DETAILED ACTION
I. Introduction
This Office action addresses U.S. application number 18/344,852 (“’852 application” or “instant application”), having a filing date of 29 June 2023. Because the instant application was filed on or after September 16, 2012, the statutory provisions of the America Invents Act (“AIA ”) will govern this proceeding.
II. Priority
Although the Application Data Sheet (ADS) filed on 29 June 2023 indicates that the instant application is a reissue application, the application was filed as a utility application under 35 U.S.C. § 111(a), and not a reissue application filed under § 251(a).
In order to be considered a reissue application, there must be an identification, on filing, that Applicant intends the application be treated as a reissue application, as opposed to a utility application. The Application Data Sheet must state, and the specification must be amended to state that the application is a "reissue application" of its parent application. In general, an application will be considered a utility application where it lacks sufficient indicia on filing that a reissue application is being filed. Indicia that a reissue application is being filed are:
(1) A 37 C.F.R. § 1.175 reissue oath/declaration.
(2) A specification and/or claims in proper double column reissue format per 37 C.F.R. § 1.173.
(3) Amendments in proper format per 37 C.F.R. § 1.173.
(4) A 37 C.F.R. § 3.73 statement of assignee ownership and consent by assignee.
(5) A correct transmittal letter identifying the application as a reissue filing under 35 U.S.C. § 251. It is recommended that Form PTO/AIA /50 be used.
(6) An identification of the application as being "a reissue of application number [the parent application]" or equivalent language.
Regarding factor (1), Applicant has failed to file a declaration of any kind (utility or reissue), and so no error has been identified which might provide grounds for the filing of a reissue application.
Regarding factor (2), the specification and the claims were originally filed in double column format as required by 37 C.F.R. § 1.173 for reissue applications. However, in response to a Notice to File Missing Parts of Nonprovisional Application, mailed 31 July 2023, applicant filed new copies of the claims, specification, and abstract in single column format, as would be proper in a utility application filed under 35 U.S.C. § 111(a).
Regarding factor (3), a preliminary amendment to the claims was filed concurrently with the filing of the application, on 29 June 2023. However, new claim 21 fails to include change markings, with the entire text, including claim number, of the new claim underlined, as required by the provisions of 37 C.F.R. § 1.173(g) (amendments in reissue applications are made relative to the issued patent).
Furthermore, the preliminary amendment to the specification includes strikethrough markings to indicate omitted subject matter as would be proper in a utility application whose amendments are subject to the provisions of 37 C.F.R. § 1.121, instead of enclosing omitted subject matter within brackets, as required for reissue applications under the provisions of 37 C.F.R. § 1.173.
Regarding factor (4), Applicant has filed a Statement under 37 C.F.R. § 3.73(c) indicating assignment, as well as a consent of the assignee.
Regarding factor (5), a transmittal letter identifying the application as a reissue was received by the Office.
Regarding factor (6), the first line of the specification as amended in the preliminary amendment identifies the instant application as “a reissue of U.S. Application No. 16/368,847, filed March 28, 2019, now U.S. Patent No. 11,051,350…”.
In addition to having been initially filed as a utility application under 35 U.S.C. §111(a), it is noted that Applicant paid the utility application examination fee under 37 C.F.R. § 1.16(o), and not the higher reissue application examination fee required by § 1.16(r). See Electronic Payment Receipt (document code N417.PYMT in the Image File Wrapper), generated 29 February 2024, referring to “Utility” filing, search, and examination fees.1
In summary, the Office notes that although there is significant evidence or indicia that applicant intended to file the instant application as a reissue application, it was in fact initially filed as a utility application, and therefore the instant application:
(a) was/is processed as a 35 U.S.C. § 111(a) application.
(b) will be initially examined as a utility application, i.e., a 35 U.S.C. § 111(a) application.
As a utility application, the instant application:
(a) receives the benefit of the actual filing date of the application.
(b) does NOT receive the benefit of the filing date of the patent sought to be reissued because 35 U.S.C. § 100(i)(2) is not applicable to the present application as it is not a reissue application.
Accordingly, the instant application has an effective filing date of 29 June 2023, the filing date of the application. That being the case, the patent for which reissue was presumably sought, U.S. Patent 11,051,350, which issued on 29 June 2021, qualifies as prior art.
It is noted that there is no mechanism in the statute or regulations for changing the manner in which an application was filed from a regular application to a reissue application. Accordingly, Applicant must file a grantable petition under 37 C.F.R. § 1.182 in order for the instant application to be converted from a utility application into a reissue application.
In determining whether to grant such a petition, the Office will look generally to indicia of Applicant’s intent in determining the type of application that Applicant meant to file; therefore, any such petition should address how the record demonstrates Applicant’s intent. To warrant a conversion, Applicant must show evidence in the file that would independently point to the intention to file the application as a reissue application.
It is further noted that a grantable petition to convert the application to a reissue application must be accompanied by a proper reissue specification, claims, reissue declaration, 37 C.F.R. § 3.73 statement of assignee ownership and consent of the assignee, and all other requirements associated with the filing of a reissue application, including payment of the applicable reissue fees. As noted above, not all of these documents/fees have been filed in the instant application.
Applicants must file a grantable petition under 37 C.F.R. § 1.182 in order for the instant application to be converted from a utility application into a reissue application and avoid abandonment of the instant application.
Because the effective filing date of the instant application is on or after March 16, 2013, the AIA First Inventor to File (“AIA -FITF”) provisions apply.
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 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.
III. Claim Construction
During examination, claims are given the broadest reasonable interpretation consistent with the specification and limitations in the specification are not read into the claims. See MPEP § 2111 et seq.
