DETAILED ACTION
I. ACKNOWLEDGEMENTS
This non-final Office action addresses U.S. reissue application No. 18/382,739 (“739 Reissue Application” or “instant application”). Based upon a review of the instant application, the actual filing date is Oct. 23, 2023 (“739 Actual Filing Date”). Because the instant reissue application was filed on or after September 16, 2012, the statutory provisions of the America Invents Act (“AIA ”) will govern this proceeding.
The 739 Reissue Application is a reissue application of U.S. Patent No. 9,817,299 (“299 Patent”) titled “HIGH-DEFINITION PYLON-MOUNTED CAMERA ASSEMBLY WITH MOUNTING STRUCTURE.” The application for the 299 Patent was filed on Jul. 22, 2016 and assigned by the Office US patent application number 15/216,989 (“989 Application”) and issued on Nov. 14, 2017 with claims 1-20 (“Originally Patented Claims”).
II. OTHER PROCEEDINGS
Based upon Applicant’s statements as set forth in the instant application and after the Examiner's independent review of the 299 Patent itself and its prosecution history, the Examiner finds that she cannot locate any ongoing proceeding before the Office or current ongoing litigation.
Also based upon the Examiner's independent review of the 299 Patent itself and the prosecution history, the Examiner finds that she cannot locate any previous reexaminations (ex parte or inter parts), supplemental examinations, or certificates of correction.
III. PRIORITY CLAIMS
Based upon a review of the instant reissue application and 299 Patent, the Examiner finds that the instant reissue application claims domestic priority to provisional 62/195,894 filed on Jul. 23, 2015 and provisional 62/306,358 filed on Mar. 10, 2016. The instant reissue application is a continuation reissue application of 16/683,110, now RE49,738E.
The instant reissue application does not claim any foreign priority.
Because the effective filing date of the instant application is on or after March 16, 2013, the present application is being examined under the AIA first to file provisions.
IV. PRELIMINARY AMENDMENT
The 739 Reissue Application contains a preliminary amendment (“739 Preliminary Amendment”). The 739 Preliminary Amendment contained, among other things, “REMARKS” (“2023 Remarks”), “Amendment to the Specification” (“2023 Specification Amendment”), a “Reissue Application Declaration by the Assignee” (“2023 Reissue Dec”) and “AMENDMENTS TO THE CLAIMS” (“2023 Claim Amendment”), which added new claims 21-30.
V. STATUS OF CLAIMS
In light of the above:
Claims 1-30 are currently pending (“Pending Claims”).
Claims 1-30 are currently examined (“Examined Claims”).
Regarding the Examined Claims and as a result of this Office action:
Claims 1-30 are rejected.
VI. CLAIM INTERPRETATION
A. Lexicographic Definitions
After careful review of the original specification and unless expressly noted otherwise by the Examiner, the Examiner locates a lexicographic definition in the original specification with the required clarity, deliberateness, and precision for “Pylon” enclosed below. See MPEP § 2111.01 IV.
Pylon: “an orange marker placed at each of the corners of the end-zone of a football field that are usually made of a padded material. They are used as a visual aid to mark the inside corners of the end-zone. The pylons are not permanent and they move easily when hit.” (col. 8, lines 45-49 of the 299 Patent). “The pylon is considered part of the field; it cannot interfere with a play. The pylons were introduced because game officials needed an easy way to see the edges of the end-zone from a distance” (col. 8, lines 51-55 of the 299 Patent). “Pylon is molded from high-density, impact resistant foam, integrated with a break-away connect providing for non-destructively breaking and remaking electrical connections” (Abstract, the 299 Patent).
