DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Reissue Applications
For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions.
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which Patent No. 11,317,735 is or was involved. These proceedings would include any trial before the Patent Trial and Appeal Board, interferences, reissues, reexaminations, supplemental examinations, and litigation.
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is 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.
Reissue Declaration
37 CFR 1.175 reads, in pertinent 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 with this application is defective because it fails to sufficiently identify the error which is relied upon to support the reissue application. See 37 CFR 1.175 and MPEP § 1414. This reissue application seeks to enlarge the scope of the claims of the patent by deleting the connection of the No. 2 supporting tubes to the first supporting tubes, the locking mechanisms, the locking hook, the tube plug, and the sliding sleeve. However, the declaration fails to clearly indicate Applicant’s intent to broaden the claims because the appropriate box on the PTO/AIA /05 form has not been checked,1 and because the error statement does not identify the word, phrase, or expression in the patent claims wherein lies the error.2 The error statement must identify an original claim number containing the word, phrase or expression in the patent claims wherein lies the error.
As stated in 37 CFR 1.175(b), “A claim is a broadened claim if the claim is broadened in any respect” (emphasis added). As further explained in MPEP § 1412.03, subsection I (italics in original, bold added):
A claim of a reissue application enlarges the scope of the claims of the patent if it is broader in at least one respect, even though it may be narrower in other respects. See, e.g., 37 CFR 1.175(b). A claim in the reissue application which includes subject matter not covered by the patent claims enlarges the scope of the patent claims. For example, if any amended or newly added claim in the reissue contains within its scope any conceivable product or process which would not have infringed the patent, then that reissue claim would be broader than the patent claims. Tillotson, Ltd. v. Walbro Corp., 831 F.2d 1033, 1037 n.2, 4 USPQ2d 1450, 1453 n.2 (Fed. Cir. 1987); In re Ruth, 278 F.2d 729, 730, 126 USPQ 155, 156 (CCPA 1960); In re Rogoff, 261 F.2d 601, 603, 120 USPQ 185, 186 (CCPA 1958). A claim which covers something that the original claims do not is a broadened claim. A claim would be considered a broadening claim if the patent owner would be able to sue any party for infringement who previously could not have been sued for infringement.
In response to Applicant’s arguments that the reissue claims are not broadening,3 the examiner notes that the reissue claims in this application are broadened because they now include subject matter that was not covered by the patent claims. As one example, patent claim 1 required that each of the four No. 1 supporting tubes “is internally provided with a corresponding No. 2 supporting tube in an inserting manner.” This limitation is no longer required by the reissue claims, such that the reissue claims include within their scope a dining chair in which each of the four No. 1 supporting tubes is not internally provided with a corresponding No. 2 supporting tube in an inserting manner. Therefore, the reissue claims are broadened reissue claims as defined by 37 CFR 1.175(b).
Claim Rejections - 35 USC § 251 - Reissue Declaration
The following is a quotation of the first paragraph of 35 U.S.C. 251:
(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 1-10 are rejected as being based upon a defective reissue declaration under 35 U.S.C. 251 as set forth above. See 37 CFR 1.175.
The nature of the defect in the declaration is set forth in the discussion above in this Office action.
Specification and Drawings - New Matter
The amendments to the abstract and drawings filed February 2, 2024, and the specification amendment filed May 2, 2025, are objected to under 35 U.S.C. 251 because they introduce new matter into the disclosure.
35 U.S.C. 251(a) states that no new matter shall be introduced into an application for reissue.
The added material which is not supported by the original disclosure is as follows:
“the other ends of the four No. 1 supporting tubes are internally provided with tube plugs in an inserting manner respectively” and “the sliding sleeve … is connected with the corresponding tube plug through a reset mechanism” in the replacement paragraph of col. 1, lines 37-67.
“two ends of each limiting rod are arranged on the inner wall of the corresponding tube plug in the sleeved manner” in the replacement paragraph of col. 2, lines 1-7;
“each tube plug is further connected with the corresponding No. 1 supporting tube through a blind rivet” in the replacement paragraph of col. 2, lines 8-10.
