DETAILED ACTION
The following is a FINAL Office action (“Action”) based on the response with claim amendments filed Jan. 16, 2026 (“Jan. Resp.”), which was submitted in response to the non-final Office action mailed July 16, 2025 based on this reissue application filed August 28, 2023 from U.S. Patent No. 11,369,223 (U.S. patent application no. 17/119,492) (hereinafter “the ’223 patent”). A preliminary amendment adding new claims 18-23 was filed August 28, 2023 (“Prel. Amdt.”) and these claims are still pending in the Jan. Resp.
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This reissue application was filed on or after September 16, 2012, therefore, all reference to 35 U.S.C. 251 and 37 CFR 1.172, 1.75, and 3.73 are to the current provisions enacted under the Leahy-Smith American Invents Act (“AIA ”). See Federal Register, Vol. 77, No. 157, pg. 48820, August 16, 2012.
Arguments and Amendments
Reissue Declaration and Incorporation by Reference
Applicant argues, with respect to the objection to the reissue declaration and corresponding 35 U.S.C. § 251 rejections, that (1) the reissue application has not been identified as a broadening reissue (Jan. Resp. 10); (2) the error statement does properly identify the error being corrected because there is no requirement that a claim be identified and the noted error (Jan. Resp. 9-12); and (3) the addition of new claims 18-23 is proper in this reissue (and thus the error statement is proper) because there is adequate and proper support for these claims in U.S. provisional application no. 63/088,974, from which the ‘223 patent claims a benefit (Jan. Resp. 12-14).
These arguments are not persuasive for the following reasons.
The First and Second Arguments – Not A Broadening Reissue and Error Statement
Applicant appears to be arguing that the current reissue application is not a broadening reissue, and as such, the error statement is acceptable. See Jan. Resp. 9-10. Section 1412.03, subsection I, of the MPEP states “[a] broadened reissue claim is a claim which enlarges the scope of the claims of the patent, i.e., a claim which is greater in scope than each and every claim of the original patent … [a] claim of a reissue application enlarges the scope of the claims of the patent if it is broader in at least one respect, even though it may be narrower in other respects. See, e.g., 37 CFR 1.175(b).” The MPEP continues with the guidance that “[a] claim in the reissue application which includes subject matter not covered by the patent claims enlarges the scope of the patent claims. For example, if any amended or newly added claim in the reissue contains within its scope any conceivable product or process which would not have infringed the patent, then that reissue claim would be broader than the patent claims. Tillotson, Ltd. v. Walbro Corp., 831 F.2d 1033, 1037 n.2, 4 USPQ2d 1450, 1453 n.2 (Fed. Cir. 1987); In re Ruth, 278 F.2d 729, 730, 126 USPQ 155, 156 (CCPA 1960); In re Rogoff, 261 F.2d 601, 603, 120 USPQ 185, 186 (CCPA 1958).” Lastly, the MPEP in this section notes that “[a] claim which covers something that the original claims do not is a broadened claim.”
In this case, originally patented independent claims 1 and 17 each require, among many other limitations, “a rotating parcel drum.” New claim 18, which is the only new independent claim, does not require “a rotating parcel drum,” but instead requires “a package ramp.” While this feature is not the only limitation in claim 18 not required by claims 1 and 17, it is but one example. Thus, claim 18 “covers something that the original claims [1 and 17] do not.” Claims 19-23, which depend from claim 18 also are of different scope than claims 1-17. Since new claims 18-23 do not require “a rotating parcel drum,” but instead require “a package ramp,” they have enlarged the scope from what was recited in originally patented claims 1-17, and are thus, considered broadening.1
Applicant additionally argues that there is no basis for assuming the language in the reissue declaration of “less than the patentee had a right to claim” indicates a broadening reissue. See Jan. Resp. 9-10. This is incorrect. Section 1.175(b) of the CFR explicitly states, “the reissue application seeks to enlarge the scope of the claims of the patent (a basis for the reissue is the patentee claiming less than the patentee had the right to claim in the patent).” (Emphasis added.) Thus, the language used in the reissue declaration (i.e., “The issued patent is partly inoperative for claiming less than the Applicant had a right to claim.”) indicates a broadened claim as laid out in the rule. This together with the broadening scope of new claims 18-23 compared with the scope of originally patented claims 1-17 clearly indicates this application to be a broadening reissue.
