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 .
Status of Submission
This Office action is responsive to the amendment filed on December 11, 2024 which has been entered.
Claims Subject to Examination
Patent claims 1-4 and new claims 7-17, 21 and 23-25 are subject to examination. Upon further review and new interpretation of the recited claims, the following new grounds of rejection are set forth, and the previous indication of allowable subject matter is withdrawn:
Related Proceedings
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceed-ing in which Patent No. 10,870,198 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 mate-rial to patentability of the claims under consideration in this reissue appli-cation.
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.
Claim Rejections - 35 USC § 251
The following is a quotation of 35 U.S.C. 251:
(a) IN GENERAL.—Whenever any patent is, through error, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.
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(b) MULTIPLE REISSUED PATENTS.—The Director may issue several reissued patents for distinct and separate parts of the thing patented, upon demand of the applicant, and upon payment of the required fee for a reissue for each of such reissued patents.
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(c) APPLICABILITY OF THIS TITLE.—The provisions of this title relating to applications for patent shall be applicable to applications for reissue of a patent, except that application for reissue may be made and sworn to by the assignee of the entire interest if the application does not seek to enlarge the scope of the claims of the original patent or the application for the original patent was filed by the assignee of the entire interest.
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(d) REISSUE PATENT ENLARGING SCOPE OF CLAIMS. No reissued patent shall be granted enlarging the scope of the claims of the original patent unless applied for within two years from the grant of the original patent.
GROUND 1: Claims 1-4, 7-17, 21 and 23-25 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). See also MPEP 1412.02. 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.
We apply the recapture rule as a three-step process:
(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: As seen in the below, claims 1, 7-8 12 and 17 of the instant reissue application are broader in scope than patent claim 1 for at least the following reasons:
As amended on 6/28/19 in underlying application 15/464616 and subsequently allowed (US 10870198), original patent claim 1 recites:
Claim 1. An exoskeleton to assist a user in moving as object comprising:
an upper body harness, a mid-body harness, and a lower body harness;
a first set and second set of elongated energy return members, said first set of energy return members extend between and are affixed to said upper body harness and mid-body harness, said second set of energy return members extend between and are affixed to said lower body harness and mid-body harness;
said energy return members are formed from carbon fibers; and
wherein said energy return members are adapted to provide energy to assist a user in moving an object.
(Substantive additions underlined)
Amended claim 1 and new claims 7-8, 12 and 17 in the instant reissue application each recite the limitation wherein “the at least one set of elongated return members is/being formed from carbon fibers or fiberglass”.
In comparing claims 1, 7-8, 12 and 17 of the instant reissue application, to patented claim 1, it can be seen that the limitation requiring the set of elongated return members “being formed from carbon fibers” is no longer required, in view of the amended claims 1 and newly added claims 7-8, 12 and 17 reciting “the at least one set of elongated return members is/being formed from carbon fibers or fiberglass".
It is clear that newly amended Claim 1 and newly added claims 7-8, 12 and 17 are broader in scope than original patent Claim 1, specifically with regard to the material used to form the elongated energy return members.
Step 2: It must be determined if the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution. If an original patent claim limitation now being omitted or broadened in the present reissue application was originally argued by applicant in the original application to make the claims overcome the art, the omitted limitation relates to subject matter previously surrendered by applicant. The reliance by applicant to define the original patent claims over the art can be by presentation of new/amended claims to define over the art, or an argument/statement by applicant that a limitation of the claim(s) defines over the art.
With respect to whether applicant surrendered any subject matter, it is to be noted that a patent owner (reissue applicant) is bound by the argument that applicant relied upon to overcome an art rejection in the original application for the patent to be reissued, regardless of whether the Office adopted the argument in allowing the claims. Greenliant Systems, Inc. v. Xicor LLC, 692 F.3d 1261, 1271, 103 USPQ2d 1951, 1958 (Fed. Cir. 2012). As pointed out by the court, “[i]t does not matter whether the examiner or the Board adopted a certain argument for allowance; the sole question is whether the argument was made.” Id.
