CTNF 19/031,640 CTNF 82498 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. Information Disclosure Statement The information disclosure statement (IDS) submitted on June 4, 2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner. Claim Rejections - 35 USC § 112(a), New Matter 07-30-01 AIA 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. 07-31-01 Claims 1-20 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. Claims 1, 10 and 20 recite a plurality of “metal features,” which is new matter. While the limitation is not new matter on its face, it essentially becomes new matter when considering that this is a continuing application and the limitation in question is a scope-broadening variation of the “ protruding metal features 121,” (fig. 1B) It stands to reason that Applicant’s intent is to broaden the scope of the claimed metal features to encompass metal features which do not protrude. This makes it new matter since protruding metal features are the only metal features supported by the original disclosure. Claim Rejections - 35 USC § 112(b), Indefiniteness 07-30-02 AIA 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. 07-34-01 Claims 1-20 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. Claims 1-3, 5-12 and 14-18 are directed to high frequency wireless device 100; however, some of the claims in this set render the scope of the term “device,” as recited in the preamble, unclear. In claim 1, the limitation “a package substrate including a first surface and a second surface, wherein the second surface is opposite of the first surface, and wherein the second surface is configured to be coupled to a circuit board ” is indefinite as the usage of the “configured to” language makes optional the requisite circuit board. Likewise, in claim 2, the limitation “an antenna configured to be coupled to the circuit board ” is indefinite as the usage of the “configured to” language makes optional the requisite circuit board. It isn’t until claim 4, when the claimed invention finally limits the device to further comprise the requisite circuit board. For examination purposes, claim 1 is interpreted as requiring the limitations recited in claim 4, and claim 10 is interpreted as requiring the limitations recited in claim 14. Claims 2-5, 11-14, 19 and 20: The meaning of the term “antenna” as recited in the claim renders the scope of the claim indefinite, as the term antenna could mean two things in light of the specification. It is not clear whether the claim term is refereeing to the 3D antenna structure 140 or the first/second antennas 141a/141b. For examination purposes, and in accordance with paragraph [0016] of the specification, the claim is interpreted as requiring the 3D antenna structure 140. Claims 5, 14 and 20: The limitation “wherein the antenna is a horn antenna” is indefinite. In addition to the reason given above regarding the term “antenna,” it is unclear how the claimed horn antenna would exist if not for the antenna being a 3D antenna structure. For examination purposes, and in accordance with paragraph [0016] of the specification, the claim is interpreted as requiring the 3D antenna structure 140 shown in FIG. 1B including a first waveguide feed 140a connected to a first antenna 141a and a second waveguide feed 140b connected to a second antenna 141b, where the antennas comprise a horn antenna. Claims 8 and 17 recite “the … connection includes a … slot-fed patch antenna” which appears to correspond to the embodiment shown in figure 4B, and discussed in paragraph [0019], which states, in part, “[t]he RF connection can also include an RF-coupled non-physical signal path or path portion, such as a capacitively coupled portion, for example a slot-fed antenna.” It is unclear how the claim language maps to what is disclosed for this embodiment thus rendering the scope of the claim indefinite. For examination purposes, the claim is interpreted as disclosed in paragraph [0019] and as shown in figure 4B. Claim 20 is directed to a “system” (see preamble). The specification fails to describe the invention in the context of a system thus rendering the scope of the claim indefinite. As best understood, and in accordance with paragraph [0016], the claim appears to be directed to the disclosed high frequency wireless device 100. For examination purposes, the claim is interpreted accordingly. Claim Rejections - 35 USC § 102 07-07-aia AIA 07-07 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 – 07-08-aia AIA (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. 