NON-FINAL OFFICE ACTION
This non-final office action addresses U.S. Application No. 18/423,943, which is a broadening reissue application of U.S. Application No. 16/820,405 (hereinafter the “405 Application"), entitled OVERCURRENT PROTECTION BASED ON ZERO CURRENT DETECTION, which issued as U.S. Patent No. 11,251,709 (hereinafter the “709 Patent").
The status of the claims is as follows:
Claims 1-15 and 20-24 are pending and examined herein.
Claims 1-15 and 20-24 are rejected.
I. STATUS OF APPLICATION/CLAIMS
Applicant filed a preliminary amendment on January 26, 2024 (hereinafter the “2024 Preliminary Amendment”) along with the filing of the present application. In the 2024 Preliminary Amendment, patent claims 1, 2, 5, 7-10, 12-15 were amended patent claims 3, 4, 6, 11 and 20 were unchanged, patent claims 16-19 were cancelled and new claims 21-24 were added. Furthermore, the specification was amended to amend the cross-noting information.
Therefore, claims 1-15 and 20-24 are pending and will be examined herein.
II. PRIORITY
Examiners acknowledge the Applicant’s claim that present application is a reissue of the 405 Application. Examiners further acknowledge the claim that the 405 Application is a continuation of U.S. Patent Application No. 16/378,529, filed April 8, 2019, which issued as U.S. Patent No. 10/166,147, which is a continuation of U.S. Patent Application No. 16/190,794, filed November 14, 2018, now abandoned.
III. RECAPTURE REJECTIONS
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.
Claims 1-15 and 20-24 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.
Below are the pertinent Examiners’ findings of fact relevant to this rejection:
03/16/2020 The 405 Application was filed and contained original claims 1-20. Original claims 1 and 16 were independent claims.
04/26/2021 The Office mailed a First Action Interview Office Action Summary (hereinafter the “2021 First Action”), which rejected claims 1-3 and 16 over prior art and objected to claims 4-15 and 17-20.
07/08/2021 Applicant filed an amendment in response to the 2021 First Action (hereinafter the “2021 Amendment”). In the 2021 Amendment, original claims 1, 11, 16 and 20 were amended, original claims 2, 4-10, 12-15 and 17-19 were unchanged, original claim 3 was cancelled and new claims 21 was added. Original independent claims 1 and 16 were amended as follows:
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Furthermore, Applicant provided the following arguments:
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09/21/2021 The Office issued a Notice of Allowability, which allowed original claims 1, 2 and 4-21.
09/29/2021 Applicant filed a further amendment to address minor typographical errors in claims 5, 11, 16 and 20.
12/21/2021 Applicant filed a further amendment to address minor typographical errors in claims 9, 15 and 16.
02/15/2022 The 709 Patent issued. Original claims 1, 2, 4-21 were renumbered patent claims 1-20. Original independent claims 1 and 16 were renumbered patent claims 1 and 15, respectively.
Based on these findings of fact, Examiners find that Applicant specifically amended original claims 1 and 16 to achieve allowance of patent claims 1 and 15 to recited features related to the resistive element connected between the first source and the second source. Furthermore, Examiners find that Applicant also specifically argued the patentability of the claims based on this same feature.
Therefore, based on the above findings of fact and conclusions, Examiners herein determine the following surrender-generating limitations (i.e., limitations that were presented, argued or stated to make the claims patentable and thus generate surrender of the claimed subject matter):
SGL(a) “a resistive element, wherein the second source is connected to the first source by the resistive element” as recited in patent claims 1-14 which was added to the claims and argued by Applicant to overcome a prior art rejection.
SGL(b) “a resistive element connecting the first source to the second source” as recited in patent claims 15-20 which was added to the claims and argued by Applicant to overcome a prior art rejection.
A reissue will not be granted to "recapture" claimed subject matter which was surrendered in an application to obtain the original patent. See MPEP §1412.20. A three step process is used to apply the recapture rule:
“(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.” See MPEP §1412.02(I).
