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. 11,808,085 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.
Consent of Assignee and Statement Under 37 CFR 3.73(c)
37 CFR 1.172(a) states, in pertinent part: “A reissue application must be accompanied by the written consent of all assignees, if any, currently owning an undivided interest in the patent. All assignees consenting to the reissue must establish their ownership in the patent by filing in the reissue application a submission in accordance with the provisions of 37 CFR 3.73.” As explained in MPEP § 1410.02, “The consent of assignee must be signed by a party authorized to act on behalf of the assignee.”
This application is objected to under 37 CFR 1.172(a) as lacking the written consent of all assignees owning an undivided interest in the patent. The consent of the assignee must be in compliance with 37 CFR 1.172. See MPEP § 1410.02. The consent of assignee form (PTO/AIA /53) filed February 23, 2024, is defective because the name and title of the person signing for the assignee has not been provided. See image below. A proper consent of the assignee in compliance with 37 CFR 1.172 and 3.73 is required in reply to this Office action.
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Additionally, the Statement Under 37 CFR 3.73(c) filed February 23, 2024, is defective because no evidence of the interest identified in option 1 has been provided (i.e., neither box A nor box B have been checked on the bottom of pg. 1 of Form PTO/AIA /96). See image below.
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Reissue Oath/Declaration
37 CFR 1.175(a) states, in pertinent part: “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 the reissue” (emphasis added).
The reissue declaration filed November 6, 2025, is defective because it fails to specifically identify the error which is relied upon to support the reissue application. See 37 CFR 1.175 and MPEP § 1414. While the examiner agrees that the new error statement does unequivocally indicate Applicant’s intent to broaden within two years of the patent grant, the error statement must also clearly identify the error in the original claims that gives rise to the error. As explained in MPEP § 1414, subsection II (emphasis added):
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 … 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.
In this case, the error statement in the November 6 declaration does not identify an original patent claim (e.g., claim 1) that is being broadened and at least a single word, phrase or expression (e.g., “a pair of said couplers vertically spaced from each other”) in that claim which renders the original patent wholly or partly inoperative.
Additionally, the box at the bottom of pg. 2 of Form PTO/AIA /05 should be checked to indicate the presence of the supplemental sheet naming the additional joint inventors. See image below.
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Claim Rejections - 35 USC § 251
35 U.S.C. 251 states:
(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.
(b) MULTIPLE REISSUED PATENTS.— The Director may issue several reissued patents for distinct and separate parts of the thing patented, upon demand of the applicant, and upon payment of the required fee for a reissue for each of such reissued patents.
(c) APPLICABILITY OF THIS TITLE.— The provisions of this title relating to applications for patent shall be applicable to applications for reissue of a patent, except that application for reissue may be made and sworn to by the assignee of the entire interest if the application does not seek to enlarge the scope of the claims of the original patent or the application for the original patent was filed by the assignee of the entire interest.
(d) REISSUE PATENT ENLARGING SCOPE OF CLAIMS.—No reissued patent shall be granted enlarging the scope of the claims of the original patent unless applied for within two years from the grant of the original patent.
Claims 1-10 are rejected under 35 U.S.C. 251 as being based upon defective reissue declarations and consent of assignee as set forth above. See 37 CFR 1.175.
The nature of the defects in the declarations and consent are set forth in the discussion above in this Office action.
Objections to the Amendments - Formalities
The claim amendments filed January 8, 2026, are objected to for the following informalities.
Claim 5 is identified as “original” but has been amended to depend from “claim 44.” This appears to be a typographical error (there being no claim 44 in the present claims). For the purpose of examination, claim 5 is interpreted as depending from claim 4, consistent with original patent claim 5.
Recapture Analysis
As explained in MPEP § 1412,02, reissue applications must be evaluated to ensure that a reissue does not “recapture” claimed subject matter which was surrendered to obtain the original patent. Claims 1-10 are NOT rejected under 35 U.S.C. 251 on the basis of improper recapture. Because a broadening aspect is present in new reissue claim 10 and relates to subject matter previously surrendered during prosecution of the application, a complete recapture analysis is provided here for clarity of the record.