B. 'Sources' for the 'Broadest Reasonable Interpretation'
For terms not lexicographically defined by Patent Owner, the Examiner hereby adopts the following interpretations under the broadest reasonable interpretation (BRI) standard. In other words, the Examiner has provided the following interpretations simply as express notice of how she is interpreting particular terms under the broadest reasonable interpretation standard. Additionally, these interpretations are only a guide to claim terminology since claim terms must be interpreted in context of the surrounding claim language.1 In accordance with In re Morris, 127 F.3d 1048, 1056, 44 USPQ2d 1023, 1029 (Fed. Cir. 1997), the Examiner points to these other “sources” to support his interpretation of the claims. Finally, the following list is not intended to be exhaustive in any way:
High-definition: “video image with considerably more than 480 horizontal lines or 576 horizontal lines (Europe) is considered high-definition. … Images of standard resolution captured by a high-speed camera at rates faster than normal (60 frames/second North America, 50 fps Europe) may be considered high-definition in some contexts” (the 299 Patent, col. 2, line 64-col. 3, line 7).
Non-Locking connector: “In this case, in place of the pylon connector 30 and base connector 20, the electrical connection between the camera and the transmitter is made through another type of non-locking connector such as a USB3 connector, which still allows for the pylon to non-destructively break away from the wires in the ground.” (col. 16, lines 46-51 of the 299 Patent). Therefore, a non-locking connector can be a connector that can break away such as a USB3 connector.
C. 35 U.S.C. § 112 ¶ F
The following is a quotation of pre-AIA § 112 ¶ F:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
A second exception is when a claimed phrase is interpreted in accordance with 35 U.S.C. § 112 F paragraph (“§ 112 ¶ F”). See MPEP § 2181 et seq. To invoke § 112 ¶ F, a claimed phrase must meet the three-prong analysis (“3 Prong Analysis”) as set forth in MPEP § 2181 (I). The following phrases will be first identified and then analyzed using the MPEP’s 3 Prong Analysis to determine if the claimed phrases invoke § 112 ¶ F. If a phrase invokes § 112 ¶ F, the corresponding structure will also be determined. The Examiner has reviewed the Pending claims and has concluded that the Pending claims do not invoke § 112 ¶ F.
VII. SPECIFICATION
37 CFR 1.177 states:
(a) The Office may reissue a patent as multiple reissue patents. If applicant files more than one application for the reissue of a single patent, each such application must contain or be amended to contain in the first sentence of the specification a notice stating that more than one reissue application has been filed and identifying each of the reissue applications by relationship, application number and filing date. The Office may correct by certificate of correction under § 1.322 any reissue patent resulting from an application to which this paragraph applies that does not contain the required notice.
The Examiner finds that there are at least two reissue applications filed for the 299 patent, i.e., 18/382,739 and 16/683,110. The specification is objected to because the specification has been not amended to state more than one application for the reissue of the 299 patent has been filed and the specification fails to identify each of the reissue applications by relationship, application number and filing date.
VIII. CLAIM REJECTIONS - 35 USC § 251
The following is a quotation of the appropriate paragraphs of pre-AIA 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.
A. Defective Oath/Declaration
The oath or declaration must properly identify at least one error under 35 U.S.C. 251 being relied upon as a basis for the reissue (37 CFR 1.175(a)). Specific changes or amendments to the claims must be identified. Any error in the claims must be identified by reference to the specific claim(s) and the specific claim language wherein lies the error. See MPEP § 1414. Note that the error that supports the reissue is not limited to an error in the claims but may exist elsewhere in the patent (e.g., in the specification, drawings, etc.) as long as the error is an error that causes the patent to be wholly or partly inoperative or invalid.
The reissue oath/declaration filed with this application is defective (see 37 CFR 1.175 and MPEP § 1414) because of the following: the Reissue Application Declaration fails to identify the error in the claims by reference to the specific claim(s) and the specific claim language wherein lies the error.
Claims 1-30 are rejected as being based upon a defective reissue application under 35 U.S.C. 251 as set forth above. See 37 CFR 1.175.
IX. 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 obviousness-type 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
A. RE49,738
Claims 1-30 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-32 of U.S. Patent No. RE49,738 (“’738 Patent”). Although the conflicting claims are not identical, they are not patentably distinct from each other because
Claims 1-20 and 1-20 of the ‘738 Patent recite common subject matter; So are the following claims and their corresponding claims of the patent listed in an order pair notation: (21, 24), (22, 24), (23, 24), (24, 28), (25, 24), (26, 24), (27, 24), (28, 26), (29, 26), (30, 24).
