DETAILED ACTION
This is a first reissue action following a Request for Continued Examination dated 15 July 2025, regarding U.S. Patent No. 11,186,160 (hereafter “’160”). For reissue applications filed on or after 16 September 2012, all references to 35 USC § 251 and 37 CFR §§ 1.172, 1.175 and 3.373 are to the current provisions.
The present application, filed on or after 16 March 2013, is being examined under the first inventor to file provisions of the AIA .
Status of Claims under Reissue
The following is the status of all claims subject to examination:
Claims 1-24 are pending. Of those:
Claims 1, 2, 9, 13, 15 are twice amended
Claims 3, 5, 10, 16 are original
Claims 4, 6-8, 11, 12, 14 are amended
Claims 17-24 are new
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 15 July 2025 has been entered.
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Original Disclosure - Definition
The present application is a reissue of US Patent No. 11,186,160, which issued from App. No. 16/352053 having a filing date of 13 March 2019. Any subject matter added during either the examination of the present reissue application or the earlier concluded examination of the ‘053 application does not constitute part of the “original disclosure”.
Maintenance Fees
Review of the file indicates that maintenance fees are current and the next window, being for the 7.5-year fee, opens 30 November 2028.
Response to Arguments
The following addresses Applicant’s remarks/arguments dated 23 April 2025. Applicant’s courtesies are appreciated.
Rejections – 35 USC 251 (response: beginning page 10) -
Applicant’s first argument is with respect to the rejection made involving improper recapture. Applicant argues an analysis under step 3 is necessary, which would give a conclusion that impermissible recapture is not present. Applicant’s position is noted and persuasive, and for completeness, a step 3 analysis will be addressed in the appropriate section.
Rejections – 35 USC 112(a) (response: page 14) –
Applicant’s arguments are noted but respectfully not persuasive. Applicant states support for “permanently” may be found at Col., 1, lines 15-17 of the issued patent. While not disputing the language “permanently” is present as noted, the examiner takes the position that this language is under the “BACKGROUND” heading as is directed to prior art DE 10 2013 214 317 A1, which begins discussion at line Col. 1, line 13. Lines 15-17 as cited by applicant are a continuation of this background discussion, and are not related to the patented invention. As a result, the examiner maintains this as new matter.
Claim rejection – 35 USC 102 (response: page 14) –
Applicant’s arguments with respect to the Phillips reference (U.S. Publication 2011/0086737) are persuasive addressing claims 13-16 and 21-24, and the rejection is withdrawn. No further art is cited against the respective claims at this time.
35 USC §251
The following is a quotation of 35 USC §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.
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(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.
Claim Rejection – 35 USC 251 Recapture:
Claims 15, 16, 23 and 24 are rejected under 35 U.S.C. 251 as being an improper recapture of broadened claimed subject matter surrendered in the application for the patent upon which the present reissue is based. See Greenliant Systems, Inc. et al v. Xicor LLC, 692 F.3d 1261, 103 USPQ2d 1951 (Fed. Cir. 2012); In re Shahram Mostafazadeh and Joseph O. Smith, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011); North American Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 75 USPQ2d 1545 (Fed. Cir. 2005); Pannu v. Storz Instruments Inc., 258 F.3d 1366, 59 USPQ2d 1597 (Fed. Cir. 2001); Hester Industries, Inc. v. Stein, Inc., 142 F.3d 1472, 46 USPQ2d 1641 (Fed. Cir. 1998); In re Clement, 131 F.3d 1464, 45 USPQ2d 1161 (Fed. Cir. 1997); Ball Corp. v. United States, 729 F.2d 1429, 1436, 221 USPQ 289, 295 (Fed. Cir. 1984). A broadening aspect is present in the reissue which was not present in the application for patent. The record of the application for the patent shows that the broadening aspect (in the reissue) relates to claimed subject matter that applicant previously surrendered during the prosecution of the application. Accordingly, the narrow scope of the claims in the patent was not an error within the meaning of 35 U.S.C. 251, and the broader scope of claim subject matter surrendered in the application for the patent cannot be recaptured by the filing of the present reissue application.
MPEP 1412.02 establishes a three-step test for recapture. The three-step process is as follows:
(1) first, we determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims;
(2) next, we determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and
(3) finally, we determine whether the reissue claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule.
Step 1:
Claims 15, 16, 23 and 24 are under reissue, as amended 06 January 2025, are broader than patented claims 15 and 16. Claim 15 does not require “without a shift element between the first electric machine (13) and the ring gear (5),…”. Claims 16, 23 and 24 depend from claim 15.
Therefore step 1 of the three-step test is met for claims 15, 16, 23 and 24.
Step 2:
The step of determining whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution includes two sub-steps. The first sub-step is to determine whether the applicant surrendered any subject matter in the prosecution of the original application. MPEP 1412.02 defines surrendered subject matter as a claim limitation that was originally relied upon by applicant in the original prosecution to make the claims allowable over the art.
MPEP 1412.02(I)(B)(1)(A) states “[w]ith respect to whether applicant surrendered any subject matter, it is to be noted that a patent owner (reissue applicant) is bound by the argument that applicant relied upon to overcome an art rejection in the original application for the patent to be reissued, regardless of whether the Office adopted the argument in allowing the claims. Greenliant Systems, Inc. v. Xicor LLC, 692 F.3d 1261, 1271, 103 USPQ2d 1951, 1958 (Fed. Cir. 2012). As pointed out by the court, ‘[i]t does not matter whether the examiner or the Board adopted a certain argument for allowance; the sole question is whether the argument was made.’ Id.”
