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 .
DETAILED ACTION
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 is a Non-Final Action.
The current application filed September 13, 2021 is a continuation reissue application of reissue application 16/033,897 (U.S. Patent No. RE48,732 issued September 14, 2021), both of which are reissue applications of 14/320,389 (U.S. Patent No. 9,839,018 issued December 5, 2017, hereinafter “the ‘018 patent”).
Claims 1-30 were initially pending in the application. By way of the preliminary amendment claims 1-30 were cancelled and claims 31-51 were added, claims 31, 38 and 45 are independent claims.
In the most recent amendment filed April 30, 2025, previously added claims 50-52 have been cancelled and claims 31-49 have been added, claims 31, 37, and 43 are independent claims. Claims 31-49 are pending. The amendment has been entered and made of record.
The rejection of claims 38-51 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, has been withdrawn in view of the amendments and arguments.
The rejection of claims 31-52 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, has been withdrawn in view of the amendments.
Reissue
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. 9,839,018 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.
Reissue Declaration
The reissue oath/declaration filed April 30, 2025 is additionally defective because the error which is relied upon to support the reissue application is not an error upon which a reissue can be based (see 37 CFR 1.175 and MPEP § 1414). As explained below in reference to the rejection in view of impermissible recapture, the error on which the reissue is based on according to the declaration is not an error upon which reissue can be based because it amounts to impermissible recapture.
Claims 31-49 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.
Claim Interpretation
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181(I), claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
The limitations of claims 31-49 provide adequate structure. The claim limitation(s) in claims 31-49 is/are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If applicant intends to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
Claim Rejections - 35 USC § 251
Claims 31-49 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(II)):
“(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(II)(A)) In the instant case and by way of the amendment, Applicant seeks to broaden independent claim 1 with the addition of claims 31, 37, and 43 in this reissue at least by partially or wholly deleting/omitting the patent claim language requiring that the apparatus includes (using claim 1 as example) “transmitting, on the set of time-frequency radio resources, a data information message comprising the information other than the control information, wherein the data information message has a size that is the same as a size of at least one of a transport block for a Physical Downlink Shared Channel (PDSCH) or a downlink control information (DCI) message transmitted on the downlink control channel, the size of the transport block being pre- determined according to a wireless communications standard, wherein the information other than the control information is user-specific data information, and wherein the method further comprises: scrambling a Cyclic Redundancy Check (CRC) code using a dedicated user- specific Radio Network Temporary Identifier (RNTI):encoding, using a superposition coding, the user-specific data information into a first data layer detectable within a coverage area and a second data layer comprising additional data; and sending the scrambled CRC code with the user-specific data information in the data information message.” of claim 1.
(Step 2: MPEP 1412.02(II)(B)) The record of the prior 14/320,389 application prosecution indicates that in the Amendment filed August 7, 2017, claim 1 was amended to include the language, “transmitting, on the set of time-frequency radio resources, a data information message comprising the information other than the control information, wherein the data information message has a size that is the same as a size of at least one of a transport block for a Physical Downlink Shared Channel (PDSCH) or a downlink control information (DCI) message transmitted on the downlink control channel, the size of the transport block being pre- determined according to a wireless communications standard, wherein the information other than the control information is user-specific data information, and wherein the method further comprises: scrambling a Cyclic Redundancy Check (CRC) code using a dedicated user- specific Radio Network Temporary Identifier (RNTI):encoding, using a superposition coding, the user-specific data information into a first data layer detectable within a coverage area and a second data layer comprising additional data; and sending the scrambled CRC code with the user-specific data information in the data information message.” Additionally, in the Applicant Arguments/Remarks filed on August 7, 2017, Applicant argued in an attempt to overcome the applied prior art references that none of the references teach or suggest the limitations that were added in said amendment.
