NON-FINAL REJECTION
This Office action is responsive to the amendment and response (“Amendment”) application filed January 24, 2025.
The instant 17/187,295 application is a reissue application of U.S. Pat. 10,217,288 B2 to Fedosov et al. (“the ‘288 Patent”), which issued February 26, 2019 from U.S. Pat. App. Ser. No. 15/480,142, filed April 5, 2017 as a continuation of U.S. Pat. App. Ser. No. 15/024,800, filed September 24, 2013 (now U.S. Pat. 9,646,422 B2) based on PCT/EP2013/069844.
The Examiner has deemed the ‘288 Patent to have an earliest possible effective filing date of September 24, 2013.
Claims 1-17 were originally pending in this application. By way of a preliminary amendment filed with the application as well as the instant Amendment, claims 1, 2, 6-8, 11-13, and 17 have been amended, claims 3-5, 9, 10, 14, 15, and 16 have been canceled, and new dependent claims 18-24 are added. Thus claims 1, 2, 6-8, 11-13, and 17-24 are pending.
This action is Non-Final.
Reissue
The Examiner has determined that there are no other continuations, reissues, reexaminations, inter partes reviews, or other AIA trials or appeals currently pending with respect to the ‘288 Patent. A litigation search has determined there to be no pending litigation as to the ‘288 Patent.
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. 10,217,288 is or was involved. These proceedings would include interferences, reissues, reexaminations, 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.
Because the instant ‘288 Patent is deemed not to contain claims having an effective date prior to March 16, 2013, the America Invents Act First Inventor to File (“AIA -FITF”) provisions apply, rather than the pre-AIA provisions. See 35 U.S.C. § 100 (note) and 35 U.S.C. § 100 (pre-AIA ). In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 is incorrect, any correction of any statutory basis for a rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Reissue Declaration
The declaration filed June 4, 2024 is objected to because of the following:
Here, the declaration identifies claims 2 and 8 as broadened claims. However, claims 2 and 8 are dependent claims, and enlarging the scope of dependent claims is not broadening. MPEP 1412.03 II. Thus the Declaration fails to identify a broadened claim or provide a proper error statement as required by 37 CFR 1.175.
Reissue Amendment
The amendment filed January 24, 2025 is objected to because of the following:
Claim 12 as amended removes matter using strikethrough which does not meet 37 CFR 1.173(b) and (d).
Further, the February 26, 2021 amendment to the specification is in reference to a paragraph number rather than column and lines.
A supplemental paper correctly amending the reissue application is required.
Claim Objections
Claim 1 is objected to because of the following informalities:
Claim 1 recites “wherein while the screen is tilted from the vertical position” in line 22 of the claim, without any further matter following the wherein clause.
Appropriate correction is required.
Claim Interpretation
The Examiner notes the previous Office action’s addressing of computer-implemented functional claim language in claims 7 and 12, and such analysis is incorporated by reference herein. July 24, 2024 final action at 4-6.
Claim Rejections - § 251
Claims 1, 2, 6-8, 11-13, and 17-24 are rejected as being based upon a defective reissue declaration under 35 U.S.C. 251 as set forth above. See 37 CFR 1.175.
The nature of the defect(s) in the declaration is set forth in the discussion above in this Office action.
Response to Arguments
Patent Owner provides remarks with his Amendment.
As to the objection to the reissue amendment, the Examiner notes that in the final Office action, claim 12 was objected to with respect to matter removed improperly from the claim. The reference to underlining was a typographical error, intending instead to refer to strikethrough, but the rule cited clearly requires the use of single bracketing to remove matter in a reissue.
As to previous rejections under § 112, such have been withdrawn in light of the amendment to claims. As to the previous related rejections under § 251 (new matter), such are withdrawn for the same reasons set forth as to the rejections under § 112 ¶1. As to the previous rejections under § 251 (original patent), such are withdrawn in light of the amendment to claims 1, 7, and 12.
As to the rejections under § 251 (reissue declaration), the Examiner upholds the rejection for the reasons set forth below.
Patent Owner asserts that a new reissue declaration is filed with his Amendment. Remarks at 10. However, no declaration appears to accompany the response, and neither the transmittal form, nor the RCE transmittal paper, nor the fax cover sheet list a reissue declaration as part of the response. As such, the previous declaration of June 4, 2024 is the most recent reissue declaration on file.
As noted above and in the previous rejection, the declaration of June 4, 2024 identifies claims 2 and 8 as broadened claims. However, as claims 2 and 8 are dependent claims, and enlarging the scope of issued dependent claims is not broadening.
In response, Patent Owner also argues that the instant amendment to dependent claims 2 and 8, enlarging their scope, obviates the objection to the declaration and subsequent rejection. This is incorrect, as again enlarging the scope of dependent claims is not broadening. A broadened reissue claim is a claim which enlarges the scope of the claims of the patent, i.e., a claim which is greater in scope than each and every claim of the original patent. Enlarging the scope of dependent claim 2 does not make the claim broader in scope than parent independent claim 1, as dependent claim 2 by definition further narrows the claim it is dependent upon. Because a dependent claim is construed to contain all the limitations of the claim upon which it depends, claim 2 must be at least as narrow as claim 1 and is thus not a broadened reissue claim. MPEP § 1412.03 II.
Patent Owner states that, in the April 2, 2024 interview, the panel of examiners recommended the filing of a reissue declaration for a broadened dependent claim. Remarks at 8. This is incorrect, as the panel stated in the interview that a broadened independent claim must be identified because a dependent claim cannot be considered a broadened reissue claim.
The Examiner notes that Patent Owner’s response states both that a new declaration is filed and also that a new declaration is not needed as the amendment to claims 2 and 8 make a new declaration unnecessary, statements that contradict each other. However, as the June 4, 2024 reissue declaration is the most recent on file, the rejection in the final Office action is upheld.
Conclusion
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to Charles Craver whose telephone number is (571) 272-7849. The Examiner can normally be reached on Monday - Friday 8:30-5:30 PT Pacific Time.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, Andrew J. Fischer can be reached on 571-272-6779. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Signed,
/CHARLES R CRAVER/Reexamination Specialist, Art Unit 3992
Conferees:
/JOSEPH R POKRZYWA/ Primary Examiner, Art Unit 3992
/ALEXANDER J KOSOWSKI/Supervisory Patent Examiner, Art Unit 3992