DETAILED ACTION
Brief Summary
This is a Final Office Action addressing U.S. Application No. 18/097,635.
On June 2, 2025, a Non-Final Office Action (NFOA) was mailed in which, among other findings, one or more of the pending claims were rejected as being based on a defective reissue declaration, double patenting, 35 USC §§ 112, 251, and 103.
The Applicant filed their response to the NFOA on November 24, 2025.
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which the ‘821 Patent is or was involved. These proceedings would include any trial before the Patent Trial and Appeal Board, interferences, reissues, reexaminations, supplemental examinations, and litigation.
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application.
These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Response to Remarks/Arguments
The Applicants statements and arguments have been fully considered along with the claim amendments. Any remaining issues are addressed below in the order presented in the Applicant’s Remarks.
Application Data Sheet (ADS)
The Applicant states that a corrected ADS was filed correcting the errors noted in the NFOA. (See Remarks, page 10). The new ADS is objected to, however, because the applicant identifies the instant application in fields that are supposed to be left blank.
Reissue Declaration
With regards to the reissue declaration, the Applicant appears to argue that the rejections concerning the reissue declaration is improper. (See Remarks, page 10).
The Examiner disagrees. The NFOA clearly identified the problem with the error statement is that it is a copy of the error statement in the parent reissue application declaration. The rejections are maintained and repeated below.
Double Patenting
The Applicant argument that, “since a re-issue is a correction of a patent and NOT a different patent, there cannot be any ‘double patenting’ issue,” is simply false. (See Remarks, pages 10-11).
The Examiner disagrees. MPEP 1451(II), recites in part, “the claims of the continuation reissue application should be carefully reviewed for double patenting over the claims of the parent reissue application.” The double patenting rejections are maintained and repeated below.
112 Rejections
The Applicant states original claims 14-16 have been restored and that claims 14-16 from the parent reissue are provided as claims 33-35. (See Remarks, page 11).
Including the same claims from the parent reissue application to the instant application necessitates new statutory double patenting rejections hereinbelow. Additionally, claims 33-35 appear to be broader than the original patent claims in that they do not recite an “MPLS” network. Being that the original patent issued all the way back in 2014, the Applicant is statutory barred from broadening the claims. Therefore, in addition to the new statutory double patenting rejections, the amendment also necessitates new 35 USC § 251 rejections.
Continuation Reissue Application
The instant application is a continuation reissue application. Several of the issues raised in the NFOA stem from the Applicant’s improper handling of the claims based on the applications status as a continuation reissue application. MPEP 1451(II) recites in part,
“As is true for the case of multiple divisional reissue applications, all of the claims of the patent to be reissued must be presented in both the parent reissue application and the continuation reissue application in some form, i.e., as amended, as unamended, or as canceled. The same claim of the patent cannot, however, be presented for examination in both the parent reissue application and the continuation reissue application, as a pending claim, in either its original or amended versions. See the discussion in subsection I above for treatment of this situation. Further, any added claims must be numbered beginning with the next highest number following the original patent claims.”
The “discussion in section I above” refers to 1451(I), which recites in part (emphasis added),
“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. If the same claim of the patent, e.g., patent claim 1 is presented for examination in more than one of the reissue applications, in different amended versions, the following rejections should be made in the reissue applications with that patent claim:
A rejection under 35 U.S.C. 251, in that the reissue application is not correcting an error in the original patent, because original claim 1 would be superseded by the reissuance of claim 1 in the other reissue application.
A rejection under 35 U.S.C. 112, in that claim 1 is indefinite because the invention of claim 1 is not particularly pointed out and distinctly claimed. Claim 1 presents one coverage in divisional reissue application X and another in the present reissue application. This is inconsistent.
The reissue applicant should then be advised to follow a procedure similar to the following example:
If there are patent claims 1 – 10 in two divisional reissue applications and an applicant wishes to revise claim 1, which is directed to AB (for example) to ABC in one divisional reissue application, and to ABD in a second divisional reissue application, applicant should do the following: Claim 1 in the first divisional reissue application can be revised to recite ABC. Claim 1 in the second divisional reissue application would be canceled, and new claim 11 would be added to recite ABD. The physical cancellation of claim 1 in the second divisional reissue application will not prejudice applicant’s rights in the amended version of claim 1 because those rights are retained via the first reissue application. Claim 1 continues to exist in the first reissue application, and both the first and second reissue applications taken together make up the totality of the correction of the original patent.
