FINAL OFFICE ACTION
This Final Office Action addresses U.S. Application No. 18/088,336 (the “instant reissue application”), which is a broadening reissue application of U.S. Application No. 12/367,449 (the “449 Application"), entitled “MULTIPLE-TRX PICO BASE STATION FOR PROVIDING IMPROVED WIRELESS CAPACITY AND COVERAGE IN A BUILDING”, which issued as U.S. Patent No. 8,548,526 (the “526 Patent").
AMENDMENT
Applicant filed a response on June 2, 2026 (the “June 2026 Response”) in response to the non-final Office action mailed December 2, 2025 (the “December 2025 NF”). Examiners acknowledge the June 2026 Response. This action is made in full consideration of the June 2026 Response.
STATUS OF CLAIMS
As of the date of this Final Office Action, the status of the claims are:
The 526 Patent issued with claims 1-20 (“Patented Claims”).
Patented claims 8 and 20 were canceled.
Patented claims 1, 2, 4, 6, 7 and 9-19 were amended.
Patented claims 3 and 5 were original as in the 526 Patent.
Newly claims 21-22 were added.
Accordingly, claims 1-7, 9-19, and 21-22 are subject to the examination of the instant reissue application. Of these, claims 1, 9 and 13 are independent claims.
PRIORITY
Examiners acknowledge that the instant reissue application is a reissue of the 526 Patent that issued from 449 Application. The instant reissue application is a continuation of reissue application no. 14/872,846 (“the 846 Application”), filed October 01, 2015, now RE49346 (“the RE49346 Patent”), issued December 27, 2022. Examiners further acknowledge the claim of priority to U.S. Provisional Application No. 61/027,363, filed February 8, 2008. Therefore, Examiners find the earliest possible filing date for the claims is the date of the provisional application, February 8, 2008.
BRIEF SUMMARY OF THE PROCEEDING
Broadening: The instant reissue application is file after two years of issue of the 526 Patent. However, more than one reissue application has been filed for the 526 Patent. The reissue applications are the instant reissue application and the 846 Application. Examiners note that Applicant’s intent to broaden was indicated in the 846 Application (i.e. see claim 1 filed 10/1/2015). The 846 Application was filed within two years of issue of the 526 Patent as a broadening reissue application. Accordingly, a broadened claim can be presented in this continuation reissue application after the two year period. See In re Staats, 671 F.3d 1350, 101 USPQ2d 1930 (Fed. Cir. 2012). See also MPEP 1412.03IV.
Patent Term: Based upon and updated review of the file record Examiners find that the Patent term has not expired.
Litigation: Base upon Examiners review of the file itself, Examiners find that the 526 Patent is not involved in litigation.
CLAIM INTERPRETATION
The claim interpretation and sources for the broadest reasonable interpretation applied to claims 1-7, 9-19 and 21-22 will be interpreted in the same manner as discussed in the December 2025 NF, pages 21-35.
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 conflicting claims 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); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) 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 www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-7, 9-19 and 21-22 remain rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7, 9-19 and 21-22 of the RE49346 Patent. Although the claims at issue are not identical, they are not patentably distinct from each other. For example:
THE 526 PATENT
(the instant reissue application)
THE RE49346 PATENT
Claim 1: A system for providing wireless coverage and capacity for at least one public land mobile network within a building, the system comprising:
a pico base station comprising multiple transceiver units;
a plurality of antennas, wherein the plurality of antennas are located remotely from the pico base station; and
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;
wherein the pico base station is communicatively coupled to the at least one public land mobile network;
wherein the pico base station is communicatively coupled to the plurality of antennas;
wherein the pico base station is configured to output wireless traffic at a power level less than one Watt;
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.
