REISSUE PROCEDURAL REMINDERS
Disclosure of other 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 the Patent Under Reissue is or was involved. These proceedings would include interferences, reissues, reexaminations, and litigation.
Disclosure of material information. 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 disclosure 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.
Manner of making amendments. Applicant is reminded that changes to the Instant Application must comply with 37 C.F.R. § 1.173, such that all amendments are made in respect to the Patent Under Reissue as opposed to any prior changes entered in the Instant Application. All added material must be underlined, and all omitted material must be enclosed in brackets, in accordance with Rule 173. Applicant may submit an appendix to any response in which claims are marked up to show changes with respect to a previous set of claims, however, such claims should be clearly denoted as “not for entry.”
Claim Rejections - 35 USC § 251
Claims 9-26 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. See Greenliant Systems, Inc. v. Xicor LLC, 692 F.3d 1261, 103 USPQ2d 1951 (Fed. Cir. 2012); In re Mostafazadeh, 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 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.
The MPEP sets forth a three step test for the recapture analysis:
(1) whether, and in what respect, are the reissue claims broader than the patent claims
(2) do the broadened aspects relate to subject matter surrendered in the original prosecution; and
(3) are the reissue claims material narrowed in other respects such that the claims have not been enlarged.
MPEP 1412.02 II.
As to step (1), new claims 9-23 are broader than the patent claims in certain respects as will be seen in the discussion below.
As to step (2), during the prosecution of application 15/041,300, the claims were rejected over prior art in the first Office action mailed 9/13/2016. In a response filed 11/17/2016, applicant argued:
Feng does not disclose, teach or suggest, a receiver on a control device for receiving a unicast acknowledge message from each of the group of lamps that receive the groupcast message, wherein the unicast acknowledge message is sent through a single, first lamp-to-lamp path based on routing tables stored within each of the plurality of lamps. Independent claim 1 recites not only a receiver for receiving a unicast acknowledge message from each of the group of lamps that receive the groupcast message, but also recites the unicast acknowledge message is sent through a single, first lamp-to-lamp path based on routing tables stored within each of the plurality of lamps.
11/17/2016 Response at 2 (bold omitted, underlining in original). Applicant provided a similar argument as to similar independent claim 17 (a corresponding method claim), and went on to argue that the primary reference to Feng lacked the underlined limitations. Applicant provided different arguments as to independent claim 6.
In response, the examiner indicated claims 1, 17, and their dependent claims allowable, and rejected claims 6-16. Applicant then cancelled claims 6-16 and permitted allowance of claims 1-5 and 17-19 (which became patent claims 1-8). Accordingly, applicant argued that the above underlined limitations were lacking from the prior art, and this resulted in the allowance of those claims. These limitations are deemed surrender generating limitations for recapture purposes. See MPEP 1412.02 II.B.2. These limitations are not found in any of the new claims 9-23.
As to step (3), there is no indication that there is any material narrowing in claims 9-23 to avoid recapture. See MPEP 1412.02 II.C. Any narrowing of the new claims is not related to the surrender generating material.
Applicant may argue that there is a material narrowing because a unicast acknowledgement message is sent from each recipient device, and that this message is communicated “using a defined routing across the mesh network.” The examiner determines that this is not a sufficient material narrowing to avoid recapture.
First, it was already well known in the art to a unicast acknowledgement message may be sent from each recipient device. The ‘215 patent states that IEEE 802.15.4 and Zigbee were well known, col. 2 lines 55-58, and Zigbee was quite capable of using unicast acknowledgement messages. This cannot therefore be a material narrowing that avoids recapture, because if the retained material was well known in the art then improper recapture still exists. In re Mostafazadeh, 643 F.3d 1353, 1361 (Fed. Cir. 2011); In re Youman, 679 F.3d 1335, 1347 (Fed. Cir. 2012); MPEP 1412.02 II.C.
Second, “using a defined routing across the mesh network” is too broad to materially narrow the specific surrendered material that the acknowledge message is sent through a single, first lamp-to-lamp path based on routing tables stored within each of the plurality of lamps. Sending a unicast message directly from a recipient device back to the source would be sufficient to meet this limitation, and this is no more than the unicast acknowledgement message as mentioned in the prior paragraph.
In addition, in the response filed on June 3rd, 2025, the Patent Owner also removed the limitation which is considered surrendered subject matter as disclosed above. More specifically, the Patent Owner omitted the following limitation from the independent claims 9, 14 and 19, “receiver on the control device for receiving a unicast acknowledge message from each of the group of lamps that receive the groupcast control message”.
Applicant should add that “the unicast acknowledge message is sent through a single, first lamp-to-lamp path based on routing tables stored within each of the plurality of lamps” and a “receiver on the control device for receiving a unicast acknowledge message from each of the group of lamps that receive the groupcast control message”, since both limitations are surrendered material added during the original prosecution.
