Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Reissue Application
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 reissue application, Serial No. 17/715,787 (the ‘787 application) of U.S. Patent 9,951,285 (the ‘285 patent), which issued from U.S. Patent Application 14/621,421 (the ‘421 application) with claims 1-15 on April 24, 2018.
Prior Reexamination
Ex parte reexamination control No. 90/019,008 for the ‘285 patent concluded with issuance of a reexamination certificate on June 27, 2022 cancelling claims 1-15. As noted in MPEP 1410 (emphasis added): “Pursuant to 37 CFR 1.173(a)(1), applicant is required to include a copy of any disclaimer (37 CFR 1.321), certificate of correction (37 CFR 1.322 - 1.324), reexamination certificate (37 CFR 1.570 and 1.997) or certificate from a trial before the Patent Trial and Appeal Board (PTAB) (37 CFR 42.80) issued in the patent for which reissue is requested. “
Since the reexamination certificate for control No. 90/019,008 is not present in the instant reissue file, Applicant is required to provide a copy of the reexamination certificate.
Information Disclosure Statement (IDS)
Document “BV”, which was crossed out, i.e., not considered, in the IDS filed 04/07/2022, is hereby made of record on the attached PTO-892 Notice of References Cited form. Document BV was erroneously cited in said IDS as a foreign patent document. As noted by Applicant on pp. 10-11 of the Remarks filed 10/15/2025 in the instant reissue application, reference BV was cited as a basis for rejection in an Office action mailed 08/26/2016 during prosecution of the ‘285 patent.
Rejection Overcome
The rejection of claim 19 under 35 USC 112, second paragraph, has been overcome by Applicant’s amendment.
Non-Compliant Amendment
The amendment to the claims filed 10/15/2025 is improper. The amendment does not comply with 37 CFR 1.173 which sets forth the manner of making amendments in reissue applications. While the improper amendment has been entered and considered, a supplemental paper correctly amending the reissue application is required with Applicant’s next response. An amendment filed after final rejection that fails to comply with 37 CFR 1.173 will not be entered.
All amendment changes must be made relative to the patent to be reissued, not relative to a previous submitted amendment. Pursuant to 37 CFR 1.173(d), any such changes which are made to the specification, including the claims, must be shown by employing the following markings:
(1) The matter to be omitted by reissue must be enclosed in brackets, i.e., single brackets; and (2) The matter to be added by reissue must be underlined.
The non-compliance issues are as follows:
The amendment cancels claims 1-15 by stating “Claims 1-15 (Canceled).” This is improper since claims 1-15 were cancelled in said Ex Parte Reexamination Certificate. Thus, claims 1-15 must be lined through in their entirety, as Applicant had done in the earlier amendment filed 04/21/2023 in the instant reissue application. As noted in MPEP 1453.VI(B), “[a] claim canceled by the [reexamination] certificate must be deleted by a direction to strike through the claim, i.e., the canceled claim(s) should be lined through ….”
Claims 16-26 are newly added relative the ‘285 patent and thus, must be underlined in their entirety. Additionally, the status identifiers for claims 16-26 should be “New” rather than “Currently Amended” or “Previously Presented”.
Scope of Claims
The instant reissue application contains claims 16-26 directed to a method for modifying a fuel. Claim 16 of the amendment filed 10/15/2025 is presented below with the status identifier “New” and with the claim entirely underlined.
Claim 16 (New): A method for modifying a fuel comprising adding a reaction product comprising a quaternized nitrogen compound to a fuel in an amount sufficient to modify the fuel, wherein the reaction product is produced by a process comprising:
a) reacting a polyisobutenylsuccinic acid or an anhydride thereof with a straight-chain or branched polyamine having at least one primary or secondary amino group and having at least one quaternizable primary, secondary or tertiary amino group, said polyamine being 3-dimethylamino-1-propylamine, to obtain a quaternizable hydrocarbyl-substituted polycarboxylic acid compound, and
b) reacting the product of a) with 1.1 to 2.0 equivalents of a quaternizing agent per
equivalent of quaternizable tertiary nitrogen atom, wherein the quaternizing agent converts the at least one quaternizable amino group to a quaternary ammonium group, said quaternizing agent being methyl salicylate, and;
wherein the polyisobutenyl radical of the polyisobutenylsuccinic acid or an anhydride thereof has a number-average molecular weight of Mn of 800 to 1500 g/mol, and;
wherein the polyisobutenylsuccinic acid or an anhydride thereof has a hydrolysis number in the range of 84 to 95 mg KOH/g.
