DETAILED FINAL ACTION
Introduction
1. For reissue applications filed before September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the law and rules in effect on September 15, 2012. Where specifically designated, these are “pre-AIA ” provisions.
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.
2. This Office Action addresses U.S. Application No. 18/444,913 which is a reissue divisional of U.S. Application No. 17/530,833 (hereinafter also referred to as ‘833), filed November 19, 2021, which is a reissue application of U.S. Patent No. 10,482,9731 issued October 15, 2019 ((hereinafter also referred to as ‘973) filed as U.S. Application No. 16/014,222 on June 21, 2018 (hereinafter also referred to as ‘222). The ‘222 application claims priority to Korean Patent Application No. 10-2017-0151619, filed November 14, 2017.
3. With regard to litigation involving ‘973, see Litigation Search Report of record. Also based upon the Examiner’s independent review of ‘973 itself and the prosecution history, the Examiner cannot locate any other previous reexaminations, supplemental examinations, or certificates of correction.
4. Most recently, the April 8, 2026 response cancelled claims 21-37, added new claims 38-53 of which claims 38 and 52 are independent. The response also amended the specification and the ADS. A new declaration was also filed.
5. As of the date of this Office Action, the status of the claims is:
Claims 38-53 are pending.
Claims 1-37 are cancelled.
Claims 38-53 are examined.
Claims 38-53 are objected to and/or rejected as set forth infra.
Notice of Pre-AIA or AIA Status
6. The earliest effective filing date claimed is after March 16, 2013.2 Therefore the AIA provisions apply. See 35 U.S.C. 100. See also paragraph 1, supra, again.
Consent
7. The Consent forms filed May 2 and May 3, 2023 are still incorrect. See “Name of assignee/inventor” Box above the signature Box. The box includes the name of the person signing for the assignee, not the name of the assignee, i.e. Samsung. Appropriate Correction is required.
ADS
8. The Application Data Sheet (ADS) filed April 8 is accepted.
Amendment
9. The amendment filed April 8, 2026 does not comply with 37 CFR 1.173
(b)(2), i.e. Claims, (d), i.e. Changes shown by markings, and (c), i.e. Status of claims and support for claim changes. Appropriate correction is required.
Specifically, new claims 38-53 in their entirety, including the numerals and parentheticals, should be underlined.
Furthermore, whenever there is an amendment to the claims pursuant to paragraph (b) of section 37 CFR 1.173, there must also be supplied, on pages separate from the pages containing the changes, the status, 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 added claims as well as any changes made to the patent claims. See April 8, 2026 Response, page 7. Specifically, while providing citations to the patent for the new claims, an explanation of support for each claim (e.g. explanation of how specifics of such cited portions support the limitations of the new claims) has not been provided. Merely citing columns/lines/claims in the specification is insufficient to explain the new claims. Any further response failing to provide status of all claims and an explanation of support in the disclosure of the patent for the changes to patent claims and/or for added claims will be held non-compliant and a Notice of Non- Compliance requiring a supplemental paper correctly amending the reissue application in compliance with 37 CFR 1.173(c) will be issued.
Prosecution History
Grandparent application 16/014,222
6/21/2018-The ‘222 application was filed with claims 1-28. Claims 1-10 and 19-28 were directed to a memory device while claims 11-18 were directed to a driving method.
6/21/2018-A preliminary amendment was filed cancelling the driving method claims 11-18.
5/17/2019-A Office Action was issued by the USPTO requiring an election of species (CTRS). The species were identified as “Fig. 2, Fig.14, Fig. 16, and Fig. 18”. The Action also set forth that no claims were determined to be generic.
6/24/2019-A response to the election requirement was filed. The remarks of such response set forth:
In response to the Office Action, Applicants elect FIG. 16 including Claims 1-4, 8-10, 22, 23, and 26-28. Moreover, Applicants have withdrawn non-elected Claims 5-7, 24, and 25 and canceled non-elected Claims 19-21, without prejudice or disclaimer toward pursuit of the subject matter of the non-elected claims in a divisional or other continuing application. In addition, Applicants have added new Claims 29-31 consistent with the elected species, including new independent Claim 29. This election of species requirement is not being traversed, because Applicants agree that patentably distinct species are present. Applicants agree that the unpatentability of the claims directed to the elected species does not imply the unpatentability of any claims directed to an unelected Species, and vice versa.
