FINAL OFFICE ACTION
This 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 1-20 are pending and examined herein.
Claims 1-20 are rejected.
I. STATUS OF CLAIMS
Applicant filed an amendment and remarks on February 12, 2026 (hereinafter the “Feb 2026 Amendment”) in response to the non-final Office action mailed November 28, 2025 (hereinafter the “2025 NF Action”). In the Feb 2026 Amendment, patent claims 1 and 3-7 were amended, patent claims 2 and 8-10 were unchanged, and new claims 11-20 were added. Furthermore, the specification was amended to change the cross-noting information.
Therefore, claims 1-20 are pending and will be examined.
II. TERMINAL DISCLAIMER
Examiners have reviewed the Applicant’s statement on page 19 of the Feb 2026 Amendment as an asserted terminal disclaimer (hereinafter the “Feb 2026 TD Statement”) to obviate a double patenting rejection. However, Examiners do not find the Applicant has filed an actual terminal disclaimer form with appropriate language and further Applicant has not filed the appropriate terminal disclaimer fee. Accordingly, this statement is not accepted as a terminal disclaimer.
Examiners suggest using the publicly available terminal disclaimer forms PTO/AIA /25 or PTO/AIA /26 and providing the appropriate fee under 37 C.F.R. §1.20(d).
III. PRIORITY
Based on the Applicant’s claimed priority in the Application Data Sheet filed March 21, 2024 (hereinafter the “2024 ADS”) and the amendments to the specification in the preliminary amendment filed March 21, 2024 (hereinafter the “2024 Preliminary Amendment”), Examiners acknowledge the Applicant’s claim that the present reissue application is a reissue of the 146 Application, now the 105 Patent. Examiners further acknowledge the Applicant’s claims of foreign priority to CN201610506106, CN201610506137 and CN201620692248, each filed June 30, 2016.
Examiners also acknowledge other reissue applications of the 146 Application, i.e., U.S. Application No. 17/112,920 (hereinafter the “920 Reissue Application”), now U.S. Patent No. RE49976 (hereinafter the “RE49976 Patent”) and co-pending reissue application, U.S. Application No. 18/612,660, filed on the same day as the present reissue application (hereinafter the “660 Reissue Application”). Furthermore, Examiners find that Applicant has not claimed the present reissue application as a continuation reissue of the 920 Reissue Application in the 2024 Preliminary Amendment.
Examiners finally acknowledge the amendments to the cross-noting information in the Feb 2026 Amendment wherein Applicant attempted to change the present application to be a “continuation reissue” of the 920 Reissue Application. However, Examiners find this amendment is insufficient to change the priority claims of this reissue application. Specifically, a delayed claim of priority under 35 U.S.C. §120 requires a petition in the manner as stated 37 C.F.R. §1.78(e). Applicant has not filed any such petition. Accordingly, Examiners find the Applicant’s attempted change in priority is not proper and not effective. Thus, the present reissue application continues to only be a reissue of the 146 Application/105 Patent and not a continuation reissue of the 920 Reissue Application. Furthermore, the present reissue application is not afforded the filing date of the 920 Reissue Application.
IV. OBJECTION TO SPECIFICATION AMENDMENTS
The amendments to the specification in the Feb 2026 Amendment to add cross-noting information, i.e., to assert that the present reissue application is a “continuation reissue” of the 920 Reissue Application, are objected to because such claim of priority is improper. As noted above, a delayed claim of priority under 35 U.S.C. §120 requires a petition in the manner as stated 37 C.F.R. §1.78(e). Applicant has not filed any such petition. Accordingly, for Applicant to now include such a claim is improper until such claim is perfected via a granted petition of the delayed claim.
V. REJECTIONS 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.
V.A. Rejections Based on Improper Reissue
This application as a whole is rejected under 35 U.S.C. §251 because the present reissue cannot correct any error in the original patent, i.e., the 105 Patent. Upon the issuance of the 920 Reissue Application as the RE49976 Patent, the 105 Patent has been superseded and thus corrections are closed. Thus, Examiners submit it is not possible to correct the 105 Patent via another independent reissue application.
Examiners note the issue lies in the fact that Applicant has not claimed or perfected the priority claim that the present reissue application as a “continuation reissue” of the 920 Reissue Application, which would allow further correction of the 105 Patent. See MPEP §1451. Specifically, Examiners recommend, as noted above, that Applicant assert a late claim of priority to claim the present reissue application as a continuation of the 920 Reissue Application and further that the present reissue application is a reissue of the 146 Application.