Moving to the requirements of the reissue oath/declaration, 37 CFR 1.175(a) and (b) govern. Section 1.175(a) requires “[t]he inventor’s oath or declaration for a reissue application, in addition to complying with the requirements of § 1.63, § 1.64, or § 1.67, must also specifically identify at least one error pursuant to 35 U.S.C. 251 being relied upon as the basis for reissue and state that the applicant believes the original patent to be wholly or partly inoperative or invalid by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than the patentee had the right to claim in the patent.” (Emphasis added.) See also MPEP 1414.
Section 1.175(b) requires that “[i]f the reissue application seeks to enlarge the scope of the claims of the patent (a basis for the reissue is the patentee claiming less than the patentee had the right to claim in the patent), the inventor’s oath or declaration for a reissue application must identify a claim that the application seeks to broaden. A claim is a broadened claim if the claim is broadened in any respect.”
Thus, for broadening reissue applications, sections 1.175(a) and (b) of 37 CFR require: (1) at least one identified error; (2) a statement “that applicant believes the original patent to be wholly or partly inoperative or invalid by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than the patentee had the right to claim in the patent”; and (3) that “the inventor’s oath or declaration for a reissue application must identify a claim that the application seeks to broaden.”
Applicant has complied with only the second of these requirements by identifying in the reissue declaration that “[t]he issued patent is partly inoperative for claiming less than the the [sic] Applicant had a right to claim.” The first and third requirements of 37 CFR 1.175(a) and (b) are not met as explained in the “Objections – Reissue Oath/Declaration” section below.
For the reasons above, Applicant’s argument with respect to the error statement are not persuasive.
The Third Argument – Proper Error Because Claims 18-23 are Supported by the Provisional Application
Applicant argues that claims 18-23 are properly supported by the original ‘223 patent because U.S. provisional application no. 63/088,974, to which the ‘223 patent claims a benefit, provides the section 112(a) support and is properly incorporated by reference into the ‘223 patent. See Jan. Resp. 12-14. Thus, the addition of new claims 18-23 is a correctable error. This argument is not persuasive for the following reasons.
As explained previously and below, incorporation by reference can be used during pendency of an application2 to add material incorporated by reference that was inadvertently omitted at filing, especially in situations when that material is “essential material.” See 37 CFR 1.57(d); see also MPEP § 608.01(p), subsection I. Applicant makes the argument that the material added in new claims 18-23 is not “essential material,” and thus, can be added simply by the incorporation by reference statement, even though this material is covered by claims 18-23. This is not persuasive.
Initially, Applicant argues that “pendency” includes the current pendency of this reissue application. See Jan. Resp. 13. However, this is not what the rule says. Specifically, the pendency mentioned in the rule as explained in the MPEP notes that incorporation by reference is not with respect to reissue applications, but rather, first-filed applications that have not yet issued as patents. See 37 CFR 1.57(a), “upon the filing of an application under 35 U.S.C. 111(a),” where reissue applications are filed under 35 U.S.C. § 251, not section 111(a); see also MPEP §§ 608.01(p), subsection I, and 1401. Thus, since the pendency of the application that issued as the ‘223 patent is closed, the ‘223 patent cannot be amended using incorporation by reference to add “essential material” inadvertently omitted in the initial filing of the application that issued as the ‘223 patent, especially essential material supporting a new invention.
Applicant also argues that the subject matter covering claims 18-23 is not “essential material,” and thus, does not need to be in the ‘223 patent. See Jan. Resp. 13-14. First, applicant argues that since there was no notice in the prosecution of the underlying application of the ‘223 patent of “inadvertently omitted material,” then there was no error with respect to adding claims 18-23 in this reissue application. See Jan. Resp. 13-14. This argument is misplaced, however, because the material covering claims 18-23 was never presented in any claim amendment during the underlying prosecution of the ‘223 patent, so there would not have been any need to provide “notice” about inadvertently omitted material. Even so, adding “essential material” from an incorporated reference is not a correctable error in a reissue application because it is going beyond the invention described in the original patent. See 35 U.S.C. § 251(a); see also MPEP § 1412.01. Moreover, subject matter recited in new claims presented in a reissue application necessarily includes “essential material” since the claims are covering a, presumably, patentable invention. See 37 CFR 1.57(d)(1)-(3).
Notwithstanding the discussion above, it is true that even after a patent issues, material incorporated by reference may be considered to be part of the patent, and it might be possible to add this missing material through a reissue application. See e.g., In re Lund, 376 F.2d 982, 989, 153 USPQ 625, 632 (C.C.P.A. 1967); see also MPEP § 608.01(p). However, this has limits. As the Federal Circuit noted in Modine Manufacturing Company v. U.S. International Trade Commission3, “incorporation by reference does not convert the invention of the incorporated patent into the invention of the host patent.” (Emphasis added.) This principle has been applied in other cases in which claim terms have been evaluated (albeit in a claim construction context) to determine if a document incorporated by reference provides support for a claim term. See DDR Holdings, LLC v. Priceline.com LLC, Booking.com B.V., No. 2023-1176, 2023-1177, slip op. (Fed. Cir. 2024).
