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 .
Claim Objections
Claims 21, 22, 25, and 28 are objected to because of the following informalities:
In Claim 21 (line 1), it appears the phrase “a single ferrite film” should instead read as --the single ferrite film-- since the single film were previously recited.
In Claim 21 (line 1), it appears the phrase “a pair of transducers” should instead read as --the pair of transducers-- since the pair of transducers were previously recited.
In Claim 21 (lines 2-3), it appears the phrase “a plurality of MSSW frequency bandwidths” should instead read as --the plurality of MSSW frequency bandwidths-- since the MSSW bandwidths were previously recited.
In Claim 22 (line 3), it appears the phrase “the_ferrite” should instead read as --the ferrite-- to delete the underscore symbol.
In Claim 25 (line 3), it appears the phrase “with the intrinsically multiplexed MSSW devices, comprising:” should instead read as --with the intrinsically multiplexed MSSW devices each comprising:-- to improve the grammatical form since it is the respective devices that are each comprising the further subject matter.
In Claim 28 (line 2), it appears the phrase “device,” should instead read as --devices,-- since there are plural devices.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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.
Claims 1-24 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.
In Claim 1, the limitation of a rectangle shape of the ferrite film in combination with a pair of transducers configured for coupling to the one or more ferrite films for simultaneously providing a plurality of MSSW frequency bandwidths appears to be new matter not disclosed in the original disclosure. A rectangular footprint for the ferrite films for simultaneously providing a plurality of MSSW frequency bandwidths only appears to be disclosed in the Figures 1b1 and 2a, but those figures require plural/respective pairs of transducers for the respective films rather than one pair of transducers for the plural films. Figs. 4b1 and 4b2 are the figures which disclose a pair of transducers for plural films or a single film for simultaneously providing a plurality of MSSW frequency bandwidths but those figures disclose a trapezoid film shape and not a rectangle film shape. Accordingly, Claim 1 (and thus dependent claims 2-24 by virtue of their dependency) presents a combination of subject matter that is new matter.
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 28-30 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.
In Claim 28 (line 5), the phrase “the ferrite film” is indefinite as to how it relates to the previously recited “one or more ferrite films” of line 4.
Claims 29-30 inherit the defects of Claim 28 because of their dependency.
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 25-27 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,412,970 (of record). Although the claims at issue are not identical, they are not patentably distinct from each other because the patent claims teach substantially all of the subject matter of the present claims including a plurality of MSSW devices as recited in Claim 4 of the patent, but does not explicitly recite that the additional/plurality of MSSW devices have the plurality of films and pair of transducers for simultaneous frequency bandwidth. It would have been obvious to one of ordinary skill in the art to have formed the additional/plurality of MSSW devices of claim 4 of the patent to have all been like the specific MSSW device of Claim 1 as a mere selection of a specific known MSSW device for the generically described MSSW devices described in Claim 4 of the patent such that they all provide the benefit of simultaneous frequency bandwidths.
Response to Arguments
Applicant's amendments overcome the statutory double patenting.
The amendments and addition of new claims necessitated the new rejections as detailed above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHEN E JONES whose telephone number is (571)272-1762. The examiner can normally be reached 9AM to 5PM.
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/Stephen E. Jones/Primary Examiner, Art Unit 2843
