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 .
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 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.
Claims 1-5 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 10,931,325. Although the claims at issue are not identical, they are not patentably distinct from each other because U.S. Patent No. 10,931,325 discloses everything except for reduce a connection length from the at least one antenna element to the modem. However, this is an inherent feature from U.S. Patent No. 10,931,325 since length between the modem and the at least one antenna element in the antenna assembly is obvious to have a shorter length when compare with length between the modem and the vehicle internal router, which is away from the antenna assembly. Also note that U.S. 10,931,325 does not recite a combiner. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have a combiner in U.S. 10,931,325, since all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art. See KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385 (2007). In this case, a single cable can be used to carry power and data/internet using combiner, and this yields predictable results to one of ordinary skill in the art. U.S. Patent No. 10,931,325 also does not teach a housing having a length ranging from 100 to 250 millimeters (mm), a width ranging from 50 to 100mm, and a height ranging from 50 to 90mm, and the base, the lid and the combiner positioned within the housing. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have a housing having a length ranging from 100 to 250 millimeters (mm), a width ranging from 50 to 100mm, and a height ranging from 50 to 90mm, and the base, the lid and the combiner positioned within the housing in U.S. Patent No. 10,931,325, since all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art. See KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385 (2007). In this case, having a housing in order to position over and protect the internal components of the wireless communication assembly for a vehicle is already well-known in the art, and that a particular dimension of the housing depends on the internal components and the vehicle size for aerodynamics, and that particular dimension can be determined through routine experimentation by one of ordinary skill in the art without yielding any unpredictable result.
Claims 1-5 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 11,527,817. Although the claims at issue are not identical, they are not patentably distinct from each other because U.S. 11,527,817 does not recite a combiner. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have a combiner in U.S. 11,527,817, since all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art. See KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385 (2007). In this case, a single cable can be used to carry power and internet using combiner, and this yields predictable results to one of ordinary skill in the art. U.S. Patent No. 11,527,817 also does not teach a housing having a length ranging from 100 to 250 millimeters (mm), a width ranging from 50 to 100mm, and a height ranging from 50 to 90mm, and the base, the lid and the combiner positioned within the housing. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have a housing having a length ranging from 100 to 250 millimeters (mm), a width ranging from 50 to 100mm, and a height ranging from 50 to 90mm, and the base, the lid and the combiner positioned within the housing in U.S. Patent No. 11,527,817, since all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art. See KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385 (2007). In this case, having a housing in order to position over and protect the internal components of the wireless communication assembly for a vehicle is already well-known in the art, and that a particular dimension of the housing depends on the internal components and the vehicle size for aerodynamics, and that particular dimension can be determined through routine experimentation by one of ordinary skill in the art without yielding any unpredictable result.
Claims 1-5 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 11,764,463. Although the claims at issue are not identical, they are not patentably distinct from each other because U.S. U.S. 11,764,463 discloses everything except minor difference in wording. U.S. Patent No. 11,764,463 also does not teach a housing having a length ranging from 100 to 250 millimeters (mm), a width ranging from 50 to 100mm, and a height ranging from 50 to 90mm, and the base, the lid and the combiner positioned within the housing. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have a housing having a length ranging from 100 to 250 millimeters (mm), a width ranging from 50 to 100mm, and a height ranging from 50 to 90mm, and the base, the lid and the combiner positioned within the housing in U.S. Patent No. 11,764,463, since all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art. See KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385 (2007). In this case, having a housing in order to position over and protect the internal components of the wireless communication assembly for a vehicle is already well-known in the art, and that a particular dimension of the housing depends on the internal components and the vehicle size for aerodynamics, and that particular dimension can be determined through routine experimentation by one of ordinary skill in the art without yielding any unpredictable result.
