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.”
This Reissue (SN: 18/783,910) is a continuation reissue of the Reissue SN:17/212,346 which is based of US Patent No. 10,644,401.
Oath or Declaration
The reissue oath/declaration filed with this application is defective because it fails to identify at least one error which is relied upon to support the reissue application. See 37 CFR 1.175 and MPEP § 1414.
(C) It is not sufficient for an oath/declaration to merely state “this application is being filed to correct errors in the patent which may be noted from the changes made in the disclosure.” Rather, the oath/declaration must specifically identify an error. In addition, it is not sufficient to merely reproduce the claims with brackets and underlining and state that such will identify the error. See In re Constant, 827 F.2d 728, 729, 3 USPQ2d 1479 (Fed. Cir.), cert. denied, 484 U.S. 894 (1987). Any error in the claims must be identified by reference to the specific claim(s) and the specific claim language wherein lies the error.
Consequently, the statement in the oath/declaration of "None of the independent Claims 1, 14, 16 recite a first parasitic element that includes a first metal dipole arm, a second metal dipole arm and a first inductive element coupled between the first metal dipole arm and the second metal dipole arm. As a result, the patentee claimed less than he had the right to claim in the patent ", would not be considered a sufficient "error" statement because applicant has not identified specific claims which contain the limitations mentioned in the error statement.
Rejections under 35 U.S.C. 251
Claims 22-32 are rejected as being based upon a defective reissue Oath/Declaration under 35 U.S.C. 251 as set forth above. See 37 CFR 1.175.
The nature of the defect(s) in the Oath/Declaration is set forth in the discussion above in this Office action.
Information Disclosure Statement
Requester’s Information Disclosure Statement (IDS), filed July 25, 2024, has been received and entered into the record. Since the IDS complies with the provisions of MPEP § 2280, the references cited therein have been considered by the examiner.
With respect to the Information Disclosure Statements considered with this action, the information cited has been considered as described in the MPEP. Note that MPEP §§ 2256 and 2656 indicate that the degree of consideration to be given to such information will be normally limited by the degree to which the party filing the information citation has explained the content and relevance of the information. Information that does not appear to be “patents or printed publications” as identified in 35 U.S.C. 301 have been considered to the same extent.
Lastly, please note that few Non-Patent Literature (NPL) references have been stroked through and have not been considered because the copies of those documents could not be located.
Claim Interpretation
The present application is being examined under the pre-AIA first to invent provisions.
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.
Claim Rejections - 35 USC § 251
Claims 22-32 are rejected under 35 U.S.C. 251 as being an improper recapture of broadened claimed subject matter surrendered in the application for the patent upon which the present reissue is based. See Greenliant Systems, Inc. et al v. Xicor LLC, 692 F.3d 1261, 103 USPQ2d 1951 (Fed. Cir. 2012); In re Shahram Mostafazadeh and Joseph O. Smith, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011); North American Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 75 USPQ2d 1545 (Fed. Cir. 2005); Pannu v. Storz Instruments Inc., 258 F.3d 1366, 59 USPQ2d 1597 (Fed. Cir. 2001); Hester Industries, Inc. v. Stein, Inc., 142 F.3d 1472, 46 USPQ2d 1641 (Fed. Cir. 1998); In re Clement, 131 F.3d 1464, 45 USPQ2d 1161 (Fed. Cir. 1997); Ball Corp. v. United States, 729 F.2d 1429, 1436, 221 USPQ 289, 295 (Fed. Cir. 1984). A broadening aspect is present in the reissue which was not present in the application for patent. The record of the application for the patent shows that the broadening aspect (in the reissue) relates to claimed subject matter that applicant previously surrendered during the prosecution of the application. Accordingly, the narrow scope of the claims in the patent was not an error within the meaning of 35 U.S.C. 251, and the broader scope of claim subject matter surrendered in the application for the patent cannot be recaptured by the filing of the present reissue application.
It is noted that the following is the three step test for determining recapture in reissue applications (see: MPEP 1412.02(I)):
“(1) first, we determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims;
(2) next, we determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and
(3) finally, we determine whether the reissue claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule.”