Dependent claims 10-13, 15-18 and 20-26 are also rejected by being dependent on claims 9, 14 and 19 respectively and failing to remedy deficiency of those independent claims.
In addition, claims 24-26 are also rejected because even though they include some of the surrendered subject matter, they still fail to recite “the unicast acknowledge message is sent through a single, first lamp-to-lamp path based on routing tables stored within each of the plurality of lamps”. (emphasis added)
Allowable Subject Matter
Claims 9-29 would be allowable if all of the issues herein were overcome.
In particular, the originally surrendered limitations reciting “receiving a unicast acknowledge message from each of the group of lamps that receive the groupcast message, wherein the unicast acknowledge message is sent through a single, first lamp-to-lamp path based on routing tables stored within each of the plurality of lamps”, as discussed in the recapture rejection above, were the reason for allowance of claim 1 in parent 16/414,695, see 11/16/2020 action at 9, and would likewise be reason for allowance here.
Response to Arguments
Applicant's arguments filed July 20th, 2026 have been fully considered but they are not persuasive.
Argument #1: “The Federal Circuit stressed the fact that the patentee sought to remove, by reissue, limitations which they had repeatedly argued for seven years of prosecution. Id. In contrast, in the present case, the comment the Examiner relies upon was made once, in regard to a system claim.
Moreover, Applicant has further attempted to clarify that the present independent claims are directed to what happens when the electrical load control circuitry determines one or more of the plurality of recipient illumination devices has not acknowledged receipt of the groupcast. This is subject matter that was not specifically claimed in the '215 patent - that is, these are claims related to overlooked aspects”1.
Examiner’s Response: The above argument has not been found persuasive. There is no standard number of times a limitation must be argued or mentioned during prosecution, in order to qualify as a surrendered subject matter. Instead, it is important to determine whether given limitation has been argued because an Applicant believed that it differentiated the claimed invention over the prior art and therefore resulted in allowance. As explained in the 35 U.S.C. 251 section above, during the prosecution of the underlying ‘215 patent, limitations: “the unicast acknowledge message is sent through a single, first lamp-to-lamp path based on routing tables stored within each of the plurality of lamps” and a “receiver on the control device for receiving a unicast acknowledge message from each of the group of lamps that receive the groupcast control message” have been relied upon to overcome the prior art. Consequently, those limitations constitute SGL.
Furthermore, MPEP 1412.02 I clearly explains under section “Surrender Generating Limitation (SGL) or Surrendered Subject Matter” that “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”. (emphasis added) In addition, in Hester,supra, the Federal Circuit held that the surrender that forms the basis for impermissible recapture "can occur through arguments alone." 142 F.3d at 1482, 46 USPQ2d at 1649.
Accordingly, in the recapture section above, the Examiner explicitly pointed to the sections in the remarks filed during the prosecution of the original application 15/041,300. More specifically, in response filed on 11/17/2016, applicant argued:
Feng does not disclose, teach or suggest, a receiver on a control device for receiving a unicast acknowledge message from each of the group of lamps that receive the groupcast message, wherein the unicast acknowledge message is sent through a single, first lamp-to-lamp path based on routing tables stored within each of the plurality of lamps. Independent claim 1 recites not only a receiver for receiving a unicast acknowledge message from each of the group of lamps that receive the groupcast message, but also recites the unicast acknowledge message is sent through a single, first lamp-to-lamp path based on routing tables stored within each of the plurality of lamps.
Therefore, unequivocally, limitations: “the unicast acknowledge message is sent through a single, first lamp-to-lamp path based on routing tables stored within each of the plurality of lamps” and a “receiver on the control device for receiving a unicast acknowledge message from each of the group of lamps that receive the groupcast control message” are surrendered subject matter and must not be omitted from the new/amended independent claims.
With respect to the overlooked aspects of the invention, it does not appear that new claims 9-29 are directed to a different embodiment but instead describe the same system with emphasis on different sub-combinations, however the combination/system requires the sub-combinations specific details for novelty/non-obviousness. In other words, ‘215 patent does not disclose different embodiments but a single embodiment/system comprising plurality of parts.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANGELA M LIE whose telephone number is (571)272-8445. The examiner can normally be reached on M-F, 5:30 am - 2:00 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Hetul Patel can be reached on 571-272-4184.
All correspondence relating to this reissue proceeding should be directed:
Patent Center
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By Mail to: Mail Stop Reissue
Central Reexamination Unit
Commissioner for Patents
United States Patent & Trademark Office
P.O. Box 1450
Alexandria, VA 22313-1450
By FAX to: (571) 273-9900
Central Reexamination Unit
By hand: Customer Service Window
Knox Building
501 Dulany Street
Alexandria, VA 22314
/ANGELA M LIE/Primary Examiner, Art Unit 3992
Conferees:
/LUKE S WASSUM/Primary Examiner, Art Unit 3992
/ALEXANDER J KOSOWSKI/Supervisory Patent Examiner, Art Unit 3992
1 Remarks filed on July 20, 2026 – page 7
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