testing an antenna, comprising:
a housing, comprising:
a body having an opening; and
a connecting element disposed on the body, comprising:
a substrate disposed on the body;
a first conductive via element disposed in the substrate; and
second conductive via elements disposed in the substrate, wherein the first conductive via element and the second conductive via elements have different lengths;
an antenna module for holding the antenna and disposed under the housing; and
a receiving module disposed in the opening
Though the conflicting claims are not entirely identical, it is obvious from the side-by-side comparisons of the claim language in the table above that the terms in bold print portions are entirely identical in each claim; and the italicized-underlined bold print portions of the claims are obvious variations of one another. With that in mind and in view of the discussion below, it is respectfully submitted that the claims are not patentably distinct.
It is settled that the disclosure of the patent may not be used as prior art. General Foods Corp. v. Studiengesellschaft Kohle mbH, 972 F.2d 1272, 1279, 23 USPQ2d 1839, 1846 (Fed. Cir. 1992). However, this does not mean that one is precluded from all use of the patent disclosure (emphasis added). Those portions of the specification which provide support for the patent claims may also be examined and considered when addressing the issue of whether a claim in the application defines an obvious variation of an invention claimed in the patent. In re Vogel, 422 F.2d 438, 441-42, 164 USPQ 619, 622 (CCPA 1970). The court in Vogel recognized: “that it is most difficult, if not meaningless, to try to say what is or is not an obvious variation of a claim.
Thus, in view of the table shown above and the findings of In re Vogel discussed above in mind, it is respectfully submitted that disclosures of '131 patent that provide support for the patent claims also provide support for the minor differences in the limitations of the claims of the ‘753 application. As a result, the present obviousness type double patenting rejection has been made.
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 non-statutory 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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Allowable Subject Matter
Claims 15-20 are allowed.
Claims 3-7 and 9-14 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 MYRON K WYCHE whose telephone number is (571)272-3390. The examiner can normally be reached 7:30 am - 3:30 pm.
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/Myron Wyche/ 24 June 2026
Primary Examiner AU2644
Prosecution Insights