DETAILED ACTION
This is a Final Office Action addressing U.S. Application No. 18/224,549.
On September 15, 2025 a Non-Final Office Action (NFOA) was mailed in which among other findings, claims 1-40 were rejected as being based on a defective reissue declaration, and claims 1-10, 39, and 40 were rejected for being broadened in a reissue application filed outside of the two year statutory period.
On December 15, 2025 the Applicant filed their response to the NFOA which included a supplemental declaration and amendments to the claims.
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 ‘183 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.
Claim Objections
Claims 1 and 20-40 are objected to for failing to comply with 37 CFR 1.173(b),(d), and (g). The amendment to the claims use incorrect markings and appear to made relative to the last amendment and not the issued patent. For example, the amendment to claim 1 uses strikethroughs and double bracketing; claim 20 does not have any markings despite being amended relative to the patent; claims 21-40 are new and should be underlined throughout; claim 39 is a new amended claim and should not show omitted limitations with strikethrough. See MPEP § 1453.
Applicant is notified that any subsequent amendment to the specification and/or claims must comply with 37 CFR 1.173(b). In addition, for reissue applications filed before September 16, 2012, when any substantive amendment is filed in the reissue application, which amendment otherwise places the reissue application in condition for allowance, a supplemental oath/declaration will be required. See MPEP § 1414.01.
Reissue Declaration
The reissue oath/declaration filed with this application is defective (see 37 CFR 1.175 and MPEP § 1414) because of the following:
1) The error statement is insufficient because it does not reference any specific claims. Per MPEP 1414(II)(C),
It is not sufficient for an oath/declaration to merely state "this application is being filed to correct errors in the patent which may be noted from the changes made in the disclosure." Rather, the oath/declaration must specifically identify an error. In addition, it is not sufficient to merely reproduce the claims with brackets and underlining and state that such will identify the error. Any error in the claims must be identified by reference to the specific claim(s) and the specific claim language wherein lies the error.
35 USC § 251 Rejections – Defective Declaration
Claims 1-40 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.
Allowable Subject Matter
Claims 1-40 are free from prior art rejections, however the claims are subject to the objections and/or rejections stated above which must be overcome prior to allowance.
The following is a statement of reasons for the indication of allowable subject matter: The prior art of record taken alone, or in combination, fails to teach or suggest using utilization criteria to determine whether one or more underutilized computer devices exist on a list of suitable computer devices, the one or more underutilized computer devices having a suitable level of utilization for performing a job, as recited in independent claims 1, 11, 16 and 39, in combination with the other recited claim elements. This statement is consistent with the original statement as to the reasons for allowance in the original prosecution and the Patent Trial and Appeal Board findings in the Decision denying institution of IPR2021-00098.
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.
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 571-273-9900.
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Singed:
/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