Whereby claims 1-30, which recites the open ended transitional phrase “comprising”, does not preclude the additional elements recited by claims 1-20, 24, 26, and 28 of the patent, and
Whereby the elements of claims 1-30 are fully anticipated or make obvious by patent claims 1-20.
X. CLAIM REJECTIONS - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
A. Rejections
Claim 30 is rejected under 35 U.S.C. § 112 (b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the applicant regards as the invention.
Claim 30 depends on claim 21 and recites “wherein said non-locking connector is operatively arranged to engage another non-locking connector of an external cable, thereby forming an electrical connection between said external cable and said one or more high-definition cameras.”
It is not clear whether the claim is directed to the combination of elements in claim 21 and the “another non-locking connecter of an external cable” or to the sub-combination of elements in claim 21. In other words, does a potential infringer need to possess another non-locking connector of an external cable to infringe the claim?
Further, claim 30 is a use claim which recites the use of the non-locking connector and therefore it is indefinite as claim 30 is directed to an apparatus claim.
B. Trying to Construe
The Examiner has considered all limitations in the Examined Claims even though some claim limitations are indefinite. See MPEP § 2143.03 I. ¶1 noting that “[a] claim limitation which is considered indefinite cannot be disregarded.” However, the Examiner concludes that because claim 30 is indefinite under § 112(b), these claims, by definition, cannot be properly construed. See e.g. Honeywell International Inc. v. ITC, 341 F.3d 1332, 1342, 68 USPQ2d 1023, 1030 (Fed. Cir. 2003) (“Because the claims are indefinite, the claims, by definition, cannot be construed.”).
Therefore in accordance with MPEP § 2173.06 and the USPTO’s policy of trying to advance prosecution by providing prior art rejections (or indicating allowance of the claims) even though certain claims are indefinite, these indefinite claims are construed and the prior art is currently applied as much as practically possible. Applicant is reminded that when a particular § 112(b) rejection is overcome by Applicant and the claim limitation can then then be properly construed, the Examiner will reevaluate the prior art using this proper claim construction and then reassess the patentability of the claim over the prior art. For purposes of applying the prior art in this Office action only, the claim is interpreted as comprising one non-locking connector. It is only required that the non-locking connector capable of connecting to another non-locking connector.
XI. CLAIM REJECTIONS - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
A. Claims 21-28 and 30 are rejected under 35 U.S.C. 103 as being unpatentable over Wickramaratna (US Patent Pub. 2004/0239759) in view of Huang et al (US Patent Pub 2015/0116590) further in view of Chien (US Patent Pub 2015/0271375).
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-Figs. 1 and 2 of Wickramaratna.
Regarding claim 21, Wickramaratna teaches a wired high-definition pylon-mounted camera assembly, comprising:
a pylon having one or more cavities therein, each of said one or more cavities having an opening in a surface of said pylon (Figs. 1-3, a hole inside the pylon where a camera is mounted.);
a housing having one or more high-definition cameras and disposed in one of said one or more cavities through one of said openings (Figs. 1-3, camera mounted in the hole inside the pylon, where the camera is mounted is the housing);
However Wickramaratna does not expressly disclose:
a cooling fan disposed in said one of said one or more cavities, and,
a flexible cable terminated at a first end by a non-locking connector, said flexible cable in communication with said one or more high-definition cameras at a second end thereof.
In the field of providing protective apparatus for video cameras (Abstract, Huang), Huang discloses:
[0035] FIG. 4 shows a perspective view of a camera configured into a protective housing with temperature-regulating function according to the fourth embodiment of the invention. In this embodiment, a fan 500 is disposed inside the protective housing 100, for example within the base 120, with the fan 500 blowing to improve flowing of air inside the protective housing 100, to enhance the heat transfer coefficient of convection air inside the protective housing 100. The field of view of the camera 200 does not be affected by configuration of the fan 500.
-[0035] of Huang, emphasis added.
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-Fig. 4 of Huang showing the camera 200 and fan 500.
