Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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 Final Action.
The current application filed September 30, 2022 is a continuation reissue application of 15/802,373 (U.S. Patent No. RE49,300 issued November 15, 2022), both of which are reissue applications of 12/674,948 (U.S. Patent No. 9,178,376 issued November 3, 2015).
Claims 1-9 were initially pending in the application. Claims 10-32 were newly added in a preliminary amendment filed on September 30, 2022.
In the most recent amendment filed November 12, 2025, claims 1-9 have been cancelled, claims 33-41 have been newly added, and claims 10, 27, and 29 have been amended. Claims 10-41 remain pending. This amendment has been entered.
The rejection of claims 10-32 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, has been withdrawn in view of the applicant’s corrected explanation of support.
The rejection of claims 10-32 are rejected under 35 U.S.C. 251 as being based upon new matter has been withdrawn in view of the applicant’s corrected explanation of support.
The rejection of claims 10-32 on the ground of nonstatutory double patenting as being unpatentable over claims 10-32 of U.S. Patent No. RE49,300 has been withdrawn in view of the approved Terminal Disclaimer filed November 12, 2025.
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. 9,178,376 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 with this application is defective because it fails to properly identify at least one error being correct by the continuation reissue application. See 37 CFR 1.175 and MPEP § 1414(II)(D)(1). As stated in MPEP § 1414(II)(D)(1), “Where a continuation reissue application is filed with a copy of the reissue oath/declaration from the parent reissue application, and the parent reissue application is not to be abandoned, the reissue oath/declaration should be accepted by the Office of Patent Application Processing (OPAP) without further evaluation, because it is an oath/declaration, albeit improper under 35 U.S.C. 251. The examiner should, however, reject the claims of the continuation reissue application under 35 U.S.C. 251 as being based on an oath/declaration that does not identify an error being corrected by the continuation reissue application, and should require a new oath/declaration.” (emphasis added).
Claims 10-41 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.
Specification
The amendment to the specification filed November 12, 2025 is proper and has been entered.
Claim Rejections - 35 USC § 251
Claims 10-32 and 38-41 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. In re McDonald, 43 F.4th 1340, 1345, 2022 USPQ2d 745 (Fed. Cir. 2022); Greenliant Systems, Inc. et al v. Xicor LLC, 692 F.3d 1261, 103 USPQ2d 1951 (Fed. Cir. 2012); In re Youman, 679 F.3d 1335, 102 USPQ2d 1862 (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). The reissue application contains claim(s) that are broader than the issued patent claims. The record of the application for the patent family 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 preliminary amendment, Applicant seeks to broaden at least independent claims 1 and 9 with the addition of independent claims 10 and 27 in this reissue at least by deleting/omitting limitations found in the original patent claims.
(Step 2: MPEP 1412.02(II)(B)) The record of the prior 12/674,948 application prosecution indicates that an amendment was filed along with Applicant Arguments/Remarks filed on April 9, 2013. Applicant made the following amendments (using application claim 13, which becomes patent claim 1, for reference) to overcome the rejection in view of the prior art:
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Applicant explicitly argued in an attempt to overcome the applied prior art references:
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(pages 6 and 7, Applicant’s Arguments/Remarks
filed April 9, 2013, in application 12/674,948)
Additionally, an amendment was filed along with Applicant Arguments/Remarks filed on August 23, 2013. Applicant made the following amendments (using application claim 13, which becomes patent claim 1, for reference) to overcome the rejection in view of the prior art:
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Applicant explicitly argued in an attempt to overcome the applied prior art references:
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(pages 5 and 6, Applicant’s Arguments/Remarks
filed August 23, 2013 in application 12/674,948)
Additionally, an amendment was filed along with Applicant Arguments/Remarks filed on March 19, 2014. Applicant made the following amendments (using application claim 13, which becomes patent claim 1, for reference) to overcome the rejection in view of the prior art:
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Applicant also provided arguments specifically in reference to these amended features in an attempt to overcome the applied prior art references (pages 5-8, Applicant’s Arguments/Remarks filed March 19, 2014 in application 12/674,948).
