NON-FINAL OFFICE ACTION
This non-final Office action addresses U.S. Application No. 18/612,692, which is a broadening reissue application of U.S. Application No. 15/245,146 (hereinafter the “146 Application"), entitled BATTERY CLAMP, which issued as U.S. Patent No. 10,148,105 (hereinafter the “105 Patent").
The status of the claims is as follows:
Claims 11-30 are pending and examined herein.
Claims 11-30 are rejected.
I. REQUEST FOR CONTINUED EXAMINATION
A request for continued examination under 37 C.F.R. §1.114, including the fee set forth in 37 C.F.R. §1.17(e), was filed in this application on June 28, 2026 after final rejection. Since this application is eligible for continued examination under 37 C.F.R. §1.114, and the fee set forth in 37 C.F.R. §1.17(e) has been timely paid, the finality of the Final Office action mailed February 27, 2026 (hereinafter the “2026 Final Action”) has been withdrawn pursuant to 37 CFR 1.114. Applicant's response including an amendment filed on May 26, 2026 (hereinafter the “May 2026 Amendment”) has been entered.
II. STATUS OF CLAIMS AND APPLICATION
In the May 2026 Amendment, patent claims 1-10 were cancelled and new claims 11-30 were added. Along with the May 2026 Amendment, Applicant also filed a terminal disclaimer (hereinafter the “2026 Terminal Disclaimer”). Furthermore, on June 28, 2026, Applicant also filed a new reissue declaration (hereinafter the “2026 Reissue Declaration”). Therefore, claims 11-30 are pending and will be examined.
Examiners also acknowledge the change in priority for the present reissue application, requested by Applicant in the Petition filed August 4, 2026 (hereinafter the “2026 Priority Petition”) as granted in the Petition Decision mailed August 21, 2026 (hereinafter the “2026 Petition Decision”).
In view of the amendments to the claims, the filing of the 2026 Terminal Disclaimer, and the granting of the 2026 Priority Petition, all objections and rejections provided in the 2026 Final Action are withdrawn. However, new issues raised by the May 2026 Amendment and other papers filed in this application necessitate the objections raised in this Office Action.
III. TERMINAL DISCLAIMER
The 2026 Terminal Disclaimer disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of U.S. Patent No. RE49976 and U.S. Application No. 18/612,660 has been reviewed and is accepted. The terminal disclaimer has been recorded.
IV. OBJECTION TO APPLICATION DATA SHEET/FILING RECEIPT
The latest Applicant Data Sheet filed August 4, 2026 (hereinafter the “Aug 2026 ADS”) is objected to because it does not contain the proper Domestic Benefit information. Based on the continuity data of this application asserted by Applicant, a proper ADS should state the following:
(1) The present application is a “continuation of” Application No. 17/112,920;
(2) Application No. 17/112,920 is a “reissued of” Application No. 15/245,146;
(3) The present application is a “reissued of” Application No. 15/245,146,
as required in the guidelines outlined in the Reissue Application Filing Guide for Applications filed on or after September 16, 2012.1
Examiners find item 3 is missing from the Aug 2026 ADS. Examiners note the Aug 2026 ADS is otherwise proper. Examiners suggest using the Corrected WebADS to correct the domestic priority of the Aug 2026 ADS.2 Appropriate correction is required.
Examiners also find that the Filing Receipt mailed August 21, 2026 (hereinafter the “2026 Filing Receipt”) reflects the improper/missing notation in the Aug 2026 ADS. For example, the Oct 2011 Filing Receipt does not indicate all three items of priority information above. Accordingly, Applicant is also required in response to this action to file a request for a corrected filing receipt to reflect the changed/corrected Domestic Benefit/National Stage information so that the filing receipt will reflect all three items of priority information required above. See MPEP §601.05(a)(II).
V. PRIORITY
Based on a review of the prosecution history of this reissue application, Examiners acknowledge the Applicant’s claim that the present reissue application is a continuation reissue of the U.S. Application No. 17/112,920, filed December 4, 2020, now U.S. Patent No. RE49,976, which is a reissue of U.S. Patent Application No. 15/245,146, filed August 23, 2016, now the 105 Patent. Examiners further acknowledge the Applicant’s claims of foreign priority to CN201610506106, CN201610506137 and CN201620692248, each filed June 30, 2016.
