REISSUE PROCEDURAL REMINDERS
Disclosure of other proceedings. Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceed-ing in which the Patent Under Reissue is or was involved. These proceedings would include interferences, reissues, reexaminations, and litigation.
Disclosure of material information. Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is mate-rial to patentability of the claims under consideration in this reissue appli-cation.
These disclosure obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Manner of making amendments. Applicant is reminded that changes to the Instant Application must comply with 37 C.F.R. § 1.173, such that all amendments are made in respect to the Patent Under Reissue as opposed to any prior changes entered in the Instant Application. All added material must be underlined, and all omitted material must be enclosed in brackets, in accordance with Rule 173. Applicant may submit an appendix to any response in which claims are marked up to show changes with respect to a previous set of claims, however, such claims should be clearly denoted as “not for entry.”
Claim Rejections - 35 USC § 251
Claims 27-44 are rejected under 35 U.S.C. 251 as being an improper recapture of broadened claimed subject matter surrendered in the application for the patent upon which the present reissue is based. See Greenliant Systems, Inc. et al v. Xicor LLC, 692 F.3d 1261, 103 USPQ2d 1951 (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). A broadening aspect is present in the reissue which was not present in the application for patent. The record of the application for the patent shows that the broadening aspect (in the reissue) relates to claimed subject matter that applicant previously surrendered during the prosecution of the application. Accordingly, the narrow scope of the claims in the patent was not an error within the meaning of 35 U.S.C. 251, and the broader scope of claim subject matter surrendered in the application for the patent cannot be recaptured by the filing of the present reissue application.
It is noted that the following is the three step test for determining recapture in reissue applications (see: MPEP 1412.02(I)):
“(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(A)) In the instant case, the Applicant seeks to broaden original independent claims 27, 33 and 39 by deleting/omitting at least the patent claim language requiring, “electronic device being connected to AC mains” and “control circuitry configured to produce commands in synchronization with a frequency of the AC mains”.
(Step 2: MPEP 1412.02(B)) The record of the prior US application No. 14/573,207 prosecution history indicates that in a Response filed on February 16th, 2016, the Applicant amended the claims in such a manner as to include additional limitations which rendered claims allowable. Accordingly, the newly amended claims recited the allowable subject matter as explained in the step 1 above, hence they overcame the cited prior art (Franklin US Publication No. 2005/0169643 and Grouev US Patent No. 6,333,605).
Subject matter is previously surrendered during the prosecution of the original application by reliance by Applicant to define the original patent claims over the art by presentation of new/amended claims to define over the art, or an argument/statement by applicant that a limitation of the claim(s) defines over the art. 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 for the patent to be reissued, regardless of whether the Office adopted the argument in allowing the claims. Therefore, in the instant case the claim limitations of, “electronic device being connected to AC mains” and “control circuitry configured to produce commands in synchronization with a frequency of the AC mains” are surrendered subject matter and 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(C)) It is noted that the reissue claims were not materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule. When analyzing a reissue claim for the possibility of impermissible recapture, there are two different types of analysis that must be performed. If the reissue claim “fails” either analysis, recapture exists. First, claim scope that was canceled or amended is deemed surrendered and therefore barred from reissue. Clement, 131 F.3d at 1470, 45 USPQ2d at 1165. Second, it must be determined whether the reissue claim omits or broadens any limitation that was added or argued during the original prosecution to overcome an art rejection. Such an omission in a reissue claim, even if it is accompanied by 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. The surrendered subject matter, noted above, has been entirely eliminated from new independent reissue claims 27, 33 and 39. It is noted that the added limitations do not materially narrow the patent claims to avoid recapture.
Therefore, broadened independent reissue claims 27, 33 and 39 attempt impermissible recapture of subject matter surrendered during prosecution of the 14/573,207 application. Dependent reissue claims dependent upon the independent claims mentioned above are rejected for similar rationale.
Claim Interpretation
The examiner finds several instances where the claim term explicitly includes functional language which would invoke 35 U.S.C. § 112, sixth paragraph.
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.
Use of the word “means” (or “step for”) in a claim with functional language creates a rebuttable presumption that the claim element is to be treated in accordance with 35 U.S.C. § 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph). The presumption that § 112(f) (pre-AIA § 112, sixth paragraph) is invoked is rebutted when the function is recited with sufficient structure, material, or acts within the claim itself to entirely perform the recited function.
