REISSUE PROCEDURAL REMINDERS
Disclosure of other proceedings. 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 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 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 disclosure 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.”
CLAIM INTERPRETATION
During examination of an unexpired patent, 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.
A. Lexicographic Definitions
After careful review of the original specification, the prosecution history, and unless expressly noted otherwise by the Examiner below, the Examiner finds that she is unable to locate any lexicographic definitions (either express or implied) with reasonable clarity, deliberateness, and precision. Because the Examiner is unable to locate any lexicographic definitions with reasonable clarity, deliberateness, and precision, the Examiner concludes that Patent Owner is not their own lexicographer. See MPEP § 2111.01 IV.
Oath or Declaration
The reissue oath/declaration filed with this application is defective because it fails to identify at least one error which is relied upon to support the reissue application. See 37 CFR 1.175 and MPEP § 1414.
In addition MPEP 1414 II (B) recites:
“ … A general statement, e.g., that all claims are broadened, is not sufficient to satisfy this requirement. In identifying the error, it is sufficient that the reissue oath/declaration identify a single word, phrase, or expression in the specification or in an original claim, and how it renders the original patent wholly or partly inoperative or invalid.
(C) It is not sufficient for an oath/declaration to merely state “this application is being filed to correct errors in the patent which may be noted from the changes made in the disclosure.” Rather, the oath/declaration must specifically identify an error. In addition, it is not sufficient to merely reproduce the claims with brackets and underlining and state that such will identify the error. See In re Constant, 827 F.2d 728, 729, 3 USPQ2d 1479 (Fed. Cir.), cert. denied, 484 U.S. 894 (1987). Any error in the claims must be identified by reference to the specific claim(s) and the specific claim language wherein lies the error. A statement in the oath/declaration of "…failure to include a claim directed to …" and then reciting all the limitations of a newly added claim, would not be considered a sufficient "error" statement because applicant has not pointed out what the other claims lacked that the newly added claim has, or vice versa. Such a statement would be no better than saying in the reissue oath or declaration that "this application is being filed to correct errors in the patent which may be noted from the change made by adding new claim 10." In both cases, the error has not been identified …”. (emphasis added)
Consequently, the statement in the oath/declaration of "At least one error upon which reissue is based is described below. If the reissue is a broadening reissue, a claim that the application seeks to broaden must be identified and the box below must be checked:", would not be considered a sufficient "error" statement because applicant has not pointed out what the other claims lacked that the newly added claims have, or vice versa. Furthermore, the error statement appears incomplete.
Claim Rejections - 35 USC § 251
Claims 1-18 are rejected as being based upon a defective reissue Oath/Declaration under 35 U.S.C. 251 as set forth above. See 37 CFR 1.175.
The nature of the defect(s) in the Oath/Declaration is set forth in the discussion above in this Office action.
Claim Rejections - 35 USC § 112
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.
Claims 1-18 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claims contain 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 (see MPEP 2161.01).
In particular MPEP 2161.01 states:
“… original claims may lack written description when the claims define the invention in functional language specifying a desired result but the specification does not sufficiently describe how the function is performed or the result is achieved. For software, this can occur when the algorithm or steps/procedure for performing the computer function are not explained at all or are not explained in sufficient detail (simply restating the function recited in the claim is not necessarily sufficient). In other words, the algorithm or steps/procedure taken to perform the function must be described with sufficient detail so that one of ordinary skill in the art would understand how the inventor intended the function to be performed. See MPEP §§ 2163.02 and 2181, subsection IV.”
In this instance, independent claims 1 and 10 recite “computing engagement metrics” and using that metric to determine a display order of the plurality of search results. The original disclosure mentions term “metric” once in column 9, lines 61-63, however it does not recite any algorithm or method for calculating it. This limitation is essential in carrying out the steps disclosed in the method of claims 1-18, for instance, subsequent steps use the metric to order results. Therefore, lack of an algorithm or steps taken to perform the function of calculating the engagement metrics, in the original disclosure, does not comply with written description requirement as set forth in 35 U.S.C. 112(a).
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-18 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 1 and 10 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential steps, such omission amounting to a gap between the steps. See MPEP § 2172.01. The omitted steps are: the manner in which the engagement metrics are computed. Stating that this metric is based on “the set of prior actions, wherein a particular engagement metric for a particular provider of plurality of providers represents how engaged the particular provider”, does not allow one of ordinary skill in the art to come up with definitive way of computing such a matric, hence metes and bounds of the claimed invention cannot be ascertained.
With respect to claims 2-9 and 11-18, those claims are also rejected by the virtue of their dependency on claims 1 and 10 and for failing to remedy the deficiency of the independent claims on which they depend.
Claim Rejections - 35 USC § 251
Claims 10-18 are rejected under 35 U.S.C. 251 as being an improper recapture of broadened claimed subject matter surrendered in the application for the patent upon which the present reissue is based. See Greenliant Systems, Inc. et al v. Xicor LLC, 692 F.3d 1261, 103 USPQ2d 1951 (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). A broadening aspect is present in the reissue which was not present in the application for patent. The record of the application for the patent 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.