Claim 1: A system for providing wireless coverage and capacity for at least one public land mobile network within a building, the system comprising:
a pico base station comprising multiple transceiver units, wherein the pico base station is installed in the building; and
a plurality of antennas located within the building, wherein the plurality of antennas are located remotely from the pico base station;
a distributed antenna system to couple the pico base station to the plurality of antennas,
wherein the distributed antenna system comprises a hub unit installed within a rack and
a plurality of remote antenna units located within the building,
wherein the hub unit of the distributed antenna system is a separate component than the pico base station,
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;
wherein the pico base station is communicatively coupled to the at least one public land mobile network;
where each transceiver unit of the multiple transceiver units of the pico base station is coupled to the hub unit of the distributed antenna system;
wherein the pico base station is communicatively coupled to the plurality of antennas;
wherein the pico base station is configured to output wireless traffic at a power level less than one Watt;
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,
wherein the wireless traffic is radiated from the antennas in the second form.
Claim 2: The system of claim 1, wherein the building is controlled by a person or entity other than a service provider associated with the at least one public land mobile network.
Claim 2. The system of claim 1, wherein the building is controlled by a person or entity other than a service provider associated with the at least one public land mobile network.
Claim 3: The system of claim 1, wherein the hub unit is communicatively coupled to the remote antenna units, at least in part, using at least one of unshielded
twisted pair cabling, cable television cabling, optical fiber, and coaxial cabling.
Claim 3: The system of claim 1, wherein the hub unit is communicatively coupled to the remote antenna units, at least in part, using at least one of unshielded twisted pair cabling, cable television cabling, optical fiber, and coaxial cabling.
Claim 4: The system of claim 1, wherein the hub unit and at least one of the plurality of remote antenna units are communicatively coupled to one another via an expansion hub.
Claim 4: The system of claim 1, wherein the hub unit and at least one of the plurality of remote antenna units are communicatively coupled to one another via an expansion hub.
Claim 5: The system of claim 4, wherein the expansion hub is communicatively coupled to the remote antenna units, at least in part, using at least one of unshielded twisted pair cabling, cable television cabling, optical fiber, and coaxial cabling.
Claim 5: The system of claim 4, wherein the expansion hub is communicatively coupled to the remote antenna units, at least in part, using at least one of unshielded twisted pair cabling, cable television cabling, optical fiber, and coaxial cabling.
Claim 6: The system of claim 1, wherein the pico base station is communicatively coupled to the at least one public land mobile network using an Internet Protocol (IP) backhaul connection for which voice signals are converted to IP packets.
Claim 6: The system of claim 1, wherein the pico base station is communicatively coupled to the at least one public land mobile network using an Internet Protocol (IP) backhaul connection for which voice signals are converted to IP packets.
Claim 7: The system of claim 1, wherein the pico base station further comprises 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.
Claim 7: The system of claim 1, wherein the pico base station further comprises 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.
Claim 9: A system comprising:
a pico base station that includes:
an enclosure;
a plurality of radio transceivers, housed within the enclosure, to transmit and receive, within a building, wireless traffic using radio frequency spectrum assigned to at least one public land mobile network;
and
an interface to communicatively couple the plurality of radio transceivers to the at least one public land mobile network using an Internet Protocol (IP) backhaul connection for which voice signals are converted to IP packets;
wherein the pico base station is configured to output the wireless traffic at a power level less than one Watt;
a distributed antenna system including a hub unit installed and a
plurality of remote antenna units,
wherein the hub unit is a separate component than the pico base station,
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,
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.
Claim 9: A system comprising:
a pico base station that includes:
an enclosure;
a plurality of radio transceivers, housed within the enclosure, to transmit and receive, within a building, wireless traffic using radio frequency spectrum assigned to at least one public land mobile network;
and
an interface to communicatively couple the plurality of radio transceivers to the at least one public land mobile network using an Internet Protocol (IP) backhaul connection for which voice signals are converted to IP packets;
wherein the pico base station is configured to output the wireless traffic at a power level less than one Watt;
distributed antenna system including a hub unit installed within a rack
and a plurality of remote antenna units located within the building,
wherein the hub unit is a separate component than the pico base station,
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,
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 units includes one or more converters configured to convert the wireless traffic from the first form to a second form,
wherein the wireless traffic is radiated from the antennas in the second form.