VI. REISSUE DECLARATION
37 C.F.R. §1.175 Reissue oath or declaration (in part).
(a) 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 reissue and state that the applicant believes the original patent to be 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 the patentee had the right to claim in the patent.
(b) If the reissue application seeks to enlarge the scope of the claims of the patent (a basis for the reissue is the patentee claiming less than the patentee had the right to claim in the patent), the inventor's oath or declaration for a reissue application must identify a claim that the application seeks to broaden. A claim is a broadened claim if the claim is broadened in any respect.
(d) If errors previously identified in the inventor’s oath or declaration for a reissue application pursuant to paragraph (a) of this section are no longer being relied upon as the basis for reissue, the applicant must identify an error being relied upon as the basis for reissue.
Examiners object to the June 2026 Reissue Declaration on the basis of the following findings.
First the identified error regarding changing the “connected to” language to the “configured to be connected to” language, Examiners find this error was already corrected in the prior completed reissue, i.e., the RE49976 Patent, and thus is not a proper error in this reissue application.
Second, the identified error regarding identified added language of “a circuit configured to control power delivery” is not proper identified error because this is not language recited in pending claims 11-30 (Examiners find this was added in the co-pending Application No. 18/612,660), nor was this language recited in the original claims of the 105 Patent did not include this language. Thus, this correction has not being corrected in this application, rather this application recites a “master-control circuit unit to control the switch unit.”
Third, the identified error regarding correcting “obvious typographical errors” is not a proper basis for reissue, but rather such errors should be corrected via a Certificate of Correction.
Fourth, the identified error regarding new dependent claims 21-30, Examiner note that the Applicant has not identified any single word, phrase, or expression” from the claims of the 105 Patent that rendered the 105 Patent invalid or inoperative. Thus, this statement without more is insufficient to properly state an error.
In view of the forgoing, Examiners do not find at least one proper error on which to base this reissue. Accordingly, based on the rules above, Applicant is required to provide a new declaration with a proper statement of error with respect to 105 Patent identifying "a single word, phrase, or expression" from the claims of the 105 Patent that rendered the 105 Patent invalid or inoperative. Furthermore, the statement must also specify a claim which Applicant seeks to broaden via this reissue application. See MPEP §1414 for guidance as to the requirements for reissue declaration error statements.
VII. REJECTION UNDER 35 U.S.C. §251
The following is a quotation of 35 U.S.C. §251:
Whenever any patent is, through error without any deceptive intention, 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.
VII.A. Rejection Based on Defective Declaration
Claims 11-30 and this application as a whole are rejected under 35 U.S.C. §251 as being based upon a defective reissue oath/declaration as set forth above. See 37 C.F.R. §1.175. The nature of the defects in the June 2026 Reissue Declaration is set forth in the discussion above in this Office action.
VIII. CLAIM INTERPRETATION
During examination, claims are given the broadest reasonable interpretation consistent with the specification and limitations in the specification are not read into the claims. See MPEP §2111, MPEP §2111.01 and In re Yamamoto et al., 222 USPQ 934 (Fed. Cir. 1984). Under a broadest reasonable interpretation, words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification. See MPEP §2111.01(I). It is further noted it is improper to import claim limitations from the specification, i.e., a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment. See MPEP §2111.01(II). Therefore, unless one of the exceptions applies below, Examiners will interpret the limitations of the pending and examined claims using the broadest reasonable interpretation.
VIII.A. Lexicographic Definitions
A first exception to the prohibition of reading limitations from the specification into the claims is when the Applicant for patent has provided a lexicographic definition for the term. See MPEP §2111.01(IV). Following an independent review of the claims in view of the specification herein, Examiners find that Patent Owner has not provided any lexicographic definitions related to claim terms with any reasonable clarity, deliberateness and precision.
