DETAILED ACTION
Acknowledgements
This is a Non-Final Office Action addressing U.S. Application No. 18/603,037. Based upon a review of the instant application, the actual filing date of the instant application is March 12, 2024. Since the instant application was filed after September 16, 2012, the statutory provisions of the America Invents Act ("AIA ") will govern this proceeding.
The instant application is a reissue application of U.S. Patent No. 11,616,826 (“the ‘826 Patent”). The ‘826 Patent matured from U.S. Patent Application 17/332,001 filed March 27, 2021. The ‘826 Patent was a Continuation of U.S. Patent App No. 16/600,504, now U.S. Patent No. 11,044,341, which was a Continuation of US Pat. App. No. 16/278,105 filed Feb. 18, 2019, now U.S. Patent No. 10,469,628 which was a continuation of US Pat. App. No. 15/957,950 filed April 20, 2018, now US Patent No. 10,225,374 which was a continuation of U.S. Pat. App. No. 14/025,109 filed September 12, 2013, now U.S. Patent No. 10,069,936 which was a Division of U.S. Pat. App. No. 12/836,059 filed July 14, 2010, now U.S. 8,560,604.
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 the ‘826 Patent No. 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.
Post Grant Challenges
The Examiner finds the following when searching for any post grant challenges to the ‘826 Patent.
Office Proceedings
IPR2024-000126
On December 5, 2023, Petitioner Oxylabs LT, UAB, filed a petition for Inter Partes Review (IPR2024-000126) asserting the following RLP Grounds:
RLP Ground
Claims
Basis
Reference(s)
1
1-5,10,12,15-18,19, and 21-25
§103
Kocherlakota
2
6-9
§103
Kocherlakota and RFC 1122
3
1-6,12,15-17,18,19, and 21-25
§103
Cohen
4
6-9
§103
Cohen and RFC 1122
In a Final Written Decision entered on June 12, 2025, the PTAB found claims 1-10,12,15-19, and 21-25 unpatentable over Kocherlakota or Kocherlakota in view of RFC 1122.
Status of the Claims
Claims 1-10,12,15-19, and 21-25 were canceled in IPR2024-000126;
Claim 13 and 14 were canceled in a preliminary amendment filed October 31, 2025;
Claims 11,20, and 26 are pending.
Claim Objections
Claims 1-10,12,15-19, and 21-25 are objected to for failing to comply with 37 CFR 1.172(g). These claims are canceled and should be identified as such and presented accordingly.
See MPEP 1453(IV) and 1453(VI).
Claim 26 is objected for failing to comply with 37 CFR 1.173(c) because there is no statement of support for the new limitations. 37 CFR 1.173(c), states in part, “Whenever there is an amendment to the claims pursuant to paragraph (b) of this section, there must also be supplied, on pages separate from the pages containing the changes, the status (i.e., pending or canceled), as of the date of the amendment, of all patent claims and of all added claims, and an explanation of the support in the disclosure of the patent for the changes made to the claims.”
Reissue Declaration
The reissue oath/declaration filed 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 does contain an error statement, however there is only a general discussion of the error and not specific identification of the error. MPEP 1414(II)(C), states in part (emphasis added), “Any error in the claims must be identified by reference to the specific claim(s) and the specific claim language wherein lies the error.”
35 USC § 251 Rejections – Declaration
Claims 11,20, and 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.
35 USC § 251 Rejections – New Matter
Claim 26 is rejected under 35 U.S.C. 251 as being based upon new matter added to the patent for which reissue is sought. The added material which is not supported by the prior patent is as follows:
Claim 26 recites, “wherein the first server is server hardware device that is not a consumer computer,” and further recites the second client device is “configured to register the second client device with the first server.” The Examiner is unable to locate support in the specification for these limitations. Additionally, the Applicant’s statement of support of the amendments does not include support for new claim 26.
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.
Claim 26 is 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 26 recites, “wherein the first server is server hardware device that is not a consumer computer,” and further recites the second client device is “configured to register the second client device with the first server.” The Examiner is unable to locate support in the specification for these limitations. Additionally, the Applicant’s statement of support of the amendments does not include support for new claim 26.
Allowable Subject Matter
Claims 11 and 20 are free from prior art rejections, however stands rejected under 35 USC § 251 for the reason stated above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERON J SORRELL whose telephone number is (571)272-4160. The examiner can normally be reached M-F 9AM-6PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Fuelling can be reached at 571-270-1367. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Signed:
/ERON J SORRELL/Primary Examiner, Art Unit 3992
Conferees: /JOSEPH R POKRZYWA/ Primary Examiner, Art Unit 3992 /M.F/Supervisory Patent Examiner, Art Unit 3992