Steps a) and b) are product-by-process steps embedded in the method of claim 16. The product-by-process steps are for the preparation of the reaction product that is used in the “adding” step of claim 16. With respect to product-by-process, MPEP 2113.II states:
"The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature" than when a product is claimed in the conventional fashion. In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974). Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an nonobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 799, 803, 218 USPQ 289, 292-33 (Fed. Cir. 1983).
Similarly, in Biogen v. EMD Serono, 976 F.3d 1326 (Fed. Cir 2020), the CAFC explained how to handle an embedded product-by-process limitation within an overall method claim. The CAFC noted that an old method of administration of an old product made by a new process is not novel and cannot be patented.
Claim Objections
Claim 19 is objected to because of the following informalities: In claim 19, at the penultimate line, the term “prevents or reduces” should be changed to “or prevents or reduces”, as is present in the penultimate line of claim 26. Appropriate correction is required.
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 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.
Claims 16, 17, 19, 21 and 24 are rejected under pre-AIA 35 U.S.C 103(a) as being unpatentable over U.S. Patent 9,062,265 to Reid et al (hereinafter “Reid”) in view of U.S. Patent Application Publication 2005/0268539 to Schwab et al (hereinafter “Schwab”).
With respect to claims 16, 17, 19, 21 and 24, Reid teaches fuel compositions and additives thereto (see col. 1, lines 18-19). In particular, Reid’s additives are for diesel fuel compositions, especially those suitable for use in modern diesel engines with high pressure fuel systems (see col. 1, lines 18-22). Reid’s additive is a quaternary ammonium salt (see col. 3, line 56 to col. 4, line 22).
Reid’s Example 10 prepares the quaternary ammonium salt additive by first reacting a polyisobutenylsuccinic anhydride having a polyisobutenyl molecular weight of 1000 with dimethylaminopropylamine, i.e., 3-dimethylamino-1-propylamine (see col. 20, lines 43-49). The resulting reaction product is reacted, i.e., quaternized, with methyl salicylate at a molar ratio of 1:1, i.e., one equivalent of methyl salicylate quaternizing agent per equivalent of quaternizable tertiary nitrogen atom (see col. 20, lines 40-52).
Generally, Reid’s quaternary ammonium salt additive is added to the diesel fuel composition in an amount of less than 10000 ppm, preferably less than 1000 ppm, preferably less than 500 ppm, preferably less than 250 ppm (col. 10, lines 40-43), and thus, in an amount sufficient to modify the fuel as here claimed (see also col. 30, lines 25-25 of the ‘285 patent). The quaternary ammonium salt additive of Reid’s Example 10 is added to diesel fuel at 170 ppm or 31 ppm (see col. 17, lines 9-15; col. 20, lines 52-67; and Table 2).
Reid differs from claims 16, 17, 19, 21 and 24 in not teaching that the polyisobutenylsuccinic anhydride (PIBSA) has a hydrolysis number in the range of 84 to 95 mg KOH/g.
However, the claimed hydrolysis number is known in the art for PIBSA used in the preparation of fuel additives. For example, Schwab teaches a fuel additive mixture that includes a component “A” having detergent action (see ¶ 0001). Schwab exemplifies preparing a polyisobutenyluccinimide detergent by using PIBSA having a polyisobutene molecular weight of 1000, as in Reid’s Example 10, and also having a hydrolysis number of 95 (see ¶¶0036-0037 and 0113-0114).