(Step 1: MPEP 1412.02(A)) In the instant case, the Applicant seeks to broaden original independent claims 22, 26, 28 and 32 by deleting/omitting at least the patent claim language requiring, “wherein the first dipole segment and a second dipole segment that are separated by a resonating element that resonates in or near the high frequency band”1 or “wherein the first and second dipole arms each further comprise an inner conductor and a plurality of discontinuous outer conductors, the plurality of discontinuous outer conductors being open circuited at a first end and short circuited at a second end, and wherein a discontinuity in the plurality of discontinuous outer conductors comprises a radio frequency (RF) choke that is dimensioned to be resonant at or near the second frequency band”2 or “wherein the first dipole arm comprises a first dipole segment and a second dipole segment separated by a coaxial choke disposed between the first dipole segment and the second dipole segment, and wherein the coaxial choke is resonant at or near the frequencies of the high band thereby reducing induced high band currents in the low-band radiator and consequent disturbance to the high band”3.
With respect to newly proposed claim 28, the Examiner acknowledges that this claim mentions that the first dipole arm includes first and second segments, however according to claim 28, they are separated by a section that has a high impedance to currents, and not by “resonating element” as disclosed in original claim 1.
(Step 2: MPEP 1412.02(B)) The record of the prior 15/393,333 application prosecution history indicates that in a Response filed on April 9th, 2019, pages 7-14 the Applicant has alleged that the prior art of record did not anticipate nor rendered obvious the limitation as recited in “Step 1” above. In fact, in addition to the Remarks filed in response to the non-final rejection, the Applicant has also submitted Appeal Brief on September 12, 2019, arguing the same limitations.4 Accordingly, the above cited limitations appear to be determining factor in overcoming the prior art of records (Choi et al (US Publication No. 2011/0175782 A1 and Apostolos et al (US Publication No. 2012/0154236 A1). In other words, the Examiner has been persuaded that the cited limitations differentiated claimed invention over the prior art and therefore the application has been placed in the condition for allowance.
Subject matter is previously surrendered during the prosecution of the original application by reliance by Applicant to define the original patent claims over the art by presentation of new/amended claims to define over the art, or an argument/statement by applicant that a limitation of the claim(s) defines over the art. It is noted that a patent owner (reissue applicant) is bound by the argument that applicant relied upon to overcome an art rejection in the original application for the patent to be reissued, regardless of whether the Office adopted the argument in allowing the claims. Therefore, in the instant case the claim limitations of “wherein the first dipole segment and a second dipole segment that are separated by a resonating element that resonates in or near the high frequency band”5 or “wherein the first and second dipole arms each further comprise an inner conductor and a plurality of discontinuous outer conductors, the plurality of discontinuous outer conductors being open circuited at a first end and short circuited at a second end, and wherein a discontinuity in the plurality of discontinuous outer conductors comprises a radio frequency (RF) choke that is dimensioned to be resonant at or near the second frequency band”6 or “wherein the first dipole arm comprises a first dipole segment and a second dipole segment separated by a coaxial choke disposed between the first dipole segment and the second dipole segment, and wherein the coaxial choke is resonant at or near the frequencies of the high band thereby reducing induced high band currents in the low-band radiator and consequent disturbance to the high band”7 are surrendered subject matter and some of the broadening of the reissue claims, as noted above, are clearly in the area of the surrendered subject matter.
(Step 3: MPEP 1412.02(C)) It is noted that the reissue claims were not materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule. When analyzing a reissue claim for the possibility of impermissible recapture, there are two different types of analysis that must be performed. If the reissue claim “fails” either analysis, recapture exists. First, claim scope that was canceled or amended is deemed surrendered and therefore barred from reissue. Clement, 131 F.3d at 1470, 45 USPQ2d at 1165. Second, it must be determined whether the reissue claim omits or broadens any limitation that was added or argued during the original prosecution to overcome an art rejection. Such an omission in a reissue claim, even if it is accompanied by other limitations making the reissue claim narrower than the patent claim in other aspects, is impermissible recapture. Pannu, 258 F.3d at 1371-72, 59 USPQ2d at 1600. The surrendered subject matter, noted above, has been entirely eliminated from new independent reissue claims 22, 26 and 32 and partially eliminated from the independent claim 28. It is noted that the added limitations do not materially narrow the patent claims to avoid recapture.
Therefore, broadened independent reissue claims 22, 26, 28 and 32 attempt impermissible recapture of subject matter surrendered during prosecution of the 15/393,333 application. Dependent reissue claims dependent upon the independent claims mentioned above are rejected for similar rationale.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the parasitic elements and radiating antenna elements as disclosed in claims 22, 26, 28 and 32 must be shown or the features canceled from the claims. No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 103
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 pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim 26 is rejected under pre-AIA 35 U.S.C. 103(a) as being obvious over Shtrom et al (US Publication No. 2008/0129640), hereinafter referred to as Shtrom ‘640, in view of Shtrom et al (US Patent No. 2010/0103065), hereinafter referred to as Shtrom ‘065.