During the original prosecution (Application No. 15/464616) the previous Examiner rejected the limitations of claim 1 as being anticipated by Walsh (US20150173993) in view of Hassel (US 20160081839) in the Non-Final Office action mailed 1/28/19. Applicant responded to the rejection on 6/28/19 by (i) narrowing the scope of independent claim 1 through the incorporation of claim 2, (ii) canceling claim 2 and (iii) arguing that the amendments to claim 1 defined over the prior art relied upon in the previous examiner’s rejections. Because of the amendments and arguments filed on 6/28/19, the previous examiner withdrew the prior art rejections in view of the newly added limitations (i.e. “said energy return members are formed from carbon fibers”) and issued the Notice of Allowability on 7/25/19.
The specific arguments, reproduced below, were presented by applicant in the 6/28/19 response and relied upon by applicant to overcome the rejections made in view of Walsh and Hassel:
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Thus, during the original prosecution, applicant secured allowance of the claims by incorporating into the patent claims the subject matter set forth in the arguments reproduced above. Therefore, these limitations constitute surrender-generating limitations. As shown above, applicant specifically argued that the prior art fails to teach wherein the energy return members are formed from carbon fibers and lacks motivation to make the teaching combination to arrive at the cited claim language.
This claimed subject matter was specifically cited in applicant’s arguments and the amended claims, and was further summarized in applicant’s arguments by the assertion that “Walsh expressly teaches against using carbon fibers as the energy return mechanism” and “That Walsh teaches against the use of stiff or rigid energy return members makes the combination of claims 1 and 2 patentable over the art of record”.
As shown above, the broader aspects of reissue claims 1, 7-8, 12 and 17 relate to subject matter surrendered in the original prosecution because these claims fail to recite each of the surrender-generating limitations that were added to the patent claims and argued by the applicant in order to secure allowance during the earlier-concluded examination. Specifically, reissue claims 1, 7-8, 12 and 17 only broadly require that the set of elongated return members are formed from carbon fibers or fiberglass, are not limited to being formed from only carbon fibers.
Step 3: Lastly, it must be determined whether the reissue claims omit or broaden any limitation that was added or argued during the original prosecution to overcome an art rejection. Such an omission in a reissue claim, even if it is accompanied by other limitations making the reissue claim narrower than the patent claim in other aspects, is impermissible recapture. See Pannu v. Storz Instruments Inc., 258 F.3d at 1371-72, 59 USPQ2d at 1600. However, if the patentee modifies the added or argued limitation such that it is broader than the patented claim yet still materially narrows relative to the original claim, the recapture rule does not bar reissue. See In re Youman, 679 F.3d at 1346 n.4, 102 USPQ2d at 1870 n.4.
In this case, reissue claims 1, 7-8, 12 and 17 violate the recapture rule because they omit the requirement that the set of elongated return members are formed from carbon fibers which was added to the claims and specifically argued by applicant to secure allowance.
For the above reasons, claims 1, 7-8, 12 and 17 of the instant reissue application improperly recapture broadened claimed subject matter surrendered in the application for the patent upon which the present reissue is based.
Claim Rejections - 35 USC § 112
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
GROUND 2: Claim 23 is 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 “wherein the first exoskeleton body harness is an upper body harness, and the second exoskeleton body harness is a mid-body harness” which leads to confusion in view of claim 17, from which claim 23 is dependent upon, which recites “wherein the first exoskeleton body harness is an upper body harness, and the second exoskeleton body harness is a lower body harness”. Thus, it is unclear how the second body harness can be both a mid-body harness and a lower body harness? Appropriate clarification and correction is required.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the 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.
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
GROUND 3: Claim(s) 1-4, 7, 14-17, 21 and 23-25 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent No. 5,709,648 to Webb.
