DETAILED ACTION
This action is in response to the applicant’s preliminary amendment filed on June 28, 2023. As set forth therein, claims 1 and 9 are amended and claims 16-19 are newly added. Claims 1-19 remain pending.
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 .
Reissue Applications
For reissue applications filed before September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the law and rules in effect on September 15, 2012. Where specifically designated, these are “pre-AIA ” provisions.
For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions.
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceed-ing in which Patent No. 11,051,092 is or was involved. These proceedings would include interferences, reissues, reexaminations, 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 mate-rial to patentability of the claims under consideration in this reissue appli-cation.
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.
Response to Amendment
The amendment filed June 28, 2023 proposes amendments to claims 1 and 9 that do not comply with 37 CFR 1.173(b), which sets forth the manner of making amendments in reissue applications.
The Examiner notes that in accordance with 37 CFR 1.17(d), matter to be omitted by reissue must be included in brackets. Thus, double brackets, as shown in amended claim 1 and strikethroughs and double brackets as shown in amended claim 9, are not permitted for the indication of subject matter to be removed by reissue.
Reissue Declaration
The reissue oath/declaration filed with this application is defective (see 37 CFR 1.175 and MPEP § 1414) because of the following:
The Examiner notes that the error statement states that the issued claims and the omission of claims 16-19 resulted in claiming less than the patentee had a right claim.
The Examiner finds that the reissue application is a broadening reissue and therefore, the Applicant must identify a broadened claim (see MPEP 1414, “for an application filed on or after September 16, 2012 that seeks to enlarge the scope of the claims of the patent, the reissue oath or declaration must also identify a claim that the application seeks to broaden in the identification of the error that is relied upon to support the reissue application.”).
In addition, the Applicant is using an outdated form (“Approved for use through 01/31/2020”) and this form does not include the checkbox that the application for the original patent was filed under 37 CFR 1.46 by the assignee of the entire interest.
In addition, in accordance with MPEP 1414, “Any error in the claims must be identified by reference to the specific claim(s) and the specific claim language wherein lies the error.
The Examiner notes that the statement does not identify any claim language wherein lies the error.
Claims 1-19 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.
Reissue Application – 35 U.S.C. 251
Claims 9-15 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, the original patent was directed to a modular speaker cover which comprises a modular grille and a grille insert. This is set forth in the abstract, detailed description and each of the original claims (including claims as filed in the original application).
In addition, col. 2, lines 31-40 recites:
“the device comprises a modular grille and a grille insert. In some embodiments, the grille insert fits over and is removably attached to the modular grille and can be interchangeable with other grille inserts of various colors, shapes, and/or textures. In some embodiments, the modular grille and the grille insert are removably attached to the speaker using the same means of connection such as, for example, the same screws, by aligning holes in the modular grille and grille insert to holes in the speaker basket.”
Col. 3, lines 48-51 recites:
“FIG. 1 shows an embodiment of a modular speaker cover device 100 incorporating features of the present invention. The modular speaker cover device 100 comprises a modular grille 101 and a grille insert 120. The modular grille 101 and the grille insert 120 are configured to cover at least part of the face of a speaker 130.”
The Examiner maintains that for reissue claims, “the specification of the original patent must do more than merely suggest or indicate the invention recited in reissue claims; ‘[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.’” Forum US, Inc. v. Flow Valve, LLC, 926 F.3d 1346, 1351–52 (Fed. Cir. 2019) (quoting U.S. Indus. Chems. Inc. v. Carbide & Carbon Chems. Corp., 315 U.S. 668, 676 (1942)) .
As set forth in current reissue claim 9, the claim is directed to a modular speaker cover comprising “an outer frame”, a plurality of arms configured to removable attach to said out frame” and “a grille insert”. The Examiner finds that it does not appear from the face of the original patent that Applicant intended to cover and secure a modular speaker cover without a modular grille.
As set forth above, each of the original claims of the underlying patent, as well as the specification only discloses a modular speaker cover with both a modular grille and a grille insert.
Thus, the Examiner determines that the underlying patent does not clearly and unequivocally disclose any embodiment without a modular grille, thus to broaden the claims to permit such an embodiment runs afoul of the original patent requirement.
