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)
Claim 9-26 are rejected under 35 U.S.C. 251 as being in violation of the original patent requirement.
Section 251 requires that reissue is for “the invention disclosed in the original patent.” In order to satisfy the original patent requirement, “[i]t must appear from the face of the instrument that what is covered by the reissue was intended to have been covered and secured by the original.” U.S. Indus. Chems., Inc. v. Carbide & Carbon Chems. Corp., 315 U.S. 668, 676 (1942). Furthermore, “it is not enough that an invention might have been claimed in the original patent because it was suggested or indicated in the specification.” Id. In other words, the original patent “must clearly and unequivocally disclose the newly claimed invention as a separate invention.” Antares Pharma, Inc. v. Medac Pharma Inc., 771 F.3d 1354, 1362 (Fed. Cir. 2014).
Applicant has added new claims 9-23 that, among other things, remove the requirement that the systems are controlling lamps, illumination devices, lighting, or the like. Rather, the present claims more broadly just refer to “loads.” However, it does not appear from the face of the original patent that applicant intended to cover and secure control of loads generally, loads that are not necessarily lamps or illumination devices.
The ‘215 patent “relates to illumination devices and, more particularly, to illumination devices interconnected by a network and controlled based on groupings of those devices and content stored therein.” Col. 1 lines 18-21. The title refers to illumination devices. The abstract refers to “A light control system and method.” The entirety of the related art section refers to illumination devices and LED lamps. The entirety of the summary of invention section refers to lamp illumination devices, lighting control systems, light controllers, or the like. All of the embodiments deal with lamp or illumination device control. All of the original claims are drawn to lighting control systems or methods of controlling lamps. From the entirety of the specification it appears that illumination devices or lamps are an essential or critical part of the ‘215 patent. “[R]eissue claims broadening a limitation to cover undisclosed alternatives to a particular feature appearing from the face of the original specification to be a necessary, critical, or essential part of the invention, do not meet the original patent requirement of § 251.” In re Float’N’Grill LLC, 72 F.4th 1347, 1352 (Fed. Cir. 2023).
This situation is also somewhat analogous to the Federal Circuit decision in Forum US, Inc. v. Flow Valve, LLC, 926 F.3d 1346 (Fed. Cir. 2019). In Forum US, the original patent claims were drawn to a workpiece having a body member and a plurality of arbors (arbors circled):
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Forum US, 926 F.3d at 1348-49. In reissue, patentee broadened the claims to remove the requirement as to arbors. Id. at 1349. The Federal Circuit determined that the new claims did not comply with the original patent requirement of section 251 because the face of the patent did not disclose any arbor-less embodiment, and the abstract, summary of invention, and all disclosed embodiments included arbors. Id. at 1352. The Court concluded that the specification did not clearly and unequivocally disclose an embodiment without arbors, thus the original patent requirement was violated by including claims that did not require arbors. Id. Similarly, the patent here does not clearly and unequivocally disclose any embodiment controlling any type of load broadly, rather than lamps or illumination devices. To overcome this rejection, the claims must be amended to include such a material.
Allowable Subject Matter
Claims 9-26 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 November 24th, 2025 have been fully considered but they are not persuasive.
On page 8, the Patent Owner contended “Applicant notes that dependent claims 24-26 are rejected only for §112(b) and one ground of §251. However, Applicant wishes to point out that Claims 13, 18 and 23 depend from claims 24-26, respectively, and so cannot be rejected on a recapture ground for which claims 24-26 weren’t rejected”.
Examiner’s Response: The Examiner would like to thank the Patent Owner for pointing out the typo in the office action wherein claims 24-26 were omitted from the recapture rejection. Please note that the recapture rejection has been updated to include claims 24-26. More specifically while those claims include some of the surrendered subject matter, as explained in the rejection under 35 U.S.C 251 above, the limitation pertaining to sending acknowledgement message through a single, first lamp-to-lamp path based on routing tables stored within each of the plurality of lamps, has been omitted. Accordingly, claims 24-26 are also rejected for impermissible recapture, thus claims 13, 18 and 23 which depend on those claims, also remain rejected.
In the argument on page 8, the Patent Owner contends: “The claims are concerned with the circuitry determining whether an acknowledgement is received – there is no need for positively reciting the hardware for reception, just as there is no need for reciting a power supply to power the circuitry. Also, the Office is respectfully reminded that the Nautilus standard is whether the claims "inform with reasonable certainty, those skilled in the art about the scope of the invention."
The Examiner’s Response: The Examiner has withdrawn the rejection under 35 U.S.C. 112(b) because after reconsideration the Examiner has concluded that the limitation “the acknowledgement comprising a unicast acknowledgment message communicated by a responding recipient device” is sufficient with regards to receiving confirmation.
