Detailed Action
I. ACKNOWLEDGEMENTS
This Office Action addresses U.S. Application No. 17/564062 (the “062 Application” or “instant application”). Based upon a review of the instant application, the actual filing date of the instant application is December 28, 2021. 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.
The instant application is a reissue application US Patent No. 10,635,723 (“’723 Patent”), which was filed on July 20, 2011, as US Application 13/186908 (“the ‘908 Application”), entitled “SEARCH ENGINES AND SYSTEMS WITH HANDHELD DOCUMENT CAPTURE DEVICES.”
Based upon Applicant’s statements as set forth in the instant application and after the
Examiner's independent review of the ‘723 patent itself and its prosecution history, the Examiner finds that he cannot locate any ongoing proceeding before the Office or current ongoing litigation involving the ‘723 patent. Also based upon the Examiner's independent review of the ‘723 patent itself and the prosecution history, the Examiner cannot locate any previous reexaminations, supplemental examinations, or certificates of correction.
This action is being issued following Applicant’s response of 9/19/2025 which included 1) claim amendments and 2) arguments.
II. CLAIM STATUS
The ‘723 Patent issued with claims 1-32 (“Patented Claims”). The preliminary amendment filed with this reissue application cancels claims 1-32 and adds claims 33-43. The amendment of 3/1/2023 amends claims 33-35, 40, 42, and 43, and cancels claims 38 and 39. The amendment of 7/5/2023 amends claims 33, 40, 42, and 43. The amendment of 2/14/2024 amends claims 33, 34, 40, 41, and 43 and adds claims 44 and 45. The amendment of 7/5/2024 amends claims 33, 34, and 40-45. The amendment of 12/17/2024 amends claims 33, 40, and 43, and adds claims 46-48. The amendment of 9/19/2025 amends claims 33, 35, and 36, cancels claims 34, 37, and 40-49, and adds claims 50-56. As of the date of this Office Action, the status of the claims is:
a. Claims 33, 35, 36, and 50-56 (“Pending Claims”).
b. Claims 33, 35, 36, and 50-56 are treated on the merits below (“Examined Claims”)
III. AMENDMENTS OF 9/19/2025
The amendment to the claims filed on 9/19/2025 have been entered and considered. The Examiner notes that the claim listing is improper in that it states claims 34-49 are canceled, but then still includes claims 35 and 36. Applicant should submit a corrected claim listing fixing this error. For the purposes of this office action, it will be presumed that claims 35 and 36 are pending, and the cancellation of those claims was in error.
IV. PRIORITY CLAIMS
Based upon a review of the instant application and ‘723 patent, the Examiner finds that current application is a reissue of 13/186908, filed July 20, 2011, which is a divisional of US Application 11/098014, filed April 1, 2005, which is a continuation-in-part of US Application 11/004637, filed December 3, 2004. The parent applications claim priority to numerous provisional applications, filed between April 1, 2004 and February 28, 2005.
Based upon a review of the ‘723 Patent itself, the Examiner finds that Applicant is not claiming foreign priority under 35 USC § 119(a).
Because the effective filing date of the instant application is not on or after March 16,
2013, the AIA First Inventor to File (“AIA -FITF”) provisions do not apply. Instead, the earlier ‘First to Invent’ provisions of 35 USC 102, and 112 apply.
V. REISSUE DECLARATION
The reissue declaration filed 3/31/2022 is approved.
VI. REJECTIONS UNDER 35 USC 112
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 33 and 51 lack an adequate written description in that there is no support for identifying the location of a specific portion of the information on the network and displaying the location of the specific portion of the information. Applicant’s remarks point to columns 16 and 17 as providing support for this feature. However, the section at the top of column 17 refers to identifying materials that correspond to a specific portion of the rendered document, not identifying a specific portion of the information linked to the rendered document. Furthermore, the section that refers to support information, service information, and manual information, column 22, lines 56+, does not refer to capturing a portion of the service, repair, or manual information. Further, there is no support for displaying the location of the information, and the system simply displays the information. Claims 51 and 54 have a similar limitation and therefore also lack an adequate written description. Claims 35, 36, 50, 52-53, 55, and 56 are rejected as being dependent upon a rejected base claim
VII. NEW MATTER
Claims 33, 35, 36, and 50-56 are rejected under 35 U.S.C. 251 as being based upon new matter added to the patent for which reissue is sought. The added material which is not supported by the prior patent is as follows: See the written description rejection above.