If the same or similar claims are presented in more than one of the multiple reissue applications, the possibility of statutory double patenting (35 U.S.C. 101) or nonstatutory (judicially created doctrine) double patenting should be considered by the examiner during examination, and the appropriate rejections made.”
Application Data Sheet
The Application Data Sheet (ADS) is objected to because the Applicant identifies the instant application in fields that are supposed to be left blank.
Reissue Declaration
The reissue declaration filed with the instant reissue application is defective because it does not identify an error being corrected by the continuation reissue application. A new corrected declaration or a statement explaining compliance with 37 CFR 1.175(f)(2) is required. MPEP 1414(II)(D), recites in part (emphasis added),
“For continuation or divisional reissue applications:
(1) Where a continuation reissue application is filed with a copy of the reissue oath/declaration from the parent reissue application, and the parent reissue application is not to be abandoned, the reissue oath/declaration should be accepted by the Office of Patent Application Processing (OPAP) without further evaluation, because it is an oath/declaration, albeit improper under 35 U.S.C. 251. The examiner should, however, reject the claims of the continuation reissue application under 35 U.S.C. 251 as being based on an oath/declaration that does not identify an error being corrected by the continuation reissue application, and should require a new oath/declaration that identifies a new error or a statement explaining compliance with 37 CFR 1.175(f)(2) if appropriate. If the same error corrected in the parent is also being corrected in the continuation reissue application, but the error is being corrected in a different way, a statement is needed to explain compliance with 37 CFR 1.175(f)(2) for a reissue application filed on or after September 16, 2012.”
251 Rejection – Defective Declaration
Claims 14-16 and 21-35 are rejected as being based upon a defective reissue declaration under 35 U.S.C. 251 as set forth above. See 37 CFR 1.175.
The nature of the defect(s) in the declaration is set forth in the discussion above in this Office action.
251 Rejection – Original Patent
Claims 14-16 are rejected under 35 USC § 251 for not correcting an error in the original patent because original claims 14-16 would be superseded by the reissuance of claims 14-16 in the other reissue application (15/230,434). See MPEP 1451(II).
251 Rejection – Broadening Outside of Statutory Period
Claims 33-35 are rejected under 35 U.S.C. 251 as being broadened in a reissue application filed outside the two year statutory period. Claim 33 is broader than the original patent claims in that Claim 33 strips away the limitation of the network being a MPLS network. A claim is broader in scope than the original claims if it contains within its scope any conceivable product or process which would not have infringed the original patent. A claim is broadened if it is broader in any one respect even though it may be narrower in other respects.
Double Patenting
35 USC § 101 – Statutory Double Patenting
Claims 30-33 are provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 30-33 of co-pending Application No. 15/230,434 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
Non-statutory double patenting
The non-statutory 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 non-statutory 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 non-statutory 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 non-statutory 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.
Claim 14-16 are provisionally rejected on the ground of non-statutory double patenting as being unpatentable over claim 14-16 of co-pending Application No. 15/230,434 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because all of the limitations in claims 14-16 in the instant application are recited in claims 14-16 of the reference application, thus are anticipated by claims 14-16 of the reference application. See MPEP 804(II)(B)(2).
This is a provisional non-statutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 14-16 are rejected under 35 USC 112 second paragraph for being indefinite because the invention of claims 14-16 are not particularly pointed out and distinctly claimed. Claims 14-16 presents one coverage in the parent reissue application and the instant reissue application.
Claims 21-28 are also rejected under 35 USC 112 second paragraph based on their dependence on claim 14.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERON J SORRELL whose telephone number is (571)272-4160. The examiner can normally be reached M-F 9AM-6PM EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Fuelling can be reached at 571-270-1367. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Signed:
/ERON J SORRELL/Primary Examiner, Art Unit 3992
Conferees: /JOSEPH R POKRZYWA/ Primary Examiner, Art Unit 3992
/M.F/Supervisory Patent Examiner, Art Unit 3992