Additionally, an amendment was filed along with Applicant Arguments/Remarks filed on July 21, 2014. Applicant made the following amendments (using application claim 13, which becomes patent claim 1, for reference) to overcome the rejection in view of the prior art:
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Applicant explicitly argued in an attempt to overcome the applied prior art references:
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(pages 5 and 6, Applicant’s Arguments/Remarks
filed July 21, 2014 in application 12/674,948)
Additionally, an amendment was filed along with Applicant Arguments/Remarks filed on November 26, 2014. Applicant made the following amendments (using application claim 13, which becomes patent claim 1, for reference) to overcome the rejection in view of the prior art:
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Applicant explicitly argued in an attempt to overcome the applied prior art references:
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(page 5, Applicant’s Arguments/Remarks
filed November 26, 2014 in application 12/674,948)
Additionally, an amendment was filed along with Applicant Arguments/Remarks filed on March 24, 2015. Applicant made the following amendments (using application claim 13, which becomes patent claim 1, for reference) to overcome the rejection in view of the prior art:
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Applicant explicitly argued in an attempt to overcome the applied prior art references:
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(pages 6 and 7, Applicant’s Arguments/Remarks
filed March 24, 2015 in application 12/674,948)
Finally, an amendment was filed along with Applicant Arguments/Remarks filed on Jun 15, 2015. Applicant made the following amendments (using application claim 13, which becomes patent claim 1, for reference) to overcome the rejection in view of the prior art:
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Applicant explicitly argued in an attempt to overcome the applied prior art references:
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(pages 6 and 7, Applicant’s Arguments/Remarks
filed June 15, 2015 in application 12/674,948)
Thus, at least the following limitations found in patent claim 1 (and the similar limitations found in claim 9) that correspond to the arguments and amendments made during prosecution are considered to be a surrender-generating limitations:
a station part including a primary core, for generating the induced magnetic field, and placing the non-contact power-receiving apparatus on top thereof, wherein the primary core is configured in a multi-layered structure and includes a single central core in an upper layer and two side cores in a lower layer, wherein the single central core and two side cores transmit first signals respectively to the non-contact power-receiving apparatus in a standby mode;
a received signal processor connected to the primary core to receive, in response to the first signals, at least one response signal indicating received signal intensity of the first signals, from the non-contact power-receiving apparatus; and
a shield panel disposed bottom in the primary core, for shielding a magnetic field radiating from the primary core,
wherein the central core is placed in a position between the two side cores and is partially overlapped with each of the two side cores,
wherein the transmission controller selects, at least one of the central core and the two side cores based on the received signal intensity of the first signals in the standby mode,
wherein the transmission controller controls a power signal to be transmitted by the at least one selected core in a charging mode,
wherein the non-contact charging station receives a second signal including information regarding a degree of voltage calibration for the power signal from the non-contact power-receiving apparatus in the charging mode, transmits a compensated power signal according to the signal including the information regarding the degree of voltage calibration for the power signal to the non-contact power-receiving apparatus in the charging mode, and stops the power transmission if it is detected that a metallic body other than the non-contact power-receiving apparatus is placed on the station part, and
wherein the at least one selected core has the best received signal intensity among the single central core and the two side cores.
