DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Bauman Type Continuation or Divisional
The instant application was identified, on filing, as a divisional of Application No. 16/703,812, which is/was an application for reissue of Patent No. 9,837,391. See the Application Data Sheet (ADS) filed on 10/31/2022 as part of the original filing of the instant application and the amendment to the first paragraph of the specification filed on 9/30/2023.
The mere fact that an application purports to be a continuation or divisional of a parent reissue application does not make it a reissue application itself because it is possible to file a 35 USC 111(a) continuing application of a reissue application. See In re Bauman, 683 F.2d 405, 409, 214 USPQ 585, 589 (CCPA 1982) (a patentee may file a regular continuation of a reissue application that obtains the benefit of the reissue application’s filing date). Accordingly, in order for a continuation or divisional of a parent reissue application to be treated as a reissue application itself, there must be an identification, on filing, that the application is a “continuation reissue application” or a “divisional reissue application”, as opposed to a Bauman type continuing application. Indicia that a continuation or divisional reissue application is being filed are:
A 37 CFR 1.175 reissue oath/declaration, which is not merely a copy of the parent’s reissue oath/declaration.
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A specification and/or claims in proper double column reissue format per 37 CFR 1.173.
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Amendments in proper format per 37 CFR 1.175.
A 37 CFR 3.73 statement of assignee ownership and consent by assignee
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A correct transmittal letter (preferably Form PTO/AIA /50) identifying the application as a reissue filing under 35 U.S.C. § 251.
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An identification of the application as being “a reissue continuation of Application No. [the parent reissue application]”, or “an application for reissue of Patent No. [the original patent sought to be reissued] and a continuation of Application No. [the parent reissue application]”, or equivalent language that identifies the application as both a continuation and a reissue application1. The same applies for a divisional reissue application, with the word “divisional” substituted for “continuation”.
See MPEP 1451.
The instant application was not filed with any of the above-listed indicia of a continuation reissue application. Rather, the ADS and the first paragraph of the specification filed as part of the original application papers both identify the instant application as a divisional of reissue Application No. 16/103,812. Thus, the instant application was not identified, on filing, as both a divisional and a reissue application. Accordingly, the instant application:
Was processed as a 35 USC 111(a) continuing application of a reissue application. See the Filing Receipt mailed on November 15, 2022 .
Will be examined as a Bauman type continuing application, i.e., a 35 USC 111(a) continuing application of a reissue application. Again see MPEP 1451.
As established by In re Bauman, a Bauman type continuing application:
Receives the benefit of the actual filing date of the parent reissue application.
Does not receive the benefit of the filing date of the patent sought to be reissued by the parent reissue application because the copendency requirement of 35 USC 120 is not met.
Therefore, the patent sought to be reissued by the parent reissue application is available as prior art under pre-AIA 35 USC 102(b) or AIA 35 USC 102(a)(1) with respect to the Bauman type continuing application if the parent reissue application was filed more than one year after the grant date of the patent.
Accordingly, the effective filing date of the instant Bauman type continuing application is December 4, 2019, i.e., the actual filing date of the parent reissue Application No. 16/703,236. Since the parent reissue application was filed more than one year after the grant date of Patent No. 9,837,391, the patent qualifies as prior art under pre-AIA 35 USC 102(b) or AIA 35 USC 102(a)(1) with respect to the instant Bauman type continuing application.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-19 are rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by Khare (US 9,837,391).
Response to Arguments
Applicant's arguments filed September 16, 2024 have been fully considered but they are not persuasive. The Applicant has argued “each of these rejections is respectfully traversed as the cited art, alone or in combination, as cited, fails to teach or even suggest the claimed combination of features such as set forth in any of the pending claims”. See Remarks, p. 7 filed 9/16/2024.
This argument is not persuasive. Applicant is relying on the specification of the ‘391 reference for support of the claims under 35 USC 112(a). If they claims of the instant application are not taught or suggested by the ‘391 reference, then how are the claims supported under 35 USC 112(a)?
Further, the Applicant did not point to any specific limitation that was not taught by the ‘391 reference.
It appears that the Applicant has attempted to convert the current application from a Bauman application filed under 35 USC 111 to a reissue application under 35 USC 251. An amendment to the first line of the specification is not sufficient to convert the application to a reissue application under 35 USC 251. There has not been a petition filed to convert the application and the application is still missing many indicia for a reissue application under 35 USC 251 (an oath/declaration identifying the error, a consent of assignee document, the claims and drawings and specification in double column format, an ADS identifying the application as both a divisional of 16/703,812 and a reissue of 14/967,231, and the claim amendments are not compliant with 37 CFR 1.173).
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PATRICIA L ENGLE whose telephone number is (571)272-6660. The examiner can normally be reached Monday- Friday 7:30 am-4 pm.
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.
The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/PATRICIA L ENGLE/
SPRS
Art Unit 3993
1 In contrast, a Bauman type continuing application is identified as “a continuation of reissue Application No. [the parent reissue application], or “a continuation of reissue Application No. [the parent reissue application], which is an application for reissue of Patent No. [the original patent sought to be reissued by the parent reissue application]”. The same applies for a Bauman type divisional application, with the word “divisional” substituted for “continuation”.