The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The disclosure is objected to because of the following informalities: Page 1, in paragraph [0001], second line therein, note that updated status information (i.e. patent number, issue date, etc.) should be provided for the parent patent application for clarity and completeness of description. Page 12, in paragraph [0048], first line therein, note that the recitation of “(FIG. 3)and” should be separated for grammatical clarity. Appropriate correction is required.
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: Note that the specification needs to provide a corresponding description of the material for the layer closest to the plurality of phase shifters being one of the materials, as specified in claim 4.
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 1-8 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 1, line 4, note that it is unclear whether the second substrate being “disposed on” the first substrate would be an accurate characterization of this aspect of the invention. Note that in each disclosed embodiment, there is an intervening layer disposed between the first and second substrates. Accordingly, appropriate clarification is needed.
In claim 3, line 2, note that the recitation of “corresponding to the one of the plurality of patches” would be an accurate characterization of this aspect of the invention (i.e. which “one” of the plurality of patches would have been intended by such a recitation?).
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; 2, 3, 5; 6, 7 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over corresponding claims 1; 5; 2, 3 of U.S. Patent No. 11749872. Although the conflicting claims are not identical, they are not patentably distinct from each other because the cited patent claims correspond to subject matter set forth in the cited application claims. For example, the plurality of patches being on the inner side of the second substrate in patent claim 1 places such patches “between” the first and second substrates and the location of the dielectric layer in patent claim 1 is disposed between the first and second substrates and thus places the second substrate “on” (i.e. in contact with) the first substrate through the dielectric layer. Accordingly, the patent claims meet the application claims under an “anticipation analysis” standard of obviousness double patenting.
Claims 1; 3, 5; 4; 6; 7; 8 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over corresponding claims 1; 6; 2,3,4; 7; 8; 9 of U.S. Patent No. 12160026. Although the conflicting claims are not identical, they are not patentably distinct from each other because the cited patent claims correspond to subject matter set forth in the cited application claims. For example, the plurality of patches being on the inner side of the second substrate in patent claim 1 places such patches “between” the first and second substrates and the location of the dielectric layer in patent claim 1 is disposed between the first and second substrates and thus places the second substrate “on” (i.e. in contact with) the first substrate through the dielectric layer. Accordingly, the patent claims meet the application claims under an “anticipation analysis” standard of obviousness double patenting.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Tsai (‘026) and (‘872) are the patents resulting from the allowed parent patent applications that was applied in the above obviousness double patenting rejections. Jakoby et al and Fang et al pertain to liquid crystal phase shifters associated with a patch radiator. Dolfi et al pertains to a liquid crystal phase shifter associated with plural phase shift lines.
Any inquiry concerning this communication should be directed to BENNY T LEE at telephone number (571) 272-1764.
/BENNY T LEE/PRIMARY EXAMINER
ART UNIT 2843
B. Lee
Prosecution Insights