NON-FINAL OFFICE ACTION
I. Introduction
A) Patent Undergoing Reissue
This action addresses reissue of U.S. Patent No. 8,548,526 (the ‘526 patent), issued on October 01, 2013, and titled, “MULTIPLE-TRX PICO BASE STATION FOR PROVIDING IMPROVED WIRELESS CAPACITY AND CONVERAGE IN A BUILDING.”
B) Relevant Background
1. Original Application and Issue: The ‘526 patent issued on October 01,2013 and was based upon U.S. Application No. 12/367,449 ("the ‘449 Application or base application”), filed February 6, 2009.
2. Application for Reissue: On December 23, 2022 an application for reissue of the ‘526 Patent was filed and assigned reissue application number 18/088,336 (“the ‘336 Application or instant reissue application”). The ‘336 Application included, remarks (“Dec 2022 Remarks”); claims (“Dec 2022 Claims”); and application data sheet (“Dec 2022 ADS”); and an inventor declaration PTO/AIA /05 (“Dec 2022 Reissue Declaration”).
3. Supplemental Filings: On June 05, 2023 the Applicant made a supplemental submission including seven substitute statements in lieu of oath or declarations (collectively, “June 2023 Reissue Declaration”); an assignee showing of ownership (“June 2023 Showing of Ownership”); a consent of assignee (“June 2023 Assignee Consent”).
II. Priority
Based upon review if the image file wrapper (“IFW”)1 and the face of the ‘526 Patent the Examiner finds that the ‘526 Patent is based upon U.S. Application No. 12/367,449, i.e., the ‘449 Application, filed February 6, 2009 that claimed priority to U.S. Provisional Application 61/102,363 filed February 8, 2008.
Accordingly to the extent that the provisional application supports the claims the ‘526 Patent would have and effective filing date of February 8, 2008.
III. Acknowledgments
1. AIA First Inventor to File (FITF): Because the effective filing date of the ‘526 Patent is before March 16, 2013 the present application is being examined under the pre-AIA first to invent provisions.
2. Related Reissue Applications: This application is a continuing reissue application of application no.14/872,846, filed October 01, 2015, now Pat. No.: RE49346, issued December 27, 2022.
3. Broadening: Based upon review of the file record the Examiner finds that this instant reissue application is a broadening reissue application. See the June 2023 Reissue Declaration, the error statement at p. 2.
4. Diligence: The Examiner finds that this instant application is a continuation of reissue application no.14/872,846, filed October 01, 2015, now RE49346, that was filed within two years of issue of the ‘526 Patent as a broadening reissue application. As such, the Examiner finds that the diligence requirement of 35 U.S.C. §251 has been satisfied. Accordingly, this instant application is eligible for broadening. See MPEP §1403 and §1412.03.
5. Patent Term: Based upon an updated review of the file record the Examiner finds that the Patent term has not expired. Additionally the Examiner finds that the file record indicates that the 3.5 year, 7.5 year, and 11.5 year maintenance fees have posted. Accordingly the Patent is still in effect.
6. Litigation Review: Based upon a review of statements in the Applicants Remarks, a USPTO Litigation Search, and an Examiner independent updated review of the file itself the Examiner finds that the ‘526 Patent is not involved in litigation.
7. Concurrent Proceeding Review: Based upon the statements in the Applicant’s remarks, and updated review of the file record, and an updated review of the USPTO PTAB processing system the Examiner cannot locate any concurrent post grant proceedings involving the ‘526 Patent.
8. Official Gazette Notice: The Examiner finds that notice of this instant application was published in the USPTO official gazette on April, 09 2024.
IV. Status of Claims
A) Claims Addressed by the Examiner in this Office Action
1. Claims 1-20 were the claims of the ‘526 Patent (“Patented Claims”).
2. Claims 8 and 20 have been cancelled by the instant application (“Cancelled Claims”)
3. Claims 21 and 22 have been submitted as new claims (“New Claims”).
4. Claims 1-7, 9-19, 21, and 22 are therefore pending (“Pending Claims”).
B) Claim Status As a Result of This Non-Final Office Action
1. Claims 1-7, 9-19, 21, and 22 are rejected under the doctrine of non-statutory double patenting.
2. Claims 1-7, 9-19, 21, and 22 are rejected under 35 U.S.C. § 251, for being based upon a defective declaration, and appearing in two reissue application/patents.
3. Claims 1-7, 9-19, 21, and 22 are rejected under 35 U.S.C. §112 second paragraph for being unclear in scope due to appearing in this reissue application and the parent patent.
4. Claims 1-7, 9-19, 21, and 22 are allowed over the prior art.
V. Terms Applied
“PHOSITA” - Person Having Ordinary Skill in the Art.
“BRI” - Broadest Reasonable Interpretation Standard.
“Original Application” – “The prosecution record of the application that issued as the patent for which the reissue application was filed, including the applications in the patent family’s entire prosecution history.” See MPEP §1412.02.
“Original Disclosure” is the substantive disclosure including the abstract, specification, and drawings that were present in the base application, on its effective filing date.
