REISSUE OFFICE ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Reissue Applications
For reissue applications filed before September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the law and rules in effect on September 15, 2012. Where specifically designated, these are “pre-AIA ” provisions.
For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions.
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. 10,914,645 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.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 06-13-2025 was filed after the mailing date of the Non-Final Rejection on 02-05-2025. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner. However, a single foreign reference was not received and was lined through indicating such.
Reissue Declaration of 02-09-2023
Claims 1-38 are rejected as being based upon a defective reissue declaration under 35 U.S.C. 251 as set forth below. See 37 CFR 1.175.
The reissue oath/declaration filed with this application is defective (see 37 CFR 1.175 and MPEP § 1414) because of the following: the error which is relied upon to support the reissue application is not an error upon which a reissue can be based. See 37 CFR 1.175 and MPEP § 1414.
The error statement indicates that the error supporting the filing of the reissue application is Applicant claimed less than he had a right to claim by unduly limiting the scope of the claims by virtue of two different claim phrases regarding the flexible insert and the electronic module. However as seen below the manner in which the reissue claims have been broadened result in the improper recapture of surrendered subject matter. Therefore this is not an error correctable by reissue. Correction is required.
Recapture
Claims 23-38 are rejected under 35 U.S.C. 251 as being an impermissible 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). The reissue application contains claim(s) that are broader than the issued patent claims. 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.
Recapture Analysis
THREE STEP TEST FOR RECAPTURE:
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In Clement, 131 F.3d at 1468-70, 45 USPQ2d at 1164-65, the Court of Appeals for the Federal Circuit set forth a three step test for recapture analysis. In North American Container, 415 F.3d at 1349, 75 USPQ2d at 1556, the court restated this test as follows:
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We apply the recapture rule as a three-step process:
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(1) first, we determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims;
[NOTE: if the claims are not broader in scope than the original patent claims, there is no recapture; if the claims are broader in scope, then proceed to step (2).]
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(2) next, we determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and
[NOTE: if the broader aspects of the reissue claims do not relate to surrendered subject matter, there is no recapture; if the broader aspects of the reissue claims do relate to surrendered subject matter, then proceed to step (3).]
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(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.
[NOTE: if the reissue claims were materially narrowed in aspects related to the surrendered subject matter, there is no recapture; if the claims were not materially narrowed in related aspects or were narrowed in unrelated aspects, there is recapture.]
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In North American Container, the court cited Pannu, 258 F.3d at 1371, 59 USPQ2d at 1600; Hester, 142 F.3d at 1482-83, 46 USPQ2d at 1649-50; and Clement, 131 F.3d at 1468, 45 USPQ2d at 1164-65 as cases that lead to, and explain the language in, the North American Container recapture test.
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A. The First Step - Is There Broadening?
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In every reissue application, the examiner must first review each claim for the presence of broadening, as compared with the scope of the claims of the patent to be reissued. A reissue claim is broadened where some limitation of the patent claims is no longer required in the reissue claim; see MPEP § 1412.03 for guidance as to the nature of a "broadening claim." If the reissue claim is not broadened in any respect as compared to the patent claims, the analysis ends; there is no recapture.
New reissue claim 23 fails to include the flexible insert member and its structural features found in original patent claims 1, 9 and 16. It also has been broadened in that it only requires the module to be at least partially enclosed by the sole member as opposed to completely contained within the sole member as is found in original patent claims 1, 9 and 16.
New reissue claim 27 fails to include the sole being molded; the cut-outs include one on a medial edge, a 2nd on a lateral edge and a 3rd on a front edge of a metatarsal area of the insert; and the module is overmolded and completely contained within the sole member as recited in original patent claims 1, 9 and 16.
New claim 33 lacks the flexible insert member and its structural features found in original patent claims 1, 9 and 16. It also has been broadened in that it fails to require the module to be overmolded within the sole and completely contained within the sole as is found in original patent claims 1, 9 and 16. It also lacks the sole being molded, the outer periphery of the insert member having cut-outs extending inwardly from its outer periphery; or the cut-outs include one on a medial edge, a 2nd on a lateral edge and a 3rd on a front edge of a metatarsal area of the insert. It also lacks an insert member having two lateral concave portions, two medial concave portions and a convex portion on the medial and lateral portions between the concave portions recited in original patent claim 16.
