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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria1 Virginia 22313- 1450
`wwwnsptogov
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`APPLICATION NO.
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` F ING DATE
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`FIRST NAMED INVENTOR
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`ATTORNEY DOCKET NO.
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`CONF {MATION NO.
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`12/548,527
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`08/27/2009
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`Takashi Yamada
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`MAT—10293US
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`7295
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`52473
`7590
`07M”
`W
`RATNERPRESTIA —
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`BILODEAU, DAV )
`PO. BOX 980
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`VALLEY FORGE, PA 19482-0980
`ART UNIT
`PADER NUMBER
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`2618
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`MAIL DATE
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`07/23/2012
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`DELIVERY MODE
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`PAPER
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`Please find below and/or attached an Office communication concerning this application or proceeding.
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`The time period for reply, if any, is set in the attached communication.
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`PTOL—90A (Rev. 04/07)
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`Office Action Summary
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`Application No.
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`Applicant(s)
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` 12/548,527 YAMADA ET AL.
`Examiner
`Art Unit
`DAVID BILODEAU
`2618
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`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
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`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 2 MONTH(S) OR THIRTY (30) DAYS,
`WHICHEVER IS LONGER, FROM THE MAILING DATE OF THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR1. 136(a).
`In no event however may a reply be timely filed
`after SIX () MONTHS from the mailing date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
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`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1.704(b).
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`Status
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`1)|Zl Responsive to communication(s) filed on 27August 2009.
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`2a)|:l This action is FINAL.
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`2b)IXI This action is non-final.
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`3)|:I An election was made by the applicant in response to a restriction requirement set forth during the interview on
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`; the restriction requirement and election have been incorporated into this action.
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`4)|:l Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
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`closed in accordance with the practice under Exparte Quay/e, 1935 CD. 11, 453 O.G. 213.
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`Disposition of Claims
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`5)IZ Claim(s) 1-15is/are pending in the application.
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`5a) Of the above claim(s)
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`is/are withdrawn from consideration.
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`6)IZ Claim(s) 1-_15is/are allowed.
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`7)|:l Claim(s) _ is/are rejected
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`8)|:| Claim(s) _ is/are objected to.
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`9)|:I Claim(s) _ are subject to restriction and/or election requirement.
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`Application Papers
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`10)|:I The specification is objected to by the Examiner.
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`11)IZI The drawing(s) filed on 27August 2009 is/are: a)|:| accepted or b)EI objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
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`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
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`12)|:I The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PTO-152.
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`Priority under 35 U.S.C. § 119
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`13)|X| Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
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`a)|:| AII
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`b)Xl Some * c)I:I None of:
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`1.IXI Certified copies of the priority documents have been received.
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`2.|:l Certified copies of the priority documents have been received in Application No. _
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`3.I:I Copies of the certified copies of the priority documents have been received in this National Stage
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`application from the International Bureau (PCT Rule 17.2(a)).
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`* See the attached detailed Office action for a list of the certified copies not received.
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`Attachment(s)
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`1) IZI Notice of References Cited (PTO-892)
`2) I] Notice of Draftsperson‘s Patent Drawing Review (PTO-948)
`3) IZI Information Disclosure Statement(s) (PTO/SB/08)
`Paper No(s)/Mai| DateW.
`U.S. Patent and Trademark Office
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`4) I] Interview Summary (PTO-413)
`Paper N0(S )/Mai| Date. _
`5)I:I Notice 0f Informal Patent Application
`6)I:I Other:—
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`PTOL-326 (Rev. 03-11)
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`Office Action Summary
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`Part of Paper No./Mai| Date 20120710
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`Application/Control Number: 12/548,527
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`Page 2
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`Art Unit: 2618
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`DETAILED QUAYLE ACTION
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`This Office Action is in response to the Applicants’ communication filed on
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`08/27/2009. In virtue of this communication, claims 1-15 are currently pending in the
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`instant application.
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`This application is in condition for allowance except for the following formal
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`matters: See objection to drawings, claims and priority issues below.
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`Prosecution on the merits is closed in accordance with the practice under EX
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`parte Quay/e, 25 USPQ 74, 453 O.G. 213, (Comm’r Pat. 1935).
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`A shortened statutory period for reply to this action is set to expire TWO
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`MONTHS from the mailing date of this letter.