“Applicant” (with upper case “A”) refers to the Applicant is this reissue application.
“applicant” (with lower case “a”) refers to applicants generally.
“patent owner” (lower case) refers to patent owners generally and not the Applicant in this reissue application.
“Examiner” (with upper case “E”) refers to the Examiner is this reissue application.
“examiner” (with lower case “e”) refers to examiners generally, e.g. the examiner in during the prosecution of the base application, or other examiners.
VI. Statutes Applied In This Action
A) 35 U.S.C. 112
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), 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.
B) 35 U.S.C. 251
The following is a quotation of 35 U.S.C. 251:
(a) IN GENERAL.—Whenever any patent is, through error, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.
(b) MULTIPLE REISSUED PATENTS.— The Director may issue several reissued patents for distinct and separate parts of the thing patented, upon demand of the applicant, and upon payment of the required fee for a reissue for each of such reissued patents.
(c) APPLICABILITY OF THIS TITLE.— The provisions of this title relating to applications for patent shall be applicable to applications for reissue of a patent, except that application for reissue may be made and sworn to by the assignee of the entire interest if the application does not seek to enlarge the scope of the claims of the original patent or the application for the original patent was filed by the assignee of the entire interest.
(d) REISSUE PATENT ENLARGING SCOPE OF CLAIMS.—No reissued patent shall be granted enlarging the scope of the claims of the original patent unless applied for within two years from the grant of the original patent. specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
VII. Showing of Ownership
The Examiner finds that the June 2023 Showing of Ownership complies with MPEP§1410.02, 37 CFR §1.172, and 37 CFR §3.73(c) (1). In this regard, the Examiner finds that, among other things: (1) the June 2023 Showing of Ownership is signed by a person having the apparent authority to sign. For example, the signature box has an affirmation above the persons name, and the same person signed the June 2023 Power of Attorney, which also has an affirmation above the person’s name giving the apparent authority to sign; (2) the assignee identified on the form is evidence by the Reel and Frame number of the recordation in the USPTO; and (3) the Examiner has reviewed the Reel and Frame number and finds that it matches the records as recorded in the USPTO PALM system.
Accordingly, the June 2023 Showing of Ownership complies with MPEP§1410.02, 37 CFR §1.172, and 37 CFR §3.73(c) (1).
VIII. Consent of Assignee
The Examiner finds that the June 2023 Assignee Consent complies with MPEP§1410.02, referencing §324 and §325, and 37 CFR §1.172. In this regard, the Examiner finds that, among other things: (1) the consent form is a PTO/AIA /53 with all appropriate boxes filled; and (2) the person signing the consent has the apparent authority to sign. That is, the person signing is also the person that signed the Showing of Ownership and the Power of attorney that both includes an affirmation above the person’s name indicating the person is authorized to sign on behalf of the assignee.
Accordingly the June 2023 Assignee Consent complies with MPEP§1410.02 and 37 CFR §1.172.
IX. Evaluation of Restriction
The Examiner concludes that are no issues with the claims related to restriction requirement.
For support the Examiner notes:
(1) Claims of Instant Reissue: The claims of the instant reissue application are simply the patented claims with amendments and are directed to the same invention; and the only new claims are dependent and do not modify the independent claims toward an independent or distinct invention.
Accordingly, there are no issue requiring a restriction to original presentation or restriction between sets of the new claims. See MPEP §1450.
(2) Original Prosecution: The Examiner finds no restriction requirements were made in the prosecution of the Original Application. Accordingly, there is no issue with the claims being directed to a non-elected invention from a restriction in the prosecution. See MPEP §§1402; 1412.01(I).
Because new the claims are directed to essentially the same invention as the patented claims and there is no non-elected inventions in the prosecution history, there are no issues with the claims related to restriction.
X. Rejections – Double Patenting
A. Doctrine Non Statutory Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the claims at issue are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
B. Claims 1-7, 9-19, 21, and 22 are rejected on the ground of nonstatutory double patenting as being unpatentable over product claims 1-7, 9-19, 21, and 22 U.S. Patent No. RE49346 (hereinafter the "346 Patent”).
Regarding independent claims 1, 9, and 13: Independent product claims 1, 9, and 13 of the 346 Patent recite the same structures present in product claims 1, 9, and 13 of the instant application.
After review of the claims, the Examiner finds that independent claims 1, 9, and 13 are broader versions of independent claims 1, 9, and 13 of the ‘346 Patent. For example independent claims 1, 9, and 13 of this instant reissue application have exactly the same structures as independent claims 1, 9, and 13 of the ‘346 Patent, except that claims 1, 9, and 13 of this instant reissue application does not require the structure of the hub unit “installed within a rack included in the server room.” Accordingly, claims 1, 9, and 13 of this instant reissue application are simply broader versions of claims 1, 9, and 13 of the ‘346 Patent. Therefore, claims 1, 9, and 13 of this instant reissue application represent the general in building communication system, i.e., the genus, and claims 1, 9, and 13 of the ‘346 Patent while slightly narrower are simply a species read upon (or encompassed) by claims 1, 9, and 13 of this instant reissue application. See MPEP §804 II B 1. "Anticipation Analysis"
Accordingly, although independent claims 1, 9, and 13 at issue are not identical, they are not patentably distinct from claims 1, 9, and 13 of the ‘346 Patent because claims 1, 9, and 13 of the ‘346 Patent are covered in scope by claims 1, 9, and 13 of the instant application.
