Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Reissue Applications
Reissue application 17/344,906 was filed 06/10/2021 as a reissue of Application 15/407,843 filed on 01/17/2017 which issued as US 10,321,480 on 06/11/2019. Application 15/407,843 is a continuation of Application 14/422,309 filed on 02/18/2015 which issued as US 9,591,566. Application 14/422,309 was a National Stage Entry of PCT/KR2013/006671 with an international filing date of 07/25/2013 claiming priority to foreign applications 10-2012-0089531 filed on 08/16/2012 and 10-201300063670 filed on 06/03/2013.
For reissue applications filed before September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the law and rules in effect on September 15, 2012. Where specifically designated, these are “pre-AIA ” provisions.
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.
This action is responsive to: A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 05/16/2024 has been entered.
Claims 11-13, 17-19, 23-25, 29-31, and 35-46 are pending. Claims 1-10, 14-16, 20-22, 27-28, and 32-34 have been cancelled. Claims 11-34 were newly added claims. Claims 11, 17, 23, and 29 have been further amended and claims 35-46 are newly added claims.
Reissues
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. US 10,321,480 is or was involved. These proceedings would include any trial at 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.
35 U.S.C. 251
7.. Claims 11-13, 17-19, 23-25, 29-31, and 35-46 are rejected as being based upon a defective reissue declaration under 35 U.S.C. 251 as set forth below. See 37 CFR 1.175. Specifically, the error statement references a limitation that still exists in the claims in a rephrased format. Specifically, “wherein the terminal is changed to power save mode when the second frame is received” aligns with “entering a doze state in response to receiving the NDP type acknowledgment frame”. Thus, the error statement does not appear to be correcting an error as the limitation still exists in a rephrased format.
8. Claims 23-25, 29-31 and 41-46 are rejected under 35 U.S.C. 251 as being an improper recapture of broadened claimed subject matter surrendered in the application for the patent upon which the present reissue is based. See Greenliant Systems, Inc. et al v. Xicor LLC, 692 F.3d 1261, 103 USPQ2d 1951 (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). A broadening aspect is present in the reissue which was not present in the application for patent. The record of the application for the patent 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.
It is noted that the following is the three step test for determining recapture in reissue applications (see: MPEP 1412.02(I)):
“(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.”
(Step 1: MPEP 1412.02(A)) In the instant case, and by way of the amendment, Applicant seeks to broaden independent claims 23 and 29 in this reissue at least by deleting/omitting the patent claim language requiring, “wherein the terminal is changed to power save mode when the second frame is received.”
(Step 2: MPEP 1412.02(B)) The record of the prior 15/407,843 application prosecution indicates that in the response filed on 07/12/2018, Applicant amended the claims to recite, wherein the terminal is changed to power save mode when the second frame is received. Applicant argued these features were not taught by the prior art references in the Remarks on pages 8-10.
In the Notice of Allowance on 02/11/2019, the Examiner stated the prior art failed to disclose these features on pages 2-5. Thus, the limitations omitted in the reissue claim(s) were added in the original application claims for the purpose of making the application claims allowable over a rejection or objection made in the application. The applicant made an argument on the record that the limitation was added to obviate the rejection.
In claims 23 and 29, the claims recite “wherein the STA is enabled to enter a doze state based on the NDP type acknowledgment frame”. However, this differs from “wherein the terminal is changed to power save mode when the second frame is received.” Specifically, entering a power save mode or doze state based on receiving the NDP type acknowledgment frame/second frame is not the same as entering a power save mode or doze state simply “based on the NDP type acknowledgment frame.” It is unclear if the trigger for entering the power save mode/doze state is simply the receipt of the NDP type acknowledgment frame/second frame or if the trigger is some other information in the frame such as data transmission slot allocation information or the like. Thus, in the instant case the claimed limitations of, “wherein the STA is enabled to enter a doze state based on the NDP type acknowledgment frame” are surrendered subject matter and the broadening of the reissue claims, as noted above, are in the area of the surrendered subject matter.
(Step 3: MPEP 1412.02(C)) It is noted that reissue claims 23-25, 29-31 and 41-46 were not materially narrowed in other respects that relate to the surrendered subject matter to avoid recapture.
Response to Arguments
35 USC 251 - Recapture Rejections
9. As outlined above, claims 23 and 29 recite “wherein the STA is enabled to enter a doze state based on the NDP type acknowledgment frame”. However, this differs from “wherein the terminal is changed to power save mode when the second frame is received.” Specifically, entering a power save mode or doze state based on receiving the NDP type acknowledgment frame/second frame is not the same as entering a power save mode or doze state simply “based on the NDP type acknowledgment frame.” It is unclear if the trigger for entering the power save mode/doze state is simply the receipt of the NDP type acknowledgment frame/second frame or if the trigger is some other information in the frame such as data transmission slot allocation information or the like. Thus, in the instant case the claimed limitations of, “wherein the STA is enabled to enter a doze state based on the NDP type acknowledgment frame” are surrendered subject matter and the broadening of the reissue claims, as noted above, are in the area of the surrendered subject matter.
35 USC 103 Rejections
10. The rejections under 35 U.S.C. 103 have been withdrawn in light of Applicant’s arguments.
Conclusion
11. Any inquiry concerning this communication or earlier communications from the examiner should be directed to RACHNA SINGH DESAI whose telephone number is (571)272-4099. The examiner can normally be reached on M-F 7:30-4PM EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alexander Kosowski can be reached on 571-272-3744. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/RACHNA S DESAI/Primary Examiner, Art Unit 3992
Conferees:
/William H. Wood/Reexamination Specialist, Art Unit 3992
/ALEXANDER J KOSOWSKI/Supervisory Patent Examiner, Art Unit 3992