Claims 1-5 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 12,113,274. Although the claims at issue are not identical, they are not patentably distinct from each other because U.S. U.S. 12,113,274 discloses everything except minor difference in wording. U.S. Patent No. 12,113,274 also does not teach a housing having a length ranging from 100 to 250 millimeters (mm), a width ranging from 50 to 100mm, and a height ranging from 50 to 90mm, and the base, the lid and the combiner positioned within the housing. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have a housing having a length ranging from 100 to 250 millimeters (mm), a width ranging from 50 to 100mm, and a height ranging from 50 to 90mm, and the base, the lid and the combiner positioned within the housing in U.S. Patent No. 12,113,274 since all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art. See KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385 (2007). In this case, having a housing in order to position over and protect the internal components of the wireless communication assembly for a vehicle is already well-known in the art, and that a particular dimension of the housing depends on the internal components and the vehicle size for aerodynamics, and that particular dimension can be determined through routine experimentation by one of ordinary skill in the art without yielding any unpredictable result.
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 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 and 3-5 are rejected under 35 U.S.C. 103 as being unpatentable over Annett et al. (US 2002/0156576; hereinafter “Annett”) in view of Alam et al. (US 10,143,030; hereinafter “Alam”), Binder et al. (US 2018/0278694; hereinafter “Binder”), and Panorama (see NPL: Panorama Antennas Ltd., "GPSD Multifunction MiMo Antenna", product datasheet, 23 June 2016. Retrieved from the internet <URL: https://www.co-star.co.uk/_uploads/pdfs/bd6802a7-d3e9-492d-b1bc-cec21acd11af.pdf>).
Regarding claim 1, Annett teaches a wireless communication assembly for a vehicle (Figs. 1, 2) comprising:
a housing (1);
a base (10, 12) configured for attachment to a roof of a vehicle ([0025]: “…The whole assembly would normally be mounted on the roof of the vehicle…”), the base positioned within the housing and comprising a body (12), an interior surface (interior surface of 10) and a sidewall (sidewall of 10);
a modem (8) disposed within the base, the modem comprising a communication chip ([0032]: “…preferred radio modem is the type that provides a continuous cellular connection to the internet such as CDPD, CDMA or GPRS…”);
a top lid (2-7 serve as lid for 10, 12) for the base, the top lid positioned within the housing and comprising at least one antenna element (2 and/or 4) disposed on an exterior surface of the top lid (2, 4 on top of 5-7);
a communication cable (11) connected to the modem at one end (one end of 11 is connected to the modem through 7; [0025-0026]: “…connecting cable 11 for power and possibly other connections to devices in the vehicle…”; [0031-0033]: “…by a single cable 11…generate stable output for… radio modem 8…microprocessor can also interface several external local devices via the single cable 11…”) and configured for connection to a vehicle internal device at an opposite end (other end of 11 to vehicle device inside the vehicle; [0025-0026]);
wherein the top lid and the base act as an electro-magnetic barrier for the modem (not explicit, but 2-7 acts as electromagnetic barrier for 8; note that the absence of a disclosure relating to the function does not defeat the finding of anticipation since it is well settled that the recitation of a new intended use for an old product does not make a claim to that old product patentable. In re Schneller, 44 USPQ 2d 1429 (Fed Cir. 1997); In re Spada, 15 USPQ 2d 1655 (Fed. Cir. 1990); and In re Benner, 82 USPQ 49 (CCPA 1949). In this case, 2-7 contain circuit board and antenna, which inherently acts as an EM barrier for the modem 8 below);
wherein a connection from the vehicle internal device to the modem by the communication cable allows the modem to be located remotely from the vehicle internal device and closer to the at least one antenna element to reduce a connection length from the at least one antenna element to the modem to mitigate mid-band frequency loss (inherently true for Annett, since 8, 2 and 4 are all in dome 1 on roof of a vehicle, 8 must be closer to 2/4 (with a reduced connection length) than the vehicle internal device; note since the structural relationship is the same, this connection also mitigate mid-band frequency loss).
Annett does not teach the vehicle internal device is a vehicle internal router. However, Alam (Figs. 1, 2) teaches a communication cable (see line from 114 to 126 in Fig. 1) connected to an antenna assembly (114, Fig. 1) at one end and configured to connect to a vehicle internal router (204 of 126, Figs. 1, 2) at an opposite end, and the vehicle internal router is located within a vehicle (inside 106, Fig. 1). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the vehicle internal device is a vehicle internal router in Annett, as taught by Alam, in order to route internet and manage network traffics for various devices.