Upon review of the original specification and prosecution history, the examiner has found no instances of lexicographic definitions, either express or implied, that are inconsistent with the ordinary and customary meaning of the respective terms. Therefore, for the purposes of claim construction, the examiner concludes that there are no claim terms for which applicant is acting as their own lexicographer. See MPEP § 2111.01(IV).
If applicant intended lexicographic definitions that have not been identified as such by the examiner, they are asked to note the term and the location in the specification or prosecution history supporting the lexicographic definition in response to this Office action.
Additionally, upon review of the pending claims, the examiner finds no instances where the claim terms explicitly include functional language which invokes the provisions of 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph.
IV. Preliminary Amendment
Applicant’s preliminary amendment, filed 29 June 2023, has been received and entered into the record. The preliminary amendment included amendments to the specification and claims.
Specifically, claims 1-20 were canceled, and new claim 21 was added.
Subsequently, on 29 February 2024, applicant filed a second preliminary amendment. This amendment included only original claims 1-20, previously canceled. There was no indication that claim 21, previously added, had been canceled.
This amendment is non-compliant, because previously canceled claims cannot be re-introduced in a utility application. If applicant wishes to prosecute originally-filed claims 1-20, they must be filed as new claims, with the numbering commencing after the highest pending claim. In this case, the new claims would be numbered beginning at claim 22.
The amendment of 29 February 2024 is not entered. Claim 21 is pending in the application.
V. Application Data Sheet
As noted above, applicant’s ADS indicated that the instant application was a reissue of application 16/368,847, U.S. Patent 11,051,350. However, the application was filed as a regular utility application under 35 U.S.C. § 111(a), and not a reissue application filed under 35 U.S.C. § 251(a).
In addition, in the continuity section of the ADS, there is no recitation of the relationship between application 16/368,847, and application 15/451,363. This amounts to a gap in the co-pendency requirement of 35 U.S.C. § 120.
VI. Specification
Applicant’s specification is objected to, because the cross-reference states that the application is a reissue application. However, the instant application was filed as a utility application under 35 U.S.C. §111(a).
VII. Drawings
The drawings filed on 29 June 2023 are objected to as improper for a utility application filed under 35 U.S.C. § 111(a), because they include stray information, specifically identifying information from an issued U.S. Patent.
VIII. Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 21 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 8,559,369. Although the claims at issue are not identical, they are not patentably distinct from each other because the only differences between the claims are minor and obvious differences in terminology (e.g., WiFi vs. wireless, communication module vs. WiFi network access card, etc.).
Claim 21 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of U.S. Patent No. 9,609,553. Although the claims at issue are not identical, they are not patentably distinct from each other because the only differences between the claims are minor and obvious differences in terminology (e.g., WiFi vs. wireless, wireless interface vs. WiFi network access card, etc.).
Claim 21 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of U.S. Patent No. 10,342,059. Although the claims at issue are not identical, they are not patentably distinct from each other because the only differences between the claims are minor and obvious differences in terminology (e.g., WiFi vs. wireless, wireless interface vs. WiFi network access card, etc.).
Claim 21 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of U.S. Patent No. 11,051,350. Although the claims at issue are not identical, they are not patentably distinct from each other because the only differences between the claims are minor and obvious differences in terminology (e.g., WiFi vs. wireless, wireless interface component vs. WiFi network access card, etc.).
IX. Power of Attorney
The Office has not received an appointment of a Power of Attorney.
X. Oath/Declaration
The Office has not received an Oath/Declaration signed by Applicants as required by 37 C.F.R. § 1.63.
XI. Claim Rejections - 35 USC § 102
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:
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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 21 is rejected under 35 U.S.C. § 102(a)(1) as being clearly anticipated by U.S. Patent 11,051,350 to Elad Pinhas Barkan (“Barkan”).
Both Barkan and the instant application share substantially identical disclosures (both drawings and specification). Consequently, there can be no claims presented in the instant application that would not be clearly anticipated by Barkan.
It is on this basis that claim 21 is rejected.
XII. Conclusion
Applicant(s) are reminded of the continuing obligation under 37 C.F.R. § 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this application.
Applicant(s) are also reminded that any amendments to the claims must comply with the provisions of 35 U.S.C. § 112 first paragraph, having clear support and antecedent basis in the specification. See 37 C.F.R. § 1.75(d)(1) and MPEP § 608.01(o).
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Luke S. Wassum whose telephone number is (571)272-4119. The examiner can normally be reached on Monday - Friday 8 AM-5 PM, alternate Fridays off.
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 571-273-9900.
In addition, INFORMAL or DRAFT communications may be faxed directly to the examiner at 571-273-4119. Such communications must be clearly marked as INFORMAL, DRAFT or UNOFFICIAL.
Patent Center
Patent Center is available to all users for electronic filing and management of patent applications. For more information, please visit the Patent Center information page at www.uspto.gov/patents/apply/patent-center.
/LUKE S WASSUM/Primary Examiner, Art Unit 3992
Conferees:
/Stephen J. Ralis/Primary Examiner, Art Unit 3992 Michael Fuelling /MF/
Supervisory Patent Examiner
Art Unit 3992
lsw
19 May 2026
1 The filing and search fees are the same for utility and reissue applications, 37 CFR § 1.16(a),(e), (k), & (n), but the examination fee for reissue applications is higher than for utility applications. In this case, Applicant paid the utility application fees and not the reissue application fees. The N417.PYMT form in the instant application lists utility fee codes 4011, 2111, and 2311 as having been paid.
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