(claim 1, similar limitations in claim 9)
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 complete or partial omission of the surrender-generating limitations requiring a non-contact charging station comprising “a station part including a primary core, for generating the induced magnetic field, and placing the non-contact power-receiving apparatus on top thereof, wherein the primary core is configured in a multi-layered structure and includes a single central core in an upper layer and two side cores in a lower layer, wherein the single central core and two side cores transmit first signals respectively to the non-contact power-receiving apparatus in a standby mode; a received signal processor connected to the primary core to receive, in response to the first signals, at least one response signal indicating received signal intensity of the first signals, from the non-contact power-receiving apparatus; and a shield panel disposed bottom in the primary core, for shielding a magnetic field radiating from the primary core, wherein the central core is placed in a position between the two side cores and is partially overlapped with each of the two side cores, wherein the transmission controller selects, at least one of the central core and the two side cores based on the received signal intensity of the first signals in the standby mode, wherein the transmission controller controls a power signal to be transmitted by the at least one selected core in a charging mode, wherein the non-contact charging station receives a second signal including information regarding a degree of voltage calibration for the power signal from the non-contact power-receiving apparatus in the charging mode, transmits a compensated power signal according to the signal including the information regarding the degree of voltage calibration for the power signal to the non-contact power-receiving apparatus in the charging mode, and stops the power transmission if it is detected that a metallic body other than the non-contact power-receiving apparatus is placed on the station part, and wherein the at least one selected core has the best received signal intensity among the single central core and the two side cores.” 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 10-32 omit the language of claims 1-9 requiring a non-contact charging station comprising “a station part including a primary core, for generating the induced magnetic field, and placing the non-contact power-receiving apparatus on top thereof, wherein the primary core is configured in a multi-layered structure and includes a single central core in an upper layer and two side cores in a lower layer, wherein the single central core and two side cores transmit first signals respectively to the non-contact power-receiving apparatus in a standby mode; a received signal processor connected to the primary core to receive, in response to the first signals, at least one response signal indicating received signal intensity of the first signals, from the non-contact power-receiving apparatus; and a shield panel disposed bottom in the primary core, for shielding a magnetic field radiating from the primary core, wherein the central core is placed in a position between the two side cores and is partially overlapped with each of the two side cores, wherein the transmission controller selects, at least one of the central core and the two side cores based on the received signal intensity of the first signals in the standby mode, wherein the transmission controller controls a power signal to be transmitted by the at least one selected core in a charging mode, wherein the non-contact charging station receives a second signal including information regarding a degree of voltage calibration for the power signal from the non-contact power-receiving apparatus in the charging mode, transmits a compensated power signal according to the signal including the information regarding the degree of voltage calibration for the power signal to the non-contact power-receiving apparatus in the charging mode, and stops the power transmission if it is detected that a metallic body other than the non-contact power-receiving apparatus is placed on the station part, and wherein the at least one selected core has the best received signal intensity among the single central core and the two side cores.” and thus would amount to impermissible recapture due to the omission of surrender-generating limitations. While claims 38-41 omit the language of claims 1-9 requiring a non-contact charging station comprising “wherein the non-contact charging station receives a second signal including information regarding a degree of voltage calibration for the power signal from the non-contact power-receiving apparatus in the charging mode, transmits a compensated power signal according to the signal including the information regarding the degree of voltage calibration for the power signal to the non-contact power-receiving apparatus in the charging mode, and stops the power transmission if it is detected that a metallic body other than the non-contact power-receiving apparatus is placed on the station part, and wherein the at least one selected core has the best received signal intensity among the single central core and the two side cores.” (emphasis added) and thus would amount to impermissible recapture due to the omission of surrender-generating limitations.
Additionally, reissue claims 10-32 and 38-41are not materially narrowed in other respects that relate to the surrendered subject matter to avoid said impermissible recapture.
Examiner notes that the attempt to claim “A non-contact power-receiving apparatus...” and “A method of controlling a non-contact power-receiving station...” in new claims 10-32 and 38-41, does not alleviate the recapture rejection presented above. Claims 1-9 are directed at “A non-contact charging station...” and a method for controlling said charging station, however both application 12/674,948 and application 13/344,741, which by definition is a part of the original application, contain claims directed at “A non-contact receiving apparatus...” and a related method.
Original Application - The "original application" includes the prosecution record of the application that issued as the patent for which the reissue application was filed. In addition, the "original application" includes the patent family’s entire prosecution history. MBO Laboratories, Inc. v. Becton, Dickinson & Co., 602 F.3d 1306, 1316-18, 94 USPQ2d 1598 (Fed. Cir. 2010). See also In re McDonald, 43 F.4th 1340, 1347, 2022 USPQ2d 745 (Fed. Cir. 2022). For example, surrender may occur because of the prosecution history of related applications.