Therefore, the answer to the first question is YES, there is broadening.
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B. The Second Step - Does Any Broadening Aspect of the Reissued Claim Relate to Surrendered Subject Matter?
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Where a claim in a reissue application is broadened in some respect as compared to the patent claims, the examiner must next determine whether the broadening aspect(s) of that reissue claim relate(s) to subject matter that applicant previously surrendered during the prosecution of the original application (which became the patent to be reissued). The "original application" includes the patent family’s entire prosecution history. MBO Laboratories, Inc. v. Becton, Dickinson & Co., 602 F.3d 1306, 94 USPQ2d 1598 (Fed. Cir. 2010). Each limitation of the patent claims, which is omitted or broadened in the reissue claim, must be reviewed for this determination. This involves two sub-steps.
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1. The Two Sub-Steps:
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(A) One must first determine whether applicant surrendered any subject matter in the prosecution of the original application that became the patent to be reissued.
If an original patent claim limitation now being omitted or broadened in the present reissue application was originally relied upon by applicant in the original application to make the claims allowable over the art, the omitted limitation relates to subject matter previously surrendered by applicant. The reliance by applicant to define the original patent claims over the art can be by presentation of new/amended claims to define over the art, or an argument/statement by applicant that a limitation of the claim(s) defines over the art. To determine whether such reliance occurred, the examiner must review the prosecution history of the original application (of the patent to be reissued and any related application(s)) for surrender of claimed subject matter which may result in recapture. The prosecution history includes the rejections and applicant’s arguments made therein.
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With 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.
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If applicant did not surrender any subject matter in the prosecution of the original application, the analysis ends and there is no recapture.
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(B) If applicant did surrender subject matter in the original application prosecution, the examiner must then 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.
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With 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:
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[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.
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The situation in Mostafazadeh involved substantial recapture of the surrendered subject matter, which was determined under the third step of the recapture analysis. See subsection II.C. below for more explanation. The focus in the analysis of the second step must be on the subject matter that was surrendered during the original application prosecution in the context of the then-existing claims (i.e., the original claims).
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When an examiner determines that the broadening aspect(s) of that reissue claim relate(s) to subject matter that applicant previously surrendered during the prosecution of the original application (which became the patent to be reissued) in step 2 of the recapture analysis, the overlooked aspects inquiry may be applicable. See MPEP § 1412.01, subsection II.
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2. Examples of the Second Step Analysis:
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(A) Example (1) - Argument without amendment:
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In Hester, supra, the Federal Circuit held that the surrender that forms the basis for impermissible recapture "can occur through arguments alone." 142 F.3d at 1482, 46 USPQ2d at 1649. For example, limitation A of the patent claims is omitted in the reissue claims and no other amendments are made. This omission provides a broadening aspect in the reissue claims, as compared to the claims of the patent. If the omitted limitation A was argued in the original application to make the application claims allowable over the art in the application, then the omitted limitation relates to subject matter previously surrendered in the original application, and recapture will exist. Accordingly, where claims are broadened in a reissue application, the examiner should review the prosecution history of the original patent file for recapture, even where the claims were never amended during the prosecution of the application which resulted in the patent. Note: The argument that the claim limitation defined over the rejection must have been specific as to the limitation relied upon, rather than a general statement regarding the claims as a whole. A general "boiler plate" sentence in the original application will not, by itself, be sufficient to establish surrender and recapture.
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An example of a general "boiler plate" sentence of argument is:
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In closing, it is argued that the limitations of claims 1-7 distinguish the claims from the teachings of the prior art, and claims 1-7 are thus patentable.
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An argument that merely states that all the limitations of the claims define over the prior art will also not, by itself, be sufficient to establish surrender and recapture. An example is:
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Claims 1-5 set forth a power-train apparatus which comprises the combination of A+B+C+D+E. The prior art of record does not disclose or otherwise teach, providing a material-transfer apparatus as defined by the limitations of claim 1, including an A member and a B member, both connected to a C member, with all three being aligned with the D and E members.
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This statement is simply a restatement of the entirety of claim 1 as allowed. No measure of surrender could be gleaned from such "boiler-plate" applicant arguments.
