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
This application seeks to reissue US Patent No. 11,265,200 (“the ‘200 patent”). By preliminary amendment, claims 1-14 have been amended and new claims 15-26 have been introduced. Claims 1-26 are pending. This is a broadening reissue application.
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.
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. 11,265,200 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.
Objection, 37 CFR 1.173 – No Explanation of Support
This application is objected to for failing to comply with 37 CFR 1.173. 37 CFR 1.173(c) requires submission of “an explanation of the support in the disclosure of the patent for the changes made to the claims.” An explanation must be provided for all changes, including insertions and deletions. See MPEP 1453 II. The applicant has provided no explanation showing where support is found in the specification for the extensive amendments made to the claims. Correction is required.
Objection, 37 CFR 1.175 – Defective Declaration
The reissue declaration filed with this application is defective because it fails to properly identify the error that is relied upon to support the filing of this application. The applicant states that the patent claims “claimed less subject matter than could have been claimed in the patent. The issued claims contain limitations that are not essential to practicing the broad teaching of the invention disclosed in the application.” See Remarks at 11-12. This is not a sufficient error statement. When a reissue application is filed to correct errors in the claims of a patent, the errors in the claims “must be identified by reference to the specific claim(s) and the specific claim language wherein lies the error.” MPEP 1414 II. Correction is required.
Claim Objections
Claims 1 and 8 are objected to because of the following informalities: claims 1 and 8 recite “obtaining … quadrature-phase samples” and later refer to “the quadrature-phase samples snQ.” This second recitation lacks antecedent basis in the claim. It will be assumed that the later-recited “quadrature-phase samples snQ” refers to the “quadrature-phase samples” that are recited in the “obtaining” limitation. Appropriate correction is required.
Claim Rejections – 35 USC § 251
Claims 1-26 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.
Rejection, 35 USC § 251 – Recapture
Claims 1-24 are rejected under 35 U.S.C. 251 as being an impermissible recapture of broadened claimed subject matter surrendered in the application for the patent upon which the present reissue is based. In re McDonald, 43 F.4th 1340, 1345, 2022 USPQ2d 745 (Fed. Cir. 2022); Greenliant Systems, Inc. et al v. Xicor LLC, 692 F.3d 1261, 103 USPQ2d 1951 (Fed. Cir. 2012); In re Youman, 679 F.3d 1335, 102 USPQ2d 1862 (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). The reissue application contains claim(s) that are broader than the issued patent claims. The record of the application for the patent family 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.
The recapture analysis involves a three-step process:
(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.
MPEP 1412.02 II.
Step (1): The claims of the ‘200 patent have been broadened in this reissue application. Analysis therefore continues to step (2).
Step (2): A claim limitation is surrendered if it is “presented, argued, or stated to make the claims patentable.” See MPEP 1412.02 I and In re McDonald, 43 F.4th 1340, 1348 (Fed. Cir. 2022). Various limitations that have been removed in the filing of this reissue application were surrendered during prosecution of US Application 16/447,024 (“the ‘024 application”), from which the ‘200 patent issued.
During prosecution of the ‘024 application, no prior art rejections were made, but the claims were rejected numerous times under §112(b). See the 11/15/2019 non-final, 04/08/2020 final, and 08/03/2021 non-final Office actions. Responsive to these rejections, the claims were amended, and new claims were presented. See Claims filed 02/12/2020, 07/06/2020, 06/02/2021, and 10/29/2021.
In the 02/12/2020 response to the 11/15/2019 Office action, the claims were amended to include the following limitation:
SGL 1: requiring that the signal s(t) can be a modulated SC (Single Carrier) “or MC (Multi Carrier) signal”
SGL 1 was presented in direct reply to the preceding Office action. This amendment was also described by the applicant as being made to place the application in condition for allowance. See 02/12/2020 Remarks at 9. Therefore SGL 1 was surrendered. See MPEP 1412.02 I.
The new claims that were filed on 06/02/2021 in response to the 04/08/2020 Office action introduced limitations that narrowed the scope of the claims. These new limitations include the following:
SGL 2: filtering by a filter “comprising an impulsive response r(t) and a frequency response for cancelation of the first replica of the spectrum of sampled signal.”
SGL 2 was present in the originally-filed claims, was removed in the 02/12/2020 amendment, and was subsequently reintroduced in the 06/02/2021 response. This response was described by the applicant as “addressing the points noted by the Examiner.” See Remarks filed on 06/02/2021 at 9-10. Therefore SGL 2 was surrendered because it was introduced in an amendment that was presented to make the claims patentable.
SGL 1 and SGL 2 have been removed from claims 1 and 8. Therefore the broadening aspects of the claim amendments remove surrendered subject matter. Analysis continues to step (3) of the recapture analysis.
Step (3): There has been no material narrowing relative to the surrendered claim limitations. The removal of SGL 1 and SGL 2, which have been entirely omitted, represents “entire or substantial recapture of the surrendered subject matter because there is no or insufficient material narrowing to avoid the recapture rule.” MPEP 1412.02 II C.
Rejection, 35 USC § 251 – Original Patent
Claims 1-24 are rejected for failing to meet the original patent requirement of 35 USC §251.