Applicants do, however, traverse the Office Action’s assertion that no generic claims are present. (See Office Action p. 2.) Applicants respectfully assert that at least Claims 1-4, 22, 23, and 29 are generic between the elected Species and ones of the non-elected Species, as well as potentially other claims.3
(Bold original, underlining added.)
7/18/2019-A Notice of Allowance indicating all of the remaining claims of the application 1-10 and 22-31 were allowed. The Examiner’s Statement of Reasons for Allowance set forth:
4. With respect to independent claims [sic] 1, Overall [sic] there is no teaching, suggestion, or motivation for combination in the prior art configured to a pass/fail (P/F) determining circuit configured to determine whether the word line is defective by comparing the first pumping clock signal4 and the compensated first reference clock signal5 while the pumping voltage signal is provided to the word line.
…
6. With respect to independent claims [sic] 22, Overall [sic] there is no teaching, suggestion, or motivation for combination in the prior art configured toa pass/fail (P/F) determining circuit configured to determine whether the word line is defective by comparing a first number of pulses included in the pumping clock signal6 and a second number of pulses included in the compensated reference clock signal7.
…
8. With respect to independent claims [sic] 29, Overall [sic] there is no teaching, suggestion, or motivation for combination in the prior art configured to a pass/fail (P/F) determining circuit configured to perform a comparison of a first number of pulses of the pumping clock signal8 and a second number of pulses of the compensated reference clock signal9 and to generate a pass/fail signal responsive to the comparison; and a controller configured to control operation of the memory device responsive to the pass/fail signal.
11/19/2019- US Patent No 10,482,973 issued. No divisional or continuation applications claiming benefit to the 16/014,222 application were filed prior to the issuance of the ‘973 patent.10
Reissue Application 17/530,833
11/19/2021-The reissue application ‘833 was filed with patent claims 1-20. A concurrently filed preliminary amendment included not only claims 1-20 but also new claims 21-32. Claims 1-20 were the original patent claims, i.e. issued claims 1-10 and 22-31 of the ‘222 application. New claims 21-27 were directed to a method. New claims 28-29 were directed to a memory device. New claim 30 was directed to a controller. New claims 31-32 were directed to a device.
11/16/2023-A non-final Office Action was issued by the USPTO. The Office Action found that:
1) Despite the alleged support for new claims 21-32, that “the invention/species of claims 21-32 is not shown.” NFOA, p. 4. The Office Action also found that claims 1-20 were drawn to the species elected in the ‘222 application. The NFOA therefore concluded “the claims to the different species, i.e. species of Fig. 16 of patent claims 1-20 and the unshown species of claims 21-32, recite the mutually exclusive characteristics of such species,…..” and “[s]ince applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits…claims 21-32 [sic] withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.” NFOA, pp. 4-5.
2) The February 7, 2022 declaration error11 was not commensurate with new claims filed or the prosecution history.12
3) Claims 1-20 included allowable subject matter.
2/13/2024-An Applicant Initiated Interview was held in which the PO’s representative provided “that a divisional would be filed with claims similar to claims 21-32” (underlining emphasis added). See Interview Summary Appendix and 2/16/2024 Response. The requirements of a proper response to the rejection as set forth in MPEP 1450 II and the procedures following the timely filing of a divisional reissue application is timely filed were also discussed.
2/16/2024-A response was filed “affirm[ing] the Examiner’s constructive election of original Claims 1-20, without traverse, such that Claims 21-32 are withdrawn from prosecution -- pending submission of a ‘divisional/continuing’ reissue application directed to the subject matter of Claims 21-32 concurrently herewith” and “respectfully request[ing] cancellation of Claims 21-32 by the Examiner, and deferral of the status/support issues raised at page 3 of the Official Action and the defective oath issue raised at page 7 of the Official Action until the divisional/continuing reissue application is examined.” Response, p. 12.
5/3/24-A communication was issued by the USPTO suspending prosecution of reissue application 17/530,833 until all remaining patentability issues are resolved in pending divisional reissue 18/444,913.
Instant Divisional Reissue Application ‘913
2/19/2024- The divisional reissue application ‘913 was filed with patent claims 1-20. A concurrently filed preliminary amendment cancelled claims 1-20 and added claims 21-37 directed to a method. Claims 21-37 are not the same claims restricted from claims 1-20 and withdrawn in parent reissue application 17/530,833.