In regard to claim 1, Webb discloses an exoskeleton to assist a user in moving an object comprising: an upper body harness 10/18, a mid-body harness 12/18, and a lower body harness 14/18; at least one set of elongated energy return members 20, wherein the at least one set of elongated energy return members extend between and are affixed to the upper harness and the lower body harness (see Fig. 3), where the at least one set of elongated energy return members comprises one or more flexible beam, leaf spring, or flexible rod; wherein the at least one set of elongated energy return members is formed from carbon fibers or fiberglass (See Col. 2, Lines 58-61 and Col. 4, Line 43); and wherein the at least one set of elongated energy return members is adapted to provide a force to assist a user in moving the object, the force provided by a continuous bending along a length of the at least one set of elongated energy return members that follows a curvature of a spine of the user dependent upon a position of the upper harness relative to the lower body harness (See Fig. 5 and Col. 2, Lines 18-26 and Col. 3, Line 60 - Col. 4, Line 30).
In regard to claim 2, Webb discloses an exoskeleton, wherein said exoskeleton is adapted to enable a user to pick up objects up to around 25-30% of their body weight (See Col. 3, Lines 1-11 and Col. 4, Lines 7-21).
In regard to claim 3, Webb discloses an exoskeleton, wherein said exoskeleton is adapted to offset the weight of a user’s torso when the user bends forward at the waist (See Col. 4, Lines 7-21).
In regard to claim 4, Webb discloses an exoskeleton, wherein said exoskeleton is adapted to assist a user to stand straight after squatting (See Col. 4, Lines 7-21).
In regard to claim 7, Webb discloses an exoskeleton, comprising: a first exoskeleton body harness 10/18: a second exoskeleton body harness 12/18; a third exoskeleton body harness 14/18; and at least one set of elongated energy return members 20 affixed to and extending between the first exoskeleton body harness and the second exoskeleton body harness, wherein the at least one set of elongated energy return members is further affixed to the third exoskeleton body harness (see Fig. 2), the at least one set of elongated energy return members being formed from carbon fibers or fiberglass (See Col. 2, Lines 58-61 and Col. 4, Line 43) , where the at least one set of elongated energy return members comprises one or more flexible beam, leaf spring, or flexible rod that continuously bends along a length of the at least one set of elongated energy return members that follows a curvature of a spine of a user dependent upon a position of the first exoskeleton body harness relative to the second exoskeleton body harness (See Fig. 5 and Col. 2, Lines 18-26 and Col. 3, Line 60 - Col. 4, Line 30).
In regard to claims 14 and 24, Webb discloses an exoskeleton, wherein the exoskeleton is configured to selectively provide an exoskeletal force dependent upon the position of the first exoskeleton body harness relative to the second exoskeleton body harness, the exoskeletal force provided by the continuous bend along the length of the at least one set of elongated energy return members (See Fig. 5 and Col. 2, Lines 18-26 and Col. 3, Line 60 - Col. 4, Line 30).
In regard to claim 15, Webb discloses an exoskeleton, wherein the at least one set of elongated energy return members comprises: a first set of energy return members that is affixed to and extends between the first exoskeleton body harness and the second exoskeleton body harness; and a second set of energy return members that is affixed to and extends between the second exoskeleton body harness and the third exoskeleton body harness (See Figs. 2-3 and Col. 2, Line 18 – Col. 3, Line 11).
In regard to claim 16, Webb discloses an exoskeleton, wherein the first exoskeleton body harness is an upper body harness 10/18, and the second exoskeleton body harness is a mid- body harness 12/18 (See Fig. 2 and Col. 2, Lines 18-40).
In regard to claim 17, Webb discloses an exoskeleton, an exoskeleton, comprising: a first exoskeleton body harness 10/18, wherein the first exoskeleton body harness is an upper body harness: a second exoskeleton body harness 10/14, wherein , wherein the first exoskeleton body harness is an upper body harness, and the second exoskeleton body harness is a lower body harness; and at least one set of elongated energy return members 20 affixed to and extending between the first exoskeleton body harness and the second exoskeleton body harness, the at least one set of elongated energy return members being formed from carbon fibers or fiberglass (See Col. 2, Lines 58-61 and Col. 4, Line 43), where the at least one set of elongated energy return members comprises one or more flexible beam, leaf spring, or flexible rod that continuously bends along a length of the at least one set of elongated energy return members that follows a curvature of a spine of a user dependent upon a position of the first exoskeleton body harness relative to the second exoskeleton body harness (See Fig. 5 and Col. 2, Lines 18-26 and Col. 3, Line 60 - Col. 4, Line 30).