Overlooked Aspects - Claims to separate inventions/embodiments/species that were never presented in the original application. See MPEP § 1412.01, subsection III, for more information on overlooked aspects.
(MPEP 1412.02(I))
Because the separate invention/embodiment of “A non-contact power-receiving apparatus...” and the related method were in fact presented in applications 12/274,948 and 13/344,741, they do not qualify as overlooked aspects and are still subject to the recapture rules discussed in the rejection above (see MPEP 1412.01(III)).
Therefore, impermissible recapture of broadened claimed subject matter surrendered in the application is clearly present in the instant reissue application.
Examiner notes that if claims 10-32 are determined to be appropriately filed and overcome the rejection above at some point, the claims in their current form would additionally be subjected to a rejection in view of related application 13/344,741 (U.S. Patent No. 9,130,395, issued September 8, 2015). The pending rejection on these grounds is presented below, however this rejection is superseded by the rejection in view of application 12/674,948 which must first be overcome.
(Step 1: MPEP 1412.02(II)(A)) In the instant case and by way of the preliminary amendment, Applicant seeks to broaden at least independent claims 1 and 9 with the addition of independent claims 10 and 27 in this reissue at least by deleting/omitting limitations found in the original patent claims. However, the prosecution of claims 1 and 7 of application 13/344,741 are relevant to claims filed in the current reissue application.
(Step 2: MPEP 1412.02(II)(B)) The record of the prior 13/344,741 application prosecution indicates that an amendment was filed along with Applicant Arguments/Remarks filed on August 26, 2013. Applicant made the following amendments (using application claim 46, which becomes patent claim 1 of U.S. Patent 9,310,395, for reference) to overcome the rejection in view of the prior art:
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Applicant also provided arguments specifically in reference to these amended features in an attempt to overcome the applied prior art references (pages 5-6, Applicant’s Arguments/Remarks filed August 26, 2013 in application 13/344,741).
Additionally, an amendment was filed along with Applicant Arguments/Remarks on December 12, 2013. Applicant made the following amendments (using application claim 46, which becomes patent claim 1 of U.S. Patent 9,310,395, for reference) to overcome the rejection in view of the prior art:
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Applicant also provided arguments specifically in reference to these amended features in an attempt to overcome the applied prior art references (pages 5-7, Applicant’s Arguments/Remarks filed December 12, 2013 in application 13/344,741).
Additionally, an amendment was filed along with Applicant Arguments/Remarks April 14, 2014. Applicant made the following amendments (using application claim 46, which becomes patent claim 1 of U.S. Patent 9,310,395, for reference) to overcome the rejection in view of the prior art:
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Applicant also provided arguments specifically in reference to these amended features in an attempt to overcome the applied prior art references (pages 6-10, Applicant’s Arguments/Remarks filed April 14, 2014 in application 13/344,741).
Additionally, an amendment was filed along with Applicant Arguments/Remarks July 31, 2014. Applicant made the following amendments (using application claim 46, which becomes patent claim 1 of U.S. Patent 9,310,395, for reference) to overcome the rejection in view of the prior art:
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Applicant also provided arguments specifically in reference to these amended features in an attempt to overcome the applied prior art references (pages 6-9, Applicant’s Arguments/Remarks filed July 31, 2014 in application 13/344,741).
Additionally, an amendment was filed along with Applicant Arguments/Remarks November 27, 2014. Applicant made the following amendments (using application claim 46, which becomes patent claim 1 of U.S. Patent 9,310,395, for reference) to overcome the rejection in view of the prior art, adding this limitation to claim 46:
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Applicant also provided arguments specifically in reference to these amended features in an attempt to overcome the applied prior art references (page 6, Applicant’s Arguments/Remarks filed November 27, 2014 in application 13/344,741).
