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 .
Reissue Applications
For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions.
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which Patent No. 9,846,876 is or was involved. These proceedings would include any trial before the Patent Trial and Appeal Board, interferences, reissues, reexaminations, supplemental examinations, and litigation.
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application.
These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Objections to the Amendments - Formalities
The claim amendments filed October 24, 2025, are objected to as failing to comply with 37 CFR 1.173. Amended claims must show all changes made relative to the patent claims, with omitted text enclosed in single brackets and added text underlined. See MPEP § 1453. The claim amendments are improper because claims 12-27 are all new relative to the patent claims and should be underlined in their entirety. In addition, the claim listing should list claims 1-11 with the status identifier “canceled” in order to avoid confusion over the status of these claims.
In addition, the preamble of claim 12 has been amended to recite a ticket exchange system “for a table of game.” Claim 12 previously recited “for a table of a table game,” which is clearer. For clarity, claim 12 should be amended to replace “for a table of game” with --for a table of a table game-- as previously presented.
Claim Rejections - 35 USC § 251 - Recapture
Claims 12-27 are rejected under 35 U.S.C. 251 as being an impermissible recapture of broadened claimed subject matter surrendered in the application for the patent upon which the present reissue is based. In re McDonald, 43 F.4th 1340, 1345, 2022 USPQ2d 745 (Fed. Cir. 2022); Greenliant Systems, Inc. et al v. Xicor LLC, 692 F.3d 1261, 103 USPQ2d 1951 (Fed. Cir. 2012); In re Youman, 679 F.3d 1335, 102 USPQ2d 1862 (Fed. Cir. 2012); In re Shahram Mostafazadeh and Joseph O. Smith, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011); North American Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 75 USPQ2d 1545 (Fed. Cir. 2005); Pannu v. Storz Instruments Inc., 258 F.3d 1366, 59 USPQ2d 1597 (Fed. Cir. 2001); Hester Industries, Inc. v. Stein, Inc., 142 F.3d 1472, 46 USPQ2d 1641 (Fed. Cir. 1998); In re Clement, 131 F.3d 1464, 45 USPQ2d 1161 (Fed. Cir. 1997); Ball Corp. v. United States, 729 F.2d 1429, 1436, 221 USPQ 289, 295 (Fed. Cir. 1984). The reissue application contains claim(s) that are broader than the issued patent claims. The record of the application for the patent family shows that the broadening aspect (in the reissue) relates to claimed subject matter that applicant previously surrendered during the prosecution of the application. Accordingly, the narrow scope of the claims in the patent was not an error within the meaning of 35 U.S.C. 251, and the broader scope of claim subject matter surrendered in the application for the patent cannot be recaptured by the filing of the present reissue application.
MPEP § 1412.02 establishes a three-step test for recapture. The three-step process is as follows:
(1) first, we determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims;
(2) next, we determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and
(3) finally, we determine whether the reissue claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule.
In the final Office action mailed April 24, 2025, in this reissue application (hereinafter the Final), the examiner found that claims 12-27 as amended in the submission filed October 21, 2024, did not recapture surrendered subject matter. See Final, pg. 5-9. The recapture analysis below focuses on the limitations that have now been deleted from independent claims 23 and 27 in the amendment filed October 24, 2025.
Recapture Analysis: Step 1
In the amendment filed October 24, 2025, reissue claims 12 and 23 have each been amended to delete “wherein the input unit is selected from the group consisting of a smart phone, a mobile phone, a tablet, a notebook, and a personal digital assistant (PDA),” which was present in all of the patent claims. Thus, independent claims 12 and 23 are broader in scope than patent claims 1-11, such that step 1 of the three-step test is met for reissue claims 12 and 23 and their dependent claims.
Recapture Analysis: Step 2, first sub-step
The step of determining whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution includes two sub-steps. The first sub-step is to determine whether the applicant surrendered any subject matter in the prosecution of the original application. MPEP § 1412.02 defines surrendered subject matter as a claim limitation that was originally relied upon by the applicant in the original prosecution to make the claims allowable over the art.