Claim 10: The system of claim 9, wherein the enclosure has a rack-mountable shape.
Claim 10: The system of claim 9, wherein the enclosure has a rack-mountable shape.
Claim 11: The system of claim 9, further comprising 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.
Claim 11: The system of claim 9, further comprising 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.
Claim 12: The system of claim 9, further comprising 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.
Claim 12: The system of claim 9, further comprising 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.
Claim 13: An enterprise network providing wireless coverage and capacity for at least one public land mobile network within a building located on a premises of an enterprise, the enterprise network comprising:
a pico base station comprising multiple transceiver units,
wherein the pico base station is configured to communicate using licensed radio frequency spectrum;
a plurality of antennas located remotely from the pico base station; and
a distributed antenna system to communicatively couple the pico base station to the plurality of antennas,
wherein the distributed antenna system comprises:
a hub unit, and
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; and
wherein the pico base station is communicatively coupled to the at least one public land mobile network, 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;
wherein the pico base station further comprises 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; and
wherein the pico base station is configured to output wireless traffic at a power level less than one Watt.
Claim 13: An enterprise network providing wireless coverage and capacity for at least one public land mobile network within a building located on a premises of an enterprise, the enterprise network comprising:
a pico base station comprising multiple transceiver units,
wherein the pico base station is installed in the building and is configured to communicate using licensed radio frequency spectrum;
a plurality of antennas located within the building, wherein the plurality of
antennas are located remotely from the pico base station; and
a distributed antenna system to communicatively couple the pico base station to the plurality of antennas,
wherein the distributed antenna system comprises
a hub unit installed within a rack
and a plurality of remote antenna units located within the building,
wherein the hub unit is a separate component than the pico base station,
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; and
wherein the pico base station is communicatively coupled to the at least one public land mobile network, 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;
wherein the pico base station further comprises, one or more circuits configured to:
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; and
wherein the pico base station is configured to output wireless traffic at a power level less than one Watt.
Claim 14: The enterprise network of claim 13, wherein the building is controlled by a person or entity other than a service provider associated with the at least one public land mobile network.
Claim 14: The enterprise network of claim 13, wherein the building is controlled by a person or entity other than a service provider associated with the at least one public land mobile network.
Claim 15: The enterprise network of claim 13, wherein the hub unit is communicatively coupled to the remote antenna units, at least in part, using at least one of unshielded twisted pair cabling, cable television cabling, optical fiber, and coaxial cabling.
Claim 15: The enterprise network of claim 13, wherein the hub unit is communicatively coupled to the remote antenna units, at least in part, using at least one of unshielded twisted pair cabling, cable television cabling, optical fiber, and coaxial cabling.
Claim 16: The enterprise network of claim 13, wherein the hub unit and at least one of the plurality of remote antenna units are communicatively coupled to one another via an expansion hub.
Claim 16: The enterprise network of claim 13, wherein the hub unit and at least one of the plurality of remote antenna units are communicatively coupled to one another via an expansion hub.
Claim 17: The enterprise network of claim 16, wherein the expansion hub is communicatively coupled to the remote antenna units, at least in part, using at least one of unshielded twisted pair cabling, cable television cabling, optical fiber, and coaxial cabling.
Claim 17: The enterprise network of claim 16, wherein the expansion hub is communicatively coupled to the remote antenna units, at least in part, using at least one of unshielded twisted pair cabling, cable television cabling, optical fiber, and coaxial cabling.
Claim 18: The enterprise network of claim 13, wherein the pico base station unit is communicatively coupled to the public land mobile network using an Internet
Protocol (IP) backhaul connection for which voice signals converted to IP packets.
Claim 18: The enterprise network of claim 13, wherein the pico base station unit is communicatively coupled to the at least one public land mobile network using an Internet Protocol (IP) backhaul connection for which voice signals converted to IP packets.
