REISSUE OFFICE ACTION
The present application is being examined under the pre-AIA first to invent provisions.
This is a reissue office action for US Patent 8,738,278 (“the patent”), which included original patent claims 1–9. Applicant requested amendment of the claims on 11/23/2025. Claims 10–37 are pending.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/23/2025 has been entered.
Declaration and Reason for Reissue
This Reissue has been filed pursuant to the original patent being at least partly inoperative or invalid by reason of “claiming more or less than he had the right”, specifically:
“One error upon which reissue is based is the patentee claiming less than he had a right to claim in U.S. Patent No. 8,738,278. The '278 patent included no method claims. This reissue application corrects the error by including claims directed to methods for maintaining balance of foot placement sections” (4/18/2025 declaration p. 1).
Specification
The amendment to the specification filed 11/23/2025 has been approved for entry.
Claim Interpretation
Examiner interprets the claimed “control logic” as more than simply conceptual “logic” and more than simply instructions or programming per se. Examiner adopts the lexicography presented by applicant and interprets control logic as structure to execute logic – e.g. a processor configured with logic that translates position data into motor drive signals. For example applicant states:
“The control logic for translating position data to motor drive signals may be centralized or split between the two platform sections. For example, control logic 150 may be electrically connected to sensors 120,140 and to drive motors 117,137” (the patent 3:11–12).
“Alternatively, a separate processor/control logic 151 may be provided in the second platform section 130. Logic 151, in this case, would be is connect directly to sensor 140 and drive motor 137 and generate drive signals to motor 137 (and wheel 135) based data from sensor 140” (Id. 3:18–22).
“if the platform sections have separate and independent control logic 150,151, these processing units may still share information with one another” (Id. :31–34).
Examiner previously interpreted “biasing mechanism” as a 112 6th paragraph means plus function claim limitation. See office action mailed 5/23/2025, p. 3–7.
Claim Rejections - 35 USC § 112
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.
Claim 16 is 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 16, there is no support for a single embodiment to include two sections that are independently rotatable with respect to each other and that are mounted to a flexible frame. Figures 1–3 depict embodiments where the foot placement sections are independently rotatable to each other, while figures 4–5 show a flexible frame. The patent describes figures 4–5: “instead of a pivoting or rotating connection between platform sections, the frame or housing is made of a sturdy yet sufficiently flexible material that the two foot placement sections are effectively first and second platform sections that move independently with respect to each other” (at 4:28–33).
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.
Claim 20 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claim 20, there is no antecedent basis for the control logic.
Claim Rejections - 35 USC § 251
Claims 10–37 are rejected under 35 U.S.C. 251 as being in violation of the original patent requirement.
Section 251 requires that reissue is for “the invention disclosed in the original patent.” In order to satisfy the original patent requirement, “[i]t must appear from the face of the instrument that what is covered by the reissue was intended to have been covered and secured by the original.” U.S. Indus. Chems., Inc. v. Carbide & Carbon Chems. Corp., 315 U.S. 668, 676 (1942). Furthermore, “it is not enough that an invention might have been claimed in the original patent because it was suggested or indicated in the specification.” Id. In other words, the original patent “must clearly and unequivocally disclose the newly claimed invention as a separate invention.” Antares Pharma, Inc. v. Medac Pharma Inc., 771 F.3d 1354, 1362 (Fed. Cir. 2014).
In the present case, it does not appear that applicant intended to cover a self-balancing vehicle without the following features:
a–d: two each of: sections, wheels, sensors, motors
e: control logic
f: sections are coupled
g: sections are independently moveable
h: wheels are substantially parallel
i: logic drives wheels toward balancing
The broadened reissue claims no longer require certain of these features:
claim 10 lacks e, f, g and h.
claim 21 lacks e and f.
claim 27 lacks e, f and g.
The disclosure appears to require these certain elements and does not explicitly and unequivocally describe them as optional.
This is akin to Antares where patent owner’s claims in the reissue patent to the safety features on a generic injector (e.g., a non-jet injector) were held to violate the original patent requirement.
This situation is also analogous to the recent Federal Circuit decision in Forum US, Inc. v. Flow Valve, LLC, Appeal No. 2018-1765 (Fed. Cir. Jun. 17, 2019). In Forum US, the original patent claims were drawn to a workpiece having a body member and a plurality of arbors. Forum US, slip op. at 3-4. In reissue, patentee broadened the claims to remove the requirement as to arbors. Id. at 5. The Federal Circuit determined that the new claims did not comply with the original patent requirement of section 251 because the face of the patent did not disclose any arbor-less embodiment, and the abstract, summary of invention, and all disclosed embodiments included arbors. Id. at 9. The Court concluded that the specification did not clearly and unequivocally disclose an embodiment without arbors, thus the original patent requirement was violated by broadening the claims to no longer require arbors. Id. at 10.
Response To Arguments
§ 112 1st paragraph
Applicant states:
“Features disclosed in different embodiments may be combined when, as here, the specification as a whole conveys possession of the combination. The specification expressly contemplates such modifications and variations. (Col. 4, II. 49-53.) Moreover, regarding the embodiment of FIGS. 4 and 5, the specification states that the "[v]ehicle 300 is similar to the other vehicles herein," thereby explaining that the vehicle 300 of FIGS. 4 and 5 can have features from other embodiments (e.g., the vehicle 100 of FIGS. 1-3). (Col. 4, l. 27.)” (11/23/2025 Remarks, p. 15).
Examiner disagrees. The specification does not describe that a vehicle device may have two sections that are independently rotatable with respect to each other and that are mounted to a flexible frame. None of the figures depict such a combination, no such combination is described, nor would one of ordinary skill recognize that applicant contemplated such a combination. Generic statements that the “invention is capable of further modification” does not provide the requisite level of specific support.
§ 251 original patent
Applicant states:
“the '278 patent expressly teaches that the invention encompasses a two-wheel, self-balancing vehicle in general, and further emphasizes that the described embodiments are merely examples subject to modification. This open-ended teaching communicates to skilled persons that features such as independent section movement and individualized control logic were implementations of the invention, not mandatory limitations.” (11/23/2025 Remarks, p. 20).
“Here, the original patent clearly disclosed the broader inventive concept of a compact two-wheel, self-balancing vehicle, of which "independently movable sections with self-balancing control logic" were specific embodiments” (11/23/2025 Remarks, p. 21).
Examiner disagrees that this shows error with the original patent rejection. Nowhere has applicant pointed out where the features at issue are unequivocally optional. There is no disclosure describing how the wheels are driven without the use of the disclosed control logic or that the device includes anything other than independently moveable sections.
Notification of Proceedings and Material Information
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 this 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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jeffrey D Carlson whose telephone number is (571)272-6716. The examiner can normally be reached Mon-Fri 7:30 am to 5:00 pm, off 1st Fri.
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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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/JEFFREY D CARLSON/Primary Examiner, Art Unit 3992
Conferees:
/C. Michelle Tarae/Reexamination Specialist, Art Unit 3992 /M.F/Supervisory Patent Examiner, Art Unit 3992
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