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 .
Information Disclosure Statement
The Information Disclosure Statement filed 04/08/2025 has been considered by the Examiner.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Objections
Claim 2 objected to because of the following informalities:
Lines 1-2: “the annular wall includes a cylindrical wall has a cylindrical outer surface” appears to be missing the word “and” or “that” between “wall” and “has”. For instance, the limitation should be corrected to “the annular wall includes a cylindrical wall and/that has a cylindrical outer surface”.
Appropriate correction is required.
Claim Interpretation
The term “annular” is interpreted under its general definition of “ring-shaped; forming a ring”.
Claim Rejections - 35 USC § 112
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.
Claims 14-20 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.
Claim 14 recites the limitation "the patch antenna" in lines 2-3. There is insufficient antecedent basis for this limitation in the claim.
Claim 19 recites the limitation "the patch antenna" in lines 3-4. There is insufficient antecedent basis for this limitation in the claim.
*All other claims are rejected due to their dependency on a rejected claim.
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 1-12 and 16-17 of U.S. Patent No. 12,290,690 (hereinafter ‘690 Patent). Although the claims at issue are not identical, they are not patentably distinct from each other.
Regarding claims 1-2 and 4-5 of the instant application, claim 1 of the ‘690 Patent discloses:
A patch antenna (Claim 1, line 1), comprising:
an annular wall having an outer surface, wherein the annular wall is a ground plane of the patch antenna, wherein the annular wall includes a cavity having a shape between the outer surface and a recess surface, and a recess perimeter wall laterally surrounding the cavity between the recess surface and the outer surface (Claim 1, lines 2-8);
a dielectric layer having the shape and mounted on the recess surface within the cavity such that the recess perimeter wall laterally surrounds a lateral perimeter edge of the dielectric layer, wherein the lateral perimeter edge laterally surrounds an exterior surface of the dielectric layer, and wherein the dielectric layer fills the cavity and the exterior surface of the dielectric layer is flush with the outer surface of the annular wall along the recess perimeter wall (Claim 1, lines 10-19); and
a metal layer embedded within the dielectric layer, wherein the metal layer is a conductor of the patch antenna (Claim 1, lines 20-22).
The patch antenna of claim 1, wherein the annular wall includes a cylindrical wall has a cylindrical outer surface (Claim 1, lines 2-3).
The patch antenna of claim 1, wherein the metal layer includes a trace having an undulating pattern, and wherein the trace extends from a first end through a turnback having a first longitudinal segment interconnected to a second longitudinal segment by a circumferential segment (Claim 1, lines 21-26).
The patch antenna of claim 4 further comprising:
a feedthrough via to feed a signal to the metal layer, wherein the feedthrough via is connected to the first longitudinal segment between the first end and the circumferential segment (Claim 1, lines 27-30); and
a ground via connected to the first longitudinal segment between the first end and the feedthrough via, wherein the ground via electrically connects the first longitudinal segment to the annular wall (Claim 1, lines 31-34).
Claim 1 of the ‘690 Patent anticipates instant claims 1-2 and 4-5. Therefore, the instant claims 1-2 and 4-5 are not patentable over claim 1 of the ‘690 Patent.
Regarding claim 3 of the instant application, claim 2 of the ‘690 Patent discloses:
The patch antenna of claim 1, wherein the dielectric layer has an inner surface conforming to the recess surface (Claim 2, lines 1-5).
Claim 2 of the ‘690 Patent anticipates instant claim 3. Therefore, the instant claim 3 is not patentable over claim 2 of the ‘690 Patent.
Regarding claim 6 of the instant application, claim 4 of the ‘690 Patent discloses:
The patch antenna of claim 5, wherein the feedthrough via extends from the trace through the dielectric layer to a feedthrough contact on the inner surface of the dielectric layer (Claim 4, lines 1-4).
Claim 4 of the ‘690 Patent anticipates instant claim 6. Therefore, the instant claim 6 is not patentable over claim 4 of the ‘690 Patent.
Regarding claim 7 of the instant application, claim 5 of the ‘690 Patent discloses:
The patch antenna of claim 6, wherein the ground via extends from the trace through the dielectric layer to a ground contact on the inner surface of the dielectric layer (Claim 5, lines 1-3).
Claim 5 of the ‘690 Patent anticipates instant claim 7. Therefore, the instant claim 7 is not patentable over claim 5 of the ‘690 Patent.
Regarding claim 8 of the instant application, claim 7 of the ‘690 Patent discloses:
The patch antenna of claim 7 further comprising an electrical feedthrough passing through the annular wall from the cavity, wherein the feedthrough contact is electrically connected to the electrical feedthrough and the ground contact is electrically connected to the annular wall (Claim 7, lines 1-5).