Claim 19: The enterprise network of claim 13, wherein the 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.
Claim 19: The enterprise network of claim 13, wherein the 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.
Claim 21: The system of claim 1, wherein the pico base station and the hub unit are housed within a common chassis.
Claim 21: The system of claim 1, wherein the pico base station and the hub unit are housed within a common chassis.
Claim 22: The system of claim 13, wherein the pico base station and the hub unit are housed within a common chassis.
Claim 22: The system of claim 13, wherein the pico base station and the hub unit are housed within the same chassis.
OJBECTION TO REISSUE DECLARATION
37 C.F.R. §1.175 Reissue oath or declaration (in part).
(a) The inventor’s oath or declaration for a reissue application, in addition to complying with the requirements of § 1.63, § 1.64, or § 1.67, must also specifically identify at least one error pursuant to 35 U.S.C. 251 being relied upon as the basis for reissue and state that the applicant believes the original patent to be 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 the patentee had the right to claim in the patent.
(b) If the reissue application seeks to enlarge the scope of the claims of the patent (a basis for the reissue is the patentee claiming less than the patentee had the right to claim in the patent), the inventor's oath or declaration for a reissue application must identify a claim that the application seeks to broaden. A claim is a broadened claim if the claim is broadened in any respect.
The reissue declaration filed June 5, 2023 (the “2023 Reissue Declaration”) is acknowledged, but it remain objected to herein.
Examiners find that the 2023 Reissue Declaration outlines an error as follows:
“This reissue is based on at least the error that the applicant and applicant's representative failed to appreciate the full scope of the invention and thusly claimed less subject matter than could have been claimed in the patent. The issued claims contain limitations that are not essential to practicing the broad teaching of the invention disclosed in the application. Thus, this reissue application is intended as a broadening reissue. In one example, claim 1 as issued is directed to a system for providing wireless coverage and capacity for a public land mobile network within a building. The rack that the hub unit of the distributed antenna system is installed in does not need to be in a server room. Accordingly, independent claim 1 has been amended to not require the rack to be in a server room system.”
Nevertheless, Examiners do not find that the error statement in the 2023 Reissue Declaration discusses how this error is corrected differently in this instant reissue application from how it was corrected in the RE49346 Patent.
1/ Examiners find that Applicant is attempting to correct the same error in the same manner in this instant reissue application as was corrected in the RE49346 Patent, which not a proper basis for reissue. Applicant is required to identify a new error with regard to the 526 Patent that is being corrected in this instant reissue application. See 37 C.F.R. §1.175(a).
2/ Examiners do not find that the error statement provided above is applicable to the instant reissue application, for example, “… independent claim 1 has been amended to not required the rack to be in a server room system”. Examiners find this statement does not specify any language in the original claims in error, i.e., the “server room system” language is not seen cited in the claims of the underlined patent. A proper error statement must identify a single word, phrase, or expression in the specification or in an original claim in the underlying patent, i.e., the 526 Patent (the RE49,346 Patent), and how it renders the original patent wholly or partly inoperative or invalid. See MPEP §1414(II). Examiners do not find that the 2023 Reissue Declaration identifies proper language in error. Thus, Applicant is required to provide a new declaration with a statement of error with respect to 526 Patent identifying “a single word, phrase, or expression” from the claims of the 526 Patent that rendered the 526 Patent invalid or inoperative. Based on this finding in consideration of the statement error indicated in the 2023 Reissue Declaration, Examiners object to the reissue declaration for not properly stating a proper error on which to base this instant reissue application.
3/ 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. See MPEP §1414 II (D). It appears that Applicant depends on limitation “a server room” indicated in the RE49346 Patent Declaration is different than the “a server room system” indicated in the 2023 Reissue Declaration. However, both “the server room” and “the server room system” refer to the same environment – overall setup or infrastructure. The server room related to the server room system because server room system defines a set of infrastructure that keep the server room operational. Thus, Examiners do not find that the error statement in the 2023 Reissue Declaration discusses how this error is corrected differently in this instant reissue application from how it was corrected in the RE49346 Patent.