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`Drawings
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`Figure 8 is objected to under 37 CFR 1.83(a) because they fail to show features
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`of the drawing such as elements (1 -5) as described in the specification. Any structural
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`detail that is essential for a proper understanding of the disclosed invention should be
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`shown in the drawing. MPEP § 608.02(d). Corrected drawing sheets in compliance with
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`37 CFR 1.121 (d) are required in reply to the Office action to avoid abandonment of the
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`application. Any amended replacement drawing sheet should include all of the figures
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`appearing on the immediate prior version of the sheet, even if only one figure is being
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`Page 3
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`Art Unit: 2618
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`amended. The figure or figure number of an amended drawing should not be labeled as
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`“amended.” If a drawing figure is to be canceled, the appropriate figure must be
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`removed from the replacement sheet, and where necessary, the remaining figures must
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`be renumbered and appropriate changes made to the brief description of the several
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`views of the drawings for consistency. Additional replacement sheets may be necessary
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`to show the renumbering of the remaining figures. Each drawing sheet submitted after
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`the filing date of an application must be labeled in the top margin as either
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`“Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121 (d). If the changes are
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`not accepted by the examiner, the applicant will be notified and informed of any required
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`corrective action in the next Office action. The objection to the drawings will not be held
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`in abeyance.
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`Figure 8 should also be designated by a legend such as --Prior Art-- because
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`only that which is old is illustrated. See MPEP § 608.02(g). Corrected drawings in
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`compliance with 37 CFR 1.121 (d) are required in reply to the Office action to avoid
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`abandonment of the application. The replacement sheet(s) should be labeled
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`“Replacement Sheet” in the page header (as per 37 CFR 1.84(c)) so as not to obstruct
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`any portion of the drawing figures. If the changes are not accepted by the examiner, the
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`applicant will be notified and informed of any required corrective action in the next Office
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`action. The objection to the drawings will not be held in abeyance.
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`Priority
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`Application/Control Number: 12/548,527
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`Page 4
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`Art Unit: 2618
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`If applicant desires to claim the benefit of a prior-filed application under 35 U.S.C.
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`119(a-d) a specific reference to the prior-filed application in compliance with 37 CFR
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`1.78(a) must be included in the first sentence(s) of the specification following the title or
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`in an application data sheet. For benefit claims under 35 U.S.C. 120, 121 or 365(c), the
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`reference must include the relationship (i.e., continuation, divisional, or continuation-in-
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`part) of the applications.
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`Please provide the foreign reference for Application Japan 2008-151250 filed on
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`06/10/2008. Further the specification will need to be amended to show the priority if the
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`Applicant intends to claim an earlier filing date.
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`If the instant application is a utility or plant application filed under 35 U.S.C.
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`111(a) on or after November 29, 2000, the specific reference must be submitted during
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`the pendency of the application and within the later of four months from the actual filing
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`date of the application or sixteen months from the filing date of the prior application.
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`If
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`the application is a utility or plant application which entered the national stage from an
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`international application filed on or after November 29, 2000, after compliance with 35
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`U.S.C. 371, the specific reference must be submitted during the pendency of the
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`application and within the later of four months from the date on which the national stage
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`commenced under 35 U.S.C. 371 (b) or (f) or sixteen months from the filing date of the
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`prior application. See 37 CFR 1.78(a)(2)(ii) and (a)(5)(ii). This time period is not
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`extendable and a failure to submit the reference required by 35 U.S.C. 119(e) and/or
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`120, where applicable, within this time period is considered a waiver of any benefit of
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`such prior application(s) under 35 U.S.C. 119(e), 120, 121 and 365(c). A benefit claim
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`filed after the required time period may be accepted if it is accompanied by a grantable
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`petition to accept an unintentionally delayed benefit claim under 35 U.S.C. 119(e), 120,
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`121 and 365(c). The petition must be accompanied by (1) the reference required by 35
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`U.S.C. 120 or 119(e) and 37 CFR 1.78(a)(2) or (a)(5) to the prior application (unless
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`previously submitted), (2) a surcharge under 37 CFR 1.17(t), and (3) a statement that
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`the entire delay between the date the claim was due under 37 CFR 1.78(a)(2) or (a)(5)
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`and the date the claim was filed was unintentional. The Director may require additional
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`information where there is a question whether the delay was unintentional. The petition
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`should be addressed to: Mail Stop Petition, Commissioner for Patents, PO. Box 1450,
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`Alexandria, Virginia 22313-1450.