It is noted that the following is the three step test for determining recapture in reissue applications (see: MPEP 1412.02(I)):
“(1) first, we determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims;
(2) next, we determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and
(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.”
(Step 1: MPEP 1412.02(A)) In the instant case, the Applicant seeks to broaden original independent claim 10 by deleting/omitting at least the patent claim language requiring, “wherein the query is relayed through an intermediary system without revealing the identity of the user”.
(Step 2: MPEP 1412.02(B)) The record of the prior 15/233,729 application prosecution history indicates that in a Response filed on May 3rd, 2023, the Applicant amended the claim 10 as to include the limitation “wherein the query is relayed through an intermediary system without revealing the identity of the user”. Accordingly, the newly amended claim recited the allowable subject matter as explained in the step 1 above, hence they overcame the cited prior art (Collins et al (U.S. Pub. No. 2005/0038688), Julien (U.S. Pub. No. 2002/0129011) and Silver (U.S. Patent No. 2012/0059731)).
Subject matter is previously surrendered during the prosecution of the original application by reliance by Applicant to define the original patent claims over the art by presentation of new/amended claims to define over the art, or an argument/statement by applicant that a limitation of the claim(s) defines over the art. More specifically, on October 21st, 2022, the Patent Owner has amended an independent claim 1 by adding limitation “wherein the query is relayed through an intermediary system without revealing the identity of the user” and in the remarks the Patent Owner further explained that claim 1 should be allowed, as amended reciting the limitation “wherein the query is relayed through an intermediary system without revealing the identity of the user”. 1 Then in the amendment filed on May 3rd, 2023, the Patent Owner introduced the same amendment to the independent claim 10. Since both independent claims 1 and 10 share many similar limitations and are both directed to a method of providing search results to a user, same rationale as applied to claim 1 in the remarks filed on October 21st, 2022 also apply to claim 10 amended on May 3rd, 2023.
It is noted that a patent owner (reissue applicant) is bound by the argument that applicant relied upon to overcome an art rejection in the original application for the patent to be reissued, regardless of whether the Office adopted the argument in allowing the claims. Therefore, in the instant case the claim limitation of “wherein the query is relayed through an intermediary system without revealing the identity of the user” is surrendered subject matter and some of the broadening of the reissue claims, as noted above, are clearly in the area of the surrendered subject matter.
(Step 3: MPEP 1412.02(C)) It is noted that the reissue claims were not materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule. When analyzing a reissue claim for the possibility of impermissible recapture, there are two different types of analysis that must be performed. If the reissue claim “fails” either analysis, recapture exists. First, claim scope that was canceled or amended is deemed surrendered and therefore barred from reissue. Clement, 131 F.3d at 1470, 45 USPQ2d at 1165. Second, it must be determined whether the reissue claim omits or broadens any limitation that was added or argued during the original prosecution to overcome an art rejection. Such an omission in a reissue claim, even if it is accompanied by other limitations making the reissue claim narrower than the patent claim in other aspects, is impermissible recapture. Pannu, 258 F.3d at 1371-72, 59 USPQ2d at 1600. The surrendered subject matter, noted above, has been entirely eliminated from independent reissue claim 10. It is noted that the added limitations do not materially narrow the patent claims to avoid recapture.
Therefore, broadened independent reissue claim 10 attempt impermissible recapture of subject matter surrendered during prosecution of the 15/233,729 application. Dependent reissue claims dependent upon the independent claims mentioned above are rejected for similar rationale.
Allowable Subject Matter
Claims 1-18 include allowable subject matter and would be allowed contingent upon resolving rejections recited above.
The following is a statement of reasons for the indication of allowable subject matter:
With respect to claims 1 and 10, the prior art of record does not anticipate nor render obvious the method as disclosed in claims 1 and 10, comprising the steps of “identifying a set of prior actions of associated providers associated with the provider-associated matches, wherein the set of prior actions includes a provider association associating the provider with a prior action of that provider” and “determining, at the computer system, a display order of the plurality of search results based on the engagement metrics, whereby search results associated with a first provider are more prominent in the display order than a second provider if the first provider has a higher engagement metric than the second provider”.
With respect to claims 2-9 and 11-18, those claims would be allowed by the virtue of their dependency on claims 1 and 10 respectively.
Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANGELA M LIE whose telephone number is (571)272-8445. The examiner can normally be reached on M-F, 5:30 am - 2:00 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Andrew Fischer can be reached on 571-272-6779.
All correspondence relating to this reissue proceeding should be directed:
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/ANGELA M LIE/Primary Examiner, Art Unit 3992
Conferees:
/LUKE S WASSUM/Primary Examiner, Art Unit 3992
/ANDREW J. FISCHER/Supervisory Patent Examiner, Art Unit 3992
1 Remarks filed on 10/21/2022 in U.S. Application No. 15/233,729, page 7, paragraph 4