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(pages 8 and 9 of Applicant’s Arguments/Remarks filed 8/7/2017 in application 14/320,389)
Subject matter is previously surrendered during the prosecution of the original application by reliance on an argument/statement made by applicant that a limitation of the claim(s) defines over the art. Additionally, Reissue recapture applies to related family member applications (See MBO Laboratories, Inc. v. Becton, Dickinson & Co., 474 F.3d 1323, 94 USPQ2d 1598 at 1606 (Fed. Cir. Apr. 12, 2010) (a more limited recapture rule would undercut “the rule against recapture’s public-reliance rationale” and a patent family’s entire prosecution history should be reviewed “when applying both the rule against recapture and prosecution history estoppel.”)). It is 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 and the patent family's prosecution for the patent to be reissued, regardless of whether the Office adopted the argument in allowing the claims. Therefore, in the instant case the omission of the surrender-generating limitations requiring “transmitting, on the set of time-frequency radio resources, a data information message comprising the information other than the control information, wherein the data information message has a size that is the same as a size of at least one of a transport block for a Physical Downlink Shared Channel (PDSCH) or a downlink control information (DCI) message transmitted on the downlink control channel, the size of the transport block being pre- determined according to a wireless communications standard, wherein the information other than the control information is user-specific data information, and wherein the method further comprises: scrambling a Cyclic Redundancy Check (CRC) code using a dedicated user- specific Radio Network Temporary Identifier (RNTI):encoding, using a superposition coding, the user-specific data information into a first data layer detectable within a coverage area and a second data layer comprising additional data; and sending the scrambled CRC code with the user-specific data information in the data information message.” equates to attempting to recapture surrendered subject matter and thus by omission some of the broadening of the reissue claims, as noted above, are clearly in the area of the surrendered subject matter.
(Step 3: MPEP 1412.02(II)(C)) It must be determined whether the reissue claim omits or broadens any limitation that was added/argued during the original prosecution to overcome an art rejection. Such an omission in a reissue claim, even if it includes other limitations making the reissue claim narrower than the patent claim in other aspects, is impermissible recapture. Pannu, 258 F.3d at 1371-72, 59 USPQ2d at 1600. Simply stated, claims 31-49 omit the language requiring “transmitting, on the set of time-frequency radio resources, a data information message comprising the information other than the control information, wherein the data information message has a size that is the same as a size of at least one of a transport block for a Physical Downlink Shared Channel (PDSCH) or a downlink control information (DCI) message transmitted on the downlink control channel, the size of the transport block being pre- determined according to a wireless communications standard, wherein the information other than the control information is user-specific data information, and wherein the method further comprises: scrambling a Cyclic Redundancy Check (CRC) code using a dedicated user- specific Radio Network Temporary Identifier (RNTI):encoding, using a superposition coding, the user-specific data information into a first data layer detectable within a coverage area and a second data layer comprising additional data; and sending the scrambled CRC code with the user-specific data information in the data information message.” and thus would amount to impermissible recapture due to the omission of surrender-generating limitations.
Examiner notes that the limitations presented in claims 31, 37, and 43 do not qualify as an overlooked aspect as discussed in MPEP 1412.01(I). Claims to separate inventions/embodiments/species that were disclosed but never covered by the claims in the original application prosecution are claims to overlooked aspects. However, if during the prosecution of the application that became the patent to be reissued, a claim generic to embodiments or species of the invention was presented, then a reissue claim to a specific embodiment or species of that same invention is not an overlooked aspect because the generic claim already claimed the embodiment or species, albeit very broadly. As can be seen in application 14/320,389, the originally filed version of claim 1 that was examined was generic in nature relative to the limitations added on August 7, 2017 that were discussed above.
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(Claim 1 as presented May 25, 2016 in application 14/320,389)
This earlier version would qualify as a generic claim which encompassed both the claims that were allowed in the ‘018 Patent and the claims being presented in the current reissue proceeding. Thus for at least these reasons, as stated the limitations presented in claims 31-49 do not qualify as overlooked aspects.
