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 .
Response to Amendment
The amendment filed on 04/22/2026 has been entered. Claims 1-4 and 6-9 are currently pending. Applicant’s amendments have overcome the drawing objections and 35 USC 112 rejections previously set forth in the Non-Final Office Action mailed 12/30/2025.
Response to Arguments
Applicant’s arguments with respect to claim 1 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant argued that “The Office Action alleges that Reece discloses "a first attachment structure (201, 202, fig. 12-d, 12e, 206, fig. 12b, para [0083]) capable of attaching the at least a portion of the antenna element (102a, 102b, 210a, 210b) to the base is disposed at a position substantially symmetrical to a position to which the antenna element is attached with regard to a center of the base (fig. 12a, 12b)." See Office Action page 6.
Reece discloses that the two tabs 201 and 202 are used for mounting and grounding and the tabs extend through slots 206 and are soldered to the grounding pads 115. See paragraph [0083] and FIG. 12(b) of Reece. However, in Reece, the slots 206 are disposed closer to the center of the common ground plane 101 than to an outer edge thereof.
Accordingly, Reece clearly does not teach or suggest, inter alia, that "in the plan view, the two first attachment structures are disposed closer to an outer edge of the base than to the center of the base," as recited by amended claim 1 (emphasis added), and the Office Action does not assert otherwise.
Therefore, in view of the above deficiencies, Reece clearly fails to teach or suggest
every element as recited by amended independent claim 1. At least for the aforementioned reasons, claim 1 is not anticipated by Reece under 35 U.S.C. §102(a)(1) and (a)(2).”
Examiner respectfully disagree because Reece still reads on claim 1 with the two first attachment structures (the two tabs 134, 135 of antenna elements 102, figs. 13a-13b and the slots 206, fig. 12b) used to mount the antenna elements 102 are disposed closer to an outer edge of the base 101 than to the center of the base (figs. 12a-12b).
However, for compact prosecution, claim 1 is now being rejected under 35 U.S.C. 102(a)(1) as being anticipated by Pan et al, CN-2867312-Y as explained below. Therefore, the arguments are now moot.
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 features must be shown or the feature(s) canceled from the claim(s):
Claim 2 recites “two second attachment structures capable of attaching the case and the base, wherein the two second attachment structures are disposed rotationally symmetrically with respect to the center of the base”, fig. 3 shows screw holes 114A used to receive screws 510A to attach the case 550A and the base 110A, and the two second attachment structures 510A are not disposed rotationally symmetrically with respect to the center of the base 110A.
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 § 112
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 2 and 9 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 applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 2 recites “two second attachment structures capable of attaching the case and the base, wherein the two second attachment structures are disposed rotationally symmetrically with respect to the center of the base” but the spec does not describe this limitation. Fig. 3 shows screw holes 114A used to receive screws 510A to attach the case 550A and the base 110A, and the two second attachment structures 510A are not disposed rotationally symmetrically with respect to the center of the base 110A.
Claim 9 recites “wherein in the plan view, the two first attachment structures are substantially circular” but this limitation is not described in the spec.
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 8-9 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The term “substantially square” in claim 8 is a relative term which renders the claim indefinite. The term “substantially square” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is not clear what the difference between “square” and “substantially square”. For the purpose of examination, Examiner interprets the claim as best understood.
The term “substantially circular” in claim 9 is a relative term which renders the claim indefinite. The term “substantially circular” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is not clear what the difference between “circular” and “substantially circular”. For the purpose of examination, Examiner interprets the claim as best understood.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 4 and 7-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Pan et al, CN-2867312-Y (hereinafter Pan).
Regarding claim 1, Pan discloses the following:
an antenna device comprising:
a base (1, fig. 1);
two first attachment structures (fastener to insert into mounting holes 8, page 2, MODE-FOR-INVENTION) disposed at the base; and
an antenna element attached to the base via at least one of the two first attachment structures (page 2, MODE-FOR-INVENTION), wherein
in a plan view, the two first attachment structures are disposed rotationally symmetrically with respect to a center of the base (fig. 1, page 2, MODE-FOR-INVENTION: the base 1 can be square and mounting holes 8 are disposed rotationally symmetrically with respect to a center of the base 1) and
in the plan view, the two first attachment structures are disposed closer to an outer edge of the base than to the center of the base (fig. 1: fastener to insert into mounting holes 8).