Absence of the word “means” (or “step for”) in a claim creates a rebuttable presumption that the claim element is not to be treated in accordance with 35 U.S.C. § 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph). The presumption that § 112(f) (pre-AIA § 112, sixth paragraph) is not invoked is rebutted when the claim element recites function but fails to recite sufficiently definite structure, material or acts to perform that function.
The following claim limitations have been interpreted under 35 U.S.C. § 112(f), because they use a generic placeholder coupled with functional language without reciting sufficient structure to achieve the function. Furthermore, the generic placeholder is not preceded by structural modifier:
Claims 27 and 39 are directed to a lighting controller and control circuitry which perform following functions:
“determine, from a frequency or phase of a cyclical supply voltage, a first interval and a second interval”
“translate the received command from the network communication protocoltoa visible light communication (VLC) protocol”.
Since the claim limitations invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, claims 27-32 and 39-44 have been interpreted to cover the corresponding structure described in the specification that achieves the claimed function, and equivalents thereof.
More specifically the functions of “determin[ing], from a frequency or phase of a cyclical supply voltage, a first interval and a second interval” and “translat[ing] the received command from the network communication protocol to a visible light communication (VLC) protocol” do not appear to have a corresponding structure or algorithm.
With respect to translation, the original disclosure mentions translating carried out by a processor, for instance in 14:58 – 15:2, however there is no clear structure or algorithm recited to carry out such a function.
For a computer-implemented means-plus-function claim limitation invoking 35 U.S.C. § 112, sixth paragraph, a general purpose computer is usually sufficient for the corresponding structure for performing a general computing function (e.g., “means for storing data”), but the corresponding structure for performing a specific function is required to be more than simply a general purpose computer or microprocessor. In In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1316 (Fed. Cir. 2011), the court stated:
Those cases involved specific functions that would need to be implemented by programming a general purpose computer to convert it into a special purpose computer capable of performing those specified functions. … By contrast, in the seven claims identified above, Katz has not claimed a specific function performed by a special purpose computer, but has simply recited the claimed functions of ‘processing,’ ‘receiving,’ and ‘storing.’ Absent a possible narrower construction of the terms ‘processing,’ ‘receiving,’ and ‘storing,’ discussed below, those functions can be achieved by any general purpose computer without special programming. As such, it was not necessary to disclose more structure than the general purpose processor that performs those functions. Those seven claims do not run afoul of the rule against purely functional claiming, because the functions of ‘processing,’ ‘receiving,’ and ‘storing’ are coextensive with the structure disclosed, i.e., a general purpose processor.).
To claim a means for performing a specific computer-implemented function and then to disclose only a general purpose computer as the structure designed to perform that function amounts to pure functional claiming. Aristocrat, 521 F.3d 1328 at 1333. In this instance, the structure corresponding to a 35 U.S.C. § 112, sixth paragraph claim limitation for a computer-implemented function must include the algorithm needed to transform the general purpose computer or microprocessor disclosed in the specification. Aristocrat, 521 F.3d at 1333; Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008); WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339, 1349 (Fed. Cir. 1999). The corresponding structure is not simply a general purpose computer by itself but the special purpose computer as programmed to perform the disclosed algorithm. Aristocrat, 521 F.3d at 1333. Thus, the specification must sufficiently disclose an algorithm to transform a general purpose microprocessor to the special purpose computer. Aristocrat, 521 F.3d at 1338 (“Aristocrat was not required to produce a listing of source code or a highly detailed description of the algorithm to be used to achieve the claimed functions in order to satisfy 35 U.S.C. § 112 P 6. It was required, however, to at least disclose the algorithm that transforms the general purpose microprocessor to a ‘special purpose computer programmed to perform the disclosed algorithm.’ WMS Gaming, 184 F.3d at 1349.”) An algorithm is defined, for example, as “a finite sequence of steps for solving a logical or mathematical problem or performing a task.” Microsoft Computer Dictionary, Microsoft Press, 5th edition, 2002. Applicant may express the algorithm in any understandable terms including as a mathematical formula, in prose, in a flow chart, or “in any other manner that provides sufficient structure.” Finisar, 523 F.3d at 1340; see also Intel Corp. v. VIA Techs., Inc., 319 F.3d 1357, 1366 (Fed. Cir. 2003); In re Dossel, 115 F.3d 942, 946-47 (Fed. Cir.1997); Typhoon Touch Inc. v. Dell Inc., 659 F.3d 1376, 1385 (Fed. Cir. 2011); In re Aoyama, 656 F.3d 1293, 1306 (Fed. Cir. 2011).