TSM motivation
It is desirable to improve flowing of air inside the protective housing 100, to enhance the heat transfer coefficient of convection air in the housing for the video camera ([0035] of Huang). Therefore it would have been obvious to one of ordinary skills in the art, at the time the 299 Patent was effectively filed, to use a fan sub-assembly as that by Huang in the camera housing assembly of Wickramaratna.
KSR motivation
The combination of Wickramaratna with Huang is also supported by (C) Use of known technique to improve similar devices (methods, or products) in the same way because (1) the base device or camera assembly of Wickramaratna can be improved by adding a fan; (2) the device of Huang is improved by a fan to provide cooling effect for the camera; (3) an ordinary skill in the art would have added a fan to the camera assembly of Wickramaratna so that camera or electronic components of Wickramaratna can operate in better temperature environment. Therefore it would have been obvious to one of ordinary skills in the art, at the time the 299 Patent was effectively filed, to use a fan sub-assembly as that by Huang in the pylon of Wickramaratna.
Wickramaratna also does not expressly disclose:
a flexible cable terminated at a first end by a non-locking connector, said flexible cable in communication with said one or more high-definition cameras at a second end thereof.
In the field of built-in digital data system for recording image and sound (Title and abstract), Chien discloses
[0076] The invention for Light device also provides a webcam having an auto tracking means and power supply connected to an unlimited power source to a USB interface, the webcam including at least one camera head having means for capturing images, data, or sound at a desired shooting angle, resolution, color, brightness, and sharpness, a motor, and sensor means for causing the move the camera head to follow a moving object or person, and means for storing or transmitting data captured by the camera head to one of a display, computer, communication device, phone, Internet, website, e-mail, or auto dialing system. The webcam may include a USB adaptor for connection to a computer or communication equipment with a USB port, with the webcam being activated when connected with the power source to carry out predetermined image capture functions and to capture digital data under predetermined environmental conditions.
…
[0019] Furthermore, the unlimited power source (outdoor application) or big electricity capacity storage unit (indoor battery operated application) may use prong means, a socket base lamp holder, and conductive means, or a USB-cable that directly comes out of the device housing, or a regular 120 Volt 60 Hz plug wire that directly comes out of the device housing and connects with the public electricity system for home, house, and public areas. The electric delivery from device to AC or DC power source may select from convention market for all kind of skill and method and kits. One of the best applications for the current invention is as a webcam that already used for all kinds of computer, laptop, phone, or communication equipment. Or driving-Cam already use for all moving traffic device. Both are not expensive like the street police department use Traffic-Cam. Conventional webcams are limited in that they cannot follow moving people or objects so people have to sit in front of the webcam to talk with people. Furthermore, (solve 1) The webcam lack of the brightness during the night time so can not have good photos, image to be seen at dark or night time environment.
-¶¶ [0076] and [0019] of Chien, emphasis added.
See also [0020] and [0024] of Chien. As can be seen above, Chien discloses a webcam having a power supply connected to an unlimited power source via a USB interface, a non-locking connector, and an unlimited power source includes electricity delivered with public electricity system for home, house and public areas including wires buried inground. Chien also discloses the web cam can be connected via a USB connector to a computer, which is a video receiver, i.e., Chien discloses or makes obvious “a flexible cable terminated at a first end by a non-locking connector, said flexible cable in communication with said one or more high-definition cameras at a second end thereof.”
Both of Wickramaratna and Chien are directed towards capturing video images, although the fields of application may be different but they are reasonable pertinent to the particular problem with which the applicant was concerned, i.e., capturing videos and transferring videos to a computer or a device for storage or display.
TSM motivation
Chien discusses the needs for incorporating low-cost super compact Digital Video (DV) device in a monitoring light fixture and discloses “[0016] The preferred DV device may have the most advanced technical features and functions available from the marketplace, which may include any combination of a ...; (F9) USB means for data delivery.” Using a non-locking connector will make integration with a preferred DV device on the market a lot more convenient and efficient.
