NON-FINAL ACTION
The instant application was filed on July 6, 2023, as a continuation of App. 16/216,085.
Claims 1-20 are pending.
Prior Petition Decision
On May 17, 2024, the Office denied the Applicant’s petition under 37 CFR 1.182 to treat this application as a continuation reissue application. Decision on Petition (May 17, 2024). Accordingly, this application is being examined as a Bauman type continuation application.
Bauman Type Continuation Applications
The mere fact that the application purports to be a continuation or divisional of a parent reissue application does not make it a reissue application itself, since it is possible to file a 35 U.S.C. 111(a) continuing application of a reissue application. See In re Bauman, 683 F.2d 405, 409 (CCPA 1982) (a patentee may file a regular continuation of a reissue application that obtains the benefit of the reissue application's filing date).
The claims in a Bauman type continuation or divisional application will not have the same effective U.S. filing date as the original patent. This is because a reissue application is necessarily filed after the patenting of the original application. Therefore, a Bauman type continuation or divisional application of the reissue application could not satisfy the copendency requirement of 35 U.S.C. 120 with respect to the original patent. See Bauman, 683 F.2d at 410 (regular continuation of a reissue cannot claim benefit to the filing date of the original patent, but instead is limited to the filing date of the reissue); Conover v. Downs, 35 F.2d 59, 17 C.C.P.A. 587, 590-91 (C.C.P.A. 1929) (reissue continuation of a reissue cannot claim benefit to the filing date of the original patent, but instead is limited to the filing date of the reissue). At best, the earliest effective U.S. filing date would be the filing date of the first reissue application that the Bauman type continuation or divisional application is entitled to claim benefit to under 35 U.S.C. 120.
Effective Filing Date
The effective filing date of the instant application is Dec. 11, 2018, the filing date of parent application 16/216,085.
Claim Rejection – 35 U.S.C. § 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 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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
1. Claims 1-20 are rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by U.S. Pat. 9,897,525 (Spriggs), i.e., the original patent involved in the parent application’s proceeding.
2. Claims 1-20 are rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by U.S. Pat. App. Pub. 2016/0320284 (Spriggs), i.e., the pre-grant publication of the original patent involved in the parent application’s proceeding.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERIC B KISS whose telephone number is (571)272-3699. The examiner can normally be reached Mon - Fri 7:30-5:00.
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/Eric B. Kiss/Patent Reexam Specialist, Art Unit 3992
Conferees:
/Cameron Saadat/
Patent Reexam Specialist, Art Unit 3992
/ANDREW J. FISCHER/Supervisory Patent Examiner, Art Unit 3992
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