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In both of the above examples, the argument does not provide an indication of what specific limitations, e.g., specific element or step of the claims, cooperative effect, or other aspect of the claims, are being relied upon for patentability. Thus, applicant has not surrendered anything by the argument.
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(B) Example (2) - Amendment of the claims without argument:
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The limitation omitted in the reissue claim(s) was added in the original application claims for the purpose of making the application claims allowable over a rejection or objection made in the application. Even though applicant made no argument on the record that the limitation was added to obviate the rejection, the nature of the addition to the claim can show that the limitation was added in direct reply to the rejection. This too will establish the omitted limitation as relating to subject matter previously surrendered. To illustrate this, note the following example:
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The original application claims recite limitations A+B+C, and the Office action rejection combines two references to show A+B+C. In the amendment replying to the Office action, applicant adds limitation D to A+B+C in the claims, but makes no argument as to that addition. The examiner then allows the claims. Even though there is no argument as to the addition of limitation D, it must be presumed that the D limitation was added to obviate the rejection. The subsequent deletion of (omission of) limitation D in the reissue claims would be presumed to be a broadening in an aspect of the reissue claims related to surrendered subject matter. Accordingly, the reissue claims would be barred by the recapture doctrine (absent the addition of a materially narrowing limitation related to the surrendered subject matter). The above result would be the same whether the addition of limitation D in the original application was by way of applicant’s amendment or by way of an examiner’s amendment with authorization by applicant.
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(C) Example (3) - Who can make the surrendering argument?
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Assume that the limitation A omitted in the reissue claims was present in the claims of the original application. The examiner’s reasons for allowance in the original application stated that it was that limitation A which distinguished over a potential combination of references X and Y. Applicant did not present on the record a counter statement or comment as to the examiner’s reasons for allowance, and permitted the claims to issue.
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Ex parte Yamaguchi, 61 USPQ2d 1043 (Bd. Pat. App. & Inter. 2001)(precedential) held that a surrender of claimed subject matter cannot be based solely upon an applicant’s failure to respond to, or failure to challenge, an examiner’s statement made during the prosecution of an application. Applicant is bound only by applicant’s revision of the application claims (including examiner's amendments authorized by applicant) or a positive argument/statement by applicant. An applicant’s failure to present on the record a counter statement or comment as to an examiner’s reasons for allowance does not give rise to any implication that applicant agreed with or acquiesced in the examiner’s reasoning for allowance. Thus, the failure to present a counter statement or comment as to the examiner’s statement of reasons for allowance does not give rise to any finding of surrender. The examiner’s statement of reasons for allowance in the original application cannot, by itself, provide the basis for establishing surrender and recapture.
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It is only in the situation where applicant does file comments on the statement of reasons for allowance, that surrender may have occurred. Note the following scenarios in which an applicant files comments:
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Scenario 1- Limitation C is Surrendered Subject Matter: The examiner’s statement of reasons for allowance in the original application stated that it was limitation C (of the combination of ABC) which distinguished over a potential combining of references X and Y, in that limitation C provided increased speed to the process. Applicant filed comments on the examiner’s statement of reasons for allowance essentially supporting the examiner’s reasons. Limitation C is thus established as relating to subject matter previously surrendered.
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Scenario 2- Limitation C is Not Surrendered Subject Matter: On the other hand, if applicant’s comments on the examiner’s statement of reasons for allowance contain a counter statement that it is limitation B (of the combination of ABC), rather than C, which distinguishes the claims over the art, then limitation B would constitute a surrender generating limitation, and limitation C is not surrender generating limitation.
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Scenario 3- There is No Surrender: If applicant replies to the examiner’s statement of reasons for allowance with a general statement that the claims are allowable because the prior art of record does not anticipate or render obvious the claims as a whole, then there will be no surrender.
On 11-26-2019 Applicant filed a response to an office action by amending claim 1 to specify the insert member includes cutouts “having smoothly curved concave contours to claims 1 and 10 and added “having smoothly curved concave curvature and the insert member having 1st and 2nd lateral concave portions to claim 18. Applicant also argued that the reference used in the art rejection failed to teach that the plurality of cut-outs have “smoothly curved concave contours”, failed to teach the insert member has an outer periphery having a plurality of concave portions each having a smoothly curved concave curvature including a 1st concave portion on a medial edge, a 2nd concave portion on a lateral edge and a 3rd concave portion on a front edge of a metatarsal area of the insert member, and failed to teach the insert member has an outer periphery having a plurality of concave portions each having a smoothly curved concave curvature including 1st and 2nd medial concave portions and 1st and 2nd lateral concave portions. Therefore these limitations are considered to be Surrender-Generating Limitations (SGLs).
