CTNF 18/986,528 CTNF 87111 Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia 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 08-33 AIA 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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13. The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer. 08-34 AIA Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11664581 . Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of ‘581 anticipates claim 1 of the instant application by reciting all the limitations of claim 1 of the instant application . 08-34 AIA Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12431610 . Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of ‘610 anticipates claim 1 of the instant application by reciting all the limitations of claim 1 of the instant application . Claim Rejections - 35 USC § 103 07-20-aia AIA 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. 07-21-aia AIA Claim( s) 1-7, 10, and 16-20 i s/are rejected under 35 U.S.C. 103 as being unpatentable over U S 2010/0240327 (“Lambrecht” or “L”) in view of US 2017/0214121 (“Ganchrow” or “G”). R egarding claim 1, L teaches a communication device (100 of fig 4), comprising: a millimetre wave antenna arrangement (421+422) comprising a distributed millimetre wave antenna radiating element (421) and a fixed millimetre wave antenna radiating element (422); and a Radio Frequency Integrated Circuit (102); wherein the distributed millimetre wave antenna radiating element is arranged on at least one second substrate (422 is necessarily arranged on some supporting substrate) spaced apart from the first substrate (422 is spaced apart from 440 and 421); and wherein the Radio Frequency Integrated Circuit is configured to be connected to one of the fixed millimetre wave antenna radiating element and the distributed millimetre wave antenna radiating elements (a switching arrangement--that of 102, as implied by 0032 and 0035-0041—is configured to selectively connect either the fixed millimetre wave antenna radiating element to the Radio Frequency Integrated Circuit or the distributed millimetre wave antenna radiating element to the Radio Frequency Integrated Circuit, as implied by 0032 and 0035-0041). Nevertheless, L fails to teach that the fixed millimetre wave antenna radiating element and the Radio Frequency Integrated Circuit are both arranged on a first substrate. However, G teaches placing antennas on the same PCB as signal sources (fig 6). Thus, it would have been obvious to provide that the fixed millimetre wave antenna radiating element and the Radio Frequency Integrated Circuit are both arranged on a first substrate. To do so would have been nothing more than the simple substation of one mounting means for 421 for another with predictable results. Regarding claim 2, L teaches a switching arrangement (that of 102, as implied by 0032 and 0035-0041) configured to selectively connect either the fixed millimetre wave antenna radiating element to the Radio Frequency Integrated Circuit or the distributed millimetre wave antenna radiating element to the Radio Frequency Integrated Circuit (as implied by 0032 and 0035-0041). Regarding claim 3, L teaches a housing (410) accommodating the millimetre wave antenna arrangement, the Radio Frequency Integrated Circuit, the switching arrangement (as shown), and a processing unit (see 0015), wherein the Radio Frequency Integrated Circuit is connected to the processing unit (the point of providing computing devices like those described in 0015 with a radio is to communicate data to a from the computing processors). Regarding claim 4, L fails to teach that the processing unit comprises a baseband processor on a main Printed Circuit Board. However, it was old and well known to employ baseband processors on the same board as an RFIC. To do so would have been nothing more than the simple substitution of one known means of processing a baseband for the RFIC. Regarding claim 5, L teaches that the millimetre wave antenna arrangement comprises a plurality of distributed millimetre wave antenna radiating elements including the distributed millimetre wave antenna radiating element (421 and 422 are arrays). Regarding claim 6, L fails to teach that the millimetre wave antenna arrangement comprises a plurality of second substrates including the second substrate, the second substrates being spaced apart from one another, and wherein each second substrate includes at least one distributed millimetre wave antenna radiating element. However, it was old and well-known that elements of an array can be supported on separated substrates. Thus, it would have been obvious to provide as claimed above. To do so would have been nothing more than the simple substitution of one means of support for another ubiquitous means. Regarding claim 7, L teaches that each distributed millimetre wave antenna radiating element is connected to the switching arrangement by a flexible transmission line (411 and 412 are flexible). Regarding claim 10, L teaches that the switching arrangement is arranged on the first substrate (the switching occurs before the signal is sent to 421 and 422). Regarding claim 16, L teaches that the processing unit is configured to control the switching arrangement to connect a distributed millimetre wave antenna radiating element and disconnect a fixed millimetre wave antenna radiating element when a change of a user scenario is detected (0032 and 0035 to 0041). Regarding claim 17, L operates for blocking in general (0032 and 0035 to 0041) and so would operate when the change of the user scenario is the blocking of the fixed millimetre wave antenna radiating element by the user’s hand or body. Regarding claim 18, L operates for changes in general (0032 and 0035 to 0041) and so would operate when the change of the user scenario is the change of the orientation of the fixed millimetre wave antenna radiating element in relation to a base station antenna to which the communication device connects. Regarding claims 19, the device of claim 17 would perform the methods claimed thereby. Regarding claim 20, the device of claim 17 would perform the method claimed thereby. It would have been obvious to provide program code to perform the same. The motivation would have been to employ a ubiquitous programmable processor to perform L’s signal assessment and switching . Allowable Subject Matter 12-151-08 AIA 07-43 12-51-08 Claim 8, 9, 11-15 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. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to GRAHAM P SMITH whose telephone number is (571)270-1568. The examiner can normally be reached M-F 10am - 6pm. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Dameon Levi can be reached on 571-272-2105. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent- center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /GRAHAM P SMITH/Primary Examiner, Art Unit 2845 Application/Control Number: 18/986,528 Page 2 Art Unit: 2845 Application/Control Number: 18/986,528 Page 3 Art Unit: 2845 Application/Control Number: 18/986,528 Page 4 Art Unit: 2845 Application/Control Number: 18/986,528 Page 5 Art Unit: 2845 Application/Control Number: 18/986,528 Page 6 Art Unit: 2845 Application/Control Number: 18/986,528 Page 7 Art Unit: 2845 Application/Control Number: 18/986,528 Page 8 Art Unit: 2845 Application/Control Number: 18/986,528 Page 9 Art Unit: 2845
Prosecution Insights