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.”
Claim Interpretation
During examination, claims are given the broadest reasonable interpretation (BRI) 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.
Lastly, since the earliest filing date for the application is November 21, 2019, which is after March 16, 2013, the first inventor to file AIA -provisions applies.
Rejections under 35 U.S.C. 251
The following is a quotation of the MPEP 1412.01:
“To satisfy the original patent requirement where a new invention is sought by reissue, “… the specification must clearly and unequivocally disclose the newly claimed invention as a separate invention.” Antares Pharma, Inc., 771 F.3d at 1363, 112 USPQ2d at 1871. Accordingly, claims drawn to an invention comprising a newly claimed combination of features that were only disclosed in the original patent as suggested alternatives (and not as a single combination) or only as part of the original invention and not as an invention separate from the original invention would not satisfy the original patent requirement. See also Forum US, Inc. v. Flow Valve, LLC, 926 F.3d 1346, 1352, 2019 USPQ2d 221227 (Fed. Cir. 2019) (“nowhere do the written description or drawings disclose that arbors are an optional feature of the invention. Even if a person of ordinary skill in the art would understand that the newly claimed, arbor-less invention would be possible, that is insufficient to comply with the standard set forth in Industrial Chemicals [315 U.S. 668 (1942)] and Antares.”).” (emphasis added)
Claims 18-43 are rejected under 35 U.S.C. 251 for not complying with the original parent requirement.
The Examiner has considered the Applicant’s remarks, filed on November 14, 2024, showing statement of support for new claims 18-43, however the Examiner was unable to locate pertinent portions of the disclosure which would clearly disclose “new embodiments” operating at satellite and radio spectrums.
For instance, summary of various embodiments recited in column 1, line 59 to column 2, line 30 is directed to communication in 5G spectrum, thus the physical structure of the antenna depicted in Figures 4, 5A, 5B supports that spectrum. The Examiner is aware that the specification briefly mentions satellite spectrum, however this appears to be presented as mere alternative without a dedicated embodiment linked to this functionality.
Accordingly, satellite and radio spectrums recited in claims 18-43, “were only disclosed in the original patent as suggested alternatives (and not as a single combination) or only as part of the original invention and not as an invention separate from the original invention [and] would not satisfy the original patent requirement”.
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 1-18, 20-26 and 28-43 are rejected under 35 U.S.C. 103 as being unpatentable over Franson et al (US Publication No. 2021/0005977) in view of Veihl et al (US Publication No. 2019/0115664).
With respect to claims 1, 9, 18, 26, 34 and 35-43, Franson teaches a patch array comprising: a routing substrate having a plurality of layers for routing signals (substrate 117, Abstract wherein “one or more interconnect layers may be disposed on the molding material”); a plurality of printed circuit board (PCB) patches (Antenna element 120 (i.e. patch) may be printed on a top surface of substrate 117, or may be disposed within substrate 117 beneath the top surface, para. [0022]. In addition, claim 9, teaches that antenna element is a patch antenna element), each PCB patch having at least one through-via and surface mounted to the routing substrate (a plurality of probe feeds 114 feeding a respective plurality of antenna elements 120 may be considered an array of vias extending through dielectric 117, para. [0022], see also Figure 2A. Additionally, as depicted in Figure 2B, vias Vg and Vs further connect patch antenna to the routing substrate portion 150), each of the PCB patches comprising communication circuitry configured to communicate in the 5G spectrum operating at relative bandwidths, within a given spectrum of the 5G spectrum, of between about 8 percent and about 70 percent (para. [0026], wherein RF signal received via antenna is routed. The RF frequency (3KHz – 300 GHz) includes 5G band and satellite band).
Franson, however does not explicitly teach wherein the routing substrate and the PCB patches are printed circuit boards fabricated at the board level using standard printed circuit board fabrication processes and design rules.
On the other hand, Veihl teaches a broadband stacked patch antenna wherein the routing substrate and the PCB patches are printed circuit boards fabricated at the board level using standard printed circuit board fabrication processes and design rules (para. [0096] and [0169]).
It would have been obvious to one of ordinary skill in the art at the time the invention was made to implement substrate and patch antenna of Franson, as printed boards fabricated at the board level, as taught by Veihl, in order to reduce the cost of fabrication of the antenna.
With respect to claims 2 and 10, Veihl further teaches the patch array wherein the relative bandwisth are between about 24 GHz and 49 GHz (para. [0005], wherein the antenna is capable of hugher frequencies, the millimeter wave spectrum, which includes frequencies from approximately 25 GHz – 300 GHz).
With respect to claims 3, 11, 20 and 28, Franson teaches the patch antenna wherein each PCB patch is surface mounted to the routing substrate using ball grid array (Figure 2 B, wherein the balls are denoted with numerals 147g, 147s and 147g, and wherein as illustrated in Figure 1, each there are multiple patches (120) which are attached through substrate 117 to the substrate 150 in the same manner, forming ball grid array).
With respect to claims 4, 12, 21 and 29, Franson and Veihl indirectly teach the patch antenna wherein the given spectrum has a highest frequency and a lowest frequency, the relative bandwidth being the difference between the highest and lowest frequencies divided by the midpoint frequency between the highest and lowest frequencies (this is standard formula for calculating relative frequency bandwidth/fractional bandwidth, the POSITA would be aware that the relative frequency band can be calculated for an antenna operating in a given frequency band).
With respect to claims 5, 13, 22 and 30, Franson teaches the patch antenna wherein the routing substrate has standard vias (Figure 2B, wherein vias 114, Vg and Vs are considered standard vias).