On 09-21-2020 Applicant amended the claims by adding the outer periphery of the insert member “is located inward from the shoe sole-shaped periphery of the sole member” and the module is overmolded within the sole member and completely contained within the sole member”. Applicant also argued that the applied references failed to teach the insert member has an outer periphery located inward from the shoe sole-shaped outer periphery of the sole member and the module overmolded within the sole member and completely contained within the sole member. Therefore these limitations are considered to be Surrender-Generating Limitations (SGLs).
Comparing the limitations left out of new reissue claims 23-38 to the SGL’s established above it is clear that the manner in which the new reissue claims have been broadened are “directly related” to the surrendered subject matter. Therefore the answer to Question 2 is YES, the Broadening Aspect of the new Reissue Claims Relate directly to the Surrendered Subject Matter.
C. The Third Step - Are the Reissue Claims Materially Narrowed in Other Respects, and Hence Avoid the Recapture Rule?
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As pointed out above, this third step of the recapture determination, as set forth in North American Container, considers the significance of the claim limitations that were added and deleted, during prosecution of the patent (to be reissued) to determine whether the reissue claims should be barred under the recapture doctrine.
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In the decision of In re Mostafazadeh, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011), the Federal Circuit stated that to avoid the recapture rule "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, 98 USPQ2d at 1644. Under this third step, it must be determined if there is entire or substantial recapture of the surrendered subject matter because there is no or insufficient material narrowing to avoid the recapture rule.
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The following discussion addresses analyzing the reissue claims that have eliminated or modified a surrender generating limitation, as determined under step 2 analysis. In any broadening reissue application, the examiner will determine, under steps 1 and 2 of the recapture analysis on a claim-by-claim basis, whether the broadening relates to subject matter that was surrendered during the examination of the patent for which reissue is requested. Under step 3, it must be determined if such reissue claims are materially narrowed so as to escape the effects of the recapture doctrine. Note, examiners should consider any relevant preliminary applicant arguments of record as part of the recapture determination. See subsection VII., below, "REBUTTAL BY THE REISSUE APPLICANT," which points out how the recapture finding of the Office can be rebutted by applicant, in some limited instances, by showing that material narrowing is present in the claims.
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The modification of a surrender generating limitation is broken down into two possibilities that will be addressed below.
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1) If a surrender generating limitation (SGL) has been entirely eliminated from a claim present in the reissue application, then a recapture rejection under 35 U.S.C. 251 may be proper. For example, if a claim limitation present in the original patent that was added to overcome a rejection or that was argued by applicant to distinguish over the prior art is entirely eliminated from a claim in the reissue application and not replaced by a new SGL-related limitation, then a recapture rejection under 35 U.S.C. 251 is proper and must be made for that claim.
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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 unrelated aspects, is impermissible recapture. Pannu, 258 F.3d at 1371-72, 59 USPQ2d at 1600. But note that even if the SGL limitation in the patent claims was entirely eliminated, the reissue applicant may have added a new limitation that relates to surrendered subject matter. See the last paragraph of this subsection below.
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2) If the SGL has not been entirely eliminated from a claim in the reissue application (i.e., the amendment narrowing the claim or the argued limitation has not been entirely eliminated from the claim in the reissue application), but rather it has been made less restrictive in the reissue application claim (such that the claim is broadened), the analysis (based on In re Mostafazadeh, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011) and In re Youman, 679 F.3d 1335, 102 USPQ2d 1862 (Fed. Cir. 2012)) is as follows:
It must be determined what portion of the amendment or argued limitation has been retained, and whether the retained portion materially narrows the original claims to avoid recapture.
The material added to the new reissue claims is:
In claim 23 the sole has a foam sole member configured to form part of a sole structure of a footwear article such as an insole or sockliner removable from the article of footwear, sensors permanently sealed within the sole; and the module is connected to the sole member by overmolding the module within the sole member such that the module is partially enclosed by the sole member.