Additionally, an amendment was filed along with Applicant Arguments/Remarks February 9, 2015. Applicant made the following amendments (using application claim 46, which becomes patent claim 1 of U.S. Patent 9,310,395, for reference) to overcome the rejection in view of the prior art:
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Applicant also provided arguments specifically in reference to these amended features in an attempt to overcome the applied prior art references (pages 5-6, Applicant’s Arguments/Remarks filed February 9, 2015 in application 13/344,741).
Additionally, an amendment was filed along with Applicant Arguments/Remarks February 9, 2015. Examiner notes that this amendment was not entered after final, but was entered as a part of the RCE filed on April 24, 2015. Applicant made the following amendments (using application claim 46, which becomes patent claim 1 of U.S. Patent 9,310,395, for reference) to overcome the rejection in view of the prior art:
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Applicant also provided arguments specifically in reference to these amended features in an attempt to overcome the applied prior art references (pages 5-6, Applicant’s Arguments/Remarks filed February 9, 2015 in application 13/344,741).
Additionally, an amendment was filed along with Applicant Arguments/Remarks April 24, 2015. Examiner notes that this amendment is not properly marked up to indicate added material via underlining that was not entered after final, however the language added in the amendment filed February 9, 2015 has been maintained in this amendment. Thus, the contents of this amendment include the underlining seen below and the underlining seen above regarding the amendment filed on February 9, 2015. Applicant made the following amendments (using application claim 46, which becomes patent claim 1 of U.S. Patent 9,310,395, for reference) to overcome the rejection in view of the prior art:
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Applicant also provided arguments specifically in reference to these amended features in an attempt to overcome the applied prior art references (pages 6-8, Applicant’s Arguments/Remarks filed April 24, 2015 in application 13/344,741).
Thus, at least the following limitations found in claim 1 (and the similar limitations found in claim 7) of U.S. Patent No. 9,310,395 that correspond to the arguments and amendments made during prosecution are considered to be a surrender-generating limitations:
a secondary core which receives a first signal for selecting a primary core from each of multiple primary cores included in the non-contact charging station in a standby mode, transmits a response signal including information on received signal intensity of the first signal to the non-contact charging station, and transmits a second signal for power control including information regarding a degree of voltage calibration to the non-contact charging station in a charging mode;
a controller which detects the received signal intensity of the first signal and, processes the response signal in the standby mode and the second signal in the charging mode,
wherein the secondary core includes a shielding section for shield the magnetic field, from other electronic elements mounted on the non-contact power-receiving apparatus,
wherein the secondary core receives the induced electric power for charging from a primary core which is selected based on the information on the received signal intensity of the first signal and receives a compensated electric power according to the information regarding the degree of voltage calibration from the non-contact power charging station in the charging mode,
wherein charging operation is stopped when it is detected that metallic object other than the non-contact power-receiving apparatus is placed on the non-contact power charging station, and
wherein the selected primary core has the best received signal intensity for the first signal among the multiple primary cores.
