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 .
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 12,265,870. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of US Pat No. 12,265,870 anticipate the claims of the current application.
Claim 1 of the current application corresponds to claim 1 of US Pat No. 12,265,870.
Claim 2 of the current application corresponds to claim 1 of US Pat No. 12,265,870.
Claim 3 of the current application corresponds to claim 12 of US Pat No. 12,265,870.
Claim 4 of the current application corresponds to claim 13 of US Pat No. 12,265,870.
Claim 5 of the current application corresponds to claim 14 of US Pat No. 12,265,870.
Claim 6 of the current application corresponds to claim 11 of US Pat No. 12,265,870.
Claim 7 of the current application corresponds to claim 15 of US Pat No. 12,265,870.
Claim 8 of the current application corresponds to claim 11 of US Pat No. 12,265,870.
Claim 9 of the current application corresponds to claim 16 of US Pat No. 12,265,870.
Claim 10 of the current application corresponds to claim 17 of US Pat No. 12,265,870.
Claim 11 of the current application corresponds to claim 1 of US Pat No. 12,265,870.
Claim 12 of the current application corresponds to claim 1 of US Pat No. 12,265,870.
Claim 13 of the current application corresponds to claim 1 of US Pat No. 12,265,870.
Claim 14 of the current application corresponds to claim 3 of US Pat No. 12,265,870.
Claim 15 of the current application corresponds to claim 8 of US Pat No. 12,265,870.
Claim 16 of the current application corresponds to claim 10 of US Pat No. 12,265,870.
Claim 17 of the current application corresponds to claim 12 of US Pat No. 12,265,870.
Claim 18 of the current application corresponds to claim 11 of US Pat No. 12,265,870.
Claim 19 of the current application corresponds to claim 11 of US Pat No. 12,265,870.
Claim 20 of the current application corresponds to claim 17 of US Pat No. 12,265,870.
Claim Rejections - 35 USC § 103
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 1-13, and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Li et al. (US Pub No. 2016/0086465) and Appalucci et al. (US Pub No. 2003/0051806).
Regarding claim 1, Li teaches a combination tag (See abstract), comprising:
a substrate carrying a first type inlay including a first antenna element (See abstract and [0028]); and
carrying a second type inlay including a second antenna element, said substrate physically isolating said first type inlay from said second type inlay (See abstract, [0028], and [0035]).
Li does not teach a first and second substrate attached to each other.
Appaluchi teaches an attached multiple substrate circuit design (See abstract).
One of ordinary skill in the art at the time the invention was filed would have been motivated to modify Li’s device to include Appaluchi’s teachings in order to minimize “waste material resulting from making the tags” (Appalucci, [0007]). Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made.
Regarding claim 2, Li does not teach two substrates laminated together.
Appaluchi teaches a first substrate laminated to the second substrate (See [0026]).
Regarding claim 3, Li teaches said first antenna element includes a dipole antenna having a first leg and a second leg and said second antenna element includes a coil antenna, said coil antenna being substantially positioned between said first leg and said second leg of said dipole antenna from a perspective perpendicular to said first substrate and said second substrate (See Fig. 2, [0029], and [0033]).
Regarding claim 4, Li teaches said first leg and a second leg of said dipole antenna include folded-back portions for tuning said dipole antenna to an operational frequency (See [0031]).
Regarding claim 5, Li teaches a center portion of said dipole antenna with said first leg and said second leg form a "U" shape (See Fig. 2, [0029], and [0031]).
Regarding claim 6, Li teaches said first type inlay is a radio frequency identification (RFID) inlay including an integrated circuit and said first antenna element is an RFID antenna element (See [0031]).
Regarding claim 7, Li teaches a radio frequency identification (RFID) inlay is operable in ultra-high frequency (See [0031] teaches frequencies higher than 13.56 Mhz and does not place a limitation for higher frequencies.).
Regarding claim 8, Li teaches second type inlay is an electronic article surveillance (EAS) inlay and said second antenna element is an EAS antenna element (See [0030]).
Regarding claim 9, Li teaches said first substrate has a substantially identical length and width as said second substrate (See Fig. 2).
Regarding claim 10, Li teaches aid first antenna element does not overlap said second antenna element (See Fig. 2).
Claim 11 is the method embodiment of claim 1 and is rejected with the same reasoning.
Regarding claim 12, Li teaches first substrate comprises a plurality of first type inlays with a corresponding first antenna element and said second substrate comprises a plurality of second type inlays with a corresponding second antenna element, said attaching producing functionally independent pairs of said first type inlays and said second type inlays at common locations along said first substrate and said second substrate (See Fig. 1 and [0021]).
Claim 13 is the method embodiment of claim 2 and is rejected with the same reasoning.
Claim 17 is the method embodiment of claim 3 and is rejected with the same reasoning.
Claim 18 is the method embodiment of claim 6 and is rejected with the same reasoning.
Claim 19 is the method embodiment of claim 8 and is rejected with the same reasoning.
Claim 20 is the method embodiment of claim 10 and is rejected with the same reasoning.
Claims 14 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Li and Appalucci as applied to claim 1 above, and further in view of Forster et al. (US Pub No. 2017/0011664).
Regarding claim 14, Li does not teach that the first substrate includes an adhesive layer and a waste liner, said attaching comprising removing said waster liner to expose said adhesive layer and adhering said second substrate to said first substrate.
Forster teaches a waste liner, said attaching comprising removing said waster liner to expose said adhesive layer and adhering components on a roll (See [0025]).
One of ordinary skill in the art at the time the invention was filed would have been motivated to modify Li’s system to include Forster’s teachings to ensure proper adhesion between the components. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made.
Regarding claim 15, Li does not teach testing said first type inlay and said second type inlay and identifying if said first type inlay and/or said second type inlay are defective prior to said attaching said second substrate to said first substrate.
Forster teaches testing and identifying defective chips prior to completion (See [0033]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THOMAS S MCCORMACK whose telephone number is (571)272-0841. The examiner can normally be reached Monday - Friday 8:30 AM - 5:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Zimmerman can be reached at (571) 272-3059. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/THOMAS S MCCORMACK/ Primary Examiner, Art Unit 2686
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