“the other end of each of the No. 1 supporting tubes 2 is internally the tube plug 7 [sic] is arranged below the bottom end of No. 1 supporting tube 2, and the upper portion of the tube plug 7 extends into the interior of No. 1 supporting tube 2. The tabletop 1 is arranged at the peripheries thereof” and “The sliding sleeve 9 … is connected with the corresponding upper end of tube plug 7 through a reset component” in the replacement paragraph of col. 2, line 52-col. 3, line 18.
“Two ends of each limiting rod 4 are arranged on the inner wall of the corresponding upper end of tube plug 7 in the inserting manner” in the replacement paragraph of col. 3, lines 19-25.
“each tube plug 7 is further connected with the corresponding No. 1 supporting tube (2) through a blind rivet 8” in the replacement paragraph of col. 3, lines 26-28;
In the Abstract, “each of the four No. 1 supporting tubes is internally provided with a corresponding tube plug in an inserting manner respectively.”
In Fig. 2, the replacement of reference number “13” (denoting a No. 2 supporting tube) with reference number “7” (denoting a tube plug).
As explained in MPEP § 2163.07, subsection II, “[a]n amendment to correct an obvious error does not constitute new matter where one skilled in the art would not only recognize the existence of error in the specification, but also the appropriate correction. In re Oda, 443 F.2d 1200, 170 USPQ 268 (CCPA 1971)” (emphasis added).
In the Remarks filed February 2, 2024, December 16, 2024, and May 2, 2025, Applicant argued that the amendments to the specification are supported by original Figures 1 and 3 and by Figure 2 as amended. However, original Figures 1 and 3 do not illustrate a tube plug and thus do not provide written description support for the relationship between the tube plug and the No. 1 supporting tubes, the locking hook, the sliding sleeve, the limiting rod, and the blind rivet described in the amendment, and the amendment of Fig. 2 is itself new matter that is not supported by any description in the original disclosure.
In particular, Applicant argues that the part labeled “13” in Fig. 2 is not a No. 2 supporting tube but is instead a portion of the tube plug which should have been labeled “7”, arguing that this should be understood from the similar cross-hatching on the parts labeled “13” and “7” in original Fig. 2. However, there was nothing in the original specification to suggest that the part labeled “13” was part of the tube plug. Rather, the original specification and claims consistently describe the No. 2 supporting tube 13 (not the tube plug 7) being internally provided in the No. 1 supporting tube in an inserting manner (see Specification, col. 1:43-45 and col. 2:59-62; and patent claim 1 at col. 4:36-38).
For these reasons, although one of ordinary skill in the art may have recognized that the originally disclosed system was unworkable (as argued by Applicant), the examiner finds nothing in the original disclosure or elsewhere in the present record to suggest that one of ordinary skill in the art would have recognized where the error lay or the appropriate correction of the error. For further discussion of this issue, see Response to Arguments below.
Applicant is required to cancel the new matter in the reply to this Office Action.
With respect to the drawings, corrected drawing sheets in compliance with 37 CFR 1.173(b)(3) are required in reply to the Office action to avoid abandonment of the application. Amendments in reissue applications are different from standard utility application practice and are governed by 37 CFR 1.173. In particular, 37 CFR 1.173(b)(3) reads:
Drawings. One or more patent drawings shall be amended in the following manner: Any changes to a patent drawing must be submitted as a replacement sheet of drawings which shall be an attachment to the amendment document. Any replacement sheet of drawings must be in compliance with § 1.84 and shall include all of the figures appearing on the original version of the sheet, even if only one figure is amended. Amended figures must be identified as "Amended," and any added figure must be identified as "New." In the event that a figure is canceled, the figure must be surrounded by brackets and identified as "Canceled." All changes to the drawing(s) shall be explained, in detail, beginning on a separate sheet accompanying the papers including the amendment to the drawings.
(i) A marked-up copy of any amended drawing figure, including annotations indicating the changes made, may be included. The marked-up copy must be clearly labeled as "Annotated Marked-up Drawings" and must be presented in the amendment or remarks section that explains the change to the drawings.
(ii) A marked-up copy of any amended drawing figure, including annotations indicating the changes made, must be provided when required by the examiner.