VIII. ART REJECTIONS
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 33, 35, 36, and 50-56 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Hayes et al US PGPUB 2002/0140855 in view of Leoniak US PG PUB 2004/0155990.
As to claim 33, in paragraphs [0175]-[0178], Hayes teaches a remote control (scanner) that scans a UPC code or barcode from an electric appliance, and transmits the UPC code back to a webpage, where it is used to index a database of product information (paragraph [0177]), to include user manuals (paragraph [0178]). When the information is located, it is displayed on the remote control (see figure 29). The UPC code or bar code is printed on the product. It is not displayed on a display screen. Leoniak teaches an electronic display for displaying barcodes on products (see paragraph [0021]), where the code could be a UPC code (see paragraph [0006]). As such, it would have been obvious to modify Hayes to use the electronic display of the UPC or barcode, taught by Leoniak, as it is merely the substitution of one known code display technique for another. The Examiner notes that the code of Hayes is used as a pointer to identify a specific portion of the materials, i.e. the entire portion, to transmit to the user for display.
As to claim 35, the UPC code indexes a database, i.e. identifies the location of the information on the network.
As to claims 36 and 50, the UPC code is used to index a URL which links to the user manual (paragraph [0177]).
As to claim 51, in the combination, the electronic display displays to code which is read by the remote control, i.e. another device.
Claims 52-56 are rejected for the reasons given above.
Claim(s) 33, 35, 36, and 50-56 are rejected under pre-AIA 35 U.S.C. 103(a) as being anticipated by Van Ryzin US PGPUB 2002/0059241 in view of Leoniak.
As to claim 33, Van Ryzin shows a product, which can be electronic equipment, that displays the UPC code, which is scanned and used to access a web server containing user manuals or support information (paragraph [0024]), which are then displayed. The location of the specific information is the URL of the entire manual. The UPC code or bar code is printed on the product. It is not displayed on a display screen. Leoniak teaches an electronic display for displaying barcodes on products (see paragraph [0021]), where the code could be a UPC code (see paragraph [0006]). As such, it would have been obvious to modify Van Ryzin to use the electronic display of the UPC or barcode, taught by Leoniak, as it is merely the substitution of one known code display technique for another. Again, the Examiner notes that the specific portion is the entire manual.
Claims 35, 36, and 50 are rejected in that the UPC code, which is the rendered document, is used to link to the URL, the location on the network.
As to claim 51, the Examiner notes that phrase “such that another device captures the rendered document and accesses to the information …” does not limit the electronic equipment. As long as the code is displayed in a manner that it is capable of being captured by another device, the claim is met. Van Ryzin shows such a device, but realistically any device that displays a bar code or other code anticipates the claim. The UPC code or bar code is printed on the product. It is not displayed on a display screen. Leoniak teaches an electronic display for displaying barcodes on products (see paragraph [0021]), where the code could be a UPC code (see paragraph [0006]). As such, it would have been obvious to modify Van Ryzin to use the electronic display of the UPC or barcode, taught by Leoniak, as it is merely the substitution of one known code display technique for another. Again, the Examiner notes that the specific portion is the entire manual.
Claims 52-56 are rejected for the reasons given above.
IX. CONCLUSION
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT L NASSER whose telephone number is (571)272-4731. The examiner can normally be reached M-F 8-6.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alexander Kosowski can be reached on (571) 272-3744. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT L NASSER/ Primary Examiner, Art Unit 3992
Conferees:
/ADAM L BASEHOAR/Primary Examiner, Art Unit 3992
/ALEXANDER J KOSOWSKI/Supervisory Patent Examiner, Art Unit 3992