Recapture
Claims 16-17 and 19 are rejected under 35 U.S.C. 251 as being an impermissible recapture of broadened claimed subject matter surrendered in the application for the patent upon which the present reissue is based. In re McDonald, 43 F.4th 1340, 1345, 2022 USPQ2d 745 (Fed. Cir. 2022); Greenliant Systems, Inc. et al v. Xicor LLC, 692 F.3d 1261, 103 USPQ2d 1951 (Fed. Cir. 2012); In re Youman, 679 F.3d 1335, 102 USPQ2d 1862 (Fed. Cir. 2012); In re Shahram Mostafazadeh and Joseph O. Smith, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011); North American Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 75 USPQ2d 1545 (Fed. Cir. 2005); Pannu v. Storz Instruments Inc., 258 F.3d 1366, 59 USPQ2d 1597 (Fed. Cir. 2001); Hester Industries, Inc. v. Stein, Inc., 142 F.3d 1472, 46 USPQ2d 1641 (Fed. Cir. 1998); In re Clement, 131 F.3d 1464, 45 USPQ2d 1161 (Fed. Cir. 1997); Ball Corp. v. United States, 729 F.2d 1429, 1436, 221 USPQ 289, 295 (Fed. Cir. 1984). The reissue application contains claim(s) that are broader than the issued patent claims. The record of the application for the patent family shows that the broadening aspect (in the reissue) relates to claimed subject matter that applicant previously surrendered during the prosecution of the application. Accordingly, the narrow scope of the claims in the patent was not an error within the meaning of 35 U.S.C. 251, and the broader scope of claim subject matter surrendered in the application for the patent cannot be recaptured by the filing of the present reissue application.
In Clement, 131 F.3d at 1468-70, 45 USPQ2d at 1164-65, the Court of Appeals for the Federal Circuit set forth a three step test for recapture analysis. In North American Container, 415 F.3d at 1349, 75 USPQ2d at 1556, the court restated this test as follows:
We apply the recapture rule as a three-step process:
first, we determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims;
As to claim 9, the claim is broader in scope than e.g. original claim 9 since it does not recite “a modular grille” and a modular grille comprising “a center frame”. Claim 9 does not specify that the plurality of arms is “between said outer frame and said center frame” and does not specify that the grille insert is on said modular grille and being removably attached to said modular grill. In addition, the claim does not specify that the grill insert is configured to removably attach to the speaker “by a plurality of attachment mechanisms”.
As to claim 16, the claim is broader in scope than e.g. original patent claim 1 since it does not recite a modular grill comprises, “a center frame, and at least one arm between said outer frame and said center frame, said at least one arm comprising lateral surfaces”.
In addition, the grille insert is broader in scope since it does not recite that the grill insert “substantially covers said at least one arm and “wherein said insert arms comprise curtains, said curtains configured to substantially cover said lateral surfaces of said at least one arm between said outer frame and said center frame”.
As to claim 19, the claim is broader in scope that e.g. original patent claim 1 since it does not recite a modular grille comprises, “a center frame, and at least one arm between said outer frame and said center frame, said at least one arm comprising lateral surfaces”.
In addition, claim is broader since it does not recite a grille insert “substantially covers said at least one arm and “wherein said insert arms comprise curtains, said curtains configured to substantially cover said lateral surfaces of said at least one arm between said outer frame and said center frame”.
next, we determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and
The Examiner notes that during the prosecution of US Patent Application 16/850,438, in response to the non-final office action filed on May 15, 2020, the Applicant amended claim 1 as follows:
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In addition, claim 11 was amended as follows:
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With respect to Garretson, the Applicant argued that the insert arms 13b do not comprise curtains configured to substantially cover said lateral surfaces of the arms 133. The Applicant states that this is in contrast to Applicant’s claim 1 which requires that “said insert arms comprise curtains, said curtains configured to substantially cover said lateral surfaces of said at least one arm between said outer frame and said center frame.”
In addition, the claim was amended by the Applicant to added “said plurality of arms comprising lateral surfaces”.
The Examiner finds that both of these limitations are surrendered subject matter since they were either added by the Applicant during the original prosecution or specifically argued by the Applicant when arguing against the applied prior art.
With respect to claim 9, the Examiner finds that the broader aspects of the reissue claim relates to subject matter surrendered in the original prosecution since claim 9 no longer recites “between said outer frame and said center frame. As shown above, this limitation was part of the limitation that was added after the non-final office action.
With respect to reissue claim 16, the Examiner finds that the broader aspects of the reissue claim relates to subject matter surrendered in the original prosecution since claim 16 no longer recites “wherein said insert arms comprise curtains, said curtains configured to substantially cover said lateral surfaces of said plurality of arms between said outer frame and said center frame”. As shown above, this limitation was specifically added after the non-final office action and specifically argued by the Applicant.