Regarding claims 2-7, 10-12, 14-19, 21, and 22: The Examiner finds that claims 2-7, 10-12, 14-19, 21, and 22 of this instant reissue application do not narrow independent claims 1, 9, and 13 so as they would not cover in scope the claims of the ‘346 Patent, because dependent claims 2-7, 10-12, 14-19, 21, and 22 of this instant reissue application are essentially the same and have the same dependency as dependent claims. Accordingly, claims 2-7, 10-12, 14-19, 21, and 22 are rejected based upon the same reasoning as above.
C. Other Commonly Owner or Invented References.
During an assignee and inventor search the following other references were found to be closely related to the invention as claimed, however, do not raise double patenting issues. For example, based upon review of the prosecution history, including assignee and inventor patents and applications the Examiner finds that U.S. Pat. No. 8,274,929 (“929 Patent”); US Pat. No. 8,279,800, (“800 Patent”), U.S. Pat. No. 9,191,912 (“912 Patent”), U.S. Pat. No. 9,954,584 (“584 Patent”), and U.S. Pat. No. 9,980,318 (“318 Patent”) are all references most closely related to the invention as claimed, and commonly owned and/or invented, claiming a similar invention. For example, wireless communication system with antenna units within a building or premises. However, the Examiner finds that the claims of this instant reissue application are narrower such that they do not encompass in scope the claims of the above mentioned patents, or the claims of the above mentioned patents while related are directed to some other aspect or piece of the system in more detail, such that the claims of this instant reissue application do not encompass in scope the claims of those patents. Thus closets that could be found is the ‘912 Patent which does include the hub unit with a plurality of remote antennas similar to the claims of this instant reissue application, however, the claims of this instant reissue application include the pico base station, a hub unit remote from the pico base station, the transceivers, and the claims of the ‘912 Patent include features directed to detecting time delays.
C) Conclusion of Double Patenting
Based upon the assignee and inventor search, claims 1-7, 9-19, 21, and 22 are rejected under non-statutory obvious type double patenting as outlined above.
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
XI. Analysis of Recapture
A) The Examiner finds that the claims of this instant reissue application do not attempt to recapture subject matter surrendered during prosecution of the Original Application. For support the Examiner notes the following Three Step Test (MPEP§1412.02 II.):
1) STEP ONE, Independent claims 1, 9, and 13 of this instant reissue application are broader than the patented independent claims 1, 9, and 13. For example the claims are broader as follows:
a) For claim 1 the broadened features are:
Broadened Feature 1: “wherein the pico base station is installed in the building,” as in patented claim 1, line 5.
Broadened Feature 2: “located within the building,” as in patented claim 1, line 7.
Broadened Feature 3: “wherein the system further comprises a distributed antenna system to couple the pico base station to the plurality of antennas; and wherein the distributed antenna system comprises a hub unit installed within a rack included in the server room and a plurality of remote antenna units located within the building, wherein the remote antenna units are located remotely from the hub unit and each of the plurality of antennas is coupled to at least one of the plurality of remote antenna units,” as in patented claim 1, lines 17-26.
b) For claim 9 the broadened features are:
Broadened Feature 4: “a pico base station,” as in patented claim 9, line 1.
Broadened Feature 5: “wherein the pico base station is coupled to a distributed antenna system used to couple the pico base station to a plurality of antennas,” as in patented claim 9, lines 13-15.
c) For claim 13 the broadened features are:
Broadened Feature 6: “installed in the building,” as in patented claim 13, line 5.
Broadened Feature 7: “located within the building, wherein the plurality of antennas are,” as in patented claim 13, line 8.
Broadened Feature 8: “base station controller functionality,” as in patented claim 13, lines 15-16.
Broadened Feature 9: “network switching subsystem functionality,” as in patented claim 13, lines 16-17.
Broadened Feature 10: “wherein the distributed antenna system comprises a hub unit installed within a rack included in a server room and a plurality of remote antenna units located within the building, wherein the remote antenna units are located remotely from the hub unit and each of the plurality of antennas are coupled to at least one of the plurality of remote antenna units,” as in patented claim 1, lines 18-24.
2) STEP TWO, the Examiner finds that Broadened Feature 3, Broadened Feature 5, and Broadened Feature 10, are Surrender Generating Limitations (SGL‘s’).
For example in the prosecution of the base application 12/367,449, the examiner conducts and interview on August 09, 2013 suggesting amendments that would place the application in condition for allowance.