V.B. Rejection Based on Improper Broadening
Claims 1-20 and this application as a whole are rejected under 35 U.S.C. §251 because the claims are improperly broadening in this reissue application. As stated in the statue above, no broadening is permitted in reissue applications filed outside of the two years following issuance of the underlying patent. First, based on the Applicant’s claimed priority discussed above, the present reissue application was filed (March 21, 2024) more than two years following the issuance of the 105 Patent (December 4, 2018). Thus, no broadening of the 105 Patent is permitted in the present reissue application since the present application was filed outside the two-year window. Second, Examiners find the claims in the present reissue application are broadened versions of the claims of the 105 Patent. For example, as patented in the 105 Patent, the at least first and second electrode connectors were “connected to an external power supply” whereas in the present reissue application these connectors are only “configured to be connected.” Thus, actual connection is no longer required. Further, as patented in the 105 Patent, the at least one communication connector is recited as “connected to the external power supply,” whereas in the present reissue application this connector is only “configured to be connected.” Again, no actual connection is required. Thus, Examiners find the claims of the present reissue application are broadening of the claims of the 105 Patent in at least these respects. Since the present reissue application is outside the two-year window, the presentation of the claims is improper broadening.
V.C. Rejections Based on Improper Error Corrected
Claims 1-10 and this application as a whole are rejected under 35 U.S.C. §251 because these claims are not correcting any error in the original patent, i.e., the 105 Patent. Claims 1-10 of the 105 Patent were superseded by the issuance of the RE49976 Patent and thus no longer exist in the 105 Patent. Therefore, Examiners find that it is improper for Applicant to use these claim numbers in any continuation reissue application or divisional reissue application or other any other reissue application. See MPEP §1451. Any claim listing in the present reissue application should state that patent claims 1-10 are cancelled and any new claims added thereafter. If Applicant intends on pursuing the subject matter of claims 1-20 further in this reissue application, Examiners suggest and require Applicant to simply add them following the last patent claim, i.e., as “New” claims 11+. See 37 C.F.R. §1.177(b) (“The numbering of any added claims in any of the multiple reissue applications must follow the number of the highest numbered original patent claim”).
VI. OBJECTIONS TO THE 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 acknowledge the reissue declaration filed March 21, 2024 along with the filing of this reissue application (hereinafter the “2024 Reissue Declaration”). Examiners maintain the objections to the 2024 Reissue Declaration provided in the 2025 NF Action (See pages 6-7 thereof).
Examiners further acknowledge the Applicant’s attempt to provide an error statement within the remarks on pages 10-11 of the Feb 2026 Amendment under 37 C.F.R. §1.75(d) (hereinafter the “Feb 2026 Error Statement”). Before an applicant can use this manner of identifying a new error, Applicant must have already provided a proper reissue declaration on the record. In this reissue application, Applicant has not done so as the reissue declaration filed along with the filing of this reissue application was not proper as provided in the 2025 NF Action (See pages 6-7 thereof). Accordingly, Applicant is required to provide a proper reissue declaration on the record in this reissue application, not simply a new statement of error.
Furthermore, in the interests of providing guidance to the Applicant, Examiners have fully considered the errors identified in the Feb 2026 Error Statement, and submit the following.
First the identified error regarding changing the “connected to” language to the “configured to be connected to” language, Examiners again 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 switch control unit for controlling on/off of the power, and a master-control circuit unit configured to control the switch control unit based on the status information” would be a proper identified error because the original claims of the 105 Patent did not include this language. Nevertheless, as provided below, Examiners do not find this language is entirely sufficient to avoid invocation under 35 U.S.C. §112(f).
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 independent claims 11-20, 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.
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, assuming Applicant corrects the claim of priority of this reissue application as a continuation reissue, 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. ADDITIONAL 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 1-20 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 2024 Reissue Declaration and the Feb 2026 Error Statement is set forth in the discussion above in this Office action.
VIII. CLAIM REJECTIONS – 35 U.S.C. §112
The following is a quotation of pre-AIA 35 U.S.C. §112(2nd ¶):
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 1-10 are rejected under pre-AIA 35 U.S.C. §112(2nd ¶) 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. Regarding these claims, Examiners find that the RE49976 Patent provides one coverage of these original patent claims while the present application provides another coverage of these same original patent claims. Such distinct coverage of the original patent claims is inconsistent in reissue, which is directed at correcting errors within the original patent. See MPEP §1451.
Similarly, as discussed above in Rejection A under 35 U.S.C. §251, if Applicant intends to pursue the subject matter of claims 1-20 further in this reissue application, Examiners suggest and require Applicant to simply add them following the last patent claim, i.e., as “New” claim 11+, etc. See 37 C.F.R. §1.177(b) (“The numbering of any added claims in any of the multiple reissue applications must follow the number of the highest numbered original patent claim”).