04/08/2026-An amendment was filed cancelling claims 21-37 and adding claims 38-53 which still are not the same claims restricted from claims 1-20 and withdrawn in parent reissue application 17/530,833. The added claims also do not read on the species elected on 6/24/2019, i.e. Fig. 16, as asserted in the 4/8/2026 claims.
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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his 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.
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.
10. Claims 38-53 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.
With regard to claim 38, line 1 sets forth a “method for detecting defects”, i.e. a defect exists, whereas the last two lines recite “determining whether a defect will occur”, i.e. whether a defect will exist. Accordingly, line 1 and the last two lines are inconsistent. This also applies to similar language in claim 52. Note also claims 39-42, i.e. “will occur”, and claims 43-45 and 47, i.e. “is a…defect”, “is defective”, “is not defective”.
Claims 39 and, 48-51 recite the limitation "the compensated first reference clock signal." There is insufficient antecedent basis for this limitation in the claims.
11. Claims 38-53 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains 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.
As an initial matter, the April 8, 2026 response on page 7 assert “[n]ew claims 38-53 read on the elected species”, or in other words, species of Fig. 16 elected on 6/24/2019. Additionally, the response further asserts “[s]upport for the claims can be found in at least Col. 9, L36-67, Col. 10, L [sic] Col. 15, L19-67, Col. 16, L1-20, and FIGS. 16-17. As such, these claims are directed to and read on the elected species of Fig. 16.”
However “Col. 9, L36-67, Col. 10, L [sic]” are directed to Figs 8-9 (“FIGS. 8 and 9 are diagrams illustrating a word line defect detection operation of the NVM device 100 according to some embodiments of the inventive concepts.” (emphasis added)) as well as Figs. 3 (“FIG. 3 is a block diagram illustrating the voltage generator of FIG. 2”) and 5 (“FIG. 5 is a block diagram illustrating the P/F determining circuit of FIG. 2.”). Figure 2 is directed to a non-elected species, see Prosecution History again. Continuing, col. 16:3-20 is directed to Fig. 18 (“FIG. 18 is a block diagram illustrating a word line defect detection circuit 370b according to some embodiments of the inventive concepts.” (emphasis added)). Figure 18 is also a non-elected species, see again Prosecution History. Therefore, such portions do not explicitly describe the species of Fig. 16 but rather describe the species of Fig. 2 and Fig. 18 which was not elected on 6/24/2019 or “some embodiments” which have not been specified.
With regard to the remaining col 15, line 19- col. 16, line 2, such portion is directed to Fig. 16 (“FIG. 16 is a block diagram illustrating a word line defect detection circuit 370a according to some embodiments of the inventive concepts.”(emphasis added)) and Fig. 17 (“FIG. 17 is a block diagram illustrating the compensation circuit of FIG. 16.”). It is noted that what embodiments “some embodiments” refers to is again not explicitly set forth.
Turning to col 15, line 19- col. 16, line 2 and Figs. 16-17 which describe the species of Fig. 16 and the new claims asserted as reading on the species of Figure 16, new independent claim 38 recites not only:
A method for detecting defects in a memory system, the method comprising:
performing an operation on at least one memory cell of the memory system, the operation providing a voltage signal from a charge pump;
generating a first pumping clock signal from a system clock signal with a clock generator,
See Fig. 16 below, Vg, 310, CLK_P, CLK.
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but also:
compensating for variations in a first reference clock signal;
providing a second reference clock signal; and
determining whether a defect will occur by comparing the first pumping clock signal with the first reference clock signal using a pass/fail (P/F).
However, see Fig. 16 above and the specification at col. 15, lines 19-34 and col. 15, line 64-col. 16, line 2 (“Referring to FIG. 16, a compensation circuit 380a of a word line defect detection circuit 370a may generate a compensated reference clock signal REF_CLKC using a power supply voltage Vcc. That is, the compensation circuit 380a may receive the power supply voltage Vcc, may generate the compensated reference clock signal REF_CLKC in accordance with the level of the power supply voltage Vcc, and may provide the compensated reference clock signal REF_CLKC to the P/F determining circuit 320 of FIG. 16. The compensation circuit 380a may be implemented in various configurations. A compensation circuit 380a will hereinafter be described with reference to FIG. 17.…In this case, since the compensated reference clock signal REF_CLKC varies in accordance with variations in the power supply voltage Vcc, the influence of variations in the power supply voltage Vcc during the detection of a word line defect can be minimized. As a result the reliability of an NVM device 300 can be improved.”(emphasis added)).