In the notice of allowance issued August 9, 2013, the examiner makes an examiner amendment. See Aug 2013 Notice of Allowance, pp. 2-7. As noted in the notice of allowance, pp. 2-3, and pp.4-6, Broadened Feature 3, Broadened Feature 5, and Broadened Feature 10, recited above, were amended into independent claims 1, 12, and 16 of the base application.
Those independent claims were renumbered as claims 1, 9, and 13, to become the ‘526 Patent. See the Issue Information Including Classification, entered in the base application August 9, 2013.
Because, Broadened Feature 3, Broadened Feature 5, and Broadened Feature 10, were amended into the claims of the base application, to obtain the allowance, Broadened Feature 3, Broadened Feature 5, and Broadened Feature 10, are surrender generating limitations. See MPEP§1412.02 I.
3) STEP THREE, however, the Examiner finds that independent claims 1, 9, and 13 of this instant reissue application are Materially Narrowed in Other Respects, and Hence Avoid the Recapture Rule. See MPEP§1412.02 II. C. To support this position the Examiner notes the following:
First, the Examiner finds that relative to the original claims2 of the base application, i.e. the claims of application 12/367,449, independent claims 1, 9, and 13 of this instant reissue application are narrowed by the following features.
a) For claim 1 the narrowing features are:
Narrowing Feature 1: “a distributed antenna system to couple the pico base station to the plurality of antennas, the distributed antenna system comprising: (i) a hub unit, and (ii) a plurality of remote antenna units, wherein: (i) the hub unit is a separate component than the pico base station, (ii) the remote antenna units are located remotely from the hub unit, and (iii) each of the plurality of antennas is coupled to at least one of the plurality of remote antenna units,” as in the reissue application claim 1, lines 7-12.
Narrowing Feature 2: “wherein the hub unit includes one or more converters configured to convert the wireless traffic output by the pico base station to a first form; wherein each of the remote antenna units includes one or more converters configured to convert the wireless traffic from the first form to a second form; and wherein the wireless traffic is radiated from the plurality of remote antenna units in the second form,” as in the reissue application claim 1, lines 19-24.
b) For claim 9 the Narrowing features are:
Narrowing Feature 3: “where the hub unit is a separate component than the pico base station . . . wherein each radio transceiver of the plurality of radio transceivers of the pico base station is configured to be coupled to a hub unit of the distributed antenna system used to couple the pico base station to a plurality of antennas; wherein the hub unit includes one or more converters configured to convert the wireless traffic output by the pico base station to a first form, wherein each of the remote antenna unit includes one or more converters configured to convert the wireless traffic from the first form to the second form, and wherein the wireless traffic is radiated from the plurality of remote antenna units in the second form ,” as in the reissue application claim 9, lines 19-27.
c) For claim 13 the Narrowed features are:
Narrowing Feature 4: “wherein the distributed antenna system comprises: (i) a hub unit, and (ii) a plurality of remote antenna units, wherein: (i) the hub unit is a separate component than the pico base station, (ii) the remote antenna units are located remotely from the hub unit, and (iii) each of the plurality of antennas is coupled to at least one of the plurality of remote antenna units . . . wherein each transceiver unit of the multiple transceiver units of the pico base station is coupled to the hub unit of the distributed antenna system,” as in the reissue application claim 13, lines 10-17.
Narrowing Feature 5: “one or more circuits configured to: control the multiple transceiver units, enable the multiple transceiver units to communicate with the at least one public land mobile network, and perform at least a portion of call switching normally implemented in a mobile switching center,” as in the reissue application claim 13, lines 18-23.
Second, the Examiner finds based upon comparison of Broadened Feature 3, Broadened Feature 5, and Broadened Feature 10, to Narrowed Feature 1, Narrowed Feature 3, and Narrowed Feature 4, the Examiner finds that the claims 1, 9, and 13 of this instant reissue application, are narrowed with limitations related to the surrender generating limitations. For example, Narrowed Feature 1, Narrowed Feature 3, and Narrowed Feature 4 retain features related to the broadened features of Broadened Feature 3, Broadened Feature 5, and Broadened Feature 10, that were the surrender generating limitations outlined above.
Third, because Narrowed Feature 1, Narrowed Feature 3, and Narrowed Feature 4, as in claims 1, 9, and 13 respectively of this instant reissue application, retain features related to the surrender generating limitations, claims 1, 9, and 13 fall into the category of SGL’s modified but not entirely eliminated. 3
Fourth, the Examiner finds that the limitations related to the surrender generating limitations are not well known in the art and not contained within the prior art relied upon by the examiner in the original prosecution. For example Narrowed Feature 1, Narrowed Feature 3, and Narrowed Feature 4, still require the feature of a distributed antenna system with a hub separate from the pico base station and connected to the remote antenna system. As noted in the parent reissue application, application 14/872,846, the Examiner found those features were not known in the art and were allowable. (Notice of Allowance, 07/18/2022, p. 6.) And, as noted in the base application 12/367,449, the examiner in the original prosecution found that the prior art applied to the original claims, i.e. the claims just before surrendered matter was added, also did not teach the limitations related to the surrender generating limitations, See application 12/367,449, the Non-Final Office Action 03/29/2013 applying Bojeryd US 5,946,622, and see the Notice of Allowance 08/09/2013, with examiner amendments to include the distributed antenna system with a hub separate from the pico base station and connected to the remote antenna system. Additionally, the Examiner has made an independent reviewed of Bojeryd and finds that the reference does not teach Narrowed Feature 1, Narrowed Feature 3, and Narrowed Feature 4, as they appear in claims 1, 9, and 13 of this instant reissue application.