It would have been obvious to one of ordinary skill in the art at the time the invention was made to have prepared Reid’s quaternary ammonium reaction product fuel additive such that the PIBSA used to prepare it has a hydrolysis number in the range here claimed because PIBSA having a hydrolysis number of 95 mg KOH/g is known in the art for preparing fuel detergent additives, as taught by Schwab.
As noted above, Reid’s Example 10 quaternizes with methyl salicylate at a molar ratio of 1:1, i.e., one equivalent of methyl salicylate quaternizing agent per equivalent of quaternizable tertiary nitrogen atom (see col. 20, lines 40-52). The product-by-process step of the instant claims call for 1.1 to 2.0 equivalents (claims 16, 17, 19 and 21) or 1.25 to 2.0 equivalents (claim 24).
However, whether using 1, 1.1 or 1.25 equivalents of methyl salicylate per equivalent of quaternizable tertiary nitrogen, the resulting reaction product is the same as here claimed, i.e., a product where the quaternizing agent “converts the at least one quaternizable amino group to a quaternary group”. In fact, the ‘285 patent specification teaches that the number of equivalents can range from 0.1 to 2.0 (see col. 19, lines 27-41).
Alternatively, to the extent that using 1 equivalent of methyl salicylate does not produce the same product as using 1.1 or 1.25 equivalents, then there is expected to be little difference in the reaction products and their properties because the equivalent amounts are only slightly different. As noted in MPEP 2144.05.I., a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985).
Further with respect to claim 17, Reid’s additive of Example 10 as modified by Schwab inherently reduces fuel consumption or minimizes power loss in a diesel engine with common-rail injection system or other direct-injection diesel engine because, as noted above, the modified additive is either the same as or only slightly different from the claimed product.
Likewise, with respect to claim 19, Reid’s additive of Example 10 as modified by Schwab inherently improves cold-flow of a diesel fuel, acts as a wax antisettling additive (WASA), prevents or reduces the level of internal diesel injector deposits (IDID) or other intake system, or prevents or reduces valve sticking in a common-rail injection system or other direct-injection diesel engine, because, as noted above, the modified additive is either the same as or only slightly different from the claimed product.
Claims 20, 22, 23, 25 and 26 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Reid in view of Schwab as applied to claims 16, 17, 19, 21 and 24 above, and further in view of U.S. Patent 5,883,196 to Rath et al (hereinafter “Rath”).
Reid in view of Schwab, as relied on above in Rejection No. 1, differs from claims 20, 22, 23, 25 and 26 in not teaching that the polyisobutenylsuccinic acid or anhydride has a bismaleation level of less than about 20%; above 10% to less than about 20%; or about 12% to about 18%.
Rath teaches an improved process for the preparation of polyalkenylsuccinic acid derivatives and their use as fuel and lubricant additives (see col. 1, lines 7-10). Polyisobutenylsuccinic anhydrides (PIBSA) having a low bismaleation fraction are desirable in industrial applications, and Rath teaches a process which gives products having little or no bismaleation fraction with simultaneously high conversions and good product quality (see col. 2, lines 10-15). Examples 4-8 of Rath disclose PIBSA having a bismaleation level of from 2 to 10% (see col. 9, lines 30-45).
With respect to Rath, i.e., U.S. Patent No. 5,883,196, col. 8, lines 56-64 of the ‘285 patent teach:
[h]ydrocarbyl-substituted polycarboxylic acid compound with a “low bismaleation level”, especially corresponding polyisobutenylsuccinic acids or anhydrides thereof (also referred to overall as PIBSA) are known from the prior art. Especially advantageous are bismaleation levels of 20% or less, or 15% or less, for example, 14, 13, 12, or 10%; or 10% or less, for example 2-9, 3-8, 4-7, 5 or 6%. The controlled preparation thereof is described, for example, in U.S. Pat. No. 5,883,196.