MPEP § 1412.02 establishes a three-step test for recapture. The three-step process is as follows:
(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.
Recapture Analysis: Step 1
Reissue claim 10 is broader in scope than patent claims 1-8. Claim 10 does not require the following limitations which were present in all of the patent claims: a pair of couplers vertically spaced from each other to define an upper coupler and a lower coupler, recited in each of the independent patent claims 1, 6, 7, and 8.
Therefore, step 1 of the three-step test is met for reissue claim 10.
Recapture Analysis: Step 2, first sub-step
The step of determining whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution includes two sub-steps. The first sub-step is to determine whether the applicant surrendered any subject matter in the prosecution of the original application. MPEP § 1412.02 defines surrendered subject matter as a claim limitation that was originally relied upon by the applicant in the original prosecution to make the claims allowable over the art.
During prosecution of the ‘085 patent, claim 1 as originally presented recited a nestable tree climbing stick comprising, inter alia, a stick body, a step, a standoff, and “a coupler being attached to said stick body, said coupler releasably securing together a pair of the tree climbing stick assemblies to define secured tree sticks such that the longitudinal axes of the secured tree sticks are orientated parallel to each other, said coupler including: a first mating member; and a second mating member, said first mating member of one of the tree climbing stick assemblies being vertically engageable into the second mating member of another one of the tree climbing stick assemblies when the stick bodies of the secured tree sticks are vertically orientated.”1
Over the course of a lengthy prosecution history which included three non-final Office actions and two final Office actions (with no requests for continued examination), claim 1 was amended multiple times to ultimately read as independent patent claim 1, dependent claims 21 and 26 were rewritten in independent form leading to independent patent claims 6 and 7, and a new independent claim 33 was introduced during prosecution, leading to independent patent claim 8.
During the course of prosecution, the following limitations were added to each of independent claims 1 and 6-8 to overcome the applied prior art:
“a pair of couplers … being vertically spaced from each other to define an upper coupler and a lower coupler”2; and
the first mating member comprising “a post extending downwardly relative to said upper end and having a bottom end, wherein said post is orientated generally parallel to the longitudinal axis of the stick body wherein an angle formed between said post and the longitudinal axis of the stick body is less than 20°,” and the second mating member “comprising a receiver.”3
Independent claims 1 and 8 were additionally amended to include the following limitation to overcome the applied prior art:
the couplers being configured “such that the front side of one of the tree climbing stick assemblies faces the rear side of the other of the tree climbing stick assemblies, said pair of couplers of the stick body nesting together with the pair of couplers of the other stick body and preventing movement of the pair of tree climbing stick assemblies relative to each other to facilitate storage and transportation thereof.”4
Independent claim 6 was additionally amended to include the following limitation as part of an independent claim to overcome the applied art:
“wherein said posts of said upper coupler are shorter than said posts of said lower coupler.”5
Independent claim 7 was additionally amended to include the following limitation as part of an independent claim to overcome the applied art:
“wherein each tree climbing stick assembly includes: a pair of the steps and a pair of the standoffs, each of the steps forming a unitary structure with one of the standoffs such that joined ones of the steps and the standoffs define supports; and one of the couplers being positioned on one of the supports and one of the couplers being positioned on another one of the supports.”6
The limitations discussed above were added to the independent claims to distinguish the claimed invention from the prior art and are thus surrender-generating limitations (SGL).
Recapture Analysis: Step 2, second sub-step
The second sub-step is to determine whether any of the broadening of the reissue claims is in the area of the surrendered subject matter. The examiner must analyze all of the broadening aspects of the reissue claims to determine if any of the omitted/broadened limitations are directed to limitations relied upon by Applicant in the original application to make the claims allowable over the art.
Reissue claim 10 is broadened with respect to patent claims 1 and 6-8 to omit “a pair of couplers … being vertically spaced from each other to define an upper coupler and a lower coupler” which was recited in all patented claims, replacing “a pair of couplers” with “a coupler.”