In claim 27 two layers of foam make up the sole member, the insert is laminated between the layers of the sole, the insert member is permanently sealed within the sole, and the module is partially received within the sole; and
In claim 33, the sole member includes two foam layers and the module is received within a cavity formed within the sole by overmolding and is accessible within the cavity from outside the sole.
Claims 23 and 33 clearly lack any flexible insert member including all of its claimed structure present in each original patent independent claims 1, 9 and 16, and none of the limitations added to claims 23 and 33 are directly related to the flexible insert member; therefore for at least the flexible insert member SGL claims 23 and 33 have not been materially narrowed.
Claim 27 completely removes the limitation that the module is over-molded within the sole member and completely contained within the sole member; Applicant only replaced it with the module is partially received within the sole member. Owings had already taught partially enclosing the module in the sole as member 133 which covers the top of the module can be simply a sockliner, and in that embodiment element 133 is not part of the “sole” making the module 22 “partially” enclosed by the sole member. Element 133 can also be an insole member in which case the module is “completely” contained within the sole member. Owings also discloses the insert is laminated between layers of the sole and part of the module , i.e. the contacts 172, are over-molded and the insert is either partially or completely within the sole. Therefore, claim 27 has not been materially narrowed with respect to the over-molded SGL.
Accordingly, Applicant is attempting to recapture surrendered subject matter in new Reissue claims 23-38. The examiner will address the overlooked aspects argument in the response to argument section of the office action.
Amendment of 08-05-2025
The amendment filed 08-05-2025 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: In the amendment to the specification col. 29 line 16 the phrase “e.g. by molding the sole member 601 around the insert 601 such that the insert 601 is integrally contained therein” has no support in the original disclosure.
In claims 23 and 27, the limitation that a plurality of sensors permanently sealed within the sole member and the flexible insert member permanently sealed within the sole member is not supported by the original disclosure.
In claim 33, the limitation “wherein the electronic module is received within a cavity formed within the sole member by over-molding and is accessible within the cavity from outside the sole member” is not supported by the original disclosure.
Applicant is required to cancel the new matter in the reply to this Office Action.
Claim Rejections - 35 USC § 251 - Original Patent
The following is a quotation of the first paragraph 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.
MPEP 1412.01 states that the reissue claims must be for the same invention as that disclosed as being the invention of the original patent. MPEP 1412.01 further provides guidelines for determining whether the reissue claims are "for the invention disclosed in the original patent" as:
(A) the claims presented in the reissue application are described in the original patent specification and enabled by the original patent specification such that 35 U.S.C. 112, first paragraph is satisfied; and
(B) nothing in the original patent specification indicates an intent not to claim the subject matter of the claims presented in the reissue application, and
(C) the newly claimed invention is clearly and unequivocally disclosed in the specification as a separate invention with the claimed combination of features.
The presence of some disclosure (description and enablement) in the original patent should evidence that applicant intended to claim or that applicant considered the material now claimed to be his or her invention.
Further, the Federal Circuit addressed the “original patent” requirement of 35 USC 251 in Antares Pharma, Inc. v. Medac Pharma Inc. and Medac GMBH, 771 F.3d 1354, 112 USPQ2d 1865 (Fed. Cir. 2014). In Antares the reissue claims covered embodiments of injection devices (not restricted to jet-injection devices) which the Applicant admitted was a different invention from what was originally claimed. Id. at 1356. The Federal Circuit adopted the Supreme Court's explanation of the “same invention” requirement as “if the original patent specification fully describes the claimed inventions, but not if the broader claims are merely suggested or indicated in the original specification”. Id. at 1359. The Federal Circuit further stated that although wording in 35 USC 251 was changed from “same invention” to “original patent” no change in substance was intended. Id. at 1360.
Based on Antares a review of the specification is necessary to determine whether the original specification adequately discloses the invention of the reissue claims. Like in Antares, in the instant reissue application the disclosure does not support:
In claims 23 and 27, the limitation that a plurality of sensors is permanently sealed within the sole member and the flexible insert member is permanently sealed within the sole member is not supported by the original disclosure.
In claim 33, the limitation “wherein the electronic module is received within a cavity formed within the sole member by over-molding and is accessible within the cavity from outside the sole member” is not supported by the original disclosure.