With respect to claim 19, the Examiner finds that the broader aspects of the reissue claim relates to subject matter surrendered in the original prosecution since claim 19 no longer recites “wherein said insert arms comprise curtains, said curtains configured to substantially cover said lateral surfaces of said plurality of arms between said outer frame and said center frame”. As shown above, this limitation was specifically added after the non-final office action and specifically argued by the Applicant. In addition, the claim does not recite “said at least one arm comprising lateral surfaces” and therefore, this additional broader aspect relates to subject matter surrendered in the original prosecution.
(3) finally, we determine whether the reissue claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule.
The Examiner finds that with respect to claim 9, the Examiner finds that the claim removes the limitation “between said outer frame and said center frame” with respect to the plurality of arms, but amends the claim to recite “an outer frame; a plurality of arms configured to removably attach to said outer frame”.
The Examiner finds that the added limitation relates to the surrendered subject matter and further that it materially narrows the limitation since it recites that the arms are “removably attach[ed]” to said outer frame. Therefore claim 9 is not subject to recapture.
With respect to claim 16 does not materially narrow the claims relative to the surrendered subject matter. Therefore, claim 16 is subject to recapture.
With respect to claim 19, the Examiner finds that the claim is narrower in that it is directed to a “modular speaker assembly”. The claim, however recites a “modular speaker cover” and thus id directed to the same “modular speaker cover” as the original claims. The Examiner notes that the claim does not recite any additional limitations which are materially narrowed relative to the surrendered subject matter. Therefore, claim 19 is subject to recapture.
Claim Rejections - 35 USC § 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.
Claim(s) 16, 17 and 19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Garretson et al.US Patent Pub. 2005/0213784.
Regarding claim 16:
A modular speaker cover for covering a speaker, comprising:
Garretson discloses a spinner rim for covering a speaker. See paragraphs [0026-0027] and Figures 1-7.
a modular grille comprising an outer frame;
Garretson discloses a spinner rim with an outer frame 13a. See Figure 6. See also Figures 3 and 4
a grille insert, said grille insert removably attachable to said modular grille, said grille insert comprising a plurality of insert arms;
Garreston discloses a grille insert 13 with a plurality of insert arms 13b which is removably attachable to the modular grille (See Figure 3). The Examiner notes that the grille can be spun/adjusted and replaced by different grills with different arm designs. See paragraphs [0032-0038] and Figures 1-7.
wherein said modular grille and said grille insert are configured to removably attach to a speaker such that said modular grille and said grille insert at least partially cover the face of said speaker.
The modular grille and the grille inset are removably attached to the speaker via item 20. See Figures 1 and 3- 6 and paragraph [0032]. See also claim 1 of Garretson. See also the abstract which recites that different combinations of grilles and spinner are easily enabled by mounting structure.
Regarding claim 17:
The device of claim 16, further comprising a center frame comprising a plurality of arms extending from said center frame, wherein said center frame is removably attached to said grille insert such that said grille insert substantially covers at least one of said arms of said center frame.
Garretson discloses a modular grille comprising a center frame 134 which is removably attached to said grill insert and the grille insert covers at least one of said arms of said center frame. The Examiner notes that the grille can be spun/adjusted. See paragraph [0032] and Figures 1-7. See also Claim 1 of Garretson.
Regarding claim 19:
A modular speaker assembly, comprising:
Garretson is directed to a loudspeaker assembly which includes a speaker diaphragm and a spinner element. See the abstract and Figure 5.
a speaker; and
Garretson discloses a speaker 15. See paragraph [0025]. See also Figure 4.
a modular speaker cover comprising a modular frame, at least one arm extending from a center of said modular frame, and a grille insert;
Garretson discloses a spinner rim for covering a speaker. See paragraphs [0026-0027] and Figures 1-7. In addition, with reference to Figure 6, the modular frame incudes at least one arm extending from the center of said modular frame. In addition, Garretson discloses a grille insert (spinner 13). See paragraphs [0025 and 0027].
wherein said modular speaker cover is configured to removably attach to said speaker in a fixed position relative to said speaker such that said modular speaker cover at least partially covers the face of said speaker.
The modular grille and the grille inset are removably attached to the speaker via item 20. See Figures 1 and 3- 6 and paragraph [0032]. See also claim 1 of Garretson. See also the abstract which recites that different combinations of grilles and spinner are easily enabled by the mounting structure.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ovidio Escalante whose telephone number is (571)272-7537. The examiner can normally be reached on Monday to Friday - 6:00 AM to 2:30 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Michael Fuelling can be reached on (571) 270-1367. The fax phone number for the organization where this application or proceeding is assigned is 571-273-9000. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR.Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Ovidio Escalante/
Primary Examiner, Art Unit 3992
Conferees:
/MATTHEW E HENEGHAN/Primary Examiner, Art Unit 3992 /M.F/Supervisory Patent Examiner, Art Unit 3992