KSR Motivation
Further, the combination of Chien with Wickramaratna is supported by (B) Simple substitution of one known element for another to obtain predictable results because substituting the connector used in Wickramaratna which presents a based method or device by the known non-locking connector or USB connector used by Chien that is an improvement to the base method and device of Wickramaratna will obtain predictable results.
Regarding claim 22, Wickramaratna, Huang and Chien teach the wired high-definition pylon-mounted camera assembly recited in Claim 21, wherein said housing includes at least a first flange and a second flange, said flanges connected and spaced a part (Huang, Fig. 4, shows a first flange 121 and a second flange 122).
Regarding claim 23, Wickramaratna, Huang and Chien the wired high-definition pylon-mounted camera assembly recited in Claim 22, wherein said one or more high-definition cameras are secured substantially between said flanges (Huang, Fig. 4, [0026], camera 200 is fixed to the base 120 by a locking screw member ).
Regarding claim 24, Wickramaratna, Huang and Chien teach the wired high-definition pylon-mounted camera assembly recited in Claim 22, wherein said one or more cooling fans are secured substantially between said flanges (Huang, Fig. 4, 500 in Fig. 4 is the fan. [0035]).
Regarding claim 25, Wickramaratna, Huang and Chien teach the wired high-definition pylon-mounted camera assembly recited in Claim 22, wherein both of said one or more high-definition cameras and said one or more cooling fan assemblies are secured substantially between said flanges (Huang, Fig. 4, [0035]).
Regarding claim 26, Wickramaratna, Huang and Chien teach the wired high-definition pylon-mounted camera assembly recited in Claim 22, wherein each of said one or more high-definition cameras include a lens, said lens operatively arranged at least partially within one of: said first flange: and, said second flange (Jayaram, Figs. 6-7 and Figs. 8-9).
Regarding claim 27, Wickramaratna, Huang and Chien teach the wired high-definition pylon-mounted camera assembly recited in Claim 22, wherein said first flange and said second flange are connected by at least one spacer (Huang, the flange 121 and flange 122 are connected by a spacer).
Regarding claim 28, Wickramaratna, Huang and Chien teach the wired high-definition pylon-mounted camera assembly recited in Claim 27, wherein said at least one spacer comprises at least: a bolt; and, a sleeve (Huang, Fig. 4, the spacer has a sleeve).
Regarding claim 30, Wickramaratna, Huang and Chien teach the wired high-definition pylon-mounted camera assembly recited in Claim 21, wherein said non-locking connector is operatively arranged to engage another non-locking connector of an external cable, thereby forming an electrical connection between said external cable and said one or more high-definition cameras (Chien, [0076] and [0019]-[0021] and [0024], also see the rejection of claim 21 above).
B. Claim 29 is rejected under 35 U.S.C. 103 as being unpatentable over Wickramaratna (US Patent Pub. 2004/0239759) in view of Huang et al (US Patent Pub 2015/0116590) further in view of Chien (US Patent Pub 2015/0271375) further in view of Jayaram et al (US 2011/0249100).
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-Fig. 19 of Jayaram.
Regarding claim 29, Wickramaratna, Jayaram and Chien teach the wired high-definition pylon-mounted camera assembly recited in Claim 28, wherein said at least one spacer further comprises a nut operatively arranged to threadably engage said bolt.
In the same field of capturing images with cameras, Jayaram discloses a spacer between two flanges comprising at least: a bot; and a sleeve (Jayaram, Figs. 6-7, Figs. 8-9 and Figs. 18-20) and Jayaram discloses using a nut operatively arranged to threadably engage said bolt (Jayaram, Figs. 6-7, Figs. 8-9 and Figs. 18-20).
To the extent that the spacer of Huang does not uses a nut operatively arrange to threadably engage a bolt, Jayaram discloses it.
The combination of Wickramaratna with Huang, Chien and further with Jayaram is supported by KSR Rationale (B) Simple substitution of one known element for another to obtain predictable results because (1) Huang discloses connecting two flanges connected together; (2) connecting two flanges by a spacer with a nut and bolt are well known in the art; (3) an ordinary skill in the art could have substitute the connection method of Huang of the spacer to the flanges by using nut and bolt as disclosed by Jayaram. Therefore it would have been obvious to one of ordinary skill in the art, at the time of invention, to use the method of Jayaram to connect two flanges.