(U.S. Patent No. 9,130,395 - claim 1, similar limitations in claim 7)
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 complete or partial omission of the surrender-generating limitations requiring a non-contact power-receiving apparatus comprising “a secondary core which receives a first signal for selecting a primary core from each of multiple primary cores included in the non-contact charging station in a standby mode, transmits a response signal including information on received signal intensity of the first signal to the non-contact charging station, and transmits a second signal for power control including information regarding a degree of voltage calibration to the non-contact charging station in a charging mode;” and “a controller which detects the received signal intensity of the first signal and, processes the response signal in the standby mode and the second signal in the charging mode, wherein the secondary core includes a shielding section for shield the magnetic field, from other electronic elements mounted on the non-contact power-receiving apparatus, wherein the secondary core receives the induced electric power for charging from a primary core which is selected based on the information on the received signal intensity of the first signal and receives a compensated electric power according to the information regarding the degree of voltage calibration from the non-contact power charging station in the charging mode, wherein charging operation is stopped when it is detected that metallic object other than the non-contact power-receiving apparatus is placed on the non-contact power charging station, and wherein the selected primary core has the best received signal intensity for the first signal among the multiple primary cores.” 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 10-32 omit the language of claims 1-8 of U.S. Patent No. 9,130,395 requiring a non-contact power-receiving apparatus comprising “a secondary core which receives a first signal for selecting a primary core from each of multiple primary cores included in the non-contact charging station in a standby mode, transmits a response signal including information on received signal intensity of the first signal to the non-contact charging station, and transmits a second signal for power control including information regarding a degree of voltage calibration to the non-contact charging station in a charging mode;” and “a controller which detects the received signal intensity of the first signal and, processes the response signal in the standby mode and the second signal in the charging mode, wherein the secondary core includes a shielding section for shield the magnetic field, from other electronic elements mounted on the non-contact power-receiving apparatus, wherein the secondary core receives the induced electric power for charging from a primary core which is selected based on the information on the received signal intensity of the first signal and receives a compensated electric power according to the information regarding the degree of voltage calibration from the non-contact power charging station in the charging mode, wherein charging operation is stopped when it is detected that metallic object other than the non-contact power-receiving apparatus is placed on the non-contact power charging station, and wherein the selected primary core has the best received signal intensity for the first signal among the multiple primary cores.” and thus would amount to impermissible recapture due to the omission of surrender-generating limitations.
Additionally, reissue claims 10-32 are not materially narrowed in other respects that relate to the surrendered subject matter to avoid said impermissible recapture.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
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, subsection 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.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
“a shielding section configured to...” as found in claim 10 and 27 only, not claims 18-24
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof, unfortunately as discussed in the rejections above it appears that the specification does not provide corresponding structure.
If applicant does not intend 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 avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
This application includes one or more claim limitations that use a substitute for “means” or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitation(s) is/are:
“secondary core configured to...” as found in claim 10, additional details found in claims 12 and 14
“a controller coupled to the rectifier block configured to...” as found in claim 10, 11, 16, and 26
“a shielding section configured to...” as found in claims 18-24
Because this/these claim limitation(s) 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.
Examiner notes that the applicant has taken no action regarding these interpretations, thus it is clear that the application intends to have the limitations interpreted as discussed above, any arguments to the contrary presented after-final rejection will be moot as they were not presented at a proper time in the prosecution of the application.
Response to Arguments
Applicant's arguments filed November 12, 2025 have been fully considered but they are not persuasive.
Regarding the rejection of the claims based upon a defective reissue declaration:
Applicant argues that reissue declaration filed September 30, 2022, satisfies the requirements of 37 C.F.R. 1.175(f)(1), stating “applicant seeks to broaden the issued patent” and the claims “do not seek to enlarge the scope of the claims of the original patent”. Applicant provides a new statement of error on page 15 of the response.
Examiner respectfully disagrees. The reissue declaration remains improper, a new proper reissue declaration must be submitted. The previously filed reissue declaration does not satisfy the requirements of 37 C.F.R. 1.175(f)(1) as argued by the applicant. 37 C.F.R. 1.175(f)(1) states the following (emphasis added):
(1) The requirement for the inventor’s oath or declaration for a continuing reissue application that claims the benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) in compliance with § 1.78 of an earlier-filed reissue application may be satisfied by a copy of the inventor’s oath or declaration from the earlier-filed reissue application, provided that:
(i) The inventor, or each individual who is a joint inventor of a claimed invention, in the reissue application executed an inventor’s oath or declaration for the earlier-filed reissue application, except as provided for in § 1.64;
(ii) The continuing reissue application does not seek to enlarge the scope of the claims of the original patent; or
(iii) The application for the original patent was filed under § 1.46 by the assignee of the entire interest.
The applicant’s statements regarding this are contradictory. By broadening claims the applicant is by definition seeking to enlarge the scope of the original claims, which is indisputable. Thus, the rejection is proper and must be maintained.