A. Recapture in Claims 1-14, 21 and 22 related to SGL(a)
Regarding step 1, upon review of apparatus claims 1-14, 21 and 22 of the present reissue application in comparison to apparatus patent claims 1-14 of the 709 Patent, Examiners find that Applicant through the 2024 Preliminary Amendment has broadened the scope of claims by deleting the phrase “a resistive element, wherein the second source is connected to the first source by the resistive element,” i.e., SGL(a), which substantially broadens the scope of the claims as compared to the claims as patented.
Regarding step 2, Examiners find that the feature that has been deleted from claims 1-14, 21 and 22 in the 2024 Preliminary Amendment is directly related to the surrendered subject matter. Specifically, Examiners find Applicant has deleted precisely SGL(a) from the claims.
Regarding step 3, Examiners determine that the claims 1-14, 21 and 22 have not been materially narrowed in other respects to overcome the broadening aspect to avoid recapture. The recapture rule is violated when a limitation added during prosecution is eliminated entirely, even if other narrowing limitations are added to the claim. See MPEP 1412.02 II. B. Examiners find Applicant has specifically deleted the entirety of SGL(a) from the patent claims which was precisely the phrase that was added to achieve allowance. Furthermore, Examiners find the claims have not been materially narrowed in any aspects related to SGL(a), i.e., the resistive element. See MPEP 1412.02 II. C. Accordingly, Examiners do not find that claims 1-14, 21 and 22 are materially narrowed in any substantial respects related to SGL(a).
In view of the forgoing, since Applicant specifically amended the scope of claims 1-14, 21 and 22 in the 2024 Preliminary Amendment to remove SLG(a) which was added to the claims to achieve allowance during prosecution of the 405 Application, Examiners conclude Applicant is attempting to improperly recapture surrendered subject matter given up in SGL(a), which requires the resistive element and its connections.
B. Recapture in Claims 15, 20, 23 and 24 related to SGL(b)
Regarding step 1, upon review of claims 15, 20, 23 and 24 of the present reissue application in comparison to patent claims 15-20 of the 709 Patent, Examiners find that Applicant through the 2024 Preliminary Amendment has broadened the scope of claims by deleting the phrase “a resistive element connecting the first source to the second source,” i.e., SGL(b), which substantially broadens the scope of the claims as compared to the claims as patented.
Regarding step 2, Examiners find that the feature that has been deleted from claims 15, 20, 23 and 24 in the 2024 Preliminary Amendment is directly related to the surrendered subject matter. Specifically, Examiners find Applicant has deleted precisely SGL(b) from these claims.
Regarding step 3, Examiners determine that the claims 15, 20, 23 and 24 have not been materially narrowed in other respects to overcome the broadening aspect to avoid recapture. The recapture rule is violated when a limitation added during prosecution is eliminated entirely, even if other narrowing limitations are added to the claim. See MPEP 1412.02 II. B. Examiners find Applicant has specifically deleted the entirety of SGL(b) from the patent claims which was precisely the phrase that was added to achieve allowance. Furthermore, Examiners find the claims have not been materially narrowed in any aspects related to SGL(b), i.e., the resistive element. See MPEP 1412.02 II. C. Accordingly, Examiners do not find that claims 15, 20, 23 and 24 are materially narrowed in any substantial respects related to SGL(b).
In view of the forgoing, since Applicant specifically amended the scope of claims 15, 20, 23 and 24 in the 2024 Preliminary Amendment to remove SLG(b) which was added to the claims to achieve allowance during prosecution of the 405 Application, Examiners conclude Applicant is attempting to improperly recapture surrendered subject matter given up in SGL(b), which requires the resistive element and its connections.
IV. REISSUE OATH/DECLARATION
37 C.F.R. §1.175 Reissue oath or declaration (in part).
(a) The 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.
(b) If 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.