During the prosecution of the ‘160 patent, the examiner rejected claim 15 (as renumbered, but originally numbered as claim 27 during prosecution of application 16/352053) in a final Office action dated 01 January 2021 and subsequent Office action 09 April 2021. The Applicant responded with arguments and amendments to add the language “without a shift element between the first electric machine (13) and the ring gear (5),” (see claim 27 as amended 09 July 2021). Arguments were further provided in support of this amendment (response: pages 8-10). The claim was allowed in the Notice of Allowability dated 27 July 2021.
Therefore, the Patent Owner amended claim 27 (renumbered to claim 15) to add the language as noted and argued that the prior art did not include the amended language. Therefore, the newly presented claims must include the limitations now being deleted. As now presented, claim 15 fails to disclose any of the limitations added to the claims to make it allowable.
Therefore, the language at issue of claim 15 are limitations which are considered surrendered subject matter.
The second sub-step is to determine whether any of the broadening of the reissue claims is in the area of the surrendered subject matter. The examiner must analyze all of the broadening aspects of the reissue claims to determine if any of the omitted/broadened limitation(s) are directed to limitations relied upon by applicant in the original application to make the claims allowable over the art.
Claim 15 is being broadened to omit the surrendered subject matter.
Therefore step 2 of the three-part test is met.
Step 3:
MPEP 1412.02(I)(B)(1)(B) states “[w]ith respect to the “second step” in the recapture analysis, it is to be noted that if the reissue claim(s), are broadened with respect to the previously surrendered subject matter, then recapture will be present regardless of other unrelated narrowing limitations. In the decision of In re Mostafazadeh, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011), the Federal Circuit stated:
[T]he recapture rule is violated when a limitation added during prosecution is eliminated entirely, even if other narrowing limitations are added to the claim. If the added limitation is modified but not eliminated, the claims must be materially narrowed relative to the surrendered subject matter such that the surrendered subject matter is not entirely or substantially recaptured. Id. at 1361.”
The third step in the recapture analysis is, to determine whether the reissue claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule. The third step include two different types of analysis that must be performed.
First, the reissue claim must be compared to any claims canceled or amended during prosecution of the original application. It is impermissible recapture for a reissue claim to be as broad as, or broader in scope than any claim that was canceled or amended in the original prosecution to define over the art. Claim scope that was canceled or amended is deemed surrendered and therefore barred from reissue. Clement, 131 F.3d at 1470, 45 USPQ2d at 1165.
Claim 15 deletes the details of the claim by deleting, “without a shift element between the first electric machine (13) and the ring gear (5),…”. (lines 4 and 5)
Second, it must be determined whether the reissue claim omits or broadens any limitation that was added or argued during the original prosecution to overcome an art rejection. Such an omission in a reissue claim, even if it is accompanied by other limitations making the reissue claim narrower than the patent claim in other aspects, is impermissible recapture. Pannu, 258 F.3d at 1371-72, 59 USPQ2d at 1600. In any broadening reissue application, the examiner will determine, on a claim-by-claim basis, whether the broadening in the reissue application claim(s) relates to subject matter that was surrendered during the examination of the patent for which reissue is requested) by an amendment narrowing claim scope in order to overcome a rejection and/or argument relying on a claim limitation in order to overcome a rejection.
During the prosecution of the ‘160 patent, the surrendered language was added to claim 15 to render the claim allowable. Applicant now claim 15, lines 4 and 5 as follows: “a first electric machine (13) permanently fixedly coupled to the ring gear (5)”. While the added language “permanently” does address the relationship with respect to the same features, “the first electric machine (13)” and the “ring gear (5)”, it does not materially narrow the claim with respect to the claim as issued. Claiming the features to now be “permanently fixedly coupled” is still much broader than the patented claim. The examiner takes the position that the addition of “permanently” is well known. This is accented by the language “fixedly”. If a feature is “well known in the prior art”, then it results in impermissible recapture (see MPEP 1412.02(III)(B)(4). As a result, the examiner takes the position that “permanently” does not materially narrow the language surrendered and results in impermissible recapture.
As a result, Claim 15, and by dependency Claims 16, 23 and 24 are rejected under 35 U.S.C. 251 as being an improper recapture of broadened claimed subject matter surrendered in the application for the patent upon which the present reissue is based.
Claim Rejection – 35 USC 251 New Matter:
Claim 15 and by dependency Claims 16, 23 and 24 are rejected under 35 U.S.C. 251 as being based upon new matter added to the patent for which reissue is sought. The added material which is not supported by the prior patent is as follows: The language “permanently fixedly coupled” (as amended) did not appear in the disclosure as patented. Upon search of the disclosure, neither “permanently”, nor equivalent language, was found. As a result, the examiner considers this language as new matter.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 15 and by dependency Claims 16, 23 and 24 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 15: the language “permanently fixedly coupled” (as amended) did not appear in the disclosure as patented. Upon search of the disclosure, neither “permanently”, nor equivalent language, was found. As a result, the examiner considers this language as new matter.
Those claims listed under this heading but not directly addressed are rejected as being dependent from a rejected claim, either directly or indirectly.
Allowable Subject Matter
Claims 1-14 and 17-22 are allowed.
The examiner reserves comment on the allowbaility of Claims 15, 16, 23 and 24 pending resolution of the matters raised above. The examiner has no art to cite against the claims.
Continuing Obligations
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 Patent No. 11,186,160 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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM V GILBERT whose telephone number is (571)272-9055. The examiner can normally be reached M-F 0800-0430 Eastern.
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, Eileen Lillis can be reached at 571.272.6928. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WILLIAM V GILBERT/
Reexamination Specialist, Art Unit 3993
CONFEREES:
/WILLIAM C DOERRLER/Reexamination Specialist, Art Unit 3993
/EILEEN D LILLIS/SPRS, Art Unit 3993