In DDR Holdings, a more restrictive definition of a term from a U.S. provisional application was not included in the subsequently filed non-provisional U.S. application but was later argued to be required in the construction of the term, where the provisional application was incorporated by reference in the non-provisional application. The Federal Circuit noted that “[i]n Finjan, this court explained that ‘[t]he use of a restrictive term in an earlier application does not reinstate that term in a later patent that purposely deletes the term, even if the earlier patent is incorporated by reference.’” Id. at 10 (citing Finjan LLC v. ESET, LLC, 51 F.4th 1377, 1382-83 (Fed. Cir. 2022); Modine Mfg. Co. v. U.S. Int'l Trade Comm'n, 75 F.3d 1545, 1553 (Fed. Cir. 1996)).
Despite being with respect to claim construction, the court’s conclusions in DDR Holdings and Modine show that incorporation by reference is not unlimited and does not allow a patentee or applicant to come in after the patent has issued to define the patented invention beyond what is described in the issued patent, either by way of claim construction or by the addition of new claims to a new invention from a prior patent document that was incorporated by reference but not disclosed in the underlying patent. Additionally, DDR Holdings takes Modine a step further to say that the act of not including the invention disclosed in the prior parent U.S. provisional application incorporated by reference in the child non-provisional application that later issued as the patent at issue, “was conspicuous and unambiguous” of an intentional decision to not define the invention in that way, and thus, cannot be brought in after the fact to correct that mistake. DDR Holdings, slip op. at 2 (citing Modine, 75 F.3d at 1552).
Applying these principles to this case, the addition of new claims 18-23 in this reissue application cannot be supported as required by section 112(a) through an incorporation by reference statement to a U.S. provisional application because claims 18-23 are directed to a new invention that is distinct4 from the originally patented invention covered by claims 1-17 and is not at all described in the ‘223 patent. Thus, since claims 18-23 are directed to an invention only disclosed in a parent provisional application that was “conspicuously and unambiguously” left out of the child non-provisional application that issued as the ‘223 patent, neither an incorporation by reference statement nor any amendment in a reissue application can remedy this problem to now allow the inclusion of the invention covered by claims 18-23. The addition of claims 18-23 is, therefore, not a correctable error in this reissue application because the claims are not directed to the original invention disclosed in the underlying patent as required by section 251, and they do not have adequate section 112(a) support in the ‘223 patent.
For these reasons, Applicant’s arguments are not persuasive.
Consent
Applicant’s statement in the Jan Resp. on pages 14-15 that inventor John Plumber, who signed the consent, has “the power to bind the corporation” is a sufficient showing of an authorization or apparent authority to act on behalf of the assignee. Thus, the objection to the consent is withdrawn.
Claim Objection
Claim 14 was objected to, which led to amending the claim in the Jan. Resp. However, the amendment did not correct the grammatical issues in the claim and presents new grammatical issues. Thus, claim 14 is objected to as explained below.
35 U.S.C. § 112(a) Claim Rejections
See discussion above regarding in the “Reissue Declaration and Incorporation by Reference” section. For those reasons, the section 112(a) rejections are maintained.
35 U.S.C. § 112(b) Claim Rejections
All previously presented section 112(b) claim rejections are withdrawn in light of the claim amendments and Applicant’s arguments in the Jan. Resp. on pages 16-17.
35 U.S.C. § 251 Claim Rejections
See discussion above regarding in the “Reissue Declaration and Incorporation by Reference” section. For those reasons, the section 251 rejections are maintained.
35 U.S.C. § 103 Claim Rejections
All previously presented section 103 claim rejections are withdrawn in light of Applicant’s arguments in the Jan. Resp. on pages 18-25. In particular, the argument that none of the cited and applied references teaches “a parcel drum support bracket mounted to the door in the door opening” is persuasive.
Objections – Reissue Oath/Declaration
The reissue oath/declaration filed August 28, 2023 is objected to because the error statement is defective for the following reasons.
First, this reissue application is considered broadening because the error statement states (emphasis added) that the “issued patent is partly inoperative for claiming less than the the [sic] Applicant had a right to claim,” which is an indication of broadening. See MPEP §§ 1414(I), 1414.01 (citing 37 CFR § 1.175(b)). For broadening reissue applications, the error statement must identify both “a specific claim that the application seeks to broaden” (MPEP § 1412.03(V)(A)) and “a single word, phrase, or expression in the specification or in an original claim, and hos it renders the original patent wholly or partly inoperative or invalid” (MPEP § 1414(II)). Since the error statement neither identifies a patented claim to broaden or language rendering the claim inoperative, the error statement is defective.
