NON-FINAL OFFICE ACTION
This Office Action is a Reissue continuation of U.S. Application No. 16/999,558 now RE49828 which is also a reissue of 14/569,618 now U.S. Patent No. 10,054,916 issued on Aug. 21, 2018 to Steiner et al. (the ‘916 patent).
The status of the claims amended on 5/21/2021 is as follows;
Claims 25-42 are new and pending.
Claims 1-24 are cancelled.
Claims 25-42 are rejected.
Reissue Oath/Declaration
The reissue oath/declaration filed 12/05/2023 with this application is defective because it fails to identify at least one error which is relied upon to support the reissue application. See 37 CFR 1.175 and MPEP § 1414. The declaration states in-part:
It is not sufficient for an oath/declaration to merely state that the invention is “This application is a broadening reissue application of at least claim 1 included in U.S. Patent No. 10,054,916. The reissue continuation claims are directed to broadened, unclaimed, subject matter included in the originally filed application, claims, and/or figures.” Rather, the oath/declaration must specifically identify an error. In addition, it is not sufficient to merely reproduce the claims with brackets and underlining and state that such will identify the error. See In re Constant, 827 F.2d 728, 729, 3 USPQ2d 1479 (Fed. Cir.), cert. denied, 484 U.S. 894 (1987). Any error in the claims must be identified by reference to the specific claim(s) and the specific claim language wherein lies the error.
It is acknowledged that applicants have filed a broadening reissue and that claims 25-42 are new. However, there is no specific error tied to a current claim since original claim 1 has been cancelled.
Thus, the error is defective.
Claims 25-42 are rejected as being based upon a defective reissue oath/declaration under 35 U.S.C. 251 as set forth above. See 37 CFR 1.175.
The nature of the defect(s) in the oath/declaration is set forth in the discussion above in this Office action. The claims are also rejected under 35 U.S.C. §251 based on new mater rejection presented below.
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.
Claims 25-42 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. Independent claims 25, 31, and 37 contain the limitations “a defined frequency shift threshold”, and “a defined amplitude shift threshold” in the last lines of the claims. The examiner has reviewed the specification and understand that an upper and lower threshold relative to the bandpass filter are used to determine occupancy as disclosed in the ‘916 patent C13:L18-44 and figures 12F and 12G reproduced below.
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The examiner maintains that the specification does not describe “a defined frequency shift threshold” or “a defined amplitude shift threshold” and accordingly these claim limitations are new matter. In the remarks of 12/5/2023 the Patent Owner (PO) described support for the independent claims as follows.
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The examiner notes that there is no recitation in the cited portion of the ‘916 specification that support “a defined frequency shift threshold” or “a defined amplitude shift threshold”. Accordingly, all of the claims are rejected based on their dependency to the rejected independent claims to have new matter in the claims.
Specification
The examiner notes that the specification has been amended on 12/5/2023 to replace the first paragraph of the specification that describes the continuity data. The RE49828 data is not present in that amendment. Appropriate correction is required.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN M HOTALING II whose telephone number is (571)272-4437. The examiner can normally be reached 730-4 Monday -Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Andrew J. Fischer can be reached on 571 272 6779. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOHN M HOTALING II/Reexamination Specialist, Art Unit 3992
Conferees:
/C. Michelle Tarae/Reexamination Specialist, Art Unit 3992
/ANDREW J. FISCHER/Supervisory Patent Examiner, Art Unit 3992