The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 shield structure (i.e. claim 11) must be shown or the feature(s) canceled from the claim(s). 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.
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: Then specification needs to provide a corresponding description for the “shield structure” as recited in amended claim 11.
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 11, 22-26 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
In claim 11, note that the amended limitation of a “shield structure” does not appear to find support in the original disclosure and thus such subject matter has been treated as “new matter”.
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 22-26 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 pre-AIA the applicant regards as the invention.
In claim 22, note that it is unclear whether that it is proper to characterize that the “insulator structure” has “an extension”. As can be best determined from the disclosure, it appears that the “extension” is formed in the “first metal plane” and that the “insulator structure” extends into such an “extension”. Appropriate clarification is needed.
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 of this title, 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-3, 6, 10, 21 are rejected under 35 U.S.C. 103 as being unpatentable over Moye et al in view of Soergel et al (both references of record).
Moye et al (e.g. FIGS. 1, 13) discloses a microelectronic support (i.e. substrate 52), comprising: a transmission line (e.g. microstrip lines (54, 202) in FIGS. 1, 13, respectively) forming a conductive trace coupled to a conductive via (e.g. via opening (64, 206) in FIGS. 1, 13, respectively) disposed at the end of the transmission line; a ground plane (e.g. ground plane pattern (56, 210) in FIGS. 1, 13, respectively as per claim 21) arranged around the transmission line to form a coplanar waveguide configuration, as is known in the art. Regarding, claim 6, as evident from either one of FIGS. 1, 13, the ground plane and transmission line have a spacing therebetween about the via end of the transmission line thereby forming an “anti-pad”, which may be either circular in shape (i.e. FIG. 13) or non-circular in shape (i.e. FIG. 1). However, Moye et al does not specifically disclose that the via(s) are connected to the transmission line through via pads having a conductive stub electrically connecting the via pad(s) to the ground plane.
Soergel et al (i.e. Fig. 4) discloses a transmission line trace (i.e. stripline 21) having an end thereof terminated by a via pad (i.e. an enlarged portion of circular shape, as evident from Fig. 4). Moreover, note that a metal portion (i.e. electrical connection 38) that electrically connects the enlarged via pad to a surrounding ground plane (i.e. ground plane 14), such that the connection (38) minimizes undesired parasitic capacitances (e.g. see paragraph [0039]).
Accordingly, it would have been obvious in view of the references, taken as a whole, to have modified the via end of the transmission line in Moye et al to have included a via pad that is electrically connected by a stub (i.e. electrical connection 38) to an adjacent ground plane, such as taught by Soergel et al. Such a modification would have been considered obvious for providing the benefit of minimizing parasitic capacitances, such as taught by Soergel et al, thereby suggesting the obviousness of such a modification. Regarding claim 3, note that as an obvious consequence of the modification, the resultant combination would have necessarily constituted the stub as a radial spoke between the via pad and the surrounding ground plane. Regarding claim 10, note that as an obvious consequence of the modification, the resultant combination necessarily includes the transmission line trace, via pad and via being electrically continuous.
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 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).
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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1-3 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1, 2 of U.S. Patent No. 12107314 in view of Soergel et al (both references of record).
The above cited patent claims disclose the claimed invention respectively recited in independent claim 1, except for one or more metal portions electrically connecting the via pad to the ground plane. Soergel et al (i.e. Fig. 4) discloses a transmission line trace (i.e. stripline 21) having an end thereof terminated by a via pad (i.e. an enlarged portion of circular shape, as evident from Fig. 4). Moreover, note that a metal portion (i.e. electrical connection 38) functioning as a stub electrically connects the enlarged via pad to a surrounding ground plane (i.e. ground plane 14), such that the stub connection (38) minimizes undesired parasitic capacitances (e.g. see paragraph [0039]). Accordingly, it would have been obvious in view of the references, taken as a whole, to have modified the above cited claims of the patent to have included a via pad that is connected to an adjacent ground plane through an electrical stub, such as taught by Soergel et al. Such a modification would have been considered obvious for providing the benefit of minimizing parasitic capacitances, such as taught by Soergel et al, thereby suggesting the obviousness of such a modification.
Applicant's arguments filed 8 July2026 have been fully considered but they are not persuasive.
Regarding the rejection based on prior art, applicants’ contend that the combination of the Moye et al and Soergel et al references fail to teach and or suggest a conductive stub that electrically connects the via pad to the metal layer, as recited in amended independent claim 1.
In response, the examiner respectfully disagrees with applicants’ assertion. In particular, it should be noted that the electrical connection (38) in Soergel et al, while directly connecting the via pad to the surrounding metal layer, does indeed still provide an electrical path or connection between the via pad and the surrounding metal layer. It should be noted that whether the connection is a direct connection or an indirect connection between conductive features, a electrical path or connection is necessarily present. If it is applicants’ intent that the electrical connection should be an indirect or non-contact connection, then such an intent is not reflected by the present claim terminology. As for the “conductive stub” limitation, it should be noted that a “stub” is typically constituted by a short length of conductive line (i.e. such as the short electrical connection (38) in Soergel et al) and thus the “stub” aspect of the claim is indeed met by the above combination. If it is applicants’ intent that the term “stub” is intended to have a specific meaning in independent claim 1, then such a specific meaning is not reflected by the present claim terminology.
Regarding the obviousness double patenting rejection, applicants’ contend that in view of the amendments to the various claims, the amended claims no longer conflict with the claims set forth in the patent and thus no terminal disclaimer is deemed necessary.
In response, the examiner concurs with applicants’ position that independent claims 11 & 17, as amended, sufficiently distinguish over the corresponding claims in the patent as to overcome the obviousness double patenting rejection. However, with respect to independent claim 1 and claims dependent therefrom, the nature of the amendments thereto does not sufficiently distinguish over the obviousness double patenting rejection, as set forth above and the obviousness double patenting rejection continues to be sustained.
Regarding the rejections based on 35 USC 112, paragraphs (a) & (b), applicants’ response is deemed sufficient to overcome these grounds of rejection, as set forth in the previous Office action. However, it should be noted that in view of the amendments to independent claim 11, particularly, the added limitation to a “shield structure” appears to raise a “new matter” issue under 35 USC 112, paragraph (a), as set forth in the above rejection.
Regarding the objection to the specification and claims, applicants’ response is deemed sufficient to overcome the objections to the specification and claims, as set forth in the previous Office action. However, in view of applicants’ amendment of a “shield structure” in independent claim 1, this raises new grounds of objections to the drawings and specification, as set forth above.
Claims 4, 5, 7, 8 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.
Claims 17-20 are allowable over the prior art of record.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication should be directed to Benny Lee at telephone number 571 272 1764.
/BENNY T LEE/PRIMARY EXAMINER
ART UNIT 2843
B. Lee
Prosecution Insights