Additionally, the additional statement provided on page 15 of applicant’s response would be improper even if it were properly executed in a new reissue declaration. The new statement fails to identify a claim that is being broadened in the current reissue proceeding. In the case of this application, it would appear that the applicant is attempting to broaden claim 1 with the addition of claims 10-41. The reissue declaration must explicitly identify that fact and also specifically identify in what way claim 1 is being broadened.
Regarding the rejections under 35 U.S.C. 251:
Applicant argues that claims 10-31 recite overlooked aspects and thus are not subject to recapture analysis. More specifically, applicant argues the claims are now directed to the charge monitoring and notification aspects of the receiver and therefore recite overlooked aspects (pages 16-21 of applicant’s response).
Examiner respectfully disagrees. First, it is extremely important to understand that claims 10-32 of this application amount to an attempt to reissue the claims of U.S. Patent 9,130,395 (hereinafter “the ‘395 patent”, issued September 8, 2015), there is not clear intent to broaden the ‘395 patent within 2 years of issue thus there is no way these claims will be permitted. The existence of the original claims of the ‘395 patent directly contradicts any attempt to assert that claims 10-32 are directed towards overlooked aspects of the U.S. Patent No. 9,178,376 (hereinafter “the ‘376 patent”). The MPEP states the following regarding what constitutes an overlooked aspect:
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. In other words, the reissue claims are drawn to a separate invention or separate species or embodiment that was not covered by a claim (e.g., a generic claim) at any point during the prosecution of the original application. For example, if all the claims were drawn to species A in the original application, reissue claims drawn to species B are considered claims to overlooked aspects, assuming that there was not a generic claim that covered both species A and B in the original application.
Claims to overlooked aspects are not subject to recapture because the claims are, by definition, unrelated to subject matter that was surrendered during the prosecution of the original application. In the decision of In re Youman, 679 F.3d 1335, 102 USPQ2d 1862 (Fed. Cir. 2012), the Federal Circuit explained:
Whereas the recapture rule applies when surrendered subject matter is being reclaimed, overlooked aspects by definition were never claimed and thus never surrendered. See Mostafazadeh, 643 F.3d at 1360 [98 USPQ2d at 1644]. Rather, as we explained in Mostafazadeh, "overlooked aspects" is a separate inquiry under reissue that is independent of whether or not the recapture rule applies.
679 F.3d at 1347, 102 USPQ2d at 1870. (MPEP 1412.01(II))
As can be seen in the citation above, the claims to overlooked aspects are defined as “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.” (emphasis added). In other words, the separate inventions/embodiments/species must exist in the specification as explicit separate inventions/embodiments/species, which they clearly do not. The argued features do not exist as a separate invention/embodiment/species rather they are merely features of the previously claimed embodiment as found in the discussion of claim 1 (and the similar limitations found in claim 7) of U.S. Patent No. 9,310,395 in the rejection above. Applicant’s argument that the limitations regarding controller being configured to “monitor a level of charge” is an overlooked aspect is directly contradicted by not only the actual contents of claim 1 of the ‘395 patent but also more clearly contradicted by the contents of claim 3 of the ‘395 patent. Claim 3 (which is dependent on claim 1) states the following, “The non-contact power-receiving apparatus in accordance with claim 1, further comprises: a charge circuit block allowing electric power supplied from the rectifier block to be charged to a battery cell; and a charge monitor circuit block monitoring a level of charge of the battery cell.” (emphasis added). The contents of claim 3 not only confirm that the monitoring limitations are explicitly claimed in the ‘395 patent and very clearly not overlooked aspects, but also that the monitoring limitations are covered by the broader invention/embodiment/species found in claim 1 and again clearly not overlooked aspects. Based on this fact, the claims clearly do not qualify as being directed to an overlooked aspect, rather the claims amount to an attempt to improperly broaden previously claimed aspect. Thus, the rejection is proper and must be maintained.
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.
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:
/ROBERT L NASSER/Primary Examiner, Art Unit 3992
/ALEXANDER J KOSOWSKI/Supervisory Patent Examiner, Art Unit 3992