If applicant wishes to provide further explanation or dispute the examiner’s interpretation of the corresponding structure, applicant must identify the corresponding structure with reference to the specification by page and line number, and to the drawing, if any, by reference characters in response to this Office action.
If applicant does not intend to have the claim limitation(s) treated under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph, applicant may amend the claim(s) so that it/they will clearly not invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, or present a sufficient showing that the claim recites/recite sufficient structure, material, or acts for performing the claimed function to preclude application of 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
For more information, see MPEP §§ 2173 and 2181 et seq. and Supplementary Examination Guidelines for Determining Compliance With 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications, 76 FR 7162, 7167 (Feb. 9, 2011).
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 27-32 and 39-44 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 27 and 39 recite the functions of “determin[ing], from a frequency or phase of a cyclical supply voltage, a first interval and a second interval” and “translat[ing] the received command from the network communication protocol to a visible light communication (VLC) protocol” without corresponding structure or algorithm. Accordingly, the Examiner, is unable to assess the metes and bounds of the claimed invention. For instance, “first and second intervals” are not even mentioned in the original disclosure, let alone having an explanation how they can be determined from a frequency or phase of a cyclical supply voltage.
Moreover, the Patent Owner has amended claims 27, 33 and 39, to recite “produce illumination at a first illumination level for at least a first portion of the first interval”, “produce illumination at either a second illumination level less than the first illumination level for a portion of the second interval”, “reduce the illumination produced from the first illumination level to the second illumination level for a second portion of the first interval”. Since the original disclosure does not discuss intervals let alone “portions” of those intervals, the Examiner deems this limitation indefinite because there is no standard by which it could be determined, how much is the portion. In other words, two different people interpreting the same claim may arrive with a different apparatus.
The Examiner concludes that because claims 27 and 39 are indefinite under § 112 (b), these claims, by definition, cannot be properly construed. See e.g. Honeywell International Inc. v. ITC, 341 F.3d 1332, 1342 (Fed. Cir. 2003) (“Because the claims are indefinite, the claims, by definition, cannot be construed.”). However, in accordance with MPEP § 2173.06 and the USPTO’s policy of trying to advance prosecution by providing prior art rejections even though the claims are indefinite, these indefinite claims are construed and the prior art is applied as much as practically possible.
The Examiner recognizes that in remarks filed on March 5th, 2025, on page 8, the Patent Owner equated periods of time to the first and second time intervals.
Accordingly, with respect to first and second intervals, the Examiner considers those two as intervals associated with different LED illumination outputs and translating function is interpreted as a step of receiving command and issuing visible light communication.
In addition, the Examiner would like to note that independent amended claims 27, 33 and 39 recite “produce illumination at either a second illumination level less than the first illumination level for a portion of the second interval or a third illumination level greater than the first illumination level for the portion of the second interval” then same claims further contend “cause a reduction in the current provided to the plurality of operatively coupled illumination devices to reduce the illumination produced from the first illumination level to the second illumination level for a second portion of the first interval”.
If the illumination level is adjusted so that the light device illuminates either at second or third illumination level, how can the “reduction in current” follow that if this adjustment requires first illumination level. Accordingly, there are inconsistencies among the limitations which must be addressed.
Moreover, the last limitation disclosed in the independent claims 27, 33 and 39 recites “communicate the received command via the VLA protocol at the third illumination level during the portion of the second interval”, however since producing illumination at the third level is optional (the claim recites “or”), the command disclosed in claims 27, 33 and 39 may not be communicated. Accordingly, the inconsistencies among the claimed limitations must be addressed.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—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 or joint inventor of carrying out the invention.
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 28-38 and 40-44 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claims contain subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
In this instance, the original disclosure does not teach “determining, by control circuitry, from a frequency or phase of a cyclical supply voltage, a first interval and a second interval” and “translating, by the control circuitry, the received command from the network communication protocol to a visible light communication (VLC) protocol”.
Dependent claims 34-38 are also rejected under 35 U.S.C 112(a), by the virtue of their dependency on the rejected independent claim 33.
