DETAILED ACTION
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 .
Reissue Applications
This application seeks to reissue US Patent No. 11,394,632 (“the ‘632 patent”).
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.
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. 11,394,632 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.
Applicant’s Response to the Non-Final Office Action
The non-final Office action (“NFOA”) described that the applicant had not properly shown that the IETF document by Mohanty et al. was unavailable as prior art. See NFOA at 3-4. In response, an affidavit has been filed showing that the inventors of this application are the sole inventors of the subject matter of the Mohanty document. This satisfies the requirements described in MPEP 717.01(a)(1) to show that this document is unavailable as prior art against this application.
The NFOA included an objection under 37 CFR 1.173 and a rejection under §251 due to a defective reissue declaration. NFOA at 5 and 10. This issue has not been overcome. The applicant has re-filed the originally filed “Appendix A” to the declaration, which only describes errors in the specification. However, the claims of this reissue application are broader than the patent claims. In a reissue application that “seeks to enlarge the scope of the claims of the patent, the reissue oath or declaration must also identify a claim that the application seeks to broaden in the identification of the error that is relied upon to support the reissue application.” MPEP 1414(II). In addition, the declaration must identify “the specific claim(s) and the specific claim language wherein lies the error.” Id. The declaration on file in this application meets neither of these requirements.
The double patenting rejections (see NFOA at 6-7) are overcome by the filing of a terminal disclaimer.
The NFOA rejected all pending claims under §§ 112(a) and 251 because the specification had been amended to include subject matter that was not described in the ‘632 patent. NFOA at 8-10. The recently-filed specification omits this unsupported subject matter, and therefore the claims no longer include the unsupported subject matter in their scope. These rejections are withdrawn.
The §112(b) rejections (NFOA at 9-10) have been overcome by the recent amendment.
Claims 18-44 were also rejected under §251 for violating the recapture rule. NFOA at 10-13. The recent amendment reintroduces the surrendered subject matter, or materially narrowed versions thereof, into the independent claims. This rejection is withdrawn.
The independent claims have been amended to include subject matter that the NFOA indicated as allowable. See NFOA at 17. The §103 rejections of all claims have been overcome by this amendment.
Amendment to the Specification
As described in the NFOA, the 01/25/2023 amendment to the specification included new matter. The 05/14/2026 amendment to the specification includes only language that was found in provisional application 62/843,108, thus includes no new matter.
The 05/14/2026 amendment to the specification supersedes the 01/25/2023 amendment. The 01/25/2023 specification amendment is not entered and the 05/14/2026 specification amendment is entered.
Objection, 37 CFR 1.175 – Defective Declaration
The reissue oath/declaration filed with this application is defective (see 37 CFR 1.175 and MPEP § 1414) because of the following: the claims of this reissue application are broader than the patent claims, and the reissue declaration states that the original patent is invalid “by reason of the patentee claiming more of less than he had the right to claim in the patent.” 37 CFR 1.175(b) states that if “a basis for the reissue is the patentee claiming less than the patentee had the right to claim in the patent” then the declaration “must identify a claim that the application seeks to broaden.” (emphasis added). In addition, the declaration must identify “the specific claim(s) and the specific claim language wherein lies the error.” MPEP 1414(II). The declaration on file in this application is defective because it meets neither of these requirements.
Claim Rejections, 35 USC § 251
Claims 18, 20-27, 29-36, and 38-44 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.
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 ROBERT J HANCE whose telephone number is (571)270-5319. The examiner can normally be reached M-F 11:00am-7:00pm ET.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ROBERT J HANCE/Reexamination Specialist, Art Unit 3992
Conferees: /JOSEPH R POKRZYWA/ Primary Examiner, Art Unit 3992 /M.F/Supervisory Patent Examiner, Art Unit 3992
Prosecution Insights