IX. 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.
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.
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 1-20 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 1-20)
A first means-plus-function phrase is recited in claim 1 (and included in each of dependent claims 2-20), 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 1 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 does not contemplate any specific functions associated therewith. Thus, Examiners do not find that simple recitation of circuit or unit or circuit unit alone 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 1-20 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 claim 3, Examiners note this claim recites some connections and further functions of the master-control circuit unit recited in claim 1. Thus, Examiners find FL #1 in claim 1 invokes 35 U.S.C. 112(f) for the same reasons as for claim 1 above. Furthermore, based on the general repeat of the functions, Examiners find the corresponding structures for FL #1 in claim 3 would be the same as for claim 1 above.
Regarding claims 4, 5, 6, 7, 11, 12 and 20, Examiners note these claims recite some connections and further functions of the master-control circuit unit recited in claim 1. Thus, Examiners find FL #1 in these claims invokes 35 U.S.C. 112(f) for the same reasons as for claim 1 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.
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.
X. DOUBLE PATENTING REJECTIONS
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 C.F.R. §1.321(c) or §1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP §717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP §2159. See MPEP §2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 C.F.R. §1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
X.A. Double Patenting Rejections Over RE49976 Patent
Claims 1-4, 6, 7, 11-16, 19 and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over Patent Claims 1-4, 6, 7, 11-13 and 18-20 of the RE46935 Patent. Although the claims at issue are not identical, they are not patentably distinct from each other because Patent Claims 1, 2, 3, 4, 6, 7, 11, 12, 13, 18, 19, 20, 3 and 4 of the RE49976 Patent each read on the features of claims 1, 2, 3, 4, 6, 7, 11, 12, 13, 14, 15, 16, 19 and 20 of this reissue application, respectively. Examiners further submit that the claims of the present application and the Patent Claims of the RE49976 Patent invoke interpretation under 35 U.S.C. §112(f) and would have the same corresponding structures.
X.B. Double Patenting Rejections Over 660 Reissue Application
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over the pending claims 1-20 of the 660 Reissue Application. Although the claims at issue are not identical, they are not patentably distinct from each other because Patent Claims 1-20 of the 660 Reissue Application read directly on claims 1-20 of this reissue application, respectively. Examiners further submit that the claims of the present application and the claims of the 660 Reissue Application invoke interpretation under 35 U.S.C. §112(f) and would have the same corresponding structures.
XI. ALLOWABLE SUBJECT MATTER
While all claims are rejected above under 35 U.S.C. §251 and double patenting, Examiners find the claims are nevertheless allowable over the prior art of record in this reissue application. Examiners note the claims are allowable for the same reasons as provided in the 2025 NF Action. See pages 18-19 thereof.
XII. EXAMINERS’ RESPONSES TO APPLICANT’S ARGUMENTS/COMMENTS
Examiners have fully considered the Applicant arguments provided in the Feb 2026 Amendment. Each argument will be taken in turn below. Only those arguments regarding objections and rejections maintained in this action from the 2025 NF Action will be addressed.
On pages 10-12 of the Feb 2026 Amendment, Applicant requests the objection to the reissue declaration be withdrawn. However, as provided above in this action, Examiners do not find the error statement provided within the remarks proper without first having a proper reissue declaration on the record.
On page 12 of the Feb 2026 Amendment, Applicant requests the Rejection Based on Improper Reissue be withdrawn in view of the amendments to the specification to assert this reissue application is a continuation reissue. However, as provided above, simply amending the cross-noting information is not sufficient for delayed claims of priority. A petition is required. Thus, the rejection is maintained as provided above.1
On pages 12-14 of the Feb 2026 Amendment, Applicant traverses the Rejection Based on Improper Broadening on the basis that Applicant argues that “does not constitute broadening.” Examiners disagree, as even asserted by Applicant, the patented claims “require such actual permanent connection of the connectors to the external power supply.” See Feb 2026 Error Statement. Applicant further states “claim 1 of the '105 patent is amended by correcting these errors to read ‘configured to be connected’ instead of ‘connected to,’ thereby removing the unintended restrictive limitation and aligning the claim with the specification-supported scope.” Thus, Applicant is explicitly arguing claim 1 is broader than patented in the 105 Patent, i.e., removing the restrictive limitation. Thus, Examiners maintain that claim 1 is broadening and this broadening is improper since the present reissue application was filed outside the two-year window for broadening.2
Furthermore, Examiners find the Applicant argues that the “disclosure of the ‘105 patent does not require that the ‘electrode connectors’ or ‘communication connector’ be actually connected.” See Feb 2026 Amendment pages 13-14. Examiners note this argument is irrelevant to improper broadening under 35 U.S.C. §251. This statute looks only to the claims and whether the claims are broadened more than two years after the underlying patent, i.e., the 105 Patent, issues.