The original disclosure does not clearly and unequivocally disclose the newly claimed inventions as separate inventions. Therefore, claims 23-38 do not satisfy the “original patent” requirement.
Claims 23-38 are therefore rejected under 35 USC 251 for not claiming subject matter directed to the invention disclosed in the original patent.
Reissue New Matter
Claims 23-38 are rejected under 35 U.S.C. 251 as being based upon new matter added to the patent for which reissue is sought.
The following amendments to the specification and claims contain new matter: The added material which is not supported by the original disclosure is as follows: In the amendment to the specification col. 29 line 16 the phrase “e.g. by molding the sole member 601 around the insert 601 such that the insert 601 is integrally contained therein” has no support in the original disclosure.
In claims 23 and 27, the limitation that a plurality of sensors permanently sealed within the sole member and the flexible insert member permanently sealed within the sole member is not supported by the original disclosure.
In claim 33, the limitation “wherein the electronic module is received within a cavity formed within the sole member by over-molding and is accessible within then cavity from outside the sole member” is not supported by the original disclosure.
Specification
The specification is objected to as it includes new matter. In the specification the paragraph starting at col. 29 line 16 the phrase “e.g. by molding the sole member 601 around the insert 601 such that the insert 601 is integrally contained therein” is objected to as it includes new matter having no support in the original disclosure.
The specification is also objected to because the cross-reference to related applications is not syntactically correct. In line 2 of the amendment on page 2 of the response of 08-05-2025 the beginning phrase after “February 9, 2021,” should be followed by “which”.
Drawings
The proposed drawing correction filed on 08-05-2025 fails to meet the guidelines for the proper manner to amend the drawings in a reissue application. See MPEP 1453 for said reissue guidelines. The Replacement sheet with Fig. 20 fails to label the Fig as being “Amended” as is required. The word Amended should be placed beside or under “FIG. 20”. Correction is required.
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 23-38 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.
The specification, including the abstract and the claims, fails to provide an adequate written description of the invention as is now claimed; more specifically, the written description of the invention fails to specifically provide support for: In the amendment to the specification col. 29 line 16 the phrase “e.g. by molding the sole member 601 around the insert 601 such that the insert 601 is integrally contained therein” has no support in the original disclosure.
In claim 2, the sole member being molded around the flexible insert member is not supported by the original disclosure.
In claims 23 and 27, the limitation that a plurality of sensors permanently sealed within the sole member and the flexible insert member permanently sealed within the sole member is not supported by the original disclosure.
In claim 33, the limitation “wherein the electronic module is received within a cavity formed within the sole member by over-molding and is accessible within then cavity from outside the sole member” is not supported by the original disclosure.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of pre-AIA 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for a patent.
(e) the invention was described in (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language.
(e) the invention was described in a patent granted on an application for patent by another filed in the United States before the invention thereof by the applicant for patent, or on an international application by another who has fulfilled the requirements of paragraphs (1), (2), and (4) of section 371(c) of this title before the invention thereof by the applicant for patent.
The changes made to 35 U.S.C. 102(e) by the American Inventors Protection Act of 1999 (AIPA) and the Intellectual Property and High Technology Technical Amendments Act of 2002 do not apply when the reference is a U.S. patent resulting directly or indirectly from an international application filed before November 29, 2000. Therefore, the prior art date of the reference is determined under 35 U.S.C. 102(e) prior to the amendment by the AIPA (pre-AIPA 35 U.S.C. 102(e)).
Claims 33-38 are rejected under pre-AIA 35 U.S.C. 102(a) or (e) as being anticipated by Owings, et al.-8,739,639.
WRT (With Respect To) claim 33, Owings discloses a sensor system 12 including a foam sole member configured to form part of a sole of an article of footwear; the sole member has three layers of foam 131, 133 and 138; the sole has a shoe sole-shaped periphery-see Fig. 24-26 with the claimed shaped edges; a plurality of sensors 16 sealed in the sole member and configured to sense force exerted on the sole member; the sensors being laminated between layers 133 and both 131 and 138; the sensors are spaced apart on the sole member in the 3 foot regions; and an electronic module 22 having a memory and processor-col. 41 which receives data from the sensors, and the module is received within a cavity 135 in the sole member (“formed by over-molding” is a product-by-process limitation and the manner in which the cavity is formed fails to provide any specific structure not found in Owings); the module is accessible within the cavity from outside the sole member-col. 47. Port 14 allows for external devices 110 to communicate with module 22 from a location exterior of the sole-col. 43.