Claims in a reissue application “must be for the same invention as that disclosed as being the invention in the original patent.” MPEP 1412.02 I. “To satisfy the original patent requirement where a new invention is sought by reissue, ‘… the specification must clearly and unequivocally disclose the newly claimed invention as a separate invention.’" Id., quoting Antares Pharma Inc., v. Medac Pharma Inc. and Medac GMBH, 771 F.3d 1354, 1363 (Fed. Cir. 2014).
Claims 1 and 8 have been amended to remove a number of limitations that were present in the patent claims. The removed limitations include:
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The invention that is recited in the amended claims only requires “obtaining” the in-phase and quadrature-phase samples, without first: a) receiving a specific clock signal for reference of an oversampling rate according to a bandwidth of the input signal, b) receiving the input signal s(t) that is a modulated or baseband MC or SC signal, which is processed in a phase splitter to obtain the in-phase and quadrature-phase components, and c) sampling the in phase and quadrature components at a given oversampling rate and a specific time offset between sample times to generate the in-phase and quadrature-phase samples. In addition, the amended claims do not recite that filtering is performed on the polar in-phase and quadrature components, the filter having a particular bandwidth and impulse/frequency response to generate specific filtered signal components.
The specification of the ‘200 patent does not indicate that the removed limitations are optional features of the invention. Instead, all embodiments that are described in the written description show that the limitations that were removed from the claims are part of what the “patentee objectively intended as the invention.” MPEP 1412.01 I. The ‘200 patent even describes receiving and oversampling the signal at specific offsets as being “crucial” to the invention: “The method and systems disclosed in this application follow an approach with two crucial steps: oversampling of the input signal with an offset between samples of the in-phase and quadrature components…” ‘200 patent at 4:3-16. This passage of the specification describes the “receiving a clock signal,” “receiving the input signal,” and “sampling” limitations that have been removed from the claims.
Therefore amended claims 1 and 8 recite an invention that the written description does not “unequivocally disclose … as a separate invention.” MPEP 1412.01 I. See also Forum US, Inc. v. Flow Valve, LLC, 926 F.3d 1346, 1352, (Fed. Cir. 2019) ("nowhere do the written description or drawings disclose that arbors are an optional feature of the invention. Even if a person of ordinary skill in the art would understand that the newly claimed, arbor-less invention would be possible, that is insufficient to comply with the standard set forth in Industrial Chemicals [315 U.S. 668 (1942)] and Antares [771 F.3d 1354 (Fed. Cir. 2014)].").
Because the claims are not for the same invention as that disclosed as being the invention in the original patent, they violate the original patent requirement of §251.
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 8-14 and 23-24 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.
Claim 8 has been amended to recite “an obtainer circuit” that is operable to obtain the in-phase and quadrature samples. Given the breadth and indefiniteness of this limitation (see §112(b) rejection below), its scope includes an interpretation that does not find written description support. The ‘200 patent does not describe a separate obtainer circuit that obtains the claimed in-phase and quadrature samples. In addition, the applicant has not provided a description of where support for this feature is found.
Claims 9-14 and 23-24 depend from claim 8 and inherit this deficiency.
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.
Claims 8-14 and 23-24 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.
Claim 8 has been amended to recite “an obtainer circuit” that is operable to obtain the in-phase and quadrature samples. The scope of this limitation is indefinite. It is not clear if this is meant to refer to the entirety of the “sampler block” that is depicted in Fig. 2: 209, or if the “obtainer circuit” is a separate circuit that resides between the sampler and the quantizer. The applicant has not provided a description of where support for this circuit exists in the specification, and therefore the scope of this claim feature cannot be determined.
Claims 9-14 and 23-24 depend from claim 8 and inherit this deficiency.
Allowable Subject Matter
Claims 1-24 are rejected above, but recite allowable subject matter.
The following is a statement of reasons for the indication of allowable subject matter:
The closest prior art includes:
Carvalho, US 2018/0254754 (having a different inventive entity, this reference is available as prior art under 35 USC §102(a)(2)). Carvalho discloses a method that is similar to the claimed invention, but fails to teach “combining the in-phase and quadrature-phase polar components having a same amplitude, to obtain Nbq offset signals in which the input signal is decomposed.”
Schwartz, US 5,945,885. Schwartz discloses an offset modulation technique that includes converting filtered I/Q components from polar to rectangular domain to produce I and Q baseband signals. See e.g. Fig. 5 and its description. Schwartz also fails to disclose “combining the in-phase and quadrature-phase polar components having a same amplitude, to obtain Nbq offset signals in which the input signal is decomposed.”
Nagode, US 20140269986. Nagode discloses a method for generating a composite envelope signal for baseband signals, including receiving in-phase and quadrature component samples, and summing the samples to incorporate a plurality of offset components. See e.g. ¶¶38-39. Nagode likewise fails to teach “combining the in-phase and quadrature-phase polar components having a same amplitude, to obtain Nbq offset signals in which the input signal is decomposed.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT J HANCE whose telephone number is (571)270-5319. The examiner can normally be reached M-F 11:00am-7:00pm ET.
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/ROBERT J HANCE/Primary Examiner, Art Unit 3992
Conferees: /JOSEPH R POKRZYWA/ Primary Examiner, Art Unit 3992 /M.F/Supervisory Patent Examiner, Art Unit 3992