VIII.B. Claim Interpretation Under 35 U.S.C. §112(f)
A second exception to the prohibition of reading limitations from the specification into the claims is when the claimed feature is written as a means-plus-function or a step-plus-function. See 35 U.S.C. §112(f) and MPEP §2181-2183.
As noted in Williamson v. Citrix Online, L.L.C., 115 USPQ2d 1105, 1112 (Fed. Cir. 2015), there is a presumption that claim terms with the word “means” invoke §112(f) and that claim terms without the word “means” do not. Williamson, 792 F.3d at 1348. This presumption is rebuttable if a challenger demonstrates that a claim term either fails to “recite sufficiently definite structure” (WIT1) or else recites “function without reciting sufficient structure for performing that function” (WIT2). See Williamson, 792 F.3d at 1348. WIT1 and WIT2 are in the alternative and thus a challenger need only demonstrate one of WIT1 or WIT2 for the claims to invoke §112(f). WIT1 and WIT2 are in the alternative and thus a challenger, i.e., the Examiners herein, need only demonstrate one of WIT1 or WIT2 for the particular claim language to invoke §112(f). The presumption against means-plus-function claiming is not “strong” and that a challenger need not show that the limitation is essentially devoid of anything that can be construed as structure; rather a challenger need only show that the structure is not sufficient for performing the claimed function. See Id. Sufficient structure exists when the claim language specifies the exact structure that performs the function in question without need to resort to other portions of the specification or extrinsic evidence for an adequate understanding of the structure. See TriMed, Inc. v. Stryker Corp. 4514 F.3d 1256, 1259 (Fed. Cir. 2008).
After a claimed phrase has been shown to invoke 35 U.S.C. §112(f), the next step is to determine the corresponding structure or material as described in the specification for performing the recited function. See MPEP §2181(II) and Williamson, 792 F.3d at 1351.
Examiners find herein that claims 11-30 include one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. §112(f) because the claim limitations use a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Each such limitation will be discussed in turn as follows.
B1. FL #1: “master-control circuit unit…” (Claims 11-30)
A first means-plus-function phrase is recited in claim 11 (and included in each of dependent claims 12-30), which recites “a master-control circuit unit configured to…” or hereinafter FL #1. Examiners determine herein that FL #1 meets the test of Williamson as discussed above and thus will be interpreted as a means-plus-function limitation under 35 U.S.C. §112(f).
The Examiners find that FL #1 in claim 11 recites:
a master-control circuit unit configured to control the switch control unit based on the status information…
(B1)(a) Claim Phrase FL #1 Predominately Functional
Examiners find the function associated with FL #1 recites a circuit in association for performing, i.e., configured to perform the function of master controlling and controlling the switch control unit based on the status information. Further, while Examiners do recognize that circuit unit may imply some generic structure(s), Examiners nevertheless find that FL #1 is predominately functional with respect to the functions of this circuit unit, rather than directed to any underlying structures thereof. Specifically, the circuit unit is being defined by what its function is rather than what its structure is.
Examiners further note that because nothing in the written description contradicts the plain language describing this function, the functions within FL #1 will have their ordinary and accustomed meaning.
(B1)(b) Claim Phrase FL #1 Invokes
FL #1 invokes 35 U.S.C. §112(f) because "means ... for" type language is recited. Examiners first find that “circuit unit” is a generic placeholder or nonce term equivalent to “means” because while the term “circuit unit” does imply some structure, it is not alone a sufficient structure for performing the functions of FL #1. Examiners further note that the specification of the present specification does not define “circuit unit” in a lexicographic manner and thus the specification of the present specification does not impart or require any specific structure for the phrase. Thus, Examiners do not find that FL #1 recites sufficient structures for performing the functions of FL #1. Specifically herein, Examiners are relying on WIT2 that FL #1 recites “function without reciting sufficient structure for performing that functions.”