In regard to claims 21 and 25, Webb discloses an exoskeleton, further comprising a rigid member 22 or 24 coupled to at least one of the first exoskeleton body harness or the second exoskeleton body harness (See Fig. 2 and Col. 2, Lines 28-45).
In regard to claim 23, Webb discloses an exoskeleton, wherein the first exoskeleton body harness is an upper body harness, and the second exoskeleton body harness is a mid-body harness 10/12 (see Fig. 2).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the 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.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
GROUND 4: Claim(s) 1-4, 7-8, 12-17, 21 and 23-25 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication 2019/0344431 to Grenier et al. in view of U.S. Patent Application Publication 2016/0128890 to LaChappelle et al.
In regard to claims 1 and 17, Grenier et al. disclose an exoskeleton to assist a user in moving an object comprising: an upper body harness 2 (i.e. back module), a mid-body harness 1 (i.e. base module), and a lower body harness 5 (i.e. hip module) (see Figs. 1-3); at least one set of elongated energy return members, wherein the at least one set of elongated energy return members 21/211 and 52/511 extend between and are affixed to the upper harness and the lower body harness (see Figs. 3 and 13-14). As broadly as claimed, the “set of elongated energy return members” is interpreted as the spinal column segment 21 (see paras 0140-0157) and the hip module 5 (See paras 0064-0081), with each individual segment 21, 5 representing one part of the claimed “set of elongated energy return members”. Grenier et al. further disclose wherein the at least one set of elongated energy return members comprises one or more flexible beam, leaf spring, or flexible rod 212/511; and wherein the at least one set of elongated energy return members is adapted to provide a force to assist a user in moving the object, the force provided by a continuous bending along a length of the at least one set of elongated energy return members that follows a curvature of a spine of the user dependent upon a position of the upper harness relative to the lower body harness (See Figs. 13-15 and paras 0140-0157). Grenier et al. disclose wherein elongated energy return members 211 are formed from carbon fibers (See para 0143) but are silent with respect to the material used to form the hip module 5 part of the elongated energy return member set. LaChappelle et al. teach of an analogous exoskeleton comprising numerous energy return members which may be formed of any suitable material, such as carbon fiber, aluminum, steel, plastic, polymers, or combinations thereof (see paras 0064, 0066, 0073). It would have been obvious to one skilled in the art at the time the invention was filed to form the elongated energy return member set of Grenier et al. from carbon fiber to provide high energy and highly deformable components to the exoskeleton, thus providing an enhanced ability to the user in moving objects as taught by LaChappelle et al.
In regard to claim 2, Grenier et al., as modified by LaChappelle et al. disclose an exoskeleton, wherein said exoskeleton is adapted to enable a user to pick up objects up to around 25-30% of their body weight (See Figs. 13-15, 21 and paras 0131-0157, 0192-0209).
In regard to claim 3, Grenier et al., as modified by LaChappelle et al., disclose an exoskeleton, wherein said exoskeleton is adapted to offset the weight of a user’s torso when the user bends forward at the waist (See Figs. 13-15 and paras 0131-0157).
In regard to claim 4, Grenier et al., as modified by LaChappelle et al., disclose an exoskeleton, wherein said exoskeleton is adapted to assist a user to stand straight after squatting (See Figs 1-3, 8a-b and paras 0064-0080).