07-15 AIA Claim s 1-20 are rejected under 35 U.S.C. 102( a)(1 ) as being anticipated by parent patent U.S. Patent No. 11,735,806 . Claims 1-20 do not satisfy the requirement of 35 U.S.C. 112(a), new matter, and thus do not receive the benefit of the earlier filing date of the parent application. Accordingly, the ‘806 patent serves as prior art for anticipating claims 1-20 under 35 U.S.C. 102(a)(1). 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 Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-28 of U.S. Patent No. 11,735,806. Although the claims at issue are not identical, they are not patentably distinct from each other because: Claim 1 of the ‘806 patent discloses: A device (col. 6, ln. 5) comprising: a package substrate (col. 6, ln. 11) including a first surface and a second surface, wherein the second surface is opposite of the first surface, and wherein the second surface is configured to be coupled to a circuit board (col. 6, ln. 6); a first radiating structure (col. 6, ln. 13) and a second radiating structure (col. 6, ln. 14) on the first surface; an integrated circuit die (col. 6, ln. 18); a first connection (col. 6, ln. 22) between the integrated circuit die and the first radiating structure; a second connection (col. 6, ln. 22) between the integrated circuit die and the second radiating structure; and a plurality of metal features (col. 6, ln. 25) surrounding the first radiating structure and surrounding the second radiating structure (col. 6, ln. 25-33). Claim 2: The device of claim 1, further comprising an antenna configured to be coupled to the circuit board (col. 6, lns. 7-8). Claim 3: The device of claim 2, wherein the first radiating structure is aligned with a first opening in the antenna, and wherein the second radiating structure is aligned with a second opening in the antenna (col. 6, lns. 13-17). Claim 4: The device of claim 2, further comprising the circuit board coupled to the second surface of the package substrate (col. 6, lns. 11-12), wherein the circuit board is coupled to the antenna (col. 6, lns. 7-8). Claim 5: The device of claim 2, wherein the antenna is a horn antenna (col. 6, lns. 7-10). Claim 6: The device of claim 1, further comprising a dielectric layer (col. 6, ln. 24) on the first surface, wherein the plurality of metal features are arranged on the dielectric layer. Claim 7: The device of claim 1, wherein the plurality of metal features include lead frames, solder balls, wire loops, or stud bumps (col. 6, ln. 37-40). Claims 8 and 9: The ‘806 patent does not explicitly claim wherein the first connection includes a first slot-fed patch antenna, and wherein the second connection includes a second slot-fed patch antenna, as recited in claim 8, and wherein the first connection includes a first via, and the second connection includes a second via, as recited in claim 9. However, official notice is taken that the two claimed connections were well-known RF connections for interconnecting RF chips to antenna feeds/launchers. It would have been obvious to one of ordinary skill in the art to have substituted the RF connection recited by claim 1 of the ‘806 patent with either of the two claimed connections in order to have interconnected the RFIC with the respective radiating structures. Claims 10-20 recite the same features as claims 1-9, and are rejected for the same reasons as discussed above. Allowable Subject Matter 07-43-01 Claim 19 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(a) and (b) or 35 U.S.C. 112 (pre-AIA), 1 st and 2 nd paragraph, set forth in this Office action. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT KARACSONY whose telephone number is (571)270-1268. The examiner can normally be reached 9:00 am - 5:00 pm, Monday - Friday. 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, Dimary Lopez can be reached at (571) 270-7893. 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. /Robert Karacsony/ Primary Examiner, Art Unit 2845 Application/Control Number: 19/031,640 Page 2 Art Unit: 2845 Application/Control Number: 19/031,640 Page 3 Art Unit: 2845 Application/Control Number: 19/031,640 Page 4 Art Unit: 2845 Application/Control Number: 19/031,640 Page 5 Art Unit: 2845 Application/Control Number: 19/031,640 Page 6 Art Unit: 2845 Application/Control Number: 19/031,640 Page 7 Art Unit: 2845 Application/Control Number: 19/031,640 Page 8 Art Unit: 2845 Application/Control Number: 19/031,640 Page 9 Art Unit: 2845 Application/Control Number: 19/031,640 Page 10 Art Unit: 2845