With respect to claim 26, Shtrom ‘640 teaches a base station antenna, comprising: an array of radiators (Abstract); and a printed circuit board ([0032]) that comprises a first parasitic element that includes a first metal arm, a second metal arm and a first inductive element coupled between the first metal arm and the second metal arm ([0013] teaches multiple parasitic elements/arms being coupled to each other by a switching/inductive network and as illustrated in the annotated portion of the Figure 4C below).
PNG
media_image1.png
446
339
media_image1.png
Greyscale
On the other hand, Shtrom ‘065 teaches an array of lower frequency band radiators; an array of higher frequency band radiators (Abstract, “the polarized horizontal antenna arrays and polarized vertical antenna arrays can operate concurrently to provide dual band operation simultaneously”, [0058], “low band” and [0056], “high band”).
It would have been obvious to one of ordinary skill in the art at the time the invention was made, to incorporate dual band antenna arrays taught by Shtrom ‘065, into the antenna taught by Shtrom ‘640, to improve the frequency band coverage and therefore improve antenna’s utility.
Allowable Subject Matter
Claims 22-25 and 27-32 would be allowed contingent upon overcoming rejections recited above.
The following is a statement of reasons for the indication of allowable subject matter:
With respect to claim 22, the prior art of record does not anticipate nor render obvious a base station antenna, comprising: an array of lower frequency band radiators; an array of higher frequency band radiators; a first parasitic element that includes a first metal arm, a second metal arm and a first inductive element coupled between the first metal arm and the second metal arm; and a second parasitic element that includes a third metal arm, a fourth metal arm and a second inductive element coupled between the third metal arm and the fourth metal arm, wherein a first of the lower frequency band radiators is positioned between the first parasitic element and the second parasitic element.
With respect to claims 23-25, those claims also recite allowable subject matter by the virtue of their dependency on claim 22.
With respect to claim 27, the prior art of record does not anticipate nor render obvious a base station antenna comprising: an array of lower frequency band radiators; an array of higher frequency band radiators; and a printed circuit board that comprises a first parasitic element that includes a first metal arm, a second metal arm and a first inductive element coupled between the first metal arm and the second metal arm, wherein the first inductive element is configured to adjust a phase of currents in the first and second metal arms to bring the currents in the first and second metal arms into an improved relationship to a current in a dipole of a first of the lower frequency band radiators.
With respect to claim 28, the prior art of record does not anticipate nor render obvious a base station antenna comprising: an array of lower frequency band radiators; an array of higher frequency band radiators; and a first parasitic element that includes a first metal arm, a second metal arm and a first inductive element coupled between the first metal arm and the second metal arm, wherein a first of the lower frequency band radiators comprises a first dipole and a second dipole that are in a cross configuration, and the first dipole includes a first dipole arm and a second dipole arm, and wherein the first dipole arm includes at least a first segment and a second segment that are separated by a section that has a high impedance to currents in the higher frequency band.
With respect to claims 29-31, those claims also recite allowable subject matter by the virtue of their dependency on claim 28.
With respect to claim 32, the prior art of record does not anticipate nor render obvious a base station antenna comprising: an array of lower frequency band radiators; an array of higher frequency band radiators; and a first parasitic element that includes a first metal arm, a second metal arm and a first inductive element coupled between the first metal arm and the second metal arm, wherein each of the lower frequency band radiators comprises first and second crossed dipoles that are positioned at a height of about one-quarter of a wavelength of a frequency within
the lower frequency band above a metal groundplane.
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, 6:30 am - 3:00 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:
Patent Center
Patent Center (https://www.uspto.gov/patents/apply/patent-center) to file and manage your applications and requests.
Patent Center has 100% of the functionality of EFS-Web and Private PAIR, and is available to all users for electronic filing and management of patent applications.
/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 Recited in the original independent claim 1
2 Recited in the original claim 14
3 Recited in the original claim 16
4 See Pages Appeal Brief filed on 09/12/2019, Pages 3-20
5 Recited in the original independent claim 1
6 Recited in the original claim 14
7 Recited in the original claim 16