It would have been obvious to one having ordinary skill in the art at the time the invention was made to have used a polyisobutenylsuccinic anhydride having a controlled amount of bismaleation, including a bismaleation level of less than about 20%; above 10% to less than about 20%; or about 12% to about 18%; as taught by Rath in forming a fuel additive as taught by Reid because Rath teaches a process which gives products having little or no bismaleation fraction with simultaneously high conversions and good product quality; and because PIBSA having a low bismaleation fraction are desirable in industrial applications.
Further with respect to claim 26, improvement of cold-flow of the diesel fuel, acting as a wax antisettling additive (WASA), preventing or reducing the level of internal diesel injector deposits (IDID) or other intake system, or preventing or reducing valve sticking in a common-rail injection system or other direct-injection diesel engine are inherent effects of adding Reid’s reaction product of Example 10 as modified by Schwab to a diesel fuel, as noted above in Rejection No. 1.
Claims 16, 18, 21 and 24 are rejected under pre-AIA 35 U.S.C 103(a) as being unpatentable over U.S. Patent 9,493,720 to Burgess et al (hereinafter “Burgess”) in view of Schwab.
With respect to claims 16, 18, 21 and 24, Burgess teaches a gasoline composition comprising, as an additive, one or more quaternary ammonium salt(s)
(see col. 3, lines 18-56).
Burgess’s Example 11 prepares the quaternary ammonium salt additive by first reacting polyisobutenylsuccinic anhydride having a polyisobutenyl molecular weight of 1000 with dimethylaminopropylamine, i.e., 3-dimethylamino-1-propylamine (see col. 25, lines 35-44). The resulting reaction product is reacted, i.e., quaternized, with methyl salicylate at a molar ratio of 1:1, i.e., one equivalent of methyl salicylate quaternizing agent per equivalent of quaternizable tertiary nitrogen atom (see col. 25, lines 35-50).
Burgess differs from claims 16, 18, 21 and 24 in not teaching that the polyisobutenylsuccinic anhydride (PIBSA) has a hydrolysis number in the range of 84 to 95 mg KOH/g.
However, the claimed hydrolysis number is known in the art for PIBSA used in the preparation of fuel additives. For example, Schwab teaches a fuel additive mixture that includes a component “A” having detergent action (see ¶ 0001). Schwab exemplifies preparing a polyisobutenylsuccinimide detergent by using PIBSA having a polyisobutene molecular weight of 1000, as in Burgess’s Example 11, and also having a hydrolysis number of 95 (see ¶¶0036-0037 and 0113-0114).
It would have been obvious to one of ordinary skill in the art at the time the invention was made to have prepared Burgess’s quaternary ammonium reaction product fuel additive such that the PIBSA used to prepare it has a hydrolysis number in the range here claimed because PIBSA having a hydrolysis number of 95 mg KOH/g is known in the art for preparing fuel detergent additives, as taught by Schwab.
As noted above, Burgess’s Example 11 quaternizes with methyl salicylate at a molar ratio of 1:1, i.e., one equivalent of methyl salicylate quaternizing agent per equivalent of quaternizable tertiary nitrogen atom (see col. 25, lines 35-50). The product-by-process step of the instant claims call for 1.1 to 2.0 equivalents (claims 16 18 and 21) or 1.25 to 2.0 equivalents (claim 24).
However, whether using 1, 1.1 or 1.25 equivalents of methyl salicylate per equivalent of quaternizable tertiary nitrogen, the resulting reaction product is the same as here claimed, i.e., a product where the quaternizing agent “converts the at least one quaternizable amino group to a quaternary group”. In fact, the ‘285 patent specification teaches that the number of equivalents can range from 0.1 to 2.0 (see col. 19, lines 27-41).
Alternatively, to the extent that using 1 equivalent of methyl salicylate does not produce the same product as using 1.1 or 1.25 equivalents, then there is expected to be little difference in the reaction products and their properties because the equivalent amounts are only slightly different. As noted in MPEP 2144.05.I., a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985).