On pages 14-15 of the Feb 2026 Amendment, Applicant traverses the Rejection Based on Improper Error corrected on the basis that “this reissue application is a continuation reissue” and the “’105 patent has not been fully superseded.” Examiners disagree on multiple bases. First, Applicant has not perfected the delayed claim of priority and thus the present reissue application is not a continuation reissue. Second this argument misunderstands the numbering requirements in reissue.
Assuming this reissue application becomes a continuation reissue of the 920 Reissue Application, now the RE49976 Patent, following a granted petition for delayed claim of priority, the claims in this reissue application would still be required to start at claim 11 since claims 1-10 of the 105 Patent were “reissued” in the RE49976 Patent. Any later continuation applications/patents of the RE49976 are required to start at claim 11. See 37 C.F.R. §1.177(b) (“The numbering of any added claims in any of the multiple reissue applications must follow the number of the highest numbered original patent claim”). See also MPEP §1451(II). To overcome this rejection, assuming the priority claim is also corrected, Applicant need only re-present the same claims with claim numbers starting at claim 11.
On page 16 of the Feb 2026 Amendment, Applicant traverses the Rejection Based on Defective Declaration on the basis that “a new reissue declaration” is submitted. Examiners disagree as provided above and maintain the rejection on the basis of the new objection to the reissue declaration provided above.
On pages 16-17, Applicant traverses the Rejections under 35 U.S.C. §112(b) by arguing “[n]o particular language is pointed out…” Examiners disagree as this argument illustrating a misunderstand of the nature of claims in reissue. As noted in the rejections above, the RE49976 Patent provides one coverage of these original patent claims (1-10) that supersedes the original patent claims while claims 1-10 of present reissue application attempts to provide another coverage of these same original patent claims (1-10). See MPEP 1451(I). Such distinct coverage of the original patent claims is inconsistent in reissue, which is directed at correcting errors within the original patent. This rejection again is merely a claim numbering issue. To overcome this rejection, assuming the priority claim is also corrected, Applicant need only re-present the same claims with claim numbers starting at claim 11.
On page 18 of the Feb 2026 Amendment, Applicant traverses the Examiners’ finding that FL #1 invokes 35 U.S.C. §112(f) first on the basis that “circuit unit … has a sufficiently definite meaning as the name for structure.” Examiners disagree as this argument ignores the invocation above under the rubric of Williamson in the claim interpretation section. As specifically noted above, Examiners are relying on WIT2 that FL #1 recites “function without reciting sufficient structure for performing that function.” Examiners find “circuit,” while implying some generic or unknown structure, does not imply sufficient structure for performing the function of control the power based on the status information. Furthermore, what is a “circuit unit?” And how does this undefined phrase perform the specific function recited in FL #1?
Examiner find Applicant is focusing only on the term “circuit” or “circuit unit” while ignoring the entire phrase FL #1, which is found to invoke §112(f). Clearly any generic circuit is not a sufficient or even a specific or definite structures to perform the noted functions. Examiners also find it unclear how unit would change the nature of the undefined circuit to allow it to perform special functions. How does this unknown generic circuit unit “control the switch” and further what processing or algorithm is implied to this control “based on the status information.” Because Examiners find FL #1 recites no more than some generic circuit or undefined circuit unit, the special functions imply substantially special structures more than something generic. Specifically, what structure in the art would Examiners look for to read on FL #1, a loop of wire? A light switch? A calculator? These are all circuits and plausible circuit units. Clearly something more is required for these known circuits to perform the function in FL #1 and this forms the basis for Examiners finding that FL #1 invokes §112(f).
On page 19 of the Feb 2026 Amendment, Applicant traverses the double patenting rejections by providing the Feb 2026 TD Statement. However, as noted above, Examiners find this statement does not use the proper form and language and further is not accompanied by the appropriate fee. Thus, this statement is insufficient to overcome the double patenting rejections.
XIII. 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.
XV. 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.
XV. CONCLUSION
Claims 1-20 are rejected.
Applicant's amendment and remarks in the Feb 2026 Amendment necessitated the maintained and amended grounds of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP §706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 C.F.R. §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 C.F.R. §1.17(a)) pursuant to 37 C.F.R. §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.
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 Examiners do note to Applicant that if the present reissue application has a proper claim as a continuation reissue of the 920 Reissue Application, then the rejection based on improper reissue issue would be overcome.
2 Examiners do note to Applicant that if the present reissue application has a proper claim as a continuation reissue of the 920 Reissue Application, then the rejection based on improper broadening issue would be overcome.