The objection to the drawings will not be held in abeyance. See also MPEP § 1453.
Claim Rejections - 35 USC § 251 - New Matter
Claims 1-10 are rejected under 35 U.S.C. 251 as being based upon new matter added to the patent for which reissue is sought, as discussed in detail below in the rejections under 35 U.S.C. 112(a) for lack of sufficient written description.
Claim Rejections - 35 USC § 112 - Written Description
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 1-10 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, at the time the application was filed, had possession of the claimed invention.
Regarding claim 1, the original disclosure does not provide sufficient written description support for the following limitations:
“the upper portion of the tube plug extends into the interior of No. 1 supporting tube” in lines 10-11; and
“the sliding sleeve … is connected with the corresponding tube plug through a reset component” in lines 27-29.
The original disclosure does not describe these relationships between the tube plug, the No. 1 supporting tube, and the sliding sleeve. Rather, the original disclosure states that the No. 2 supporting tube (not the tube plug) is inserted into the No. 1 supporting tube (see col. 1:43-45; 2:59-62) and that the sliding sleeve is connected with the No. 2 supporting tube (not the tube plug) through the reset component (see col. 1:62-67; 3:13-17), consistent with original Fig. 2 showing a No. 2 supporting tube (13) inserted into a No. 1 supporting tube (2). Applicant relies on amended Fig. 2 as providing written description support for these limitations.4 As discussed above, the examiner finds nothing in the original disclosure to suggest that the part labeled “13” in original Fig. 2 was part of the tube plug. Rather, the original specification and claims consistently describe the No. 2 supporting tube 13 (not the tube plug 7) being internally provided in the No. 1 supporting tube in an inserting manner (see Specification, col. 1:43-45 and col. 2:59-62; and patent claim 1 at col. 4:36-38). Applicant argues that the amendment is the correction of an obvious error. However, MPEP § 2163.07, subsection II, explains that “[a]n amendment to correct an obvious error does not constitute new matter where one skilled in the art would not only recognize the existence of error in the specification, but also the appropriate correction” (emphasis added). In this case, although one of ordinary skill in the art may have recognized that the system described in the original disclosure would have been unworkable (as argued by Applicant), the examiner finds nothing in the original disclosure or elsewhere in the present record to suggest that one of ordinary skill in the art would have recognized where the error lay or the appropriate correction of the error. Claims 2-10 are rejected in view of their dependency from claim 1.
Further regarding claim 2, the original disclosure does not provide sufficient written description support for two ends of each limiting rod being arranged “on an inner wall of the corresponding tube plug in an inserting manner” as recited in lines 3-4. Rather, the original disclosure described the ends of the limiting rod being arranged on an inner wall of the second supporting tube, not the tube plug.
Further regarding claims 3 and 6, the original disclosure does not provide sufficient written description support for each tube plug being “further connected with a corresponding No. 1 supporting tube through a blind rivet.” Rather, the original disclosure described the tube plug being connected to the sliding sleeve through the blind rivet.
For further discussion of these issues, see Response to Arguments below.
Claim Rejections - 35 USC § 112 - Enablement
Claims 1-10 are rejected under 35 U.S.C. 112(a) as failing to comply with the enablement requirement. The claims contain subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Regarding claim 1, the specification is not enabling for a locking mechanism comprising a sliding sleeve, a first pin, an arc hook, a tube plug, a locking hook, a second pin, and a reset mechanism in the claimed configuration with respect to No. 1 and No. 2 supporting tubes and a tabletop. Among the factors to be considered when determining whether the enablement requirement has been satisfied, and whether any necessary experimentation is undue, are the level of predictability in the art, the amount of direction provided by the inventor, the existence of working examples, and the quantity of experimentation needed to make or use the invention based on the content of the disclosure.5 In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988). See also MPEP 2164.01(a). In this case, although the children’s dining chair art is predictable, the application as originally filed provides more misdirection than direction for making and using the claimed invention, due to the consistent repetition of substantive errors throughout the original specification, abstract, drawings, and claims and the absence of any workable embodiment or working example in the original disclosure. Applicant has acknowledged that the original disclosure describes an unworkable system. See Remarks filed February 2, 2024, pg. 12. Because of the extensive errors consistently repeated throughout the original disclosure, a significant quantity of experimentation would be needed to make or use the invention based on the content of the original disclosure. Claims 2-10 are rejected in view of their dependency from claim 1.