Second, a reissue application cannot be used to add undisclosed embodiments into an issued patent, even if from a prior application incorporated by reference in the underlying patent. Section 1412.01(II) of the MPPE states, “[a] reissue applicant’s failure to timely file a continuing application is not considered to be error causing a patent granted on the elected claims to be partially inoperative by reason of claiming less than the applicant had a right to claim.” In other words, failure to file a continuation application covering non-elected (in this case, not disclosed) embodiments during the pendency of the underlying patent is not a correctable error for a reissue application.
Moreover, incorporation by reference of any listed document in the underlying patent does not cure the deficiency of omitted essential subject matter from the underlying patent, which would cover new claims 18-23. While incorporation by reference may be used to add essential subject matter, this must be done prior to “the close of prosecution as defined in 37 CFR 1.114(b).” See MPEP § 217(II)(E). In this case, Applicant has identified U.S. provisional application no. 63/088,974, to which the ‘223 application claims a benefit, as providing the necessary support for the embodiment covered by new claims 18-23. See Rei. Decl., Error Statement. However, none of the figures or specification description from the ‘974 provisional application are in the ‘223 patent as issued. Because of this fact and since the prosecution of the ‘223 patent is closed, the essential subject matter from the disclosure of the ‘974 application needed to support the embodiment covered by new claims 18-23 cannot be added in this reissue application.
For the above reasons, the reissue oath/declaration filed August 28, 2023 is defective and objected to. A newly executed reissue oath/declaration is required including a correctable error statement.5
Objection – Amendments
Claims 3, 11, 14, and 18-23 are objected to because the markings are not proper for showing the changes with respect to the original patent as required under 37 CFR § 1.173(b)(2),(d),(g). Specifically, the deleted limitations must be shown in single brackets only. See MPEP § 1453. The deletions in claims 3, 11, and 14 are shown in double brackets or strikethrough, which is not proper. Additionally, the status identifiers of new claims 18-23 should not read “previously presented”. Instead, new claims should have status identifiers of “New”, “New – Amended”, “New – Twice Amended”, “New – Three Times Amended”, etc. See MPEP § 1453. As a reminder, all amendments must be with respect to the original patent regardless of previous filings in the reissue (see 37 CFR § 1.173(g)), and all deleted claim limitations must be enclosed in single brackets while added claim limitations must be singly underlined (see 37 CFR § 1.173(b)(2),(d)).
Objections – Claims
Claim 14 is objected to because of a minor grammatical issue. Claim 14 should be amended as follows:
The antitheft parcel delivery door system of claim 1, comprising a flange that is positioned in the door opening, and wherein the flange is the same shape as the door opening.
OR
The antitheft parcel delivery door system of claim 1, comprising a flange [is] positioned in the door opening, and wherein the flange is the same shape as the door opening.
Appropriate correction is required. Please note, the above suggestions include the required formatting for claim amendments in reissue applications.
Claim Rejections - 35 USC § 112(a) (pre-AIA , Section 112, First Paragraph)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—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 or joint inventor of carrying out the invention.
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 18-23 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 written description requirement. At least independent claim 18 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 applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 18-23 are newly presented in this reissue application. Applicant argues that “claims 18-23 are fully supported by provisional application 63/088,974, filed October 7, 2020, and incorporated by reference in U.S. Patent No. 11,369,223.” Prel. Amdt. 9. For the following reasons, however, the subject matter of claims 18-23 is still considered to lack proper written description support in the ‘223 patent.
As explained above in the “Objections – Reissue Oath/Declaration” and “Arguments and Amendments” sections, omitted essential subject matter (i.e., in this case, the support for claims 18-23), while permitted to be added during prosecution of a section 111(a) patent application, if incorporated by reference, cannot be added after the close of prosecution, even with an incorporation by reference statement. See MPEP § 217(II)(E). Since neither the drawings nor any part of the specification of the ‘974 provisional application were added to the ‘223 patent during prosecution of the corresponding application, new claims 18-23 cannot now rely upon an incorporation by reference statement to provide adequate written description support under section 112(a) (pre-AIA , section 112, first paragraph). Thus, claims 18-23 are rejected under section 112(a) (pre-AIA , section 112, first paragraph) for failing to comply with the written description requirement.