To clarify, the 35 U.S.C 112(b) rejection has been raised not because “receiver” has not been recited in the body of the claim but rather because the step of receiving was not present in the amended claims, and as explained in the Final Rejection mailed July 22nd, 2025, the step of receiving or not receiving acknowledgement, is essential to further determine whether the acknowledgement message has been communicated so that the determination step can be carried out.
Then on page 9, the Patent Owner alleges that “Claim 1 and Claim 17 (granted as Claim 6) of US Serial No.15/041,300 were never amended during prosecution. How can there be subject matter surrendered in the original prosecution in that scenario?”
Examiner’s Response: 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.
On the subsequent page, the Patent Owner further contends: “Second, and only for the sake of completeness, Applicant notes that of RE48,882's ten independent claims, only claim 1 recites the language that the Office asserts should be added to all of the present independent claims. Applicant cannot follow why Claim 1 (of the '215 patent (and RE48,882)), a system claim which claimed, "A lighting control system, comprising: a plurality of lamps control a button and a receiver on the control device" (emphasis added) was selected as especially device relevant to the present claims, which, as noted above, are directed to actions by the electrical load control circuitry”.
Examiner’s Response: Evidently claims in the RE48,882 differ from those presented in reissue application No.17/558,878 and each case is considered individually on its merits. Furthermore, the Examiner would like to note that while for instance independent claims 1 and 6 of the Re48,882 include the limitations discussed above, claim 9 is subjected to 112(f) interpretation and other new independent claims are drawn to other aspects of invention, for instance lamp. All those factors are considered when making the determination.
In this instance, as evidenced in the explanation above in the recapture section, surrendered subject matter has been eliminated from the body of the independent claims 9, 14 and 19, therefore 35 U.S.C. 251 is maintained.
The Patent Owner also submits “Finally, a good portion of the present independent claims are directed to what happens when the electrical load control circuitry makes a determination that an acknowledgement message has not been received – for example, claim 9 recites, “initiate a counter; at the expiration of the counter, for each of the one or more non-responding recipient devices that have not acknowledged receipt of the retransmitted unicast message: retransmit a respective unicast message to each of the one or more non-responding recipient devices; and initiate a retry counter;”- subject matter that was not specifically claimed in the ‘215 patent”.
Examiner’s Response: The Patent Owner is correct that for instance claim 9 recites multiple limitations about what would take place in case when the acknowledgment is not received but it is also clear that the claim relies on the scenario where this will happen eventually by reciting that retransmit of the unicast message will take place when “receipt of an acknowledgment of the unicast retransmission from the respective recipient device”. The Patent Owner is reminded that according to 1412.02 II, “The material narrowing must relate to what was amended or argued by applicant in the original application, for example to define the claim over the art. Greenliant Systems, Inc. et al v. Xicor LLC, 692 F.3d 1261, 1271, 103 USPQ2d 1951, 1958 (Fed. Cir. 2012)”.
In this situation, the Patent Owner added new claims and included limitations pertaining to what would happen if acknowledgment is not received, but this limitation does not relate to the process of receiving acknowledgement 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”.
Consequently, the Examiner maintains the surrendered subject matter has been omitted from the new claim and therefore triggers recapture.
In the last argument on page 10, the Patent Owner alleges “Applicant respectfully traverses. First, claim 9 recites "An illumination device controller" (emphasis added); claim 14 recites "An illumination device control method" (emphasis added); and claim 19 recites "A non-transitory, machine-readable, storage device that includes instructions that, when executed by electrical load control circuitry of an illumination device" (emphasis added). Second, the claims have never recited "loads" the only use of "load" is in the context of "electrical load control circuitry "except for a typographical error in claim 26 which has now been corrected. Reconsideration is respectfully requested”.
Examiner’s Response: The Examiner did not find the above argument persuasive. For instance, the original claim 1 of the US Patent ‘215 clearly recited plurality of lamps in the body of the claim while newly introduced independent claims 9, 14 and 19 refer to “electrical load”. The “illumination device” is recited in the preamble and the circuitry is referred to as “the control circuitry”. Accordingly, the illumination type load or illumination control circuitry is not recited in the body of any of the independent new claims.
The Patent Owner contends that “the claims have never recited "loads" the only use of "load" is in the context of "electrical load control circuitry " “the only use of “load” is in the context of “electrical load control circuitry”. In accord with the Patent Owner submission, if it is the intention for the loads to be of an illumination type, then amending claims to recite just that instead of a generic load, would only clarify the invention without overly narrowing the scope.
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, Andrew Fischer can be reached on 571-272-6779.
All correspondence relating to this reissue proceeding should be directed:
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/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