DETAILED ACTION
This is a final Office Action addressing U.S. Application No. 18/215,673.
On August 7, 2025 a non-final Office Action (NFOA) was mailed in which among other findings, claims 22-33 were rejected under 35 USC § 251 for improper recapture; and claims 22-24, 26-28, and 30-33 were rejected on the ground of non-statutory double patenting as being unpatentable over claims 15, 22, 23, 26-32 of U.S. Patent No. RE49,693.
On February 9, 2026 the Applicant filed their response to the NFOA.
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 ‘382 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 Arguments/Amendment
The Applicant’s amendment to the claims are arguments toward the outstanding rejections have been fully considered and are addressed below in the order presented in the Applicant’s Remarks.
Rejections under 35 USC § 251-Improper Recapture
The Applicant argues that the amendment to the independent claims to include the limitation of the random access preamble index being “assigned via dedicated signaling” was made in order to direct the new reissue claims toward “overlooked aspects” and as such would overcome the improper recapture rejections. (See Remarks, pages 7-10).
Examiner’s response:
The Examiner disagrees. The newly added limitation does not cause the claims to be directed toward a separate invention/embodiment/species that was disclosed but not claimed in the original application. The newly added limitation was covered by the prior recitation of “receiving, from a base station, a random access preamble index” as that limitation is generic to the new limitation which adds the preamble index is received “via dedicated signaling”. The new limitation would also be covered by original claim 15 which also does not limit the means by which the preamble is received. That is to say the prior version of the reissue claim and original claim 15 would cover receiving the preamble index via any means thus both are generic to receiving the index via dedicated signaling. Additionally, the applicant refers to the limitation of receiving a random access response as being generic (see Section B on page 9), however this is not the limitation was amended to include the dedicated signaling.
In conclusion, the Examiner finds the newly added limitations are not directed toward overlooked aspects as argued by the Applicant and thus the recapture rejections are maintained.
Non-Statutory Double Patenting Rejection
The terminal disclaimer filed on February 9, 20206 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of RE49,693 has been reviewed and is accepted. The terminal disclaimer has been recorded.
The Non-Statutory Double Patenting rejections are withdrawn.
35 USC § 251 Rejections - Recapture
Claims 22-33 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. In re McDonald, 43 F.4th 1340, 1345, 2022 USPQ2d 745 (Fed. Cir. 2022); Greenliant Systems, Inc. et al v. Xicor LLC, 692 F.3d 1261, 103 USPQ2d 1951 (Fed. Cir. 2012); In re Youman, 679 F.3d 1335, 102 USPQ2d 1862 (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 family 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.
Per MPEP 1412.02 (II),
“…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:
We apply the recapture rule as a three-step process:
(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.
As per step 1,
The Examiner finds the reissue claims are broader in scope than the original patent claims. For example, claim 15 in RE49,693 recites in part, “receiving, from a base station, a random access preamble index corresponding to a random access preamble belonging to a non-contention based random access preamble group;…” however reissue claim 22 omits the limitation of the preamble “belonging to a non-contention based random access preamble group…”
Patent claim 26 recites limitations similar to those discussed above with respect to patent claim 15; and reissue claim 26 proposes to omit the same limitations omitted in reissue claim 22 discussed above.
Patent claim 29 recites limitations similar to those discussed above with respect to patent claim 15; and reissue claim 30 proposes to omit the same limitations omitted in reissue claim 22 discussed above.
As per step 2,
The Examiner finds the broadening aspects identified in step 1, relates to subject matter surrendered during the original prosecution. For example, during the prosecution of 12/528,810 claim 37 was amended on 10/9/2012 to recite the following (markings in original):
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The Remarks filed with the amendment indicate the amendment was made to overcome outstanding prior art rejections based on U.S. Patent No. 6,574,212 to Jurgenson. See 12/527,810, Remarks filed 10/9/12 at pages 9-10.
Additionally, in during the prosecution of 14/884,208, the same surrendered limitation was added to claim 30 in an amendment filed on 5/18/18. In the corresponding remarks, the Applicant indicated the amendment was made to overcome a recapture rejection. See 14/884,208, Remarks filed 5/18/18 at pages 13-14.
As per step 3,
MPEP 1412.02(II)(C), recites in part,
If the retained portion of the modified limitation is well known in the prior art, then impermissible recapture exists, even in a case where a further limitation which is not related to the surrendered subject matter (i.e., a limitation that does not materially narrow the claims) has been added to define the claims over the art. Mostafazadeh, 643 F.3d at 1361, 98 USPQ2d at 1644. Even if the retained portion of the modified limitation is not well known, there may still be impermissible recapture. For example, "[w]here the modified limitation was contained within the prior art relied upon by the examiner in the original prosecution … the limitation is not materially narrowing." See Youman, 679 F.3d at 1347, 102 USPQ2d at 1870.
The Examiner finds that the surrendered limitations has not been entirely eliminated from the reissue claim, but rather it has been made less restrictive in the reissue claim. The Examiner also finds that the retained portion of the claims is well known in the prior art. For example, U.S. Pub. No 2008/0056193 to Bourlas et al. teaches a mobile device receiving from a base station, a random access preamble index via dedicated signaling (see ¶ 87, “Alternatively, the subscriber station 300 can receive the pre-allocated codes and associated information in one or more dedicated messages, extended subheaders, or some other manner of conveying information to the subscriber station 300.”).
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.
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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
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