See also Fig. 17 above and col. 15, lines 35-63 (“Referring to FIG. 17, the compensation circuit 380a may include an analog-to-digital converter (ADC) 381a and a plurality of storage units 382a-1 through 382a-n. One of a plurality of output terminals V1 through Vn of the ADC 381a may be selected in accordance with the level of a power supply voltage Vcc provided to the ADC 381a. Different reference clock signals REF_CLKC may be stored in the storage units 382a-1 through 382a-n. The reference clock signal REF_CLK stored in one of the storage units 382a-1 through 382a-n that is connected to the selected output terminal may be output as a compensated reference clock signal REF_CLKC….” (emphasis added)). Accordingly, it is described compensating for variations in a power supply voltage by providing/selecting a previously stored reference clock signal wherein the provision/selection varies in accordance with variations in the power supply voltage Vcc and comparing the first pumping clock signal with the compensated reference clock signal (previously stored reference clock signal) using a pass/fail (P/F) to determine whether a defect exists. In other words, compensating for variations in a power supply voltage by providing/selecting a reference clock signal as a “compensated reference clock signal” and determining whether a defect has occurred by comparing the first pumping clock signal with the provided/selected/compensated reference clock signal using a pass/fail (P/F). This is not what is claimed as set forth above. Claims 39-51 depend from claim 38. Furthermore, see again paragraph 9 with regard to 1.173(c).
New claim 52 recites not only:
A method for detecting defects in a memory system, the method comprising:
performing an operation on at least one memory cell of the memory system,
receiving, during performance of the operation, a pumping clock signal for a first pulse of charge pump associated with the at least one memory cell;
See again Fig. 16 above, Vg, 310, CLK_P, CLK
but also:
receiving, during performance of the operation, a reference clock signal for a second pulse of the charge pump; and
determining whether a defect will occur by comparing the pumping clock signal with the reference clock signal using a pass/fail (P/F).
However, see again the discussion of col 15, line 19- col. 16, line 2 and Figs. 16-17 above. However these portions of the specification do not describe the last two sections of claim 52, i.e. determining whether a defect will occur by comparing a pumping clock signal for a first pulse of the charge pump received during operation with a reference clock signal for a second pulse of the charge pump received during operation using a pass/fail (P/F). Claim 53 depends from claim 52. See again paragraph 9 with regard to 1.173(c).
Reissue
35 U.S.C. 251
12. Claims 38-53 are rejected under 35 U.S.C. 251 as being based upon new matter added to the patent for which reissue is sought. The added material which is not supported by the prior patent is as follows:
See discussion in paragraph 11 above.
Declaration
13. The reissue oath/declaration filed April 8, 2026 are defective (see 37 CFR 1.175 and MPEP § 1414) because of the following:
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. If new claims are presented, their difference from the original claims must be pointed out. See MPEP § 1414. If the reissue is a broadening reissue, a claim that the application seeks to broaden must be identified. (Note: A statement that “the patent is wholly or partly inoperative by reason of claiming more or less than applicant had a right to claim” is NOT an unequivocal statement of an intent to broaden.) Furthermore, 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 April 8th 2026 declaration state “the original patent to be wholly or partly inoperative or invalid” “by reason of the patentee claiming more or less than he had the right to claim in the patent”. The declaration continues:
Errors upon which reissue is based are described below:
Claim 1 of U.S. Patent No. 10,482,973 recites: “A memory device comprising: ...
a compensation circuit configured to compensate for variations in a first reference clock signal in accordance with variations in the power supply voltage and provide a compensated first reference clock signal; ....” This is less than the patentee(s) had the right to claim. Accordingly, the present reissue application seeks to broaden this aspect via new independent Claim 38. Claim 38 is directed towards a method for comparing pulse signals when determining if a defect will occur.
Claim 11 of U.S. Patent No. 10,482,973 recites: “A memory device comprising:
... a compensation circuit configured to provide a compensated reference clock signal that compensates for variations in the power supply voltage ...” This is less than the patentee(s) had the right to claim. Accordingly, the present reissue application seeks to broaden this aspect via new independent Claim 38. Claim 38 is directed towards a method for comparing pulse signals when determining if a defect will occur.