As a matter of suggestion only and to aid Applicant understanding of the requirements, Examiners would accept the following error statement if filed in an otherwise proper reissue declaration:
This reissue is based on at least the error that the applicant and applicant's representative failed to appreciate the full scope of the invention and thusly claimed less subject matter than could have been claimed in the patent. For example, claim 1 as issued recited “a plurality of antennas located within the building” and “a hub unit installed within the rack” which unduly narrows the intended scope of invention. Thus, Patentee seeks to broaden claim 1 in this reissue application. This error is corrected by amended claim 1 which removes the claim requirement “located within the building” and “installed within the rack”.
CLAIM REJECTIONS UNDER 35 U.S.C. §251
The following is a quotation of 35 U.S.C. §251(a):
(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.
A) Claims 1-7, 9-19 and 21-22 and this instant reissue application as a whole remain rejected as being based upon a defective reissue under 35 U.S.C. §251 as set forth above. See 37 C.F.R. §1.175. The nature of the defects in the 2023 Reissue Declaration is set forth in the discussion above in this Final Office action.
B) Claims 1-7, 9-19, 21, and 22 remain rejected under 35 U.S.C. §251 as not correcting an error in the original patent.
Examiners take this position as follows:
First claims 1-7, 9-19, 21, and 22 appear in both of this instant reissue application and the parent RE49346 Patent.
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 RE49346 Patent, 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, claims 1-7, 9-19, 21, and 22, remain 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.
CLAIM REJECTIONS UNDER 35 U.S.C. §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 1-7, 9-19 and 21-22 remain 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 1-7, 9-19, 21, and 22 appear in both this instant reissue application, and in parent RE49346 Patent. 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.
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 RE49346 Patent, claims 1-7, 9-19, 21, and 22 remain 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.
CLAIM OBJECTIONS
Claim 9 is objected to because of the following informalities:
Line 15, “installed” should be deleted.
Line 18, “each of the plurality of antennas” should be replaced with -- each of plurality of antennas --.
Line 20, “a hub unit” should be replaced with – the hub unit --.
Line 21, “a plurality of antennas” should be replaced with -- the plurality of antennas --.
Appropriate correction is required.
RESPONSE TO AMENDMENT
Examiners have fully considered the Applicant’s arguments in the June 2026 Response traversing the rejections provided in the December 2025 NF. However, Examiners do not find the arguments persuasive and maintain the rejections.
Applicant’s argument – “Applicant respectfully submits that the claims of the instant reissue application are patentably distinct from those of the '346 Patent, and that the Examiner's own analysis in Section XI (Recapture) supports this conclusion. In the Examiner's analysis, various features are described as being different than the '346 Patent. Applicant respectfully submits that, inter alia, those features are patentably distinct over the '346 Patent.” (page 2 of the June 2026 Response).
Examiner’s response - Although the conflicting claims are not identical, they are not patentably distinct from each other because claims 1-7, 9-19, 21-22 of the RE49,346 Patent read on, respectively, each of claims 1-7, 9-19, 21-22 pending and examined herein. See the double patenting rejection above. Examiners further find that Applicant has asserted the support for claims 1-7, 9-19, 21-22 of the RE49,346 Patent and the pending claims 1-7, 9-19, 21-22 come from the same figures, i.e., FIGS. 1-3 of the 526 Patent. See explanation of support in the Preliminary Amendment, page 11 filed on December 23, 2022 and see Preliminary amendment filed in the 846 Application on October 1, 2015, page 10.
Regarding the recapture argument, Examiners respectfully disagree as this argument merely highlights the Patent Owner's misunderstanding of the different thresholds for double patenting as opposed to rejecting the claims under recapture. Examiners submit that double patenting and recapture rejections of claims involve two different legal standards. For example, regarding recapture, Examiners determine whether the broader aspects of the reissue application claims relate to subject matter surrendered in the original prosecution; while double patenting determine if the reissue application claims are patentably distinct from the reference claims.