4) Conclusion Recapture: Accordingly, the Examiner concludes that claims 1, 9, and 13 of this instant reissue application are materially narrowed in other respects, and hence avoid the recapture rule. For that reason, the Examiner finds that claims 1, 9, and 13, of this instant reissue application do not attempt to recapture surrendered subject matter.
XII. Rejections - 35 U.S.C. §251
A) Claims 1-7, 9-19, 21, and 22 are rejected under 35 U.S.C. §251 as being based upon a defective reissue declaration. See MPEP §1414 II (D), referencing 37 CFR §1.175.
The nature of the defect(s) in the declaration is set forth in the discussion below.
The seven statements in lieu of reissue oath/declaration filed with this application, collectively referred to as the June 2023 Reissue Declaration, is defective because it fails to correctly identify at least one error which is relied upon to support the reissue application. See 37 CFR 1.175 and MPEP § 1414.
The Examiner takes this position because:
(1) The error statement in the June 2023 Reissue Declaration recites the same error is being corrected, as the error statement in the declaration of the parent reissue application 14/872,846; now Patent No.: U.S. RE49346. In other words, the statements are essentially copies of the statements filed in the parent reissue application.
(2) However the parent reissue application has issued as Pat. No. RE49346 and therefore the particular error identified has already been corrected.
(3) As noted in MPEP §1414 II (D), to correct the same error in a continuing reissue application, the Applicant must file a new declaration with an error statement that states the error is being corrected in a different way, or provide a statement explaining compliance with 37 CFR 1.175(f)(2), stating that the same error is being relied upon and how the error is being corrected in a different way than the parent reissue application.
Because, this instant reissue declaration is filed with what is essentially a copy of the declaration (Statements in Lieu of a Declaration) due to correcting the same error however not in a different way, and Applicant has not made the statement that the same error is being relied upon and explained how the error is being corrected in a different way, claims are rejected under 35 U.S.C. 251 as being based upon a defective reissue declaration.
B) Claims 1-7, 9-19, 21, and 22 are rejected under 35 U.S.C. §251 as not correcting an error in the original patent. The Examiner takes this position as follows:
First claims 1-7, 9-19, 21, and 22 appear in both of this instant reissue application and the parent patent RE49346.
Second, MPEP §1451 I. states:
Pursuant to 37 CFR 1.177(b) all of the claims of the patent to be reissued must be presented in each reissue application in some form, i.e., as amended, as unamended or as canceled. Further, any added claims must be numbered beginning with the next highest number following the last patent claim. It is noted that the same claim of the patent cannot be presented for examination in more than one of the divisional reissue applications, as a pending claim, in either its original or amended versions. If a patent claim is presented in one of the divisional reissue applications of a reissue application "family," as a pending claim, then that patent claim must be presented as a canceled claim in all the other reissue applications of that family. Once a claim in the patent has been reissued, it does not exist in the original patent; thus, it cannot be reissued from the original patent in another reissue application.
- MPEP §1451 I.
Because claims 1-7, 9-19, 21, and 22 appear in both of this instant reissue application, and the parent reissue patent RE49346, and because 37 CRF 1.177(b) states that a patent claim no longer exists once it has been reissue and therefore it cannot be reissued in another reissue application, claims1-7, 9-19, 21, and 22, are rejected under 35 U.S.C. §251 as not correcting an error in the original patent.
To overcome this rejection, claims 1-7, 9-19, 21, and 22 should be presented in this instant reissue application as cancelled. If applicant wishes to retain claims similar to claims 1-7, 9-19, 21, and 22 in this instant reissue application, in the next response applicant should add those similar claims beginning at a higher claim number, e.g., claim 23 and above. See MPEP §1451 I.
XIII. Rejections - 35 U.S.C. §112
Claims 1-7, 9-19, 21, and 22are 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.
Regarding claims1-7, 9-19, 21, and 22: Claims 1-7, 9-19, 21, and 22 appear in both this instant reissue application, and in parent reissue U.S. Patent RE49346. Accordingly, the claims 1-7, 9-19, 21, and 22 of this instant reissue application present one coverage in scope and claims 1-7, 9-19, 21, and 22 in the parent reissue patent present another coverage in scope. See MPEP §1451 I.
Because claims 1-7, 9-19, 21, and 22 result in a different coverage in scope due to claims 1-7, 9-19, 21, and 22 appearing in both this instant reissue application and the parent reissue application and patent, claims 1-7, 9-19, 21, and 22 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.