Additionally, reissue claims 31-49 are not materially narrowed in other respects that relate to the surrendered subject matter to avoid said impermissible recapture.
Therefore, impermissible recapture of broadened claimed subject matter surrendered in the application is clearly present in the instant reissue application.
Response to Arguments
Applicant's arguments filed April 30, 2025 have been fully considered but they are not persuasive.
Regarding the rejections under 35 U.S.C. 112:
Applicant’s arguments with respect to these rejections have been considered and are persuasive in view of the amendments. Thus, as stated above these rejections have been withdrawn.
Regarding the reissue oath/declaration:
Applicant argues that the newly filed reissue oath/declaration is proper.
Examiner respectfully disagrees. The reissue oath/declaration filed April 30, 2025 is additionally defective because the error which is relied upon to support the reissue application is not an error upon which a reissue can be based (see 37 CFR 1.175 and MPEP § 1414). As explained above in reference to the rejection in view of impermissible recapture, the error on which the reissue is based on according to the declaration is not an error upon which reissue can be based because it amounts to impermissible recapture. Claims 31-49 are properly rejected as being based upon a defective reissue declaration under 35 U.S.C. 251 as set forth above.
Regarding the rejection of claims 25-56 under 35 U.S.C. 251:
Applicant argues that claims 31-49 are directed towards overlooked aspects and thus are not subject to the recapture requirement. Additionally, applicant argues that some of the amendments were made to overcome 112 rejections and thus are not subject to recapture.
Examiner respectfully disagrees. The limitations presented in claims 31, 37, and 43 do not qualify as an overlooked aspect as discussed in MPEP 1412.01(I). Claims to separate inventions/embodiments/species that were disclosed but never covered by the claims in the original application prosecution are claims to overlooked aspects. However, if during the prosecution of the application that became the patent to be reissued, a claim generic to embodiments or species of the invention was presented, then a reissue claim to a specific embodiment or species of that same invention is not an overlooked aspect because the generic claim already claimed the embodiment or species, albeit very broadly. As can be seen in application 14/320,389, the originally filed version of claim 1 that was examined was generic in nature relative to the limitations added on August 7, 2017 that were discussed above.
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(Claim 1 as presented May 25, 2016 in application 14/320,389)
This earlier version would qualify as a generic claim which encompassed both the claims that were allowed in the ‘018 Patent and the claims being presented in the current reissue proceeding. Thus for at least these reasons, as stated the limitations presented in claims 31-49 do not qualify as overlooked aspects.
Additionally, the applicant’s statements that amendments made to overcome 112 rejections are not subject to recapture is incorrect. The MPEP states the following:
Surrender Generating Limitation (SGL) or Surrendered Subject Matter – An SGL is a "limitation" presented, argued, or stated to make the claims patentable (in the original application) and "generates" the surrender of claimed subject matter. An SGL or surrendered subject matter can be created by presentation of new/amended claims to define the invention over the art or an argument/statement by applicant that a limitation of the claim(s) (including a limitation in an original claim) defines the invention over the art. 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). An SGL or surrendered subject matter can also be created by presentation of new/amended claims or an argument/statement to obviate a rejection based on other grounds. In re McDonald, 43 F.4th 1340, 1348, 2022 USPQ2d 745 (Fed. Cir. 2022). (MPEP 1412.02(I), emphasis added)
As can be seen in the citation above, an SGL can be created by amendments/arguments made to obviate a rejection based on other grounds, which would include 35 U.S.C. 112. Thus, the recapture analysis provided in the rejection above is proper and the rejection must be maintained.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSHUA D CAMPBELL whose telephone number is (571)272-4133. The examiner can normally be reached 7:30-4:00 M-F.
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/JOSHUA D CAMPBELL/Primary Examiner, Art Unit 3992
Conferees:
/ADAM L BASEHOAR/Primary Examiner, Art Unit 3992
/ALEXANDER J KOSOWSKI/ Supervisory Patent Examiner, Art Unit 3992
Prosecution Insights