Reissue claim 10 retains the following limitations which were added during prosecution of the underlying patent to overcome the cited art:
“a post extending downwardly relative to said upper end and having a bottom end, wherein said post is orientated generally parallel to the longitudinal axis of the stick body wherein an angle formed between said post and the longitudinal axis of the stick body is less than 20°,” and the second mating member “comprising a receiver,” which was recited in all patented claims; and
the coupler being configured “such that the front side of one of the tree climbing stick assemblies faces the rear side of the other of the tree climbing stick assemblies, said coupler of the stick body nesting together with the coupler of the other stick body and preventing movement of the pair of tree climbing stick assemblies relative to each other to facilitate storage and transportation thereof,” which was recited in independent patent claims 1 and 8.
Reissue claim 10 includes some of the details of the surrendered subject matter and eliminates some of the details of the surrendered subject matter. Therefore, step 2 of the three-part test is met for reissue claim 10.
Recapture Analysis: Step 3
The third step in the recapture analysis considers the significance of claim limitations that were added and deleted during prosecution of the patent to be reissued in order to determine whether the reissue claims are materially narrowed in other respects so as to avoid the recapture rule. As set forth in MPEP § 1412.02, subsection II(C), if a surrender-generating limitation (SGL) has not been entirely eliminated from a claim in the reissue application but rather has been made less restrictive in the reissue claim, “[i]t must be determined what portion of the amendment or argued limitation has been retained, and whether the retained portion materially narrows the original claims to avoid recapture.”
In this case, reissue claim 10 modifies the SGL by omitting a second coupler that is vertically spaced from the claimed coupler but retaining the specific releasable engagement function of the coupler “such that the front side of one of the tree climbing stick assemblies faces the rear side of the other of the tree climbing stick assemblies, said coupler of the stick body nesting together with the coupler of the other stick body and preventing movement of the pair of tree climbing stick assemblies relative to each other to facilitate storage and transportation thereof,” as well as the first mating member of the coupler comprising a downwardly extending post orientated generally parallel to the longitudinal axis of the stick body, and the second mating member of the coupler comprising a receiver.
The examiner finds that the retained limitations listed above materially narrow the original claims7 and are sufficient to avoid recapture. The material narrowing explicitly relates to what was amended and argued by Applicant in the original application to define the claims over the art. In the response filed February 27, 2023, see pg. 11, Applicant argued:
Claim 1 has been amended to clarify the invention and distinguish from the cited reference. Specifically, the couplers are defined as nesting to prevent movement of the pair of tree climbing stick assemblies relative to each other … It is respectfully submitted Petreman does not clearly and definitely disclose the coupler as defined by the claim language. It is respectfully submitted the term coupler as used by the applicant does not read on the connection cited in the rejection because the Petreman device employs a hinge or pivot. As the specific purpose of a hinge is to provide for pivoting movement between elements, the hinge of Petreman cannot render obvious the coupler defined in the claim which provides nesting to prevent movement, particularly as in the clarified limitations of claim 1.
In summary, while reissue claim 10 is broader than the patented claims, reissue claim 10 is materially narrowed relative to the surrendered subject matter in a way that relates to what was amended and argued by applicant in the original application to define the claim over the art. Additionally, the examiner finds that the retained limitations, considered together, were not well known and were not contained within the prior art relied upon by the examiner in the original prosecution.
In view of the foregoing, the examiner concludes that claim 10 avoids recapture at step three of the recapture analysis.
Allowable Subject Matter
Claims 1-10 would be allowable pending the correction of the Reissue Declaration, Consent of Assignee, and Statement Under 37 CFR 3.73 as discussed above.
With respect to original patent claims 1-8 and new dependent claim 9, the reasons for allowance are the same as those discussed during prosecution of the underlying patent. See Notice of Allowance mailed July 6, 2023, Reasons for Allowance, pg. 3-4.
With respect to new reissue claim 10, the closest prior art is Jenkins, Jr. (U.S. Patent No. 5,752,580, hereinafter Jenkins), Trafficante et al. (U.S. Patent No. 12,310,353, hereinafter Trafficante), D’Acquisito (U.S. Patent Pub. 2022/0195802, hereinafter D’Acquisito), and Hebert (U.S. Patent Pub. 2022/0025702, hereinafter Hebert), which each disclose a nestable tree climbing stick system.