To overcome this rejection, claims 1-7, 9-19, 21, and 22 should be presented in this instant reissue application as cancelled. If applicant wishes to retain claims similar to claims 1-7, 9-19, 21, and 22 in this instant reissue application, in the next response applicant should add those similar claims beginning at a higher claim number, e.g., claim 23 and above. See MPEP §1451 I.
XIV. Claim Interpretation
During examination, claims are given the broadest reasonable interpretation consistent with the specification and limitations in the specification are not read into the claims. See MPEP § 2111 et seq.
A) Lexicographic Definitions
A first exception, albeit optional, to the broadest reasonable interpretation standard occurs when there is lexicographic definition in the specification.
After careful review of the original specification and unless expressly noted otherwise by the Examiner, the Examiner cannot locate any lexicographic definitions in the original specification with the required clarity, deliberateness, and precision. Because the Examiner cannot locate any lexicographic definitions in the original specification with the required clarity, deliberateness, and precision the Examiner concludes the Patent Owner is not their own lexicographer. See MPEP § 2111.01 IV.
B) 'Sources' for the 'Broadest Reasonable Interpretation'
For terms not lexicographically defined by Patent Owner, the Examiner hereby adopts the following interpretations under the broadest reasonable interpretation standard. In other words, the Examiner has provided the following interpretations simply as express notice of how he is interpreting particular terms under the broadest reasonable interpretation standard. Additionally, these interpretations are only a guide to claim terminology since claim terms must be interpreted in context of the surrounding claim language.4 In accordance with In re Morris, 127 F.3d 1048, 1056, 44 USPQ2d 1023, 1029 (Fed. Cir. 1997), the Examiner points to these other “sources” to support his interpretation of the claims. Finally, the following list is not intended to be exhaustive in any way:
1. Antenna: A device for transmitting, receiving or transmitting and receiving signals. Antenna’s come in all shapes and sizes. Their shape depends on the frequency of the signal. Newton’s Telecom Dictionary. 14th Expanded Edition, Telecom Books, October 1998.
2. Base Station: A wireless term. A base station is the fixed device that a mobile radio transceiver (transmitter/receiver) talks to talk to allow a person or mobile device to get connection to the landline phone network, public or private. Newton’s Telecom Dictionary. 14th Expanded Edition, Telecom Books, October 1998.
3. Central Processing Unit: "Abbreviated CPU. The computational and control unit of a computer; the device that interprets and executes instructions " Microsoft Press Computer Dictionary , 2nd Edition, Microsoft Press, Redmond, WA, 1994.
4. Circuit: Any path that can carry electrical current. A combination of electrical components interconnected to perform a particular task. Microsoft Press Computer Dictionary, 2nd Edition, Microsoft Press, Redmond, WA, 1994.5
5. Converter: (1) A repeater that also converts from one media type to another, such as from fiber to copper. (2) A device used in RF distribution systems to convert from one frequency to another. Newton’s Telecom Dictionary. 14th Expanded Edition, Telecom Books, October 1998.
6. Enterprise Network: An enterprise wide network is one covering the whole corporation. Newton’s Telecom Dictionary. 14th Expanded Edition, Telecom Books, October 1998.
7. Hub: A point on a network where a bunch of circuits are connected. In local Area Networks, a hub is the core of a star as in ARCNET, StarLAN, Ethernet, and token ring. Newton’s Telecom Dictionary. 14th Expanded Edition, Telecom Books, October 1998.
8. Microprocessor: A central processing unit (CPU) on a single chip. Microsoft Press Computer Dictionary, 2nd Edition, Microsoft Press, Redmond, WA, 1994
9. Pico: 1: One Trillionth. 2: very small. Merriam - Webster's Collegiate Dictionary, 10th Edition, Merriam-Webster Inc., 1994.
10. Pico Base Station, as in claim 1, 9 and 13, 24 and 31: A term in the art denoting a local area base station that transmits at less than one Watt. A pico-base station is a smaller version of a standard base station applied, for example, inside office buildings, shopping centers, convention centers, and airports. See (a) the Mobile Communications Standard, i.e. ETSI TR 125 951 “Universal Mobile Telecommunication System, 3GPP TR 25.951, stating that the term pico-base station refers to a local area base station transmitting at less than 20dBm; and (b) Applicants statements in the June 2018 Remarks, pp. 19-20, 21-22, and 30-31 referencing US Pat. No. 8,548,526, at C1:L55-67, C2:L1-8 and C5:L5-35 i.e. the Base Patent under reissue in this instant reissue application, stating that the term pico-base station refers to a base station that transmits at a power of less than one watt.