Claim 7 of the ‘690 Patent anticipates instant claim 8. Therefore, the instant claim 8 is not patentable over claim 7 of the ‘690 Patent.
Regarding claim 9 of the instant application, claim 3 of the ‘690 Patent discloses:
The patch antenna of claim 5, wherein the trace extends over a length between the first end and a second end, and wherein the undulating pattern includes a plurality of turnbacks (Claim 3, lines 1-4).
Claim 3 of the ‘690 Patent anticipates instant claim 9. Therefore, the instant claim 9 is not patentable over claim 3 of the ‘690 Patent.
Regarding claim 10 of the instant application, claim 6 of the ‘690 Patent discloses:
The patch antenna of claim 9, wherein the patch antenna has a resonant frequency at a predetermined signal wavelength, and wherein the length of the trace from the feedthrough via to the second end is one-quarter of the predetermined signal wavelength (Claim 6, lines 1-5).
Claim 6 of the ‘690 Patent anticipates instant claim 10. Therefore, the instant claim 10 is not patentable over claim 6 of the ‘690 Patent.
Regarding claim 11 of the instant application, claim 8 of the ‘690 Patent discloses:
The patch antenna of claim 1, wherein the recess surface is recessed below the outer surface, and wherein the exterior surface of the dielectric layer is at a same radial distance from the longitudinal axis as the outer surface (Claim 8, lines 1-5).
Claim 8 of the ‘690 Patent anticipates instant claim 11. Therefore, the instant claim 11 is not patentable over claim 8 of the ‘690 Patent.
Regarding claim 12 of the instant application, claim 9 of the ‘690 Patent discloses:
The patch antenna of claim 1, wherein the cavity includes a hole in the annular wall, and wherein the dielectric layer fills the hole (Claim 9, lines 1-3).
Claim 9 of the ‘690 Patent anticipates instant claim 12. Therefore, the instant claim 12 is not patentable over claim 9 of the ‘690 Patent.
Regarding claim 13 of the instant application, claim 10 of the ‘690 Patent discloses:
The patch antenna of claim 1, wherein the annular wall is thicker than the dielectric layer (Claim 10, lines 1-2).
Claim 10 of the ‘690 Patent anticipates instant claim 13. Therefore, the instant claim 13 is not patentable over claim 10 of the ‘690 Patent.
Regarding claims 14-15 and 17-18 of the instant application, claim 11 of the ‘690 Patent discloses:
A housing for a biostimulator (Claim 11, line 1), comprising:
an annular wall having an outer surface, wherein the annular wall is a ground plane of the patch antenna, wherein the annular wall includes a cavity having a shape between the outer surface and a recess surface, and a recess perimeter wall laterally surrounding the cavity between the recess surface and the outer surface (Claim 11, lines 2-9);
a dielectric layer having the shape and mounted on the recess surface within the cavity such that the recess perimeter wall laterally surrounds a lateral perimeter edge of the dielectric layer, wherein the lateral perimeter edge laterally surrounds an exterior surface of the dielectric layer, and wherein the dielectric layer fills the cavity and the exterior surface of the dielectric layer is flush with the outer surface of the annular wall along the recess perimeter wall (Claim 11, lines 10-19); and
a metal layer embedded within the dielectric layer, wherein the metal layer is a conductor of the patch antenna (Claim 11, lines 20-22).
The housing of claim 14, wherein the annular wall includes a cylindrical wall having a cylindrical outer surface (Claim 11, line 2).
The housing of claim 14, wherein the metal layer includes a trace having an undulating pattern, and wherein the trace extends from a first end through a turnback having a first longitudinal segment interconnected to a second longitudinal segment by a circumferential segment (Claim 11, lines 22-26).
The housing of claim 14 further comprising:
a feedthrough via to feed a signal to the metal layer, wherein the feedthrough via is connected to the first longitudinal segment between the first end and the circumferential segment (Claim 11, lines 26-29); and
a ground via connected to the first longitudinal segment between the first end and the feedthrough via, wherein the ground via electrically connects the first longitudinal segment to the annular wall (Claim 11, lines 29-33).
Claim 11 of the ‘690 Patent anticipates instant claims 14-15 and 17-18. Therefore, the instant claims 14-15 and 17-18 are not patentable over claim 11 of the ‘690 Patent.
Regarding claim 16 of the instant application, claim 12 of the ‘690 Patent discloses:
The housing of claim 14, wherein the dielectric layer has an inner surface conforming to the recess surface (Claim 12, lines 3-4).