Further with respect to claim 18, Burgess’s reaction product of Example 11 as modified by Schwab inherently reduces deposits in an intake system of a DISI (direct injection spark ignition) engine, an PFI (port fuel injector) engine, or other gasoline engine because, as noted above, the modified additive is either the same or only slightly different from the claimed additive.
Claims 20, 22, 23 and 25 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Burgess in view of Schwab as applied to claims 16, 18, 21 and 24 above, and further in view of Rath.
Burgess in view of Schwab, as relied on above in Rejection No. 3, differs from claims 20, 22, 23 and 25 in not teaching that the polyisobutenylsuccinic acid or anhydride has a bismaleation level of less than about 20%; above 10% to less than about 20%; or about 12% to about 18%.
Rath teaches an improved process for the preparation of polyalkenylsuccinic acid derivatives and their use as fuel and lubricant additives (see col. 1, lines 7-10). Polyisobutenylsuccinic anhydrides (PIBSA) having a low bismaleation fraction are desirable in industrial applications, and Rath teaches a process which gives products having little or no bismaleation fraction with simultaneously high conversions and good product quality (see col. 2, lines 10-15). Examples 4-8 of Rath disclose PIBSA having a bismaleation level of from 2 to 10% (see col. 9, lines 30-45).
With respect to Rath, i.e., U.S. Patent No. 5,883,196, col. 8, lines 56-64 of the ‘285 patent teach:
[h]ydrocarbyl-substituted polycarboxylic acid compound with a “low bismaleation level”, especially corresponding polyisobutenylsuccinic acids or anhydrides thereof (also referred to overall as PIBSA) are known from the prior art. Especially advantageous are bismaleation levels of 20% or less, or 15% or less, for example, 14, 13, 12, or 10%; or 10% or less, for example 2-9, 3-8, 4-7, 5 or 6%. The controlled preparation thereof is described, for example, in U.S. Pat. No. 5,883,196.
It would have been obvious to one having ordinary skill in the art at the time the invention was made to have used a polyisobutenylsuccinic anhydride having a controlled amount of bismaleation, including a bismaleation level of less than about 20%; above 10% to less than about 20%; or about 12% to about 18%; as taught by Rath in forming a fuel additive as taught by Burgess because Rath teaches a process which gives products having little or no bismaleation fraction with simultaneously high conversions and good product quality; and because PIBSA having a low bismaleation fraction are desirable in industrial applications.
Response to Arguments
Applicant's arguments filed October 15, 2025 have been fully considered but they are not persuasive.
Applicant states that common ownership is not required for filing a Rule 1.131 declaration; and Applicant once again relies on the Rule 1.131 declaration filed 11/01/2024 to swear behind the Reid and Burgess references (Remarks, p. 8).
However, the Rule 1.131 declaration remains unpersuasive for the same reasons set forth on pp. 16-17 of the prior Office action mailed 04/15/2025. In particular, Reid and Burgess are U.S. patents that claim the rejected invention. An affidavit or declaration is inappropriate under 37 CFR 1.131(a) when the reference is claiming interfering subject matter as defined in 37 CFR 41.203(a), see MPEP Chapter 2300. See also MPEP 715.II(C). If the reference and this application are not commonly owned, the reference can only be overcome by establishing priority of invention through interference proceedings. See MPEP Chapter 2300 for information on initiating interference proceedings. If the reference and this application are commonly owned, the reference may be disqualified as prior art by an affidavit or declaration under 37 CFR 1.131(c). See MPEP § 718.
Applicant argues that said Rule 1.131 declaration should be effective because the subject matter in claim 16, which now includes the number average molecular weight limitation from prior claim 27 and now includes the hydrolysis number limitation from prior claim 28, is not disclosed or rendered obvious over the claims of Reid (U.S. 9,062,265) or Burgess (U.S. 9,493,720) (Remarks, p. 8). Similarly, Applicant argues the following with respect to the instant dependent claims (Remarks, pp. 8-9):
For claims 18, 20, 22, 23, 25, 27, and 28 of Application No. 17/715,787, there are no directly corresponding disclosures found in US 9,062,265 [i.e., Reid] that specifically address:
• Use with gasoline engines (claim 18)
• Bismaleation level specifications (claims 20, 22, 23, 25)
• Molecular weight specifications of the polyisobutenyl radical (claim 27)
• Hydrolysis number range (claim 28).