Claim Rejections - 35 USC § 112 - Indefiniteness
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.
Claims 1-10 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.
Regarding claim 1, it is unclear whether the terms “No. 1” and “No. 2” in lines 4 and following refer to some property of the tubes and pins (e.g., to a size or grade of material) or simply designate the tubes and pins in distinction from one other (e.g., first supporting tubes and second supporting tubes, and a first pin and a second pin).6
Additionally, the limitation “the tube plug is arranged below the bottom end of No. 1 supporting tube, and the upper portion of the tube plug extends into the interior of No. 1 supporting tube” in lines 9-11 renders the claim indefinite for the following reasons. First, there is insufficient antecedent basis in the claim for “the tube plug,” “the bottom end,” “the upper portion,” and “the interior.” Second, the term “No. 1 supporting tube” is unclear because four No. 1 supporting tubes are recited in line 4, and it is unclear whether “No. 1 supporting tube” refers to all four of the No. 1 supporting tubes or to one of the No. 1 supporting tubes (and if so, which one?).
Claims 2-10 are rejected in view of their dependency from claim 1. Additionally, the meaning and scope of the terms “No. 1” and “No. 2” in dependent claims 3, 5-6, and 9-10 is unclear for the reasons discussed above for claim 1.
Response to Arguments
Applicant’s arguments filed May 2, 2025, have been fully considered but are not persuasive.
As discussed in the final Office action mailed February 3, 2025, in response to similar arguments filed December 16, 2024, the examiner maintains that Fig. 2 as originally filed did not clearly show the now-claimed relationship of the tube plug with respect to the first supporting tube and the locking mechanism. Applicant argues that the use of the same manner of hatched lines in the parts labeled “7” and “13” in the original Fig. 2 indicates that these two elements should have been considered as part of a single continuous component, namely, the tube plug. See Remarks, pg. 2-3. This argument is not persuasive because the specification, abstract, and claims all explicitly and consistently confirm that the No. 1 supporting tubes are each “internally provided with a corresponding one of the No. 2 supporting tubes 13 in an inserting manner.” ‘735 patent specification at col. 2:59-62; see also col. 1:42-45 and Abstract, lines 8-10.
While the examiner appreciates Applicant’s position that an error in the drawing was consistently perpetuated throughout the written description, the fact remains that there is no other description in the original disclosure that would have clarified Applicant’s intent. Considering the consistent description throughout the specification of the No. 2 supporting tube (13) being inserted into the No. 1 supporting tube and interacting with the locking mechanism and the reset mechanism in the manner shown in Fig. 2, one of ordinary skill in the art would have reasonably concluded that the part labeled as the No. 2 supporting tube (13) in Fig. 2 was in fact the No. 2 supporting tube. Although the deficiencies of the disclosure as a whole may have left some question in POSITA’s mind as to how this structure would operate, there was not enough information in the original disclosure for one of ordinary skill in the art to clearly recognize that the answer to that question would be the structure that is now being described and claimed in this reissue application.
To address the particulars of Fig. 2 raised in Applicant’s Remarks, it is not clear from the original Fig. 2 that the element labeled as tube plug (7) and the element labeled as No. 2 supporting tube (13) are one single continuous component as argued by Applicant. Without the benefit of the explanation now being offered in this reissue application, the use of similar hatching in non-contiguous and non-juxtaposed areas of original Fig. 2 would not have been sufficient to unambiguously identify these two elements “7” and “13” as being part of a single continuous tube plug, particularly in view of the fact that the specification, abstract, and claims all consistently confirmed that it is the No. 2 supporting tube 13 (not the tube plug 7) that is inserted into the No. 1 supporting tube 2, as discussed above. The interpretation of Fig. 2 proffered by Applicant would have required the reader to ignore not only the explicit labeling of parts in Fig. 2 but also the explicit disclosure of the specification, abstract and claims.