In regard to claims 7-8 and 12, Grenier et al. disclose an exoskeleton, comprising: a first exoskeleton body harness 2: a second exoskeleton body harness 1; a third exoskeleton body harness 5 (see Figs. 1-3); and at least one set of elongated energy return members 21/211 and 52/511 affixed to and extending between the first exoskeleton body harness and the second exoskeleton body harness, wherein the at least one set of elongated energy return members is further affixed to the third exoskeleton body harness (see Figs. 1-3, paras 0064-0081 and 0140-0157); where the at least one set of elongated energy return members comprises one or more flexible beam, leaf spring, or flexible rod 212/511that continuously bends along a length of the at least one set of elongated energy return members that follows a curvature of a spine of a user dependent upon a position of the first exoskeleton body harness relative to the second exoskeleton body harness (See Figs. 13-15 and paras 0140-0157). In further regard to claims 8 and 12, Grenier et al. disclose an exoskeleton, wherein the second exoskeleton body harness is a lower body harness (i.e. hip module 5) comprising: a first leg harness portion configured to be secured to a first leg of a user; and a second leg harness portion configured to be secured to a second leg of the user; and wherein the first leg harness portion and the second leg harness portion are interconnected such that movement of the first leg harness portion causes a responsive movement of the second leg harness portion (see Figs. 1-3, 8a-b and paras 0064-0080). For the same reasons discussed above with respect to claim 1, it would have been obvious to one skilled in the art at the time the invention was filed to form the elongated energy return member set of Grenier et al. from carbon fiber as taught by LaChappelle et al.
In regard to claim 13, Grenier et al. disclose an exoskeleton, wherein the exoskeleton further comprises a latch 8 that facilitates separation of at least one of the first leg harness portion or the second leg harness portion from the user (See Figs. 9, 10a-b and paras 0082-0097).
In regard to claims 14 and 24, Grenier et al. disclose an exoskeleton, wherein the exoskeleton is configured to selectively provide an exoskeletal force dependent upon the position of the first exoskeleton body harness relative to the second exoskeleton body harness, the exoskeletal force provided by the continuous bend along the length of the at least one set of elongated energy return members (See Figs. 13-15 and paras 0140-0157).
In regard to claim 15, Grenier et al. disclose an exoskeleton, wherein the at least one set of elongated energy return members comprises: a first set of energy return members 211/212 that is affixed to and extends between the first exoskeleton body harness and the second exoskeleton body harness (See Figs. 13-15 and pars 0140-0157); and a second set of energy return members 511/52 that is affixed to and extends between the second exoskeleton body harness and the third exoskeleton body harness (See Figs.1-3, 8a-b and paras 0064-0081).
In regard to claim 16, Grenier et al. disclose an exoskeleton, wherein the first exoskeleton body harness is an upper body harness 2, and the second exoskeleton body harness is a mid- body harness 1 (See Figs. 1-3 and paras 0046-0056).
In regard to claims 21 and 25, Grenier et al. disclose an exoskeleton, further comprising a rigid member 3 coupled to at least one of the first exoskeleton body harness or the second exoskeleton body harness (See Figs. 1-3, 16-18 and paras 0162-0175).
In regard to claim 23, Grenier et al. disclose an exoskeleton, wherein the first exoskeleton body harness is an upper body harness, and the second exoskeleton body harness is a mid-body harness (see Fig. 1-3).
Claim Objections
Claim 17 is objected to because of the following informalities: lines 1-6 of the claim recite:
An exoskeleton, comprising:
a first exoskeleton body harness, wherein the first exoskeleton body harness is an upper body harness: a second exoskeleton body harness, wherein , wherein the first exoskeleton body harness is an upper body harness, and the second exoskeleton body harness is a lower body harness
(emphasis added)
The claim is grammatically incorrect and redundant. Appropriate correction is required.
Response to Arguments
Applicant's arguments and amendments filed December 11, 2024, with respect to claim(s) 1-4, 7-17, 21 and 23-25 have been considered but are moot in view of new GROUNDS 1-4 as set forth above.
Amendments in Reissue Applications
Applicant is notified that any subsequent amendment to the specification, claims or drawings must comply with 37 CFR 1.173(b)-(g). In addition, for reissue applications filed before September 16, 2012, when any substantive amendment is filed in the reissue application, which amendment otherwise places the reissue application in condition for allowance, a supplemental oath/declaration will be required. See MPEP § 1414.01.