With respect to claims 28, 34 and 40, the Patent Owner pointed to column 16, lines 8-13 as showing support for the newly added limitation “wherein the cyclical supply voltage is an alternating current (AC) supply voltage, and wherein the second interval occurs at least once for each AC cycle”. The cited passage is directed to gaps in communication which are produced at regular, periodic intervals, not to the second interval which includes illumination. In other words, first and second intervals are not discussed in the original disclosure and any amendments made to the claims shall be consistent with the specification.
Furthermore claims 29-32, 35-38 and 41-44 are also rejected because they depend on claims 28, 34 and 40 respectively, and claims 30-31, 36-37 and 42-43 also disclose the limitations reciting second interval with respect to the AC cycle, which is not taught in the passage cited by the Patent Owner.
Moreover, with respect to “first and second intervals” the Examiner would like note that this wording has not been proposed in the original specification. The MPEP 608.01(c) clearly recites:
“Usually the terminology of the original claims follows the nomenclature of the specification, but sometimes in amending the claims or in adding new claims, new terms are introduced that do not appear in the specification. The use of a confusing variety of terms for the same thing should not be permitted.
New claims and amendments to the claims already in the application should be scrutinized not only for new matter but also for new terminology. While an applicant is not limited to the nomenclature used in the application as filed, he or she should make appropriate amendment of the specification whenever this nomenclature is departed from by amendment of the claims so as to have clear support or antecedent basis in the specification for the new terms appearing in the claims. This is necessary in order to ensure certainty in construing the claims in the light of the specification, Ex parte Kotler, 1901 C.D. 62, 95 O.G. 2684 (Comm'r Pat. 1901). See 37 CFR 1.75, MPEP § 608.01(i) and § 1302.01.”
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 27, 33 and 39 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Chemel et al (US Publication No. 2010/0259931) in view of Choi et al (US Publication No. 2011/0002695) and further in view of Park (US Publication No. 2005/0184945).
With respect to claims 27, 33 and 39, Chemel teaches a method and a lighting controller apparatus, comprising: memory circuitry (paragraphs [0055], [0072], [0243] and [0386], wherein the lighting fixtures comprise processor and memory circuit and management system 134 is also computing device ); network interface circuitry; and control circuitry operatively coupled to the memory circuitry and to the network interface circuitry (paragraph [0386] and Figure 2, wherein management system, lighting, sensors are all part of the network connected via internet 142), the control circuitry to: provide current to a plurality of operatively coupled illumination devices ([0160], wherein drive voltage and current are managed to adjust illumination output);
receive a command via the network interface circuitry (paragraphs [0204] and [0207], wherein commands can be exchanged between monitoring points and lighting as well as management system 134 and lighting), the command using a network communication protocol (paragraph [0072], wherein when transmitting data is in accordance with at least one rule, this corresponds to transmitting data according to a protocol): store the received command in communicatively coupled memory circuitry (paragraph [0454], wherein command values can be stored in a remote database or inside the fixture. In order to support the process of storing data, the circuit must be equipped with memory to facilitate that).
Chemel however does not explicitly teach translating the received command from the network communication protocol to a visible light communication (VLC) protocol; and communicate the received command via the VLC protocol, determining, from a frequency or phase of a cyclical supply voltage a first interval and a second interval;
and produce illumination at a first illumination level for at least a first portion of the first interval; and produce illumination at either a second illumination level less than the first illumination level for the portion of the second interval or a third illumination level greater that the first illumination level for the portion of the second interval, cause a reduction in the current provided to the plurality of operatively coupled illumination devices to reduce the illumination produced from the first illumination level to the second illumination level for second portion of the first interval, the second portion immediately preceding the second interval.
On the other hand, Choi teaches translating the received command from the network communication protocol to a visible light communication (VLC) protocol (paragraph [0011], wherein electrical signal can be converted to visible light communication (VLC) or (VCL) can be converted to electric signal).
It would have been obvious to one of ordinary skill in the art at the time the invention was made to modify Chemel’s lighting system with Choi’s teaching about converting electric signal to VCL, in order to facilitate this efficient manner of communication among light fixtures.