11. Processing: "Manipulation of data within a computer system. Processing is the vital step between receiving data (input) and producing results (output) – the task for which computers are designed" Microsoft Press Computer Dictionary , 2nd Edition, Microsoft Press, Redmond, WA, 1994
12. Processor: "1: one that processes 2. a: (1) a computer (2) The part of a computer system that operates on data – called also a central processing unit b : a computer program (as a compiler) that puts another program into a form acceptable to the computer " Microsoft Press Computer Dictionary , 2nd Edition, Microsoft Press, Redmond, WA, 1994
13. Rack: An equipment rack. In our industry, the standard equipment rack is 19 inches (48.26cm) wide at the front. Much equipment is designed to fit into a standard rack. A rack is typically made of aluminum or steel, onto which equipment is mounted. A rack is typically attached to a building ceiling or wall. Cables are laid in and fastened to the rack. Sometimes a rack is called a tray. What a rack is to equipment, sod a frame is to wiring. Newton’s Telecom Dictionary. 14th Expanded Edition, Telecom Books, October 1998.
14. System: An organized assembly of equipment, personnel, procedures and other facilities designed to perform a specific function or set of functions. Newton’s Telecom Dictionary. 14th Expanded Edition, Telecom Books, October 1998.
15. Unit: "a piece or complex of apparatus serving to perform one particular function" Merriam - Webster's Collegiate Dictionary, 10th Edition, Merriam-Webster Inc., 1994.
C) 35 U.S.C. §112 6th Paragraph
A second exception is when a claimed phrase is interpreted in accordance with 35 U.S.C. § 112 6th paragraph (“§ 112 ¶ 6”). See MPEP § 2181 et seq. To invoke § 112 ¶ 6, a claimed phrase must meet the three prong analysis (“3 Prong Analysis”) as set forth in MPEP § 2181 (I).
The following is a quotation of pre-AIA § 112 ¶ 6:
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 Examiner has evaluated the claims and finds the following:
1) Analysis of Claims 1-6, 9-10, 14-18, 21, and 22:
The Examiner finds that claims 1-6, 9-10, 14-18, 21, and 22 do not have any phrases that invoke 35 U.S.C. §112 6th Paragraph. For support of this position the Examiner notes the following:
Claims 1-6, 9-10, 14-18, 21, and 22 recite neither "step for" nor "means for," or a generic placeholder for "step for" nor "means for." Therefore claims 1-6, 9-10, 14-18, 21, and 22 fail Prong (A) as set forth in MPEP §2181 I. Because claims 1-6, 9-10, 14-18, 21, and 22 fail Prong (A) as set forth in MPEP §2181 I., the Examiner concludes that claims 1-6, 9-10, 14-18, 21, and 22 do not invoke 35 U.S.C. §112, 6th paragraph. See also Ex Parte Miyazaki, 89 USPQ2d 1207, 1215-16 (B.P.A.I. 2008) (precedential).
2) Analysis of Claims 7, 11-13, and 19:
The Examiner finds that the following phrases, from claims 7, 11-13, and 19 will be first identified and then analyzed using the MPEP’s 3 Prong Analysis to determine if the claimed phrases invoke § 112 ¶ 6. If a phrase invokes § 112 ¶ 6, the corresponding structure will also be determined.
See MPEP §2181 and Williamson v. Citrix Online, L.L.C., 115 USPQ2d 1105, 1112 (Fed. Cir. 2015).
In the following analysis of the Functional Phrases the Examiner notes:
“In assessing whether the claim limitation is in means-plus-function format, we do not merely consider the introductory phrase (e.g., ‘mechanical control assembly’) in isolation, but look to the entire passage including functions performed by the introductory phrase. [Emphasis added.]”
- MTD Prods. Inc. v. Iancu, 933 F.3d 1336, 1342 (Fed. Cir. 2019).
Functional Phrase #1: “one or more circuits configured to: control the multiple transceiver units and enable the multiple transceiver units to communicate with the at least one public land mobile network; and perform at least a portion of call switching normally implemented in a mobile switching center,” as recited in claim 7 lines 2-6 (Functional Phrase #1 or FP#1).
Functional Phrase #2: “one or more circuits communicatively coupled to the plurality of radio transceivers, wherein the one or more circuits are configured to perform at least some base station controller operations for the plurality of radio transceivers,” as recited in claim 11 lines 2-4 (Functional Phrase #2 or FP#2)
Functional Phrase #3: “one or more circuits configured to control the multiple transceiver units and to enable the multiple transceiver units to communicate with the at least one public land mobile network; and perform at least a portion of call switching normally implemented in a mobile switching center,” as recited in claim 12, lines 1-6 (Functional Phrase #3 or FP#3).
Functional Phrase #4: “one or more circuits configured to: control the multiple transceiver units, enable the multiple transceiver units to communicate with the at least one public land mobile network, and perform at least a portion of call switching normally implemented in a mobile switching center,” as recited in claim 13 lines 18-23 (Functional Phrase #4 or FP#4).
Functional Phrase #5: “one or more circuits are configured to perform at least a portion of call switching normally implemented in a mobile switching center using a private mobile switching center server and a private home location register for providing wireless service to local subscribers of the enterprise using the licensed radio frequency in connection with local mobile phone numbers,” as recited in claim 19 lines 2-6 (Functional Phrase #5 or FP#5).
a) 3-Prong Analysis Prong (A):
In accordance with the MPEP, Prong (A) requires:
(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 ....