The provisions of 37 CFR 1.173(b)(1), (d), (f) and (g) govern amendments to the specification (other than the claims) in reissue applications. The following guidance is provided as to the procedure for amending the specification:
a) All amendments which include deletions or additions must be made by submission of the entire text of each added or rewritten paragraph containing the bracketing and/or underlining required by 37 CFR 1.173(d).
b) An entire paragraph of specification text may be deleted by a statement deleting the paragraph without presentation of the text of the paragraph.
c) Applicant must indicate the precise point where each amendment is made.
d) All bracketing and underlining is made in comparison to the original patent, not in comparison to any prior amendment in the reissue application. Thus, all paragraphs which are newly added to the specification of the original patent must be submitted as completely underlined each time they are re-submitted in the reissue application.
The provisions of 37 CFR 1.173(b)(2), (c)-(e) and (g) govern amendments to the claims in reissue applications. The following guidance is provided as to the procedure for amending the claims:
a) For each claim that is being amended, the entire text of the claim must be presented with the bracketing and/or underlining required by 37 CFR 1.173(d).
b) For each new claim added to the reissue, the entire text of the added claim must be presented completely underlined.
c) A patent claim should be canceled by a direction to cancel that claim. There is no need to present the patent claim surrounded by brackets.
d) A new claim (previously added in the reissue) should be canceled by a direction to cancel that claim.
e) Pursuant to 37 CFR 1.173(b)(2), each claim that is amended or added should include the appropriate status indicator following the claim number, e.g., “(amended)”, “(twice amended)”, “(new)”, and “(canceled)”.
f) Pursuant to 37 CFR 1.173(c), each amendment submitted must set forth the status of all patent claims and all added claims as of the date of the submission. The status to be set forth is whether the claim is pending or canceled.
g) Also pursuant to 37 CFR 1.173(c), each claim amendment must be accompanied by an explanation of the support in the patent’s disclosure for all changes made in the claim(s), whether insertions or deletions.
h) Pursuant to 37 CFR 1.173(e), original patent claims are never to be renumbered. A patent claim retains its number even if it is canceled in the reissue proceeding, and the numbering of any added claims must begin after the last original patent claim.
i) Pursuant to 37 CFR 1.173(g), all bracketing and underlining is made in comparison to the original patent, not in comparison to any prior amendment in the reissue application.
The provisions of 37 CFR 1.173(b)(3) govern amendments to the drawings in reissue applications. The following guidance is provided as to the procedure for amending drawings:
a) Amending the original or printed patent drawing sheets by physically changing or altering them is not permitted.
b) Where a change to the drawings is desired, applicant must submit a replacement sheet for each sheet of drawings containing a figure to be revised. Any replacement sheet must comply with 37 CFR 1.84 and include all of the figures appearing on the original version of the sheet, even if only one figure is being amended. Each figure that is amended must be identified by placing the word “Amended” at the bottom of that figure. Any added figure must be identified as “New”. In the event that a figure is canceled, the figure must be identified as “Canceled” and also surrounded by brackets.
c) All changes to the figure(s) must be explained, in detail, beginning on a separate sheet which accompanies the papers including the amendment to the drawings.
d) If desired, applicant may include a marked-up copy of any amended drawing figure, including annotations indicating the changes made. Such a marked-up copy must be clearly labeled as “Annotated Marked-up Drawings”, and it must be presented in the amendment or remarks section that explains the change to the drawings.
Failure to fully comply with 37 CFR 1.173(b)-(g) will generally result in a notification to applicant that an amendment before final rejection is not completely responsive. Such an amendment after final rejection will not be entered.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW J KASZTEJNA whose telephone number is (571)272-6086. The examiner can normally be reached M-F, 7AM--3PM.
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/MATTHEW J KASZTEJNA/ Reexamination Specialist, Art Unit 3993
Conferees:
/Laura Davison/Reexamination Specialist, Art Unit 3993
/Patricia L Engle/SPRS, Art Unit 3993