For claims 20, 22, 23, 25, 27, and 28 of Application No. 17/715,787, there are no directly corresponding disclosures found in the claims of US 9,493,720 [i.e., Burgess] that specifically address:
• Bismaleation level specifications (claims 20, 22, 23, 25)
• Molecular weight specifications of the polyisobutenyl radical (claim 27)
• Hydrolysis number range (claim 28).
Applicant’s arguments are unpersuasive. It is noted that Reid was not used to reject claim 18, and the claims of Reid are not claiming interfering subject matter with claim 18, since Reid is directed to use of its additive in diesel fuel engines, not gasoline engines.
As to the remaining limitations cited by Applicant, these are rendered obvious over the claims of Reid or Burgess in view of prior art. As per MPEP 2301.03 and the Examples cited therein, if there’s an explanation or citing to prior art as to why the limitations would have been obvious, then there’s interfering subject matter.
With respect to the instantly claimed requirement that the polyisobutenyl radical of the polyisobutenylsuccinic acid or an anhydride thereof has a number-average molecular weight Mn of 800 to 1500 g/mol, it is noted that Reid’s Example 10 and Burgess’s Example 11 each use a polyisobutenyl molecular weight of 1000 g/mol. While this is not in Reid’s or Burgess’s claims, nonetheless the claimed number-average molecular weight would have been obvious in view of Schwab, which as noted above, exemplifies preparing a polyisobutenyluccinimide detergent by using PIBSA having a polyisobutene molecular weight of 1000 g/mol. Such is a known molecular weight for the polyisobutenyl radical when preparing a detergent.
While the instantly claimed hydrolysis number is not present in Reid’s or Burgess’s claims, such is rendered obvious in view of the teachings of Schwab for the same reasons set forth above in Rejection Nos. 1 and 3.
While the instantly claimed bismaleation level is not present in Reid’s or Burgess’s claims, such is rendered obvious in view of the teachings of Rath for the same reason set forth above in Rejection Nos. 2 and 4.
It is further noted that to any extent there is no interfering subject matter with the claims of Reid or Burgess (it is maintained there is), the Rule 1.131 declaration filed 11/01/2024 is not effective to overcome Reid or Burgess. As noted in MPEP 715.02, “[t]he 37 CFR 1.131(a) affidavit or declaration must establish possession of either the whole invention claimed or something falling within the claim (such as a species of a claimed genus), in the sense that the claim as a whole reads on it.”
In particular, the Rule 1.131 declaration filed 11/01/2024 does not establish that the quaternized products of Annexes 1 and 2 therein, and in particular the quaternized product of Annex 1 which is subsequently tested in a motor test, possess the claimed requirements that the polyisobutenyl radical of the polyisobutenylsuccinic acid or an anhydride thereof has a number-average molecular weight Mn of 800 to 1500 g/mol, and the polyisobutenylsuccinic acid or an anhydride thereof has a hydrolysis number in the range of 84 to 95 mg KOH/g. A such, Applicant was not in possession of the whole invention or something falling within the claim.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Duty to Disclose
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. 9,951,285 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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALAN D DIAMOND whose telephone number is (571)272-1338. The examiner can normally be reached Monday through Thursday 5:30 am to 3:00 pm, and Fridays from 5:30 am to 9:30 am.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Patricia Engel can be reached on 571-272-6660. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Signed:
/ALAN D DIAMOND/Patent Reexamination Specialist
Central Reexamination Unit 3991
Conferees:
/JOSEPH R KOSACK/Patent Reexamination Specialist
Central Reexamination Unit 3991
/Patricia L Engle/SPRS, Art Unit 3991