XII. ALLOWABLE SUBJECT MATTER
Claims 1-20 would be allowed if the rejections under 35 USC § 251 and double patenting were overcome.
The following is a statement of reasons for the indication of allowable subject matter: the term “pylon” is defined lexicographically in the 299 Patent and summarized in Section VI.A above.
For claims 1-20, the prior art on the record including Wickramaratna fails to teach a pylon-mounted camera assembly as defined in Section VI.A having one or more cavities and “each of said one or more cavities having a first cavity end and a second cavity end, at least one of said one or more cavities having one of said camera sub-assemblies contained in said first end and one of said fan assemblies contained in said second end.” Huang discloses the fan in the same cavity as the camera but does not disclose the fan is located at the end.
XIII. CONCLUSION
A. Reissue Application Reminders
Disclosure of other proceedings. Applicants are 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 Patent Under Reissue is or was involved. These proceedings would include interferences, reissues, reexaminations, and litigation.
Disclosure of material information. Applicant is further 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 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.
Manner of making amendments. Applicant is reminded that changes to the Instant Application must comply with 37 C.F.R. § 1.173, such that all amendments are made in respect to the Patent Under Reissue as opposed to any prior changes entered in the Instant Application. All added material must be underlined, and all omitted material must be enclosed in brackets, in accordance with Rule 173. Applicant may submit an appendix to any response in which claims are marked up to show changes with respect to a previous set of claims, however, such claims should be clearly denoted as “not for entry.”
B. Suggested Examples: Preventing Both New Matter Rejections & Objections to the Specification in the Future
Applicants are respectfully reminded that any suggestions or examples of claim language provided by the Examiner are just that—suggestions or examples—and do not constitute a formal requirement mandated by the Examiner. To be especially clear, any suggestion or example provided in this Office Action (or in any future office action) does not constitute a formal requirement mandated by the Examiner.
Should Applicants decide to amend the claims, Applicant is also reminded that—like always—no new matter is allowed. The Examiner therefore leaves it up to Applicants to choose the precise claim language of the amendment in order to ensure that the amended language complies with 35 U.S.C. § 112 1st paragraph.
Independent of the requirements under 35 U.S.C. § 112 1st paragraph, Applicants are also respectfully reminded that when amending a particular claim, all claim terms must have clear support or antecedent basis in the specification. See 37 C.F.R. § 1.75(d)(1) and MPEP § 608.01(o). Should Applicants amend the claims such that the claim language no longer has clear support or antecedent basis in the specification, an objection to the specification may result. Therefore, in these situations where the amended claim language does not have clear support or antecedent basis in the specification and to prevent a subsequent ‘Objection to the Specification’ in the next office action, Applicants are encouraged to either (1) re-evaluate the amendment and change the claim language so the claims do have clear support or antecedent basis or, (2) amend the specification to ensure that the claim language does have clear support or antecedent basis. See again MPEP § 608.01(o) (¶3). Should Applicants choose to amend the specification, Applicants are reminded that—like always—no new matter in the specification is allowed. See 35 U.S.C. § 132(a). If Applicants have any questions on this matter, Applicants are encouraged to contact the Examiner via the telephone number listed below.
C. Contact Information
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to YUZHEN GE whose telephone number is (571)272-7636. The Examiner can normally be reached on Monday-Thursday 8:00-6:00.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor Andrew J. Fischer can be reached on 571-272-6779. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of reissue applications may be obtained from the USPTO’s “Patent Center.” Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov.
Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at (866) 217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call (800) 786-9199 (IN USA OR CANADA) or (571) 272-1000.
/Yuzhen Ge/
Primary Examiner, Art Unit 3992
Conferees:
/ANDREW J. FISCHER/Supervisory Patent Examiner, Art Unit 3992
1 While most interpretations are cited because these terms are found in the claims, the Examiner may have provided additional interpretations to help interpret words, phrases, or concepts found in the interpretations themselves, the 299 Patent, or in the prior art