With respect to claims 6, 14, 23 and 31, Franson teaches the patch array antenna wherein the routing substrate and the plurality of PCB patches are free of micro-vias (Figure 2B, wherein vias 114, Vg and Vs are considered standard vias, not micro-vias).
With respect to claims 7, 15, 24 and 32, Franson teaches the patch antenna having stacked structure (para. [0021]), but he does not explicitly recite the patch antenna wherein at least one of the PCB patched is a stacked patch.
On the other hand, Veihl teaches the patch antenna wherein at least one of the PCB patched is a stacked patch (Abstract, para. [0008], [0018], [0042]).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed, to utilize stacked patch antenna design of Veihl, in the patch antenna design of Franson, in order to improve broadband operation and enhance performance by improving radiation patterns and directivity.
With respect to claims 8, 16, 25 and 33, Veihl teaches the patch antenna wherein at least one of the PCB patched includes a plurality of antennas (Abstract, para. [0008], [0018], [0042], wherein stacked patch includes multiple antennas).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed, to utilize stacked patch antenna design (i.e. patch including a plurality of antennas) of Veihl, in the patch antenna design of Franson, in order to improve broadband operation and enhance performance by improving radiation patterns and directivity.
With respect to claim 17, Franson teaches the method, wherein providing the plurality of PCB patches comprises forming the plurality of PCB patches on a single printed circuit board (as illustrated in Figure 1).
Claims 19 and 27 are rejected under 35 U.S.C. 103 as being unpatentable over Franson et al (US Publication No. 2021/0005977) in view of Veihl et al (US Publication No. 2019/0115664) and further in view of Edenfield et al (US Publication No. 2020/0365999), hereinafter referred to Edenfield.
With respect to claims 19 and 27, Franson and Veihl teach all the limitation disclosed in claim 18 and 26, however they do not explicitly state that the satellite spectrum includes at least one of the Ka-band, the Ku-band, or the X-band.
On the other hand, Edenfield teaches Ka-band printed phased antenna wherein satellite spectrum includes Ka-band.
It would have been obvious that Franson’s antenna supports satellite band including Ka-band based on Edenfield’s teaching, because Franson teaches RF frequency range which includes satellite band.
Response to Arguments
Applicant's arguments filed July 22, 2026 have been fully considered but they are not persuasive.
Argument #1: On pages 8 and 9 of the response, the Applicant has cited Figure 1 and Col. 3, lines 24-37 and asserted the embodiments disclosed in the cited passage and Figure, disclose embodiments in the original patent and comply with the original patent requirement.
Examiner’s Response: The Examiner has not found the Applicant’s argument persuasive; hence the rejection is maintained. The Examiner has reviewed the cited portions of the original disclosure and concluded that the teaching is insufficient. More specifically, while the cited passages mention satellite communication, there is no explanation for how the antenna structure is modified/adjusted to support such communication.
If the Applicant maintains that the same antenna is used for 5G and satellite communications, the Applicant is invited to provide more explanation. Additionally, it is also advised to file an affidavit or declaration under 37 CFR 1.132 in support of such an argument.
Argument #2: “Applicant respectfully submits that Franson refers to the RF frequency (3KHz - 300 GHz). In contrast to the current claims and the pending rejections, Franson has not been shown to teach or suggest operating at relative bandwidths, within a given spectrum of the 5G spectrum, of between about 8 percent and about 70 percent. In fact, nowhere in Franson are the terms - or the concepts of - "relative bandwidths" and "percent" used or implied.
Therefore, Applicant respectfully submits that Franson has not been shown to teach or suggest "each of the PCB patches comprising communication circuitry configured to communicate in the 5G spectrum operating at relative bandwidths, within a given spectrum of the 5G spectrum, of between about 8 percent and about 70 percent" as recited in claim 1 (emphasis added). Veihl has not been shown to, and does not, remedy at least this deficiency of Franson”1.
Examiner’s Response: The Examiner did not find the above argument persuasive. According to col. 2, lines 14-21, the “relative bandwidth is considered to be the difference between the highest and lowest frequencies of the given spectrum divided by the midpoint frequency between the highest and lowest frequencies”. Franson, teaches operational frequency bands including 3KHz - 300 GHz, and relative bandwidth of 5G spectrum is included in such a range and so is spectrum of “between about 8 percent and about 70 percent”.
Furthermore, the Examiner would like to note that claims do not recite any other structural limitations including hardware and/or software, which would differentiate the claimed invention over the cited prior art. This is also evident from the claims. For instance, claims 1 and 18 disclose essentially the same patch antenna but one supports 5G communication and the one disclosed in claim 18 is used for satellite communication. Similarly, Franson teaches using patch antenna for “variety of applications at microwave and millimeter wave frequencies, such as in aircraft, satellites, vehicles, and base stations for general land-based communications” (para. [0002], wherein 5G falls under “land-based communication”) and Veihl explicitly teaches patch antenna being used in 5G communication (para. [0006]).
Accordingly, as long as the prior art teaches the structure of the claimed antenna, the rejection is proper.
Lastly, if the Applicant wishes to schedule an Interview, the Applicant is invited to contact the Examiner directly to arrange such a meeting or do so via Automated Interview Request (AIR) form, which can be accessed from USPTO Patent Center.
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, 5:30 am - 2:00 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Andrew Fischer can be reached on 571-272-6779.
All correspondence relating to this reissue proceeding should be directed:
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/ANGELA M LIE/Primary Examiner, Art Unit 3992
Conferees:
/LUKE S WASSUM/Primary Examiner, Art Unit 3992
/H.B.P/
Hetul PatelSupervisory Patent Examiner, Art Unit 3992
1 Applicant’s Remarks filed on July 22, 2026 – Page 10
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