The reissue declaration filed January 26, 2024, along with the filing of the present application (hereinafter the “2024 Reissue Declaration”) is acknowledged. However, Examiners object to the 2024 Reissue Declaration on the basis that Examiners find that it fails to state a proper error in the claims on which to base this reissue.
While Examiners recognize the statement in the 2024 Reissue Declarations that Applicant notes the basis for filing the reissue application is:
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Examiners find deleting the features related to resistive element raises an issue of recapture. Recapture is not a proper basis on which to support a reissue application and thus the error statement in the 2024 Reissue Declaration does not specify a proper error for this reissue application.
Thus, Applicant is required to provide a new declaration with a proper statement of error with respect to 709 Patent identifying “a single word, phrase, or expression” from the claims of the 709 Patent that rendered the 709 Patent invalid or inoperative. Furthermore, the statement must also specify a claim which Applicant seeks to broaden via this reissue application.
V. CLAIM REJECTIONS – 35 U.S.C. §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.
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. New Matter/Written Description Rejections
Claims 1-15 and 20-24 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 at the time the application was filed, had possession of the claimed invention.
Claims 1 and 15 have been amended from those patented to recite that “the first source includes a substantially linear first source region defining a gap therein…” and “the second source includes a substantially linear second source region disposed in the gap…” However, Examiners do not find support for such a feature in the specification or drawings of the 709 Patent. As stated by Applicant, support for these amendments comes from FIGS. 40 and 41, of which FIG. 41 is reprinted below. See 2024 Preliminary Amendment page 7. However, Examiners first do not find a single source region being linear and defining a gap therein, rather FIG. 41 illustrates eight different
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709 Patent FIG. 41
linear source regions 4110S defining several gap between these separate linear source regions. Specifically, no single linear source region defines any gap. Examiners second are unable to find, following a review of FIGS. 40 and 41, any second source region shown, and specifically cannot find any second source regions in any of the gaps between the multiple first source regions 4110S shown. Furthermore, while the specification refers to a second source region 4120S, Examiners find no statement or disclosure as to the locations of this source region or how it relates to the first source region 4110S, and further do not find specifically any second source regions 4120S shown in FIG. 41 above. Accordingly, Examiners are unable to find written description support from both the drawings the specification of the features of the claims as recited. Therefore, Examiners conclude that to now state the second source region is located in a specific gap within the first source region lacks a written description in the specification of the 709 Patent and is new matter.
B. Indefiniteness Rejections
Claims 1-16 and 20-24 are 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 inventor or a joint inventor regards as the invention. These claims recite “the first source includes a substantially linear first source region defining a gap…” However, as noted above, Examiners are unable to find a disclosure or drawing of such a feature. Furthermore, if the region is linear in shape, Examiners are unable to determine or conceive how such a linear shape defines a “gap.” What possible shape of linear region would define a gap? Examiners find this recitation is either not possible or does not make sense. Thus, Examiners are unable to determine what structures is implied by this recitation or even how the specification of the 709 Patent and thus conclude claims 1-16 and 20-24 requiring these features are indefinite. Specifically, what “gap” should examiners be looking for if Examiners find a linear source region?
VI. REJECTIONS – 35 U.S.C. §251
35 U.S.C. §251 Reissue of defective patents.
(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. Rejection Based on Defective Declaration
Claims 1-15 and 20-24 and this application as a whole are rejected under 35 U.S.C. §251 as being based upon a defective reissue oath/declaration as set forth above. See 37 C.F.R. §1.175. The nature of the defects in the 2024 Reissue Declaration is set forth in the discussion above in this Office action.
B. Rejection Based on New Matter
Claims 1-15 and 20-24 and this application as a whole are rejected under 35 U.S.C. §251 as being based upon new matter added into this reissue application. The nature of the new matter is set forth in the discussion above in this Office action in the rejection under 35 U.S.C. §112.