Circuit is definable as “the complete path of an electric current including usu. the source of the electric energy” and “as assemblage of electronic elements.” See Merriam-Webster’s Collegiate Dictionary 10th Ed. 2000, definition of circuit. Unit is definable as “a piece or complex of apparatus serving to perform one particular function.” See Merriam-Webster’s Collegiate Dictionary 10th Ed. 2000, definition of unit. However, Examiners do not find these definitions provide any more than some abstract or generic path or assemblage or unit, and further do not contemplate any specific functions associated therewith. Thus, Examiners do not find that simple recitation of circuit or unit or circuit unit implies or imparts any definite path or specific structures. Furthermore, even when taken with the functions recited in FL #1, Examiners do not find the function specifies or implies what path of current or assemblage of elements would be required to perform the functions.
In view of the forgoing findings, Examiners find that while circuit unit implies some generic structure, Examiners find nothing in the specification, prosecution history or the prior art to construe “circuit unit…” in FL #1 as the name of a sufficiently definite structure for performing the functions recited in FL #1 so as to take the overall claim limitation out of the ambit of §112(f). See Williamson v. Citrix Online, L.L.C., 115 USPQ2d 1105, 1112 (Fed. Cir. 2015). Rather Examiners find that circuit unit is merely used in a generic sense as a nonce term equivalent to means as a generic base structure which has a special configuration or assemblage of elements to perform the special functions recited in FL #1, none of which is recited or implied. Accordingly, Examiners do not find that the simple use of circuit unit is a sufficient structure for performing the claimed functions recited in FL #1 and thus conclude FL #1 invokes interpretation under 35 U.S.C. §112(f).
(B1)(c) Corresponding Structure
After a claimed phrase has been shown to invoke 35 U.S.C. §112(f), as found above, the next step is to determine the corresponding structure or material as described in the specification for performing the recited function. See MPEP §2181(II).
Based upon a review of the specification of the 105 Patent, the Examiners find that the closest corresponding structures for performing the functions of FL #1 is the master-control circuit unit 1281 shown in FIGS. 4-6 and 8. The switch is turned on and off to control the power line and is controlled via an on/off control signal from the master-control circuit unit 1281, which is a chip or other logic circuit (See 105 Patent FIG. 8, chip U2).
Regarding the software/programming/logic of the master-control circuit unit, Examiners find the appropriate algorithm stored or program or logic for the chip would be that disclosed at col. 9, line 3 to col. 10, line 9 of the 105 Patent wherein the master control circuit unit compares the status information, i.e., temperature of the battery or voltage of the battery, to predefined ranges and outputs a signal to maintain or turn off the switch control unit.
In view of these findings, pursuant to 35 U.S.C. §112(f), FL #1, the circuit, in claims 11-30 will be limited to the corresponding structures discussed above, specifically a master-control circuit unit comprising a programmed controller/chip having the programming, wherein the programming has the algorithm of performing a comparison of the status information, i.e., temperature of the battery or voltage of the battery, to predefined ranges and outputting a signal to maintain or turn off the switch as discussed above and equivalents thereof.
Further regarding claims 13 and 29, Examiners note this claim recites some connections and further functions of the master-control circuit unit recited in claim 11. Thus, Examiners find FL #1 in claims 13 and 29 invokes 35 U.S.C. 112(f) for the same reasons as for claim 11 above. Furthermore, based on the general repeat of the functions, Examiners find the corresponding structures for FL #1 in claims 13 and 29 would be the same as for claim 11 above.
Regarding claims 14-17, 21, 22, 28 and 30 Examiners note these claims recite some connections and further functions of the master-control circuit unit recited in claim 11. Thus, Examiners find FL #1 in these claims invokes 35 U.S.C. 112(f) for the same reasons as for claim 11 above. Examiners find these claims recite additional functionality of the master-control circuit unit to control the switch control unit based on the detected electric current value and the voltage value. Examiners thus find the appropriate algorithm stored or programmed into the controller or microcontroller would be that disclosed at col. 7, line 62 to col. 8, line 12 and col. 9, lines 14-29 of the 105 Patent wherein the master control circuit unit compares detected electric current value, the detected first voltage value and/or the detected second voltage value with stored predefined ranges and outputs a signal to maintain or turn off the switch control unit.
VIII.C. Conclusion of Claim Interpretation
In view of the forgoing, Examiners will interpret FL #1 in the manner as provided above. Because no remaining limitations invoke interpretation under 35 U.S.C. §112(f) and are not lexicographically defined, the remaining limitations will be interpreted using the broadest reasonable interpretation.