Applicant’s argument – “Although the error statement in the June 2023 Reissue Declaration recites the same error from the '346 Patent, the instant reissue correct that error in a different way than that of the parent reissue application. The instant reissue addresses the same error but corrects the error in a different way. The current declaration (and a different declaration from the '346 Patent) and the declaration from the '346 Patent are both provided below. As indicated, the current declaration notes that as one example "independent claim 1 has been amended to not require the rack to be in a server room system" and by default a building. In the '346 Patent, the declaration states as one example "independent claim 1 has been amended to not require the rack to be in a server room"-not "server room system."” (pages 2-3 of the June 2026 Response)
Examiner’s response - Examiners do not find that the error statement provided above is applicable to the instant reissue application. For example, “… independent claim 1 has been amended to not required the rack to be in a server room system”. Examiners find this statement does not specify any language in the original claims in error, i.e., the “server room system” language is not seen cited in the claims of the underlined patent. Examiners do not find that the 2023 Reissue Declaration identifies proper language in error. Insofar as understood, “a server room” indicated in the RE49346 Patent Declaration and “a server room system” indicated in the 2023 Reissue Declaration both refer to the same environment – overall setup or infrastructure. The server room related to the server room system because server room system defines a set of infrastructure that keep the server room operational. Thus, Examiners do not find that the error statement in the 2023 Reissue Declaration discusses how this error is corrected differently in this instant reissue application from how it was corrected in in the RE49346 Patent.
Applicant’s argument – Regarding claim rejection - 35 U.S.C 251 failure to correct an error and 35 U.S.C 112 as being indefinite.
The 846 Application is now RE49346 Patent. Thus, claims 1-20 of the 526 Patent were superseded by the issuance of the RE49346 Patent and no longer exist in the 526 Patent. Therefore, Examiners find that it is improper for Applicant to use these claim numbers in any continuation reissue applications. See MPEP §1451. Thus, if Applicant intends on pursuing the subject matter of claims 1-7, 9-19 and 21-22 further in this instant reissue application, Examiners suggest and require Applicant to simply add them following the last patent claim, i.e., as “New” claims 23+.
ALLOWABLE SUBJECT MATTER
While claims 1-7, 9-19 and 21-22 are rejected under 35 U.S.C. §251 and §112 above, Examiners find they are allowable over the prior arts of record. These claims are allowed for the same reasons as provided in the December 2025 NF at pages 35-40.
PRIOR OR CONCURRENT PROCEEDINGS
Applicant is reminded of the obligation apprise the Office of any prior or concurrent proceedings in which the 526 Patent is or was involved, such as interferences or trials before the Patent Trial and Appeal Board, reissues, reexaminations, or litigations and the results of such proceedings.
INFORMATION MATERIAL TO PATENTABILITY
Applicant is further reminded of the continuing obligation under 37 C.F.R. §1.56 to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application.
CONCLUSION
Claims 1-7, 9-19 and 21-22 are rejected.
The Primary Examiner Nick Corsaro, Art Unit 3992 for this reexamination application have been changed to the newly assigned Primary Examiner My Trang Ton, Art Unit 3992. Please indicate the Primary Examiner My Trang Ton as the Examiner of record in all future correspondence.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 C.F.R. §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 C.F.R. §1.17(a)) pursuant to 37 C.F.R. §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 MY TRANG TON whose telephone number is (571) 272-1754. The Examiner can normally be reached on 7:00am - 6:00pm, Monday - Thursday.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, Andrew J. Fischer, SPE Art Unit 3992, can be reached at (571) 272-6779. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-9900.
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Signed:
/MY TRANG TON/Primary Examiner, Art Unit 3992
Conferees:
/KENNETH WHITTINGTON/Primary Examiner, Art Unit 3992
/ANDREW J. FISCHER/Supervisory Patent Examiner, Art Unit 3992
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