In addition, Park teaches determining, from a frequency or phase of a cyclical supply voltage a first interval and a second interval (Figure 1, wherein for instance T3 ): produce illumination at a first level for the first interval (Figure 1, wherein amount of the light transmitted corresponds to the “produced illumination”); and produce illumination at a first illumination level for at least a first portion of the first interval (Figure 1, “Interval 1”); and produce illumination at either a second illumination level less than the first illumination level for the portion of the second interval (Figure 1, “Interval 2”) or a third illumination level greater that the first illumination level for the portion of the second interval, cause a reduction in the current (note that Chemel teaches supplying current/voltage to drive lighting elements) provided to the plurality of operatively coupled illumination devices to reduce the illumination produced from the first illumination level to the second illumination level for second portion of the first interval (Figure 1, “portion of the Interval 1”, wherein the light intensity is reduced), the second portion immediately preceding the second interval (as depicted in Figure 1, “portion of the Interval 1 is immediately before Interval 2).
PNG
media_image1.png
580
996
media_image1.png
Greyscale
It would have been obvious to one of ordinary skill in the art at the time the invention was made to modify Chemel’s lighting system with Choi’s teaching about VLC and Park’s illumination levels adjustments, because adjusting voltage levels would lie in a skill of one of ordinary skill in the art and would be dictated by the design choice.
Allowable Subject Matter
Claims 28-32, 34-38 and 40-44 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. The Examiner would like to also note that allowance is also contingent upon resolving all the rejections listed above and furthermore it should be noted that modifying the scope of the independent claims, may also affect allowable subject as the limitations from all the preceding claims on which the objected claims depend on are also part of those claims, so any significant changes to the base claims would intrinsically affect the scope of the objected claims.
The following is a statement of reasons for the indication of allowable subject matter:
With respect to claims 28, 34 and 40, the prior art of record does not teach the control circuitry as disclosed in claims 27, 33 and 39, wherein the cyclical supply voltage is an alternating current (AC) supply voltage, and wherein the second interval occurs at least once for each AC cycle.
Response to Arguments
Applicant's arguments filed March 18th, 2025 have been fully considered but they are not persuasive.
In the first argument on page 11 of the remarks filed on September 29th, 2025, the Patent Owner contends “Applicant would like to point out that independent Claim 14 of the '668 Patent (as filed 16) has no reference to the AC Mains and thus no showing of surrender has been made. And even as to claims that do recite the AC Mains (Claims 1, 10, and 24 of the '668 Patent), the term is recited in the preamble. Moreover, Applicant notes that the present claims recite limitations not present in the patented claims, and vice versa”.
The Examiner’s Response: The Examiner did not find the above argument persuasive because the scope of original claim 1 is closer to the scope of new claim 27 thus the surrendered subject matter in the original claim 1 is considered herein. Furthermore, MPEP 1412.02, II (3) recites “if the reissue claims were materially narrowed in aspects related to the surrendered subject matter, there is no recapture; if the claims were not materially narrowed in related aspects or were narrowed in unrelated aspects, there is recapture”.
In this instance, it appears that the amendments made where did not further narrow aspects related to the surrendered subject matter, and therefore the Examiner has concluded that recapture rejection is maintained.
Then on page 12, the Patent Owner addressed rejection under 35 U.S.C. 112 related to “an alternating current (AC) supply voltage” or “AC supply voltage”. In view of the amendment and remarks, the Examiner has withdrawn the rejection with respect to this limitation.
Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANGELA M LIE whose telephone number is (571)272-8445. The examiner can normally be reached on M-F, 5:30 am - 2:00 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Andrew Fischer can be reached on 571-272-6779.
All correspondence relating to this reissue proceeding should be directed:
Patent Center
Patent Center (https://www.uspto.gov/patents/apply/patent-center) to file and manage your applications and requests. Visit the EFS-Web and Private PAIR Retirement (https://www.uspto.gov/patents/efs-web-and-private-pair-be-retired) and Patent Center Information pages for more information.
By Mail to: Mail Stop Reissue
Central Reexamination Unit
Commissioner for Patents
United States Patent & Trademark Office
P.O. Box 1450
Alexandria, VA 22313-1450
By FAX to: (571) 273-9900
Central Reexamination Unit
By hand: Customer Service Window
Knox Bulding
501 Dulany Street
Alexandria, VA 22314
Patent Center has 100% of the functionality of EFS-Web and Private PAIR, and is available to all users for electronic filing and management of patent applications. Attend a transition to Patent Center Training session (https://www.uspto.gov/about-us/events/patent-center) to learn more about filing and managing patent applications.
/ANGELA M LIE/Primary Examiner, Art Unit 3992
Conferees:
/LUKE S WASSUM/Primary Examiner, Art Unit 3992
/ANDREW J. FISCHER/Supervisory Patent Examiner, Art Unit 3992