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 amended the claims on 11/21/2025. Claims 10–36 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/21/2025 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 in that the patentee claimed less than he had a right to claim because the original application did not include a second independent claim, structured like claim 1, but ending with "sensor" instead of "foot placement section." Claim 28 is a new independent claim to address this.” (4/18/2025 declaration p. 1).
Specification
The amendment to the specification filed 11/21/2025 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 “bias mechanism” as a 112 6th paragraph means plus function claim limitation. See office action mailed 5/23/2025, p. 4–6.
Claim Objections
Claims 19–27 are objected to under 37 CFR 1.75 as being a substantial duplicate of claims 28–36. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Applicant argues that claim 19 should be interpreted in a way that makes it a substantial duplicate of claim 28. Applicant states “[i]n the context of claims 19-27, the relevant position data is the position of the foot placement section and is generated by sensors associated with the foot placement section (e.g., see FIG. 2 and col. 3, II. 1-15), and the claim language fairly encompasses this. While examiner does not currently agree with this claim interpretation, the application cannot present such duplicate claims.
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.
Claims 19–27 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Claim 19 concludes with control logic that drives the second wheel in response to “position data from the second foot placement section”. However, the disclosure does not describe or enable how position data is generated/acquired “from a foot placement section”. The disclosure is limited to position data being generated/acquired from position sensors. Further, claim 19 indicates that the first wheel is driven based upon position data from the first position sensor.
Applicant is reminded that if the claim is amended to replace “second foot placement section” with “second position sensor”, claims 19–27 will be improper duplicates of claims 28–36 and should be further amended or canceled.
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 17 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 17, there is no antecedent basis for “that foot placement section”. It is noted that claim 26 is not subject to this rejection due to its claimed correspondence between the sensor and one of the foot placement sections.
Response To Arguments
§ 112 1st paragraph
Applicant states:
“A skilled person would understand that "position data from the second foot placement section" refers to data regarding the position or orientation of the second foot placement section, not that the section itself constitutes or operates as the sensor” (11/21/2025 Remarks, p. 17).
Examiner disagrees. The claim itself sets forth two sensors but only data from the first sensor is configured to drive a motor. Further, the claim does not locate the second sensor at the second foot placement section to provide any association between the sensor data and the second section as applicant’s argument appears to require. Applicant can resolve the problem by requiring the control logic to drive the second wheel in response to position data from the second sensor.
The argument that data “from” a section refers to data “regarding” the position or orientation of the section is not convincing. The claimed “position data from the first sensor” certainly does not refer to data regarding the position or orientation of the first sensor, for example.
§ 112 2nd paragraph
Applicant states:
“Claim 17 refers to "that foot placement section," which clearly and unambiguously refers to the "first" or "second foot placement section" introduced in claim 10 and further stated earlier in Claim 17 ("at least one of the first and second foot placement sections"). This is standard drafting language to refer back to an earlier introduced item, particularly in the context of a condition such as a user standing on the platform. The reference is not indefinite” (11/21/2025 Remarks, p. 18).
Examiner disagrees. While claim 10 introduces two foot placement sections, claim 17 does not further refer to either of them, as applicant argues. It is not clear what section is being referred to by “that foot placement section”, especially where the platform sensor is not associated with any of the foot placement sections. It is noted that claim 26 is not subject to this rejection due to its claimed correspondence between the sensor and one of the foot placement 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.
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.
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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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