In response to Applicant’s argument that the tabletop (1) is solid such that “it is simply impossible for the lower legs [a.k.a., the second/No. 2 supporting tubes] of the system to pass through the solid table as well as the tube plug” (Remarks, pg. 9), the examiner notes that there is no indication in the Figures or the written description to indicate what plane the apparently cross-sectional view in Fig. 2 is taken from. The brief description of the drawings describes Fig. 2 as “a schematic structural diagram of locking mechanisms” (col. 2:29-30). Although the tabletop (1) appears to be continuous at the unknown location from which the apparently sectional view of Fig. 2 is taken, there is nothing in the disclosure to indicate that the tabletop is wholly continuous across the entirety of the tabletop. Rather, the original patent specification clearly and repeatedly states that “each of the four No. 1 supporting tubes is internally provided with a corresponding No. 2 supporting tube in an inserting manner” and the “tabletop is arranged at peripheries of the No. 2 supporting tubes in a sleeved manner and is connected with the No. 1 supporting tubes and the No. 2 supporting tubes through locking mechanisms” (original Abstract; original Specification at col. 1:43-48; see also col. 2:59-66 and original claim 1). Given the consistent description of the No. 2 supporting tubes being inserted into the No. 1 supporting tubes and sleeved with respect to the tabletop, the original disclosure did not provide sufficient evidence for one of ordinary skill in the art to conclude that the No. 2 supporting tubes must necessarily terminate below the tabletop. For example, one of ordinary skill in the art may instead have surmised from the original disclosure that the schematic view of Fig. 2 was indeed only schematic (as described in col. 2:29-30), omitting details that would show how the No. 2 supporting tubes extend through or past the tabletop, or that the No. 2 supporting tubes extended through or past the tabletop at a different cross-sectional plane from what is shown in Fig. 2.
In response to Applicant’s arguments that the colorized version of Fig. 2 makes clear the relationship of the reset component and locking mechanism to the tube plug, the examiner notes that the colorized version of Fig. 2 is not part of the original disclosure. Without the benefit of the colorized version of Fig. 2 along with the accompanying amendments to the patent disclosure and explanatory remarks offered in this reissue application, one of ordinary skill in the art would not have recognized from the original disclosure the relationship of the reset component and locking mechanism to the tube plug that is now being described and claimed. In response to Applicant’s argument that amended and colorized Fig. 2 shows that the No. 2 supporting tube does not interact with the locking mechanism, the examiner maintains that original Fig. 2 did show the second supporting tube (by designation of element number “13”) interacting with the locking mechanism and the reset mechanism, and the original specification consistently reinforced this.
Regarding the blind rivet, in response to Applicant’s argument that colorized and amended Fig. 2 shows the blind rivet (8) connecting the tube plug (7) to the No. 1 supporting tube (2), the examiner notes that Fig. 2 shows only a small portion of the rivet (8), apparently in elevation behind the arc hook (3), and does not clearly show the relationship of the rivet (8) to the tube plug (7) or to the No. 1 supporting tube (2). The original specification, on the other hand, explicitly states that the blind rivet (8) connects the tube plug (7) to the sliding sleeve (9). See cols. 2:8-10, 3:26-28, and original claims 3 and 6. Although the original description may have raised a question in POSITA’s mind as to how this structure would operate, or in what manner the sliding sleeve would be considered to slide, there is nothing in the original disclosure to suggest that the answer to this question would be to connect the blind rivet through the tube plug and the No. 1 supporting tube, since this relationship was not shown or described anywhere in the original disclosure and is, moreover, contrary to what was consistently shown and described throughout the original disclosure.
For these reasons, the examiner maintains that the amendments to the drawings, specification, abstract, and claims presented in this reissue application do not have sufficient written description support in the original patent application.