Claims 18-23 are required to be canceled.6
Claim Rejections - 35 USC § 251
The following is a quotation of 35 U.S.C. 251 that form the basis for the rejections under this section made in this Office action:
(a) IN GENERAL.—Whenever any patent is, through error, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.
(b) MULTIPLE REISSUED PATENTS.— The Director may issue several reissued patents for distinct and separate parts of the thing patented, upon demand of the applicant, and upon payment of the required fee for a reissue for each of such reissued patents.
(c) APPLICABILITY OF THIS TITLE.— The provisions of this title relating to applications for patent shall be applicable to applications for reissue of a patent, except that application for reissue may be made and sworn to by the assignee of the entire interest if the application does not seek to enlarge the scope of the claims of the original patent or the application for the original patent was filed by the assignee of the entire interest.
(d) REISSUE PATENT ENLARGING SCOPE OF CLAIMS.—No reissued patent shall be granted enlarging the scope of the claims of the original patent unless applied for within two years from the grant of the original patent.
Claims 1-23 are rejected under 35 U.S.C. § 251 as being based upon a defective reissue declaration. See 37 CFR 1.175. The nature of the defects in the declaration is set forth in the discussion above in this Office action.
Claims 18-23 are also rejected under 35 U.S.C. § 251 as being based upon new matter added to the patent for which reissue is sought. Please see the section 112(a) (pre-AIA section 112, first paragraph) rejection above.
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.
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/JOSHUA KADING/ Reexamination Specialist, Art Unit 3993
Conferees:
/MATTHEW J KASZTEJNA/ Reexamination Specialist, Art Unit 3993
/EILEEN D LILLIS/ SPRS, Art Unit 3993
1 See also MPEP § 1412.03, subsection I, “[a] claim of a reissue application enlarges the scope of the claims of the patent if it is broader in at least one respect, even though it may be narrower in other respects,” such as by deleting limitations from the originally patented claims and no corresponding limitations of the same or narrower scope are present in the new claims.
2 This does not include reissue applications because the pendency of the underlying application that resulted in the patent has concluded. A pending reissue application cannot be used to correct incorporation by reference mistakes, etc., that would add new inventions.
3 Modine Manufacturing Company v. U.S. International Trade Commission, 75 F.3d 1545, 1553 (Fed. Cir. 1996), overruled on other grounds by Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 234 F.3d 556 (Fed. Cir. 2000); Fifth Generation Comp. Corp. v. Int'l Bus. Machine Corp, 416 Fed. Appx. 74, 80 (Fed. Cir. 2011) (accord).
4 Irrespective of the section 112(a) rejections below, claims 1-17 and 18-23 are still considered to be directed to distinct and different inventions that would be restricted from each other in future Office actions even if there is section 112(a) support. For example, claims 1-17 are drawn to an “antitheft parcel delivery door system” with, among other features, rotating parts, such as “a rotating parcel drum”, and are classified in A47G29/22 of the Cooperative Patent Classification (CPC) system. Claims 1-17 are covered by Figures 1-7 and corresponding description of the ‘223 patent, and have support in only U.S. provisional application no. 62/947,174. Claims 18-23, on the other hand, are drawn to an “apparatus” for “forc[ing] a plurality of packages and envelopes into a facility,” such as with the use of “a package ramp” and are classified in A47G29/14,20 of the CPC system, but as noted, only have support in U.S. provisional application no. 63/088,974. There are no corresponding figures or description for claims 18-23 in the ‘223 patent. A system that uses a “parcel drum” and a system that uses “a package ramp” are distinct inventions from one another. Since claims 1-17 were prosecuted and issued as the original patent claims in the ‘223 patent, they are constructively elected by original presentation. See 37 CFR § 1.176(b); see also MPEP § 1450. This is what is meant in the objections and rejections below about claims 18-23 being subject to restriction. Thus, even with proper section 112(a) support, new claims 18-23 cannot be added in this reissue application along with original claims 1-17 because they are directed to different inventions. See MPEP § 1450.
5 Please note, as explained above, the addition of new claims 18-23 is not a correctable error. As a result, even if the error statement identified a broadened claim and the broadening language, this still would not be a correctable error because claims 18-23 cannot be added to the ‘223 patent. A new error statement must be presented different from the one focusing on the addition of claims 18-23.
6 If there is something that has been overlooked and claims 18-23 are ultimately found to have section 112(a) (pre-AIA , section 112, first paragraph) support in the ‘223 patent, they, nonetheless, will be restricted out of this reissue application. Original claims 1-17 are active and directed to a separate and distinct invention from claims 18-23, meaning they are elected by original presentation. See MPEP § 1450.