Annett does not teach a combiner positioned within the housing and configured to input a wide area network connection from the router for send and receive data using a communication protocol. However, Binder teaches a combiner (86, Fig. 8) configured to input a wide area network connection ([0270]: “…typically via a WAN network…”; note this can be applied to vehicle as shown in Fig. 24) from a router (81, Fig. 8; [0477]: “…another device 81 such as … a router…”; also see router 21 in Figs. 24) for send and receive data to and from the internet (16, Fig. 24) using a 3G and 4G communication protocols (claim 31: “…third generation (3G)…. Fourth generation (4G)…”). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have a combiner positioned within the housing (note this is modified to Annett as part of internal components inside the housing) and configured to input a wide area network connection from the router for send and receive data using a communication protocol in Annett in view of Alam, as taught by Binder, in order to provide power and network connection on the same cable
The modified Annett above teaches 3G and 4G communication protocols, but does not explicitly teach a 5G communication protocol. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have a communication protocol is a 5G communication protocol in Annett in view of Alam and Binder, since all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art. See KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385 (2007). In this case, using a 5G communication protocol allow user to receive a newer and faster 5G mobile network, and this yields predictable results to one of ordinary skill in the art.
The modified Annett above does not explicitly teach the housing having a length ranging from 100 to 250 millimeters (mm), a width ranging from 50 to 100mm, and a height ranging from 50 to 90mm. However, Panorama teaches a housing (see shark fin housing in pg. 1) having a length ranging from 100 to 250 millimeters (mm), a width ranging from 50 to 100mm, and a height ranging from 50 to 90mm (see dimension in pgs. 1-2). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the housing having a length ranging from 100 to 250 millimeters (mm), a width ranging from 50 to 100mm, and a height ranging from 50 to 90mm in Annett in view of Alam and Binder, as taught by Panorama, in order to provide better aerodynamic on top of the vehicle.
Regarding claims 3 and 4, Annett in view of Alam, Binder and Panorama teaches the wireless communication assembly according to claim 1. Annett does not explicitly teach wherein the base has a width ranging from 2.5 inches to 3.5 inches, and a length ranging from 6.0 inches to 8.0 inches, or the base has a height ranging from 0.5 inch to 1.0 inch. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the base has a width ranging from 2.5 inches to 3.5 inches, and a length ranging from 6.0 inches to 8.0 inches, or the base has a height ranging from 0.5 inch to 1.0 inch in the modified Annett above, since all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art. See KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385 (2007). In this case, the width, length, and height of the base can be designed in any dimension and shape depending on the exact function and usage of the antenna assembly, and these dimensions can be easily determined by one of ordinary skill in the art and do not provide any unexpected result.
Regarding claim 5, Annett in view of Alam, Binder and Panorama teaches the wireless communication assembly according to claim 1, and wherein the communication chip is a cellular communication chip, a BLUETOOTH (IEEE 802.15) communication chip, or a WiFi (802.11) communication chip ([0032]: “…preferred radio modem is the type that provides a continuous cellular connection to the internet such as CDPD, CDMA or GPRS…”).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Annett in view Alam, Binder, Panorama and further in view of Ayatollahi et al. (US 2017/0317409; hereinafter “Ayatollahi”).
Regarding claim 2, Annett in view of Alam, Panorama and Binder teaches the antenna assembly according to claim 1. Annett does not explicitly teach wherein the base is composed of an aluminum material. However, Ayatollahi teaches an antenna assembly (Fig. 2; [0004]) comprising: a base (20, Fig. 2) composed of a die cast aluminum material ([0060]: “…metal die-cast such as aluminum…”). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the base is composed of an aluminum material in the modified Annett above, as taught by Ayatollahi, in order to use a material that has good heat dissipation, shielding, and ground property.
Response to Arguments
Applicant's arguments with respect to claims 1-5 have been considered but are moot in view of the new ground(s) of rejection.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES WU whose telephone number is (571)270-7974. The examiner can normally be reached Monday - Friday, 9:00AM - 5:00PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Allen Parker can be reached at (303)297-4722. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JAMES WU/ Primary Examiner, Art Unit 2841
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