Regarding claim 4, Pan discloses wherein the base is rotationally symmetric in the plan view (page 2, MODE-FOR-INVENTION: the base 1 can be square).
Regarding claim 7, Pan discloses wherein each of the two first attachment structures is configured to be separable from the antenna element (page 2, MODE-FOR-INVENTION: the two first attachment structures are fasteners so they can be separable from the antenna element).
Examiner’s note - Regarding the recitation that an element is “configured to” perform a function, it is the position of the office that such limitations are not positive structural limitations, and thus, only require the ability to so perform. In this case the prior art applied herein is construed as at least possessing such ability.
When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01, I.)
Regarding claim 8, as best understood, Pan discloses wherein each of the two first attachment structures (fastener to insert into mounting holes 8, fig. 1, page 2, MODE-FOR-INVENTION) is disposed at the base along a substantially square shape (page 2, MODE-FOR-INVENTION: the base 1 can be square).
Claim Rejections - 35 USC § 103
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.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Pan as applied to claim 1 above, and in view of Reece et al, US-20020015000-A1 (hereinafter Reece).
Regarding claim 2, Pan does not disclose the antenna device according to Claim 1, further comprising:
a case forming an accommodation room accommodating the antenna element; and
two second attachment structures capable of attaching the case and the base, wherein
the two second attachment structures are disposed rotationally symmetrically with respect to the center of the base.
Reece suggests the antenna device further comprising:
a case (152, fig. 12a) forming an accommodation room accommodating the antenna element (102a, 102b, 210a, 210b); and
two second attachment structures (162, 160) capable of attaching the case (152) and the base (101, 150), wherein
the two second attachment structures (162, 160) are disposed rotationally symmetrically with respect to the center of the base (para [0079]: ground plane/base 101 can be square).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide a case and second attachment structures as suggested in Reece to the antenna device taught in Pan as claimed for the purpose of providing protection to the antenna element and other components inside the case from external impact.
Examiner’s note - Regarding the recitation that an element is “capable of” perform a function, it is the position of the office that such limitations are not positive structural limitations, and thus, only require the ability to so perform. In this case the prior art applied herein is construed as at least possessing such ability.
When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01, I.)
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Pan as applied to claim 1 above, and in view of JP-6979325-B2.
Regarding claim 3, Pan does not disclose the antenna device according to Claim 1 further comprising: a fastener to fasten the base to a vehicle, wherein at least a portion of the fastener overlaps with the center of the base.
JP-6979325-B2 suggests the antenna device further comprising: a fastener (20, fig. 3) to fasten the base to a vehicle (page 5, last para), wherein at least a portion of the fastener overlaps with the center of the base (fig. 2, 3).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide a fastener as suggested in JP-6979325-B2 to the antenna device taught in Pan as claimed for the purpose of attaching the antenna device to the vehicle in order to provide wireless communication.
Claims 6 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Pan as applied to claim 1 above, and in view of Wu, US-20110298665-A1.
Regarding claim 6, Pan does not disclose wherein each of the two first attachment structures includes a screw, but Pan disclose the two first attachment structures are fasteners (page 2, MODE-FOR-INVENTION).
Wu suggests wherein each of the two first attachment structures (fastener 34, fig. 1) includes a screw (para [0023]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide screw as suggested in Wu to the antenna device taught in Pan as claimed for the purpose of simplifying the manufacturing process and keeping the antenna element in place under vibration in order to maintain the antenna’s performance.
Regarding claim 9, as best understood, Pan does not disclose wherein in the plan view, the two first attachment structures are substantially circular.
Wu suggests wherein in the plan view, the two first attachment structures are substantially circular (34, fig. 2).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to design the two first attachment structures taught in Pan to be circular as suggested in Wu as claimed for the purpose of simplifying the manufacturing process and providing an aesthetic look to the final product.
Citation of Pertinent Art
Suffolk et al, US-20170229767-A1, fig. 3 could read on claim 1.
Gimersky, EP-2937933-A1, fig. 6: antenna elements 1 are mounted at the edge of the base 4
Caratelli, CN-106063371-A, fig. 1: antenna elements 102 are mounted at the edge of the base 105
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 ANH N HO whose telephone number is (571)272-4657. The examiner can normally be reached M-F 8:00-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Dameon Levi can be reached at (571)272-2105. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAMEON E LEVI/Supervisory Patent Examiner, Art Unit 2845
/ANH HO/Examiner, Art Unit 2845
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