Claim 18 of U.S. Patent No. 10,482,973 recites: “A memory device comprising:
... a compensation circuit configured to provide a compensated reference clock signal that compensates for variations in the power supply voltage ...” This is less than the patentee(s) had the right to claim. Accordingly, the present reissue application seeks to broaden this aspect via new independent Claim 52. Claim 52 is directed towards a method and requires comparing different signals from the charge pump.
(Emphasis added.)
As best understood, with regard to patent claims 1, 11 and 18, the declaration asserts that by claiming a “memory device comprising: ...a compensation circuit configured to compensate for variations in a first reference clock signal in accordance with variations in the power supply voltage and provide a compensated first reference clock signal;”, a “memory device comprising:... a compensation circuit configured to provide a compensated reference clock signal that compensates for variations in the power supply voltage ...” or “a memory device comprising:... a compensation circuit configured to provide a compensated reference clock signal that compensates for variations in the power supply voltage ...”, the patentee is claiming less than he had the right to claim in the patent and is seeking to broaden the respective quoted claim language, i.e. “this aspect”, “via new independent Claim 38” or “52”. However, with regard to claims 38 and 52 identified as “broadening this aspect” of claims 1, 11 and 18, paragraph 11 above again with regard to the claim recitations and the asserted support therefor..
Therefore, to the extent the declaration is asserting the right to a “broadened” claim drawn to components of the species of Fig. 2 and/or Fig. 18 and/or a species other than the species of Fig. 16 because the patent claims drawn to the species of Figure 16 are less than the patentee(s) had the right to claim, see MPEP 1412.01 (II) and the prosecution history section above, esp. with regard to ‘222. Since a restriction (or an election of species) requirement was made in an ‘222 application election between the species of Fig. 2, Fig.14, Fig. 16, and Fig. 18 and Patent Owner permitted the elected invention (i.e., claims 1-20 drawn to Fig 16) to issue as a patent without filing a continuing application on the non-elected invention(s) or on non-claimed subject matter distinct from the elected invention (e.g., the species of Fig. 2, application claims 19-21), the non-elected invention(s) and non-claimed, distinct subject matter cannot be recovered by filing a reissue application. A reissue applicant’s failure to timely file a continuing application is not considered to be error causing a patent granted on the elected claims to be partially inoperative by reason of claiming less than the applicant had a right to claim. Accordingly, this is not correctable by reissue of the original patent under 35 U.S.C. 251, i.e. there is a lack of any defect in the original patent and lack of any error in obtaining the original patent. See In re Watkinson, 900 F.2d 230, 14 USPQ2d 1407 (Fed. Cir. 1990); In re Weiler, 790 F.2d 1576, 229 USPQ 673 (Fed. Cir. 1986); In re Orita, 550 F.2d 1277, 1280, 193 USPQ 145, 148 (CCPA 1977); see also In re Mead, 581 F.2d 251, 198 USPQ 412 (CCPA 1978).
Finally, to the extent the declaration might be asserting “broaden[ing] this aspect via new independent Claim 38 or “Claim 52”, e.g., method claims, is directed to “overlooked aspects”, the aspects of claims 38 and 52 considered “overlooked” as compared to patent claims 1, 11 and 18 have not been specified.13 Furthermore, any aspects of claims 38 and 52 considered “overlooked” as to the remainder of the original claims 2-10, 12-17 and 19-20 and the claims of the patent family’s entire prosecution history have also not been specified, i.e. see paragraph 2 above and Prosecution History above.. See also MPEP 1412.01(III).
15. Claims 38-53 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(s) in the declaration is set forth in the discussion above in this Office action.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – 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.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
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.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. See MPEP 2111. It is further noted it is improper to import claim limitations from the specification, i.e., a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment. See MPEP §2111.01(11). Therefore, unless Applicant for patent has provided a lexicographic definition for the term, see MPEP §211l.0l(IV), or 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked, Examiners will interpret the limitations of the pending and examined claims using the broadest reasonable interpretation.
When the claimed feature is written as a means-plus-function or a step-plus-function. See 35 U.S.C. §112(6th ¶) and MPEP §2181-2183. As noted in MPEP §2181, a three prong test is used to determine the scope of a means-plus-function or step-plus-function limitation in a claim:
The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
Allowable Subject Matter
15. Claims 38-53, as best understood, i.e. directed to species other than the species of Fig. 16, distinguish over the art.