As discussed in the non-final Office action mailed June 14, 2023, in this reissue application, the limitation “wherein the input unit is selected from the group consisting of a smart phone, a mobile phone, a tablet, a notebook and a personal digital assistant (PDA)” was added during prosecution of the ‘876 patent in an amendment filed November 4, 2016, in order to overcome a prior art rejection. See Remarks filed November 4, 2016, pg. 6-8, arguing the advantages of the smart phone, mobile phone, tablet, notebook or PDA over the prior art.
These limitations were added and argued by Applicant to distinguish the claimed invention from the prior art are thus surrender-generating limitations (SGL).
Recapture Analysis: Step 2, second sub-step
The second sub-step is to determine whether any of the broadening of the reissue claims is in the area of the surrendered subject matter. The examiner must analyze all of the broadening aspects of the reissue claims to determine if any of the omitted/broadened limitations are directed to limitations relied upon by Applicant in the original application to make the claims allowable over the art.
Reissue claims 12 and 23 are broadened with respect to patent claim 1 to omit the input device being “selected from the group consisting of a smart phone, a mobile phone, a tablet, a notebook and a personal digital assistant (PDA),” which is the surrendered subject matter. Therefore, step 2 of the three-part test is met for reissue claims 12 and 23 and their dependent claims.
Recapture Analysis: Step 3
The third step in the recapture analysis considers the significance of claim limitations that were added and deleted during prosecution of the patent to be reissued in order to determine whether the reissue claims are materially narrowed in other respects so as to avoid the recapture rule. As set forth in MPEP § 1412.02, subsection II(C), if a surrender-generating limitation (SGL) has not been entirely eliminated from a claim in the reissue application but rather has been made less restrictive in the reissue claim, “[i]t must be determined what portion of the amendment or argued limitation has been retained, and whether the retained portion materially narrows the original claims to avoid recapture.”
In this case, reissue claims 12-27 entirely omit limitations relating to the smart phone, mobile phone, tablet, notebook, or PDA and thus impermissibly recapture the surrendered subject matter. See MPEP § 1412.02, subsection II.C.
Claim Rejections - 35 USC § 112(b) - Indefiniteness
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.
Claims 23-27 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 23 recites the limitation “the table” in line 3. There is insufficient antecedent basis for this limitation in the claim, due to the amendment of the preamble to replace “a table of a table game” with “a table game.” The examiner suggests reintroducing “a table” in the preamble, in order to provide clear antecedent basis for the table, since the claim defines the configuration of the first and second units relative to the table. Claims 24-27 are rejected in view of their dependency from claim 23.
Response to Arguments
The examiner agrees that the amendments have overcome the rejections set forth in the Final. However, the amendments have also reintroduced issues of recapture under 35 U.S.C. 251 and raise new issues under 35 U.S.C. 112(b), as set forth above. The examiner recognizes that the limitations related to the smart phone etc. which raise the recapture issue were deleted in an effort to overcome the rejections under 35 U.S.C. 112(a) and 112(b) set forth in the Final. This recapture rejection could be overcome without introducing new matter by amending claims 12 and 23 to include the smart phone etc. in a manner consistent with original ‘876 patent specification (e.g., by clarifying that the first unit comprises a mobile device selected from the group consisting of a smart phone, a mobile phone, a tablet, a notebook and a personal digital assistant (PDA), and by clarifying that the mobile device comprises the input device, detection unit, and screen within the second portion of the frame, consistent with the specification at col. 5:1-28).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Laura L. Davison whose telephone number is (571)270-0189. The examiner can normally be reached Monday - Friday, 8:00 a.m. - 4:00 p.m. ET.
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/Laura Davison/Reexamination Specialist, Art Unit 3993
Conferees:/WILLIAM C DOERRLER/ Reexamination Specialist, Art Unit 3993
/EILEEN D LILLIS/SPRS, Art Unit 3993