Claim 12 of the ‘690 Patent anticipates instant claim 16. Therefore, the instant claim 16 is not patentable over claim 12 of the ‘690 Patent.
Regarding claim 19 of the instant application, claim 16 of the ‘690 Patent discloses:
A biostimulator (Claim 16, line 1), comprising:
a housing including an annular wall extending around an electronics compartment, wherein the annular wall has an outer surface, wherein the annular wall is a ground plane of the patch antenna, wherein the annular wall includes a cavity having a shape between the outer surface and a recess surface, and a recess perimeter wall laterally surrounding the cavity between the recess surface and the outer surface (Claim 19, lines 2-10), a dielectric layer having the shape and mounted on the recess surface within the cavity such that the recess perimeter wall laterally surrounds a lateral perimeter edge of the dielectric layer, wherein the lateral perimeter edge laterally surrounds an exterior surface of the dielectric layer, and wherein the dielectric layer fills the cavity and the exterior surface of the dielectric layer is flush with the outer surface of the annular wall along the recess perimeter wall, and a metal layer embedded within the dielectric layer, wherein the metal layer is a conductor of the patch antenna (claim 19, lines 10-22);
a header assembly mounted on the housing, wherein the header assembly includes a fixation element and an electrode (Claim 16, lines 35-37); and
electronic circuitry within the electronics compartment, wherein the electronic circuitry is electrically connected to the metal layer and the electrode (Claim 16, lines 38-40).
Claim 16 of the ‘690 Patent anticipates instant claim 19. Therefore, the instant claim 19 is not patentable over claim 16 of the ‘690 Patent.
Regarding claim 20 of the instant application, claim 17 of the ‘690 Patent discloses:
The biostimulator of claim 19, wherein the fixation element includes a helix extending helically to a piercing tip (Claim 17, lines 1-2).
Claim 17 of the ‘690 Patent anticipates instant claim 20. Therefore, the instant claim 20 is not patentable over claim 17 of the ‘690 Patent.
Allowable Subject Matter
Claims 1-20 contain potentially allowable subject matter.
The following is an examiner’s statement of reasons for the indication of allowable subject matter:
The prior art of record (namely Lim, et al. (US 2019/0299014 – cited on IDS) and Iyer, et al. (US 2020/0001095 – cited on IDS)) does not disclose or fairly suggest either singly or in combination the claimed invention of independent claims 1, 14, and 19 when taken as a whole, comprising, in addition to the other recited claim elements, a patch antenna/biostimulator housing/biostimulator comprising: an annular wall having an outer surface, wherein the annular wall is a ground plane of the patch antenna, wherein the annular wall includes a cavity having a shape between the outer surface and a recess surface, and a recess perimeter wall laterally surrounding the cavity between the recess surface and the outer surface; a dielectric layer having the shape and mounted on the recess surface within the cavity such that the recess perimeter wall laterally surrounds a lateral perimeter edge of the dielectric layer, wherein the lateral perimeter edge laterally surrounds an exterior surface of the dielectric layer, and wherein the dielectric layer fills the cavity and the exterior surface of the dielectric layer is flush with the outer surface of the annular wall along the recess perimeter wall. No other prior art reference could be found that teaches or renders obvious the limitations of instant claims 1, 14, and 19. Due to their dependency on independent claims 1, 14, and 19, instant claims 2-13, 15-18, and 20 are also considered to contain potentially allowable subject matter.
While searching, it is noted that Allenberg, et al. (US 2008/0087099) was also found. Allenberg teaches an antenna device for injecting or extracting microwaves into/from tubular hollow bodies (Title; Abstract). Allenberg teaches (Figs. 1-2) two oppositely lying patch elements 2, 3 arranged symmetrically to a center plane 6 extending in the pipe longitudinal direction, in a recess of the pipe inner wall (Par. [0026]). Allenberg teaches that the two patch elements 2, 3 are arranged electrically insulated by a dielectric substrate 8 relative to the outer conductive ring wall or pipe outer wall 7 (Par. [0026]). While Allenberg is directed to analogous art, Allenberg does not teach the specific structural arrangement and requirements of the instant independent claims. For instance, Allenberg does not teach the requirement of the instant claims wherein the exterior surface of the dielectric layer is flush with the outer surface of the annular wall along the recess perimeter wall.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a). In particular, double patenting rejections and 35 U.S.C. 112(b) rejections must be overcome.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL TAYLOR HOLTZCLAW whose telephone number is (571)272-6626. The examiner can normally be reached Monday-Friday (7:30 a.m.-5:00 p.m. EST).
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, Jennifer McDonald can be reached at (571) 270-3061. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL T. HOLTZCLAW/Primary Examiner, Art Unit 3796
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