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.”
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.
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.
Drawing and Specification
The Amendment to drawings and specifications filed on June 26, 2026 have been reviewed and accepted.
Allowable Subject Matter
Claims 22-32 appear to disclose allowable subject matter, however the allowance is 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 26, the prior art of record does not anticipate nor render obvious a base station antenna comprising: arrays of low and high 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.
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.
Response to Arguments
Applicant's arguments filed June 26, 2026 have been fully considered but they are not persuasive.
Argument #1: On page 7, the Applicant contends “the reissue declaration specifically identifies an error, namely the failure of Applicant to present an independent claim to 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. It is well recognized that the failure to claim overlooked aspects of an application is an error that can be corrected by reissue”.
Examiner’s Response: The Examiner finds the above argument persuasive, hence the objection is withdrawn.
Argument#2: On pages 8-11, the Applicant directs his arguments to rejection made under 35 U.S.C. 251 (Recapture). The Applicant alleges “Applicant respectfully submits that all of the pending claims are directed to an "overlooked aspect" of the present invention and hence recapture does not apply to the pending claims. The Office Action appears to treat the omission of some limitations in original independent Claims 1, 14, and 16 as dispositive. However, that approach is incomplete. The recapture inquiry does not end with a determination that a reissue claim is broader than an original patent claim in some respect. The Examiner must also determine whether the broader aspect of the reissue claim relates to subject matter actually surrendered during prosecution of the original patent … As explained in the MPEP:
Claims to separate inventions/embodiments/species that were disclosed but never covered by the claims in the original application prosecution are claims to overlooked aspects. In other words, the reissue claims are drawn to a separate invention or separate species or embodiment that was not covered by a claim (e.g., a generic claim) at any point during the prosecution of the original application. For example, if all the claims were drawn to species A in the original application, reissue claims drawn to species B are considered claims to overlooked aspects, assuming that there was not a generic claim that covered both species A and B in the original application.
… The claims that issued in the patent that is to be reissued are directed to base station antennas that have first frequency band radiating elements/radiators that include features that render the radiating element more transparent to radio frequency ("RF") energy in a second frequency band (independent Claims 1 and 14) or to radiators having such features (independent Claim 16) … In contrast, all of the claims pending in the present reissue application are directed to base station antennas that have parasitic elements that each include first and second dipole arms that are coupled together by an inductive element. Radiating elements and parasitic elements are both well known in the art, and are distinctly different elements … Here, all of the claims in the patent being reissued were directed to cloaking radiating elements/radiators and base station antennas that include such cloaking radiating elements/radiators, while the present reissue application is directed to base station antennas that include parasitic elements that comprise first and second dipole arms that are coupled together by an inductive element. Cloaking radiating elements/radiators and parasitic elements are different species of the genus of RF structures or elements. Thus, the reissue claims are drawn to a separate species/embodiment that was not covered by any generic claim that was pursued at any point during prosecution of the original application”. (emphasis added) “Applicant did not surrender, nor did Applicant argue as to the patentability of, base station antenna configurations having lower and higher frequency band arrays of radiating elements and parasitic elements having metal arms and inductive elements … As there clearly was no generic claim that covered both species (i.e., a claim that would cover both the cloaked radiating element embodiment standing alone as well as the parasitic element embodiment standing alone), the MPEP makes clear that the recapture doctrine does not apply since Applicant is not seeking to broaden protection to a species that was claimed during the prosecution of the original patent, but instead is seeking to obtain claims to a different species that the Applicant did not attempt to protect by itself during the prosecution of the original patent”.
The Examiner’s Response: The Examiner did not find the above argument persuasive because the new claims do not appear to be drawn to another species/embodiment than the one disclosed in the original claims. More specifically, Figure 1 clearly illustrates radiating elements 120 (A&B) and 140 (A&B) along the parasitic elements 150A and 150B. Moreover, the disclosure does not recite multiple embodiments such that one includes radiating elements and another one uses parasitic elements. On contrary, Figure 1 depicts radiating and parasitic elements in a single embodiment. Accordingly, the new claims do not appear to be directed to a new embodiment but rather the same embodiment reciting other parts of an antenna (i.e. narrowing claims in “other” aspects unrelated to surrendered subject matter) and omitting the surrendered subject matter.
Furthermore, the Applicant argues that “The recapture inquiry does not end with a determination that a reissue claim is broader than an original patent claim in some respect. The Examiner must also determine whether the broader aspect of the reissue claim relates to subject matter actually surrendered during prosecution of the original patent”. (emphasis added) The Examiner would like to note that it has not been asserted that the claims are broader in “some respect” in relation to the original patent, but rather they have been broadened such that surrendered subject matter has been omitted from the newly added claims. More specifically, as explained in the recapture rejection above, the prosecution history of the 15/393,333 application indicates that in a Response filed on April 9th, 2019, pages 7-14, the Applicant has argued the limitations which later led to allowance and constitute surrendered subject matter.
Argument #3: In the last argument stretching from page 11 to page 12, the Applicant contends “The Office Action points to the U-shaped lines in FIG. 4C as being inductive elements, but there is nothing in the text of Shtrom '640 that supports this position. Moreover, as is well understood in the art, PIN diodes require a DC bias control line, and it appears that the U-shaped lines in FIG. 4C may be such control lines. In any event, there is no mention in Shtrom '640 of coupling multiple parasitic elements together through inductive elements, nor is there any explanation as to what the U-shaped lines in FIG. 4C represent, nor is it clear how they connect to the reflectors, if at all”.
The Examiner’s Response: This argument has been found persuasive; thus, the art rejection is withdrawn.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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, 7:30 am - 3:30 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Hetul Patel can be reached on 571-272-4184.
All correspondence relating to this reissue proceeding should be directed:
Patent Center
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By Mail to: Mail Stop Reissue
Central Reexamination Unit
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United States Patent & Trademark Office
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Alexandria, VA 22313-1450
By FAX to: (571) 273-9900
Central Reexamination Unit
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Knox Bulding
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/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
Prosecution Insights