Additionally, the examiner notes for clarity and completeness of the record that Applicant argues that “Claim 1 should recite: ‘the other end of each of the four No. 1 supporting tubes is internally provided with a corresponding [No. 2 supporting tube] tube plug in an inserting manner’” (Remarks, pg. 10), but this limitation is not present in claim 1 as currently amended. Instead, claim 1 as currently amended recites “the tube plug is arranged below the bottom end of No. 1 supporting tube, and the upper portion of the tube plug extends into the interior of No. 1 supporting tube.” The examiner maintains that there is insufficient written description support for this limitation, as set forth above in the rejection of claim 1 under 35 U.S.C. 112(a) and 251.
With respect to the rejections under 35 U.S.C. 112(b), Applicant appears to acknowledge the rejection of claims 1-10 under 35 U.S.C. 112(b) due to lack of clarity of the terms “No. 1” and “No. 2” (see Remarks, pg. 14), which was set forth in the non-final Office action mailed September 16, 2024, see pg. 11. Applicant then states that “[t]he terms have been removed and the original terms have been restored to No. 1 supporting tube and No. 2 supporting tube.” Remarks, pg. 14. There appears to have been some confusion regarding this issue. For clarity, the examiner notes that the terms “No. 1” and “No. 2” were replaced with --first-- and --second--, respectively, in the claim amendment filed December 16, 2024, which overcame the rejection under 35 U.S.C. 112(b). However, the terms “No. 1” and “No. 2” have now been reintroduced in the amendment filed May 2, 2025, which again raises the same rejection under 35 U.S.C. 112(b). The examiner believes that the confusion may have arisen from the specification objection set forth in the final Office action mailed February 3, 2025, with respect to lack of antecedent basis in the specification for the claim terms “first” and “second.” This issue could have been resolved by amending the specification to provide antecedent basis for the terms “first” and “second.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Laura L. Davison whose telephone number is (571)270-0189. The examiner can normally be reached Monday - Friday, 8:00 a.m. - 4:00 p.m. ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Patricia L. Engle can be reached at (571)272-6660. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Laura Davison/Reexamination Specialist, Art Unit 3993
Conferees:
/CATHERINE S WILLIAMS/Reexamination Specialist, Art Unit 3993
/Patricia L Engle/SPRS, Art Unit 3993
1 “Even though only one error upon which reissue is based needs to be described in the reissue oath/declaration, if PTO/SB/51 or PTO/SB/52 form is used (or PTO/AIA /05 or PTO/AIA /06, for applications filed on or after September 16, 2012), applicant needs to check the appropriate box(es) on the form identifying each of the reasons why the patent is wholly or partly inoperative or invalid. Even if a PTO form is not used, applicant needs to state each of the reasons why the patent is wholly or partly inoperative or invalid in the reissue oath/declaration.” MPEP § 1414, subsection I.
2 “For an application filed on or after September 16, 2012 that seeks to enlarge the scope of the claims of the patent, the reissue oath or declaration must also identify a claim that the application seeks to broaden in the identification of the error that is relied upon to support the reissue application. A general statement, e.g., that all claims are broadened, is not sufficient to satisfy this requirement. In specifically identifying the error as required by 37 CFR 1.175(a), it is sufficient that the reissue oath/declaration identify the claim being broadened and 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.” MPEP § 1414, subsection II.
3 See Remarks filed December 16, 2024, pg. 1; and Remarks filed May 2, 2025, pg. 1-2.
4 See Remarks filed February 2, 2024, pg. 12; Remarks filed December 16, 2024, pg. 2-9; Remarks filed May 2, 2025, pg. 2-9.
5 “The ‘amount of guidance or direction’ refers to that information in the application, as originally filed, that teaches exactly how to make or use the invention.” MPEP § 2164.03 (emphasis added).
6 The examiner notes that this issue was initially raised in the non-final Office action mailed September 16, 2024, and was resolved in the amendment filed December 16, 2024, by replacing “No. 1” with “first” and “No. 2” with “second.” In the final Office action mailed February 3, 2025, the examiner indicated that the specification should be similarly amended to provide proper antecedent basis in the specification for the terms “first” and “second.” In the amendment filed May 2, 2025, the indefinite terms “No. 1” and “No. 2” have been reintroduced into the claims and the specification has not been amended as suggested. The examiner notes for clarity that both of these issues could be resolved by replacing “No. 1” with --first-- and “No. 2” with --second-- in both the specification and the claims.