VII. OBJECTION TO DRAWINGS
The drawings are objected to under 37 C.F.R. §1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the limitations that “the first source includes a substantially linear first source region defining a gap therein…” and “the second source includes a substantially linear second source region disposed in the gap…” as recited in claims 1 and 15 must be shown or the features canceled from the claims. This objection to the drawings involves the same new matter issue as discussed above in the rejection under 35 U.S.C. §112(a). Corrected drawing sheets in compliance with 37 C.F.R. §1.173 are required in reply to the Office action to avoid abandonment of the application. No new matter should be entered.
VIII. OBJECTION TO CLAIM AMENDMENTS
37 C.F.R. §1.173 Reissue specification, drawings, and amendments.
(c) Status of claims and support for claim changes. Whenever there is an amendment to the claims pursuant to paragraph (b) of this section, there must also be supplied, on pages separate from the pages containing the changes, the status (i.e., pending or canceled), as of the date of the amendment, of all patent claims and of all added claims, and an explanation of the support in the disclosure of the patent for the changes made to the claims.
(d) Changes shown by markings. Any changes relative to the patent being reissued that are made to the specification, including the claims but excluding "Large Tables" (§ 1.58(c) ), a "Computer Program Listing Appendix" (§ 1.96(c) ), a "Sequence Listing" (§ 1.821(c) ), and a "Sequence Listing XML" (§ 1.831(a) ) upon filing or by an amendment paper in the reissue application, must include the following markings:
(1) The matter to be omitted by reissue must be enclosed in brackets; and
(2) The matter to be added by reissue must be underlined.
(g) Amendments made relative to the patent. All amendments must be made relative to the patent specification, including the claims, and drawings, which are in effect as of the date of filing of the reissue application.
The amendments to the claims in the 2024 Preliminary Amendment are objected to because they are improper under the rules and guidance provided above. Specifically, since claims 21-24 are new with respect to the original patent, i.e., the 709 Patent, the claims should be fully underlined, i.e., all of the claim numbers, claim identifiers and text. See MPEP §1453 (V)(C). Appropriate correction is required in response to this Office Action.
IX. ALLOWABLE SUBJECT MATTER
The Examiners find that because claims 1-15 and 20-24 are indefinite under 35 U.S.C. §112(b) as outlined above, it is impossible to properly construe claim scope at this time. See Honeywell International Inc. v. ITC, 68 USPQ2d 1023, 1030 (Fed. Cir. 2003) (“Because the claims are indefinite, the claims, by definition, cannot be construed.”). Accordingly, because Examiners do not understand how a linear source region defines a gap, which makes up the primary feature of the claims, no art rejections are being made at this time until the indefiniteness is overcome.
X. PRIOR OR CONCURRENT PROCEEDINGS
Applicant is reminded of the obligation apprise the Office of any prior or concurrent proceedings in which the 709 Patent is or was involved, such as interferences or trials before the Patent Trial and Appeal Board, reissues, reexaminations, or litigations and the results of such proceedings.
XI. INFORMATION MATERIAL TO PATENTABILITY
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.
XII. CONCLUSION
Claims 1-15 and 20-24 are rejected.
The prior art made of record which is considered pertinent to Applicant’s disclosure is listed on the document titled ‘Notice of Reference Cited’ (“PTO-892”). Unless expressly noted otherwise by the Examiners, all documents listed on the PTO-892 are cited in their entirety.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to KENNETH WHITTINGTON whose telephone number is (571) 272-2264. The Examiner can normally be reached on 8:30am - 5:00pm, Monday - Friday.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, Andrew J. Fischer, SPE Art Unit 3992, can be reached at (571) 272-6779. The fax phone number for the organization where this application or proceeding is assigned is 571-273-9900.
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.
/KENNETH WHITTINGTON/Primary Examiner, Art Unit 3992
Conferees:
/MY TRANG TON/Primary Examiner, Art Unit 3992
/ANDREW J. FISCHER/Supervisory Patent Examiner, Art Unit 3992