Jenkins (Fig. 7) and Hebert (Fig. 22) each disclose stackable climbing sticks but do not disclose couplers for releasably engaging nested climbing sticks.
Trafficante teaches stacking sticks together (Figs. 2 and 26-28) by engaging a channel (2406) of one stick to a frame (2108) of another stick. While these features of Trafficante may be considered a coupler comprising first and second mating members broadly speaking, Trafficante does not teach a downwardly extending post orientated generally parallel to the longitudinal axis of the stick body which is vertically engageable into a receiver of another stick body.
D'Acquisito teaches a tree climbing stick assembly comprising a first mating member comprising a post (support bolt 7 or “Versabutton” 11, Fig. 5) and a second mating member comprising a receiver (port 8 or 16; ¶ 37) for securely nesting two sticks for transport. However, D’Acquisito teaches that the posts extend substantially perpendicular to the longitudinal axis of the stick body (see Fig. 5) rather than downwardly relative to the upper end of the stick body and generally parallel to the longitudinal axis of the stick body as claimed.
In the course of prosecution of the ‘085 patent, the previous examiners found that a coupler comprising a “post extending downwardly” and a “receiver” were taught by Fast (US Patent No. 9,512,675, hereinafter Fast)8 or Petreman (US Patent Pub. 2021/0095524, hereinafter Petreman; see Fig. 6 of Petreman, reproduced below).9
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Neither Fast nor Petreman teach a coupler that is releasably engageable to the coupler of another tree climbing stick assembly such that the front side of one assembly faces the rear side of the other assembly with the couplers of the two assemblies nesting together and preventing relative movement of the assemblies to facilitate storage and transportation.
In summary, the examiner finds that the prior art does not teach a nestable tree climbing stick system comprising the claimed combination of features, including a coupler comprising a first mating member comprising a downwardly extending post oriented generally parallel to the longitudinal axis of the stick body and a second mating member comprising a receiver, which is releasably engageable to a coupler of another stick body for releasably securing together a pair of the tree climbing stick assemblies such that the front side of one of the tree climbing stick assemblies faces the rear side of the other of the tree climbing stick assemblies with the couplers of the assemblies nesting together and preventing relative movement of the assemblies to facilitate storage and transportation.
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.
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.
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, Eileen Lillis can be reached at (571)272-6928. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Laura Davison/Reexamination Specialist, Art Unit 3993
Conferees:
/SARAH B MCPARTLIN/Reexamination Specialist, Art Unit 3993
/EILEEN D LILLIS/SPRS, Art Unit 3993
1 U.S. Application Serial No. 17/215,748, claim 1 as originally filed March 29, 2021.
2 A pair of couplers including an upper coupler and a lower coupler was first added to claim 1 in the amendment filed April 21, 2022, and was subsequently clarified in claim 1 and added to claims 21, 26, and 33 in the amendment filed February 27, 2023.
3 These features of the first and second mating members were first added to claim 1 in the amendment filed December 14, 2021, were subsequently included in new claim 33 in the amendment filed October 12, 2022, and were eventually incorporated into claims 21 and 26 in the amendment filed February 27, 2023.
4 This limitation was first added to claims 1 and 33 in the amendment filed February 27, 2023.
5 This limitation was original to dependent claim 21 which was indicated as allowable in the non-final Office action mailed November 29, 2022, and was rewritten in independent form in the amendment filed February 27, 2023.
6 This limitation was original to dependent claim 26 which was indicated as allowable in the non-final Office action mailed November 29, 2022, and was rewritten in independent form in the amendment filed February 27, 2023.
7 In this context, “original claims” refers to claims presented in the original application prior to surrender. See MPEP § 1412.02, subsection I.
8 See non-final Office action mailed February 17, 2022, pg. 6.
9 See non-final Office action mailed November 29, 2022, pg. 7-8.