WRT claim 34, Owings teaches a port 14 in the arch region and connected to the module 22 and leads 18 on the insert member connecting the sensors to the port-col. 1 ll 35-43, col. 8 ll 24-63.
WRT claim 35, Owings module 22 is removably connected to the port- see fig. 4, 38, 47, 74, col. 38 line 6 for removing the module from the port.
WRT claim 36, Owings has a flexible insert member 37 permanently sealed within the sole by adhesive and includes the claimed outer periphery and concave portions with smoothly curved concave curvature-see FIG. 4. Owings teaches the insert is integrally sealed within the sole-Fig. 3 and col. 11.
WRT claim 37, Owings teaches the insert member is made out of Mylar®-col. 12; and the sole is formed of thermoplastic polyurethane-col. 7-8.
WRT claim 38, the examiner contends that a POSITA at the time of the invention would have realized that the sensors must be bonded to an outer surface of the insert in order to keep them in place which is necessary for the proper sensing and interpretation of the force data obtained via the use of the force sensors.
Response to Arguments
Applicant's arguments filed 08-05-2025 have been fully considered but they are not persuasive.
The amendment to the specification at col. 29 line 16 introduces new matter in that no previous disclosure concerning molding the sole member 601 around insert 601 such that the insert is integrally contained therein is found in the ‘645 patent or any references incorporated by reference therein.
The proposed drawing correction fails to follow the reissue guidelines for amending drawings in a reissue application. See MPEP 1453-any amendment to the drawing figures must place the word “Amended” after or under the FIG. number.
As for claim 33, the examiner contends that the sensors of Owings are indeed permanently sealed within the sole member by adhesive between the layers 133 and both 131 and 138. As for the module being received in a cavity formed by overmolding, the examiner contends that the module is indeed received in cavity 135. As for the over-molded limitation this is product-by-process and absent any difference in the cavity manufactured using the overmolding technique the cavity of Owings is deemed to meet this limitation. See MPEP 2113 as the patentability of such a limitation is based on the product itself, not the manner in which it was made.
The examiner has withdrawn all 103 rejections.
As the examiner has maintained the recapture rejections the error statement in the reissue declaration based on broadening of the original patent claims is not an error that applicant can rely on for supporting the filing of the present reissue application. A new reissue declaration is required.
As for the Recapture rejection the examiner has explained the rejection above. Furthermore in response to Applicant’s argument that the new reissue claims 23-38 are drawn to an overlooked aspect, the examiner disagrees. An overlooked aspect is:
III. OVERLOOKED ASPECTS
Claims to separate inventions/embodiments/species that were disclosed but never covered by the claims in the original application prosecution are claims to overlooked aspects. In other words, the reissue claims are drawn to a separate invention or separate species or embodiment that was not covered by a claim (e.g., a generic claim) at any point during the prosecution of the original application. For example, if all the claims were drawn to species A in the original application, reissue claims drawn to species B are considered claims to overlooked aspects, assuming that there was not a generic claim that covered both species A and B in the original application. Stated another way, an added limitation that "was within the scope of at least one original claim" cannot be an overlooked aspect. In re General Electric Co., 789 F. App’x 857, 861, 2019 USPQ2d 399054 (Fed. Cir. 2019) (unpublished) ("Because the original claims encompass the jet assembly subcombination, that subcombination is not an overlooked aspect of the invention.")
Applicant contends that reissue claim 23 is claiming overlooked aspects because it eliminates the flexible insert member entirely directing the subject matter of claim 23 towards aspects that were never covered by the claims in the original application prosecution. The examiner disagrees. As seen above, even if for the sake of argument the new reissue claim 23 is directed to a separate invention, species or embodiment, (which the examiner does not agree with) it can’t have been covered by a claim (e.g. generic claim) at any point during the prosecution of the original application in order to be an overlooked aspect. The invention of new reissue claim 23 was clearly covered by Claim 1 as originally