MPEP § 2181 I. — Prong (A).
As an initial matter, the Examiner finds that Functional Phrases #1, #2, #3, #4, and #5 do not use the phrase “means for.” Therefore the issue arising under Invocation Prong (A) then becomes whether or not Functional Phrases #1, #2, #3, #4, and #5 including the claimed “circuits configured to: [and perform the claimed functions],” is a generic placeholder for “means.”
First, within the claimed “circuits . . . configured” phrases, (and construing the claim according to the required precepts of English grammar), ‘circuit’ is a noun while ‘one or more’ is an adjective modifying ‘circuits.’ Moreover and based upon a review of the entire Functional Phrases #1, #2, #3, #4, and #5 the only Agent Noun6 in the entire Functional Phrases #1, #2, #3, #4, and #5 is ‘circuits.’ In other words, although there may be other nouns within the phrase (e.g. “transceiver” and “network” for example in line 3 and 5 of FP#1), these other nouns within Functional Phrases #1, #2, #3, #4, and #5 are not positively recited but are used, in some manner, within the functional language to describe the structural characteristics of the claimed ‘circuit.’
Second, the Examiner has reviewed the specification and concludes that the specification does not provide a description sufficient to inform a PHOSITA that the term “circuits” denotes sufficient structure to perform the claimed function. From review of the ‘526 Patent specification, the Examiner finds that the specification simply repeats the term “circuits,” for example in C29:L20-47 references circuits such as application specific integrated circuits ASIC.
Accordingly the specification does not identify the term “circuits,” as formed from any particular type of device, rather the specification states that the phrase refers to a standard processor requiring something more to implement the function. Accordingly from review of the specification the Examiner finds that a PHOSITA understands that a circuit such as an (ASIC) (by themselves), cannot perform the entire claim function. Other structural elements are needed.
Third, the Examiner has reviewed both general dictionaries and subject matter specific dictionaries for evidence to establish that the term “circuits,” has achieved recognition as noun denoting structure. Based upon a review of these dictionaries, the Examiner is unable to locate sufficient evidence that “circuits,” has achieved recognition as a noun denoting structure for performing the claimed function. For example, see Examiner Sources for BRI above “Section XII (B), titled “sources for broadest reasonable interpretation”, showing that a “circuit,” is simply a term representing a general path or potentially a combination of electrical components. Additionally, as shown by the dictionaries the term circuit has become known to represents the function of carrying electrical current with intent of a particular task. However as noted above no specific function, as in the functional phrases above, is connoted by the phrase “circuit.”
Accordingly, the Examiner finds that A PHOSITA understands that the term ‘circuits’ refers to a circuit such as a general path or combination of electrical components, and therefore does not refer to a device with a particular function. Accordingly, the term ‘circuits’ does not refer to a device known in the art to perform the entire claim function. Other structural elements are needed.
Finally, the Examiner has reviewed the prior art of record for evidence that “circuits,” has an art-recognized structure to perform the claimed function. Based upon a review of the prior art now of record, the Examiner is unable to locate sufficient evidence to establish that term “circuits,” has an art-recognized structure to perform the claimed function. For example, Kolor, U.S. 2007/0177577 shows at Par [0013] [0040] refers to a circuit as a general communication line such as part of a communications system T1 Trunk line. However a PHOSITA understands that general communication line such as part of a T1 Trunk line does not have the claimed function, and cannot perform the entire claimed function. Other structural elements are needed.
Accordingly the Examiner concludes that the phrase “circuits,” as set forth in Functional Phrases #1, #2, #3, #4, and #5 is being used as a generic term for a structure performing the function, and therefore a place holder for the phrase "means for" performing the recited function. Because “circuit,” is merely a generic placeholder having no specific structure associated therewith, the Examiner concludes that Functional Phrases #1, #2, #3, #4, and #5 meet invocation Prong (A).
b) 3-Prong Analysis Prong (B):
In accordance with the MPEP prong (B) requires:
(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” ....
MPEP § 2181 I. — Prong (B).
Based upon a review of the claim, the Examiner finds that the functions associated with Functional Phrases #1, #2, #3, #4, and #5 are as follows:
Function of Functional Phrase #1: “one or more circuits configured to: control the multiple transceiver units and enable the multiple transceiver units to communicate with the at least one public land mobile network; and perform at least a portion of call switching normally implemented in a mobile switching center.”
Function of Functional Phrase #2: “one or more circuits communicatively coupled to the plurality of radio transceivers, wherein the one or more circuits are configured to perform at least some base station controller operations for the plurality of radio transceivers.”
Function of Functional Phrase #3: “one or more circuits configured to control the multiple transceiver units and to enable the multiple transceiver units to communicate with the at least one public land mobile network; and perform at least a portion of call switching normally implemented in a mobile switching center.”
Function of Functional Phrase #4: “one or more circuits configured to: control the multiple transceiver units, enable the multiple transceiver units to communicate with the at least one public land mobile network, and perform at least a portion of call switching normally implemented in a mobile switching center.”
Function of Functional Phras