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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on June 20, 2025, February 26, 2026, June 3, 2026 and August 3, 2026 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Election/Restrictions
Applicant’s election without traverse of group II, claims 10-16, in the reply filed on September 17, 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 10-16 and 21-33 are currently pending.
Claim Rejections - 35 USC § 102
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 –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 10, 12-15, 25, 26, 31 and 33 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by LI et al. (U.S. Publication No. 2023/0216205).
LI, in figure 16, discloses:
Claim 10: A base station antenna, comprising: a radome (radome 1); a frequency selective surface (FSS) (FSS1) inside the radome; and at least one matching layer (radome 2, since the radome is made of dielectric material designed to allow optimized passage of electromagnetic waves it is broadly interpreted as a matching layer) behind the FSS inside the radome.
Claim 12: further comprising a first plurality of radiating elements residing behind the FSS (array of band 2), and a second plurality of radiating elements (array of band 1) residing in front of the FSS.
Claim 13: wherein the first plurality of radiating elements operate in a first frequency band and the second plurality of radiating elements operate in a second frequency band that encompases lower frequencies than the first frequency band (fig. 16).
Claim 14: wherein the first plurality of radiating elements comprise high band radiating elements that operate in at least part of a 3.1-4.2 GHz frequency band, and wherein the second plurality of radiating elements comprise radiating elements that operate in a lower frequency band than the high band radiating elements (¶ [0048]).
Claim 15: wherein the FSS is configured to allow RF energy in at least part of a 3.1-4.2 GHz frequency band to propagate therethrough (fig. 16).
Claim 25: wherein the first or the second plurality of radiating elements are provided in an active antenna module (fig. 16).
Claim 26: wherein the FSS is provided as a first FSS and a second FSS that are stacked in a front-to-back direction of the base station antenna inside the radome (fig. 6).
Claim 31: wherein the FSS is a first FSS, the base station antenna further comprising a second FSS residing behind the first FSS (fig. 6), and an active antenna module residing behind the matching layer and behind the first FSS and the second FSS (fig. 16).
Claim 33: wherein the FSS is attached to a rear wall of the radome (fig. 16).
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.
(i)
Claims 10-16 and 21-33 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,362,461.
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims at issue in the instant application overlap in scope with a claim in a potentially conflicting claim or claims of the reference patent, and one of ordinary skill in the art would, on reading the potentially conflicting patent, “at once envisage” the invention claimed in the instant application.
"In construing the claims of the reference patent or application, a determination is made as to whether a portion of the specification, including the drawings and claims, is directed to subject matter that is within the scope of a reference claim." See MPEP § 804 (II)(B)(1). In the reference patent, the scope of the invention defined by claims 1-20 encompass the subject matter shown in figure 28G. Moreover, "situations where the claim in the application being examined (1) is directed to a species or sub-genus covered by a generic claim in a potentially conflicting patent or application, or (2) overlaps in scope with a claim in a potentially conflicting claim or claims of the patent or application but the potentially conflicting claims cannot be said to anticipate the examined claims … require an obviousness analysis unless one of ordinary skill in the art would, on reading the potentially conflicting patent or application, at once envisage the invention claimed in the examined application. See AbbVie Inc. v. Kennedy Institute of Rheumatology Trust, 764 F.3d 1366, 112 USPQ2d 1001 (Fed. Cir. 2014)." See MPEP § 804 (II)(B)(2). Accordingly, the explicit disclosure in the reference patent, in figure 28G, of the features recited by pending claims 10-16 and 21-33 provide sufficient evidence for one of ordinary skill in the art to "at once envisage" every feature recited by the claims. Thus, the conflicting claim(s) in the reference patent anticpate claims 10-16 and 21-33.
(ii)
Claims 10-16 and 21-33 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 and 22-28 of copending Application No. 19/244,614 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims at issue in the instant application overlap in scope with a claim in a potentially conflicting claim or claims of the reference application, and one of ordinary skill in the art would, on reading the potentially conflicting application, “at once envisage” the invention claimed in the instant application.
"In construing the claims of the reference patent or application, a determination is made as to whether a portion of the specification, including the drawings and claims, is directed to subject matter that is within the scope of a reference claim." See MPEP § 804 (II)(B)(1). In the reference application, the scope of the invention defined by claims 1-7 and 22-28 encompass the subject matter shown in figure 28G. Moreover, "situations where the claim in the application being examined (1) is directed to a species or sub-genus covered by a generic claim in a potentially conflicting patent or application, or (2) overlaps in scope with a claim in a potentially conflicting claim or claims of the patent or application but the potentially conflicting claims cannot be said to anticipate the examined claims … require an obviousness analysis unless one of ordinary skill in the art would, on reading the potentially conflicting patent or application, at once envisage the invention claimed in the examined application. See AbbVie Inc. v. Kennedy Institute of Rheumatology Trust, 764 F.3d 1366, 112 USPQ2d 1001 (Fed. Cir. 2014)." See MPEP § 804 (II)(B)(2). Accordingly, the explicit disclosure in the reference application, in figure 28G, of the features recited by pending claims 10-16 and 21-33 provide sufficient evidence for one of ordinary skill in the art to "at once envisage" every feature recited by the claims. Thus, the conflicting claim(s) in the reference application anticpate claim 10-16 and 21-33.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
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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.
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/Robert Karacsony/Primary Examiner, Art Unit 2845