IX. ALLOWABLE SUBJECT MATTER
Claims 11-30 are allowed. Examiners find the claims are allowable over the prior art for the same reasons as provided in the non-final Office action mailed November 28, 2025 (see pages 18-19 thereof).
X. EXAMINERS’ RESPONSES TO APPLICANT’S ARGUMENTS/COMMENTS
Examiners have fully considered the Applicant arguments provided in the Aug 2026 Amendment, but note they are generally moot in view of the change in priority granted in the 2026 Petition Decision. The only argument pertaining to this Office action is related to the claim interpretation above wherein FL #1 invokes interpretation under 35 U.S.C. §112(f).
On page 18 of the Aug 2026 Amendment, Applicant first focuses on the term “circuit unit” and argues this term has “a sufficiently definite meaning.” Examiners disagree. Specifically, what is this circuit unit? What structures are implied? If this “circuit unit” has a sufficiently definite structure without having to resort to the specification, Applicant should be above to explain what it is.
Second, Examiners find such an argument ignores the holding of Williamson. The presumption against means-plus-function claiming is not “strong” and that a challenger need not show that the limitation is essentially devoid of anything that can be construed as structure; rather a challenger need only show that the structure is not sufficient for performing the claimed function. Examiners do not dispute circuit or circuit unit implies some structure. However, Examiners find this phrase does not imply any defined structures nor do Examiners find simply use of this phrase implies or requires sufficient structures to perform the function recited in FL #1. Rather Examiners maintain the finding above that circuit unit is merely used in a generic sense as a nonce term equivalent to means as a generic base structure which has a special configuration or assemblage of elements to perform the special functions recited in FL #1, none of which is recited or implied by the circuit unit alone for claim 1.
On pages 18 of the May 2026 Amendment, Applicant argues that the functions of FL #1 do not require a switch unit or an algorithm. Examiners find this argument ignores the plain language of 35 U.S.C. §112(f). The issue is not what the function of the claim limitation requires, but rather the issue is what are the “the corresponding structure, material, or acts described in the specification” for performing the functions of the limitation. Examiners in the interpretation above have merely identified those structures (hardware, software, etc.) disclosed in the specification for performing the function of FL #1 for claim 1 and have limited the claims accordingly.
XI. PRIOR OR CONCURRENT PROCEEDINGS
Examiners are not aware of any pending proceedings or litigation involving the 105 Patent. Applicant is reminded of the obligation apprise the Office of any prior or concurrent proceedings in which the 105 Patent is or was involved, such as interferences or trials before the Patent Trial and Appeal Board, reissues, reexaminations, or litigations and the results of such proceedings.
XII. INFORMATION MATERIAL TO PATENTABILITY
Applicant is further reminded of the continuing obligation under 37 C.F.R. §1.56 to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application.
XIII. CONCLUSION
Claims 11-30 are rejected.
The prior art made of record which is considered pertinent to Applicant’s disclosure is listed on the document titled ‘Notice of Reference Cited’ (“PTO-892”). Unless expressly noted otherwise by the Examiners, all documents listed on the PTO-892 are cited in their entirety.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to KENNETH WHITTINGTON whose telephone number is (571) 272-2264. The Examiner can normally be reached on 8:30am - 5:00pm, Monday - Friday.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, Andrew J. Fischer, SPE Art Unit 3992, can be reached at (571) 272-6779. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-9900.
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If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call (800) 786-9199 (IN USA OR CANADA) or (571) 272-1000.
/KENNETH WHITTINGTON/Primary Examiner, Art Unit 3992
Conferees:
/MY TRANG TON/ Primary Examiner, Art Unit 3992
/ANDREW J. FISCHER/ Supervisory Patent Examiner, Art Unit 3992
1 See http://www.uspto.gov/sites/default/files/forms/uspto_reissue_ads_guide_Sept2014.pdf
2 http://www.uspto.gov/sites/default/files/documents/Corrected-WebADS-QSG.pdf