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`If the reference to the prior application was previously submitted within the time
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`period set forth in 37 CFR 1.78(a), but not in the first sentence(s) of the specification or
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`an application data sheet (ADS) as required by 37 CFR 1.78(a) (e.g., if the reference
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`was submitted in an oath or declaration or the application transmittal letter), and the
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`information concerning the benefit claim was recognized by the Office as shown by its
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`inclusion on the first filing receipt, the petition under 37 CFR 1.78(a) and the surcharge
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`under 37 CFR 1.17(t) are not required. Applicant is still required to submit the reference
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`in compliance with 37 CFR 1.78(a) by filing an amendment to the first sentence(s) of the
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`specification or an ADS. See MPEP § 201.11.
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`Application/Control Number: 12/548,527
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`Page 6
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`Art Unit: 2618
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`Information Disclosure Statement
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`The information Disclosure Statement (IDS) Form PTO-1449, filed on 08/27/2009
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`is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information
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`disclosed therein was considered by the examiner.
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`Claim Objections
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`Claim 3 is objected to because of the following informalities: Claim 3 depends
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`from Claim 6 which was not yet introduced and is objected to under 37 CFR 1.75(c), as
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`being of improper dependent form for failing to further limit the subject matter fl
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`previous claim. Applicant is required to cancel the claim, or amend the claim to place
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`the claims in proper dependent form, or rewrite the claim in independent form.
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`Allowable Subject Matter
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`1.
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`Claims 1-15 are allowed.
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`The following is an examiner’s statement of reasons for allowance: A search was
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`conducted with regard to applicant's claims defining, among other limitations above in
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`claims 1 “A high frequency device comprising: an antenna connector adapted to be
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`connected with an antenna; a board having an upper surface and a lower surface; a
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`conductor layer provided on the upper surface of the board; a filter mounted on the
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`upper surface of the board and connected with the antenna connector; and a high
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`frequency circuit mounted on the lower surface of the board and connected with the
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`filter,
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`wherein the filter includes a case having a hollow shape having an opening which
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`opens downward, the case having a lower end around the opening, and a resonator
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`accommodated in the case, and the lower end of the case is joined to the conductor
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`layer.”
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`Examiner has found prior art in the same field of endeavor in Ohnuki (US
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`5554960). Ohnuki shows a branching filter, branching filter module and high frequency
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`radio communication apparatus including a conductor substrate, circuit boards and
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`resonators [See Abstract, Figure 1 and 4a and Column 3 Lines 3 Lines 23-35]. The
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`system of Ohnuki does not describe the limitation “wherein the filter includes a case
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`having a hollow shape having an opening which opens downward, the case having a
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`lower end around the opening, and a resonator accommodated in the case, and the
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`lower end of the case is joined to the conductor layer” as described in the above. This
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`process is not obvious and is considered an inventive step. When incorporating all the
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`limitations in combination as claimed, none of the prior art discloses the features as
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`claimed
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`Any comments considered necessary by applicant must be submitted no later
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`than the payment of the issue fee and, to avoid processing delays, should preferably
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`accompany the issue fee. Such submissions should be clearly labeled “Comments on
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`Statement of Reasons for Allowance.”
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`Conclusion
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to DAVID BILODEAU whose telephone number is (571)
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`270-3192. The examiner can normally be reached on Monday-Thursday 9:00am-
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`7:OOpm Est Time.
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, Matthew Anderson can be reached at (571) 272-4177. The fax phone
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`number for the organization where this application or proceeding is assigned is 571 -
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`273-8300.
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`Information regarding the status of an application may be obtained from the
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`Patent Application Information Retrieval (PAIR) system. Status information for
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`published applications may be obtained from either Private PAIR or Public PAIR.
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`Status information for unpublished applications is available through Private PAIR only.
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`For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
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`you have questions on access to the Private PAIR system, contact the Electronic
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`Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a
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`USPTO Customer Service Representative or access to the automated information
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`system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
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`Application/Control Number: 12/548,527
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`Page 9
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`Art Unit: 2618
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`/David Bilodeau/
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`Examiner, Art Unit 2618
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`/TEMESGHEN GHEBRETINSAE/
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`Supervisory Patent Examiner, Art Unit 2618
`7/16/12
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