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 .
The information disclosure statement filed on 2/11/2025 has been entered. Claims 1-18 are presented for examination.
Double Patenting
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.
Claims 1-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. 12/224.480. Although the claims at issue are not identical, they are not patentably distinct from each other because they essentially recite the same limitations.
Claim 1 is rejected in view 1 of the ‘480 patent in that they both recite:
Claim 1 of the application
Claims 1 and 16 of the ‘480 patent
1. A semiconductor package, comprising:
a multilayer package substrate including a first conductor layer including a hole, a second conductor layer including a patch antenna, and a third conductor layer including a reflector; and
a horn antenna attached to the multilayer package substrate, the horn antenna including a portion vertically aligned with the hole.
1. A semiconductor package, comprising:
a patch antenna formed in a first conductor layer of a multilayer package substrate, the multilayer package substrate comprising conductor layers spaced from one another by dielectric material and coupled to one another by conductive vertical connection layers, the multilayer package substrate having a board side surface opposite a device side surface;
a semiconductor die mounted to the device side surface of the multilayer package substrate spaced from and coupled to the patch antenna; and
an antenna horn mounted to the device side surface and aligned with the patch antenna.
16. A microelectronic device package, comprising:
a multilayer package substrate comprising conductor layers spaced from one another by dielectric material, and comprising vertical connections extending through the dielectric material between the conductor layers and coupling portions of the conductor layers one to another, the multilayer package substrate having a device side surface and an opposite board side surface;
an antenna formed in a first conductor layer at or below the device side surface of the multilayer package substrate; a reflector formed in a second conductor layer of the multilayer package substrate, the reflector aligned with and spaced away from the antenna by the dielectric material toward the board side surface;
a ground plane formed at the device side surface of the multilayer package substrate; an antenna horn mounting structure formed on the ground plane and extending above the device side surface;
an antenna horn positioned on the mounting structure and aligned with the antenna; and
a semiconductor die mounted to the device side surface of the multilayer package substrate and coupled to the antenna.
As can be seen, though the claimed languages are not identical, it would have been obvious that claims 1 and 16 of the ‘480 patent recite all essential limitations of claim 1 of the instant application. Thus, the patent protections have been granted to the earlier filed patent application.
Claim 2 is rejected in view of claims 1 and 16 of the ‘480 patent.
Claim 3 is rejected in view of claim 17 of the ‘480 patent.
Claim 4 is rejected in view of claim 17 of the ‘480 patent.
Claim 5 is rejected in view of claim 19 of the ‘480 patent.
Claim 6 is rejected in view of claims 19 and 20 of the ‘480 patent.
Claim 7 is rejected in view of claims 19-20 of the ‘480 patent.
Claim 8 is rejected in view of claims 19-20 of the ‘480 patent.
Claim 9 is rejected in view of claims 19-20 of the ‘480 patent.
Claim 10 is rejected in view of claims1 and 16 of the ‘480 patent.
Claim 11 is rejected in view of claims 16 and 19-20 of the ‘480 patent.
Claim 12 is rejected in view of claims 16 and 17 of the ‘480 patent.
Claim 13 is rejected in view of claims 1 and 16 of the ‘480 patent.
Claim 14 is rejected in view of claims 1 and 16 of the ‘480 patent.
Claim 15 is rejected in view of claims 1 and 16 of the ‘480 patent.
Claim 16 is rejected in view of claims 1 and 16 of the ‘480 patent.
Claim 17 is rejected in view of claims 1 and 16 of the ‘480 patent.
Claim 18 is rejected in view of claims 1, 16 and 19-20 of the ‘480 patent.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THIEN MINH LE whose telephone number is (571)272-2396. The examiner can normally be reached 6:30-5:00 PM M-Th..
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/THIEN M LE/Primary Examiner, Art Unit 2876
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