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. This application, filed August 9, 2023, is a reissue of U.S. Patent 11,492,428 (hereafter the '428 patent), which issued from U.S. application Serial No. 16/449,257 (the ‘257 application) with claims 1-24 on November 8, 2022.
Objections and Rejections Overcome
The objection to claims 10 and 11, and the rejection of claims 1-24 under 35 USC 112(b), have been overcome by Applicant’s amendment of the claims.
Non-Compliant Amendment
The amendment filed 10/07/2025 is improper. The amendment does not comply with 37 CFR 1.173 which sets forth the manner of making amendments in reissue applications. While the improper amendment has been entered and considered, a compliant amendment is required with Applicant’s next response. An amendment filed after final rejection that fails to comply with 37 CFR 1.173 may not be entered.
All amendment changes must be made relative to the patent to be reissued, not relative to a previous submitted amendment. Pursuant to 37 CFR 1.173(d), any such changes which are made to the specification, including the claims, must be shown by employing the following markings:
(1) The matter to be omitted by reissue must be enclosed in brackets, i.e., single brackets; and (2) The matter to be added by reissue must be underlined.
The non-compliance issues are as follows:
Claims 4 and 25 use double bracketing rather than single bracketing to delete subject matter.
Claim 17 of the amendment has changed “Al 2 O3” at col. 34, line 64 of the ‘428 patent to “Al2O3” without using single bracketing and underlining.
Reissue Applications
The reissue oath/declaration filed 04/05/2024 is defective (see 37 CFR 1.175 and MPEP § 1414) because of the following:
The reissue declaration is defective since the error it seeks to correct is one that may NOT be corrected by reissue. Applicant “seeks to submit an originally signed declaration from Inventor Mamo to correct the record.” However, Inventor Mamo was properly listed as an inventor during the prosecution of the original patent, albeit by a substitute statement in lieu of an originally signed oath/declaration. MPEP §1402(II) limits inventorship error to misjoinder of inventors. See 37 CFR §1.175, MPEP §§1412.04(Il) and 1414.
A new reissue declaration with an acceptable error statement that supports the instant reissue application is required. An example of an acceptable error statement is as follows: “In claim 1, at col. 34, lines 2-3, ‘the first monomers and the second monomers’ raise an antecedent basis issue, i.e., a 35 USC 112(b) issue, in the claim.”
Claims 1-24 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 reissue declaration is set forth in the discussion above in this Office action.
Response to Arguments
Applicant's arguments filed 10/07/2025 have been fully considered but they are not persuasive.
Applicant argues the following on p. 6 of the Remarks:
In response to the Notice to File Missing Parts of Reissue Application mailed on 8 February 2024, Applicant ExxonMobil Chemical Patents Inc. filed a Reissue Application Declaration by the Assignee (“2024 Declaration’) on 5 April 2024. The 2024 Declaration identifies Assignee as Applicant and does not include an oath or declaration from Inventor Mamo, and so it is unclear what defects remain to be corrected. In addition, Applicant filed an ADS on 5 April 2024 identifying Assignee as the Applicant. It is believed that the 2024 Declaration and ADS filed on 5 April 2024 address the Notice of 8 Feb 2024, and Applicant respectfully requests removal of the objection.
Applicant’s argument is unpersuasive. The Notice to File Missing Parts is not the basis for the reissue declaration filed 04/05/2025 being defective. Rather, as noted above, the reissue declaration is defective because the error identified in the error statement cannot be corrected by reissue. In particular, the fact that, in the ‘257 application, inventor Malmo was listed in a Substitute Statement rather than in an originally signed oath/declaration, is not an error correctable by reissue. As noted above, a new reissue declaration with a proper error statement is required.
Duty to Disclose
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. 11,492,428 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 apprise 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.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALAN D DIAMOND whose telephone number is (571)272-1338. The examiner can normally be reached Monday through Thursday 5:30 am to 3:00 pm, and Fridays from 5:30 am to 9:30 am.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Patricia Engle can be reached on 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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Signed:
/ALAN D DIAMOND/Patent Reexamination Specialist
Central Reexamination Unit 3991
Conferees:
/JOSEPH R KOSACK/ /Patricia L Engle/Patent Reexamination Specialist SPRS, Art Unit 3991
Central Reexamination Unit 3991