Response to Arguments
12. Applicant’s April, 2026 remarks have been considered in their entirety. Specifically:
The remarks on page 6 directed to, e.g. status, interview summary, preliminary amendment and specification have been noted.
The remarks on page 7 with respect to the support have been noted. See discussion in paragraphs 9 and 11-12 above with regard to the issues pending.
The remarks on page 7 with regard to the declaration have been considered. See again the discussion in paragraphs 13-14 above with regard to the pending issues.
Conclusion
Finality
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure.
Amendments
Applicant is notified that any subsequent amendment to the specification and/or claims must comply with 37 CFR 1.173(b). In addition, for reissue applications filed before September 16, 2012, when any substantive amendment is filed in the reissue application, which amendment otherwise places the reissue application in condition for allowance, a supplemental oath/declaration will be required. See MPEP § 1414.01.
Prior or Concurrent 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 Patent No. 10,482,973 is or was involved. These proceedings would include interferences, reissues, reexaminations, and litigation.
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely appraise the Office of any information which is mate-rial to patentability of the claims under consideration in this reissue appli-cation.
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.
Inquiries:
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Karin M Reichle whose telephone number is (571)272-4936. The examiner can normally be reached on 6:00-6:00 M-Th.
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/Karin Reichle/Primary Examiner, Art Unit 3992
Conferees:
/Cameron Saadat/Primary Examiner, Art Unit 3992
/ALEXANDER J KOSOWSKI/Supervisory Patent Examiner, Art Unit 3992
1 The term of the ‘661 patent was extended or adjusted by 0 days.
2 It is noted that the entire invention must be supported (per 35 USC 112) in a single document relied upon for benefit of filing date.
3 Note that which non-elected species are considered “ones of the non-elected Species” and what claims are “potentially other claims” is not clear.
4 Claim 1 set forth earlier in the claim “a clock generator configured to generate a first pumping clock signal from a system clock signal;”.
5 Claim 1 sets forth earlier in the claim “a compensation circuit configured to compensate for variations in a first reference clock signal in accordance with variations in the power supply voltage and provide a compensated first reference clock signal;”.
6 Claim 22 set forth earlier in the claim “a voltage generator configured to receive a power supply voltage, generate a pumping clock signal, and provide an operating voltage to the word line to program the memory cell;”.
7 Claim 22 set forth earlier in the claim “a compensation circuit configured to provide a compensated reference clock signal that compensates for variations in the power supply voltage”.
8 Claim 29 set forth earlier in the claim” a voltage generator configured to receive a power supply voltage, to generate an operating voltage using the power supply voltage, and to generate a pumping clock signal;”.
9 Claim 29 set forth earlier in the claim “a compensation circuit configured to provide a compensated reference clock signal that compensates for variations in the power supply voltage;”.
10 See MPEP 1412.01, II and discussion below.
11 The declaration stated “the original patent to be wholly or partly inoperative or invalid” “by reason of the patentee claiming more or less than he had the right to claim in the patent” and “[i]independent. [sic] Claims 1, 14 and 18, and the claims that depend therefrom, recite ‘A memory device, comprising.’ This restriction to memory devices is less than the patentee(s) had a right to claim, as illustrated, for example, in the method flow diagram of FIG. 10 and supporting timing and related diagrams (see, e.g., FIGS 4, 8-9, and 11-13). Accordingly, the present reissue application seeks to broaden this aspect via, at least, new method Claims 21-27.”
12 “However, as an initial matter and as noted above, new method claims, now withdrawn, are not directed to, e.g., the method of Fig. 10 which compares the pump clock to reference clock not first and second clock pulse counts for respective pulses of a charge pump as claimed in claims 21-27. Also, the prosecution history of the ‘222 application indicates that ‘method of a memory device’ claims, i.e. 11-18, as well as ‘memory device’ claims , i.e. 1-10 and 19-28, were originally filed in that application but the method claims were voluntarily cancelled by a concurrently filed preliminary amendment.”
13 For example, as discussed above, the prosecution history of the ‘222 application indicates that initially/originally filed claims 11-18 were voluntarily cancelled by a concurrently filed preliminary amendment in US Application No. 16/014,222, filed June 21, 2018. .
Prosecution Insights