NON-FINAL OFFICE ACTION
Claims 1-14 and new claims 15-22 are pending in this broadening reissue of U.S. Patent No. 11,164,551 (hereinafter “the '551 patent” issued from application no. 16/800,031 (hereinafter “the '031 application”).
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 the ‘551 patent is or was involved. These proceedings would include interferences, reissues, reexaminations, and litigation.
Information Material to Patentability
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.
Preliminary Amendment
Preliminary amendment filed 11/2/2023 has been entered and considered. Claims 1, 5, 7, 9, and 11 have been amended and claims 15-22 have been newly added. Claims 1-22 are currently pending.
REJECTIONS BASED ON DEFECTIVE OATH/DECLARATION
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 1-22 are rejected as being based upon a defective reissue declaration under 35 U.S.C. 251. See 37 CFR 1.175. The nature of the defect(s) in the 11/3/2023 declaration is set forth below. The declaration states:
The present reissue application is a broadening reissue. Claim 1 has been broadened at least in part. Claim 1 has been amended to include the overlooked aspect that the digital amplifier model is an amplifier model that resembles the real guitar amplifier which was not in Claim 1. This error has been addressed in the presently submitted claims.
MPEP 1414 II. states:
(A)… 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. The corresponding corrective action which has been taken to correct the original patent need not be identified in the oath/declaration. If the initial reissue oath/declaration "states at least one error" in the original patent, and, in addition, recites the specific corrective action taken in the reissue application, the oath/declaration would be considered acceptable, even though the corrective action statement is not required.
(C)… A statement in the oath/declaration of "…failure to include a claim directed to …" and then reciting all the limitations of a newly added claim, would not be considered a sufficient "error" statement because applicant has not pointed out what the other claims lacked that the newly added claim has, or vice versa. Such a statement would be no better than saying in the reissue oath or declaration that "this application is being filed to correct errors in the patent which may be noted from the change made by adding new claim 10." In both cases, the error has not been identified.
Applicant’s declaration makes a general statement that claim 1 has been broadened and amended to include an overlooked aspect. However, the declaration fails to specifically identify an error. A corrected declaration is required.
Rejection under 35 U.S.C. 251 - RECAPTURE
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 1-22 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.
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))
In this case, independent claims 1, 9, and 11 have been amended to broaden “applying a high-level exponential sine sweep with “applying a first exponential sine sweep; broadened “capturing a high-level output signal with “capturing a first output signal; broadened “applying a low-level exponential sine sweep” with “applying a second exponential sine sweep”; broadened “capturing a low-level output signal” with “capturing a second output signal”.
The omitted claim limitations are related to subject matter surrendered in the original prosecution. During prosecution of the '031 application, Applicant made the following amendment on 6/16/2021 adding the limitations of dependent claim 4 (and intervening claim 3) into independent claim 1 and asserted that these were allowable features as indicated by the Examiner:
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('031 application, claims filed 6/16/2021)
These allowable claim limitations are now broadened in independent claims 1, 9, and 11, and completely omitted from new independent claim 18. Thus, the broader aspects of the instant reissue claims relate to the subject matter surrendered in the original prosecution. Furthermore, since Applicant fails to materially narrow the instant reissue claims in other respects, the recapture rule has not been avoided. The limitation “wherein the digital amplifier model is an amplifier model that resembles the real guitar amplifier” has been added to claims 1, 9, and 11. However, this limitation merely describes an inherent characteristic of what a model does, which is to emulate/represent a real-life object. Therefore, this newly added limitation does not materially narrow the claims in other respects, and fails to avoid the recapture rule.
CONCLUSION
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Cameron Saadat whose telephone number is (571)272-4443. The examiner can normally be reached M-F 7:30-4:00.
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, Hetul Patel can be reached at (571) 272-4184. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Cameron Saadat/Primary Examiner, Art Unit 3992
Conferees:
/Woo H Choi/
Primary Examiner, Art Unit 3992
/ALEXANDER J KOSOWSKI/Supervisory Patent Examiner, Art Unit 3992
