DETAILED ACTION
The following is a non-final Office action (“Action”) in response to the reissue application filed May 1, 2024 from U.S. Patent No. 11,453,238 (from U.S. patent application no. 17/081,078) (hereinafter “’238 patent”). Claims 1, 3-5, and 7-12 are pending, with claims 2 and 6 being canceled.
The following is a summary of the objections and rejections in this Action:
Objections to the drawings, beginning on page 3.
Objections to the claims, beginning on page 3.
Objections to the oath/declaration, beginning on page 4.
Rejections:
35 U.S.C. 251, beginning on page 4.
35 U.S.C. 112(b), beginning on page 8.
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 .
This reissue application was filed on or after September 16, 2012, therefore, all reference to 35 U.S.C. 251 and 37 CFR 1.172, 1.75, and 3.73 are to the current provisions enacted under the Leahy-Smith American Invents Act (“AIA ”). See Federal Register, Vol. 77, No. 157, pg. 48820, August 16, 2012.
Information Disclosure Statement
The information disclosure statement (IDS) filed May 1, 2024 fails to fully comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document, each non-patent literature publication or that portion which caused it to be listed, and all other information or that portion which caused it to be listed. A copy of each cited reference that is not a U.S. patent or U.S. patent application must be included to not be lined through on the IDS. Copies of cited references in the ‘238 patent are not sufficient since a reissue application is not a continuation application. See MPEP § 1406 (citing 37 CFR 1.98(a)(2)). While each foreign and non-patent literature reference cited in the IDS has been considered, they are nonetheless lined through. Should Applicant wish to have these lined through references listed on the cover of any subsequently issued patent from this reissue application, copies of the references should be submitted with a new IDS.
Maintenance Fees
A reissue patent may not be granted on an expired patent, including on expiration for lack of paying maintenance fees. See MPEP § 1415.01. The ‘238 is not expired, but as a courtesy reminder, the first day to pay the 3.5 year maintenance fees starts September 27, 2025 for the ‘238 patent and the last day to pay is September 28, 2026.
Objections – Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. See MPEP § 608.02(d). Independent claims 1 and 5 have been amended to recite “a boot fastening portion” but this feature is not shown in any of the drawings. The specification at column 9, lines 58-59 of the ‘238 patent also confirms the “boot fastening portion” is not shown. This feature must be canceled from the claims because adding it to the drawings would constitute new matter since the amount of detail added in the drawings would not be supported by the originally filed disclosure of the ‘238 patent.
Objections – Claims
Claim objected to because of the following informalities:
Claim 10, the second to last line, should be changed to “ring and another surface of the pre-load transmission member being in contact with the second”.
Claim 12, the second to last line, should be changed to “inner ring and another surface of the pre-load transmission member being in contact with the”.
Appropriate correction is required.
Objections – Oath/Declaration
The reissue oath/declaration filed with this application is defective (see 37 CFR 1.175 and MPEP § 1414) for the following reasons:
The reissue oath/declaration filed with this application is defective because the error which is relied upon to support the reissue application is insufficiently stated. See 37 CFR 1.175 and MPEP § 1414. This is a broadening reissue application, which requires specific language of the language being deleted from the claims. See MPEP § 1414, subsection II. In this case, the error statement states what is believed to be the patentable feature, not the “word, phrase, or expression” being removed to broaden the scope of the claim.
The reissue oath/declaration is of poor quality and difficult to read. Any subsequently filed copy should be of a sufficient quality level so that it may be easily read. For example, if the filing is a scanned copy of a document, it is highly recommended that the scan be performed in or converted into black and white and of a sufficiently high resolution prior to upload.
On the supplemental sheet, the Country in the Mailing Address section for inventor Bo Young JANG is cut off, and the Mailing Address information is incomplete.
To remedy the above problems a newly executed oath/declaration should be filed with new signatures and dates. For any newly filed oath/declaration, please also ensure that the correct specification box is checked on the first page of the form: if there is not a new specification filed with the new oath/declaration, then the second box should be checked and appropriate information filled out.
Claim Rejections - 35 USC § 251
The following is a quotation of 35 U.S.C. 251 that form the basis for the rejections under this section made in this Office action:
(a) IN GENERAL.—Whenever any patent is, through error, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.
(b) MULTIPLE REISSUED PATENTS.— The Director may issue several reissued patents for distinct and separate parts of the thing patented, upon demand of the applicant, and upon payment of the required fee for a reissue for each of such reissued patents.
(c) APPLICABILITY OF THIS TITLE.— The provisions of this title relating to applications for patent shall be applicable to applications for reissue of a patent, except that application for reissue may be made and sworn to by the assignee of the entire interest if the application does not seek to enlarge the scope of the claims of the original patent or the application for the original patent was filed by the assignee of the entire interest.
(d) REISSUE PATENT ENLARGING SCOPE OF CLAIMS.—No reissued patent shall be granted enlarging the scope of the claims of the original patent unless applied for within two years from the grant of the original patent.
Declaration
Claims 1, 3-5, and 7-12 rejected as being based upon a defective reissue declaration under 35 U.S.C. 251. See 37 CFR 1.175. The nature of the defects in the declaration are set forth in the discussion above in this Office action.
Recapture
Claims 1, 3-5, 7-9, and 11 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 filing is based.1
The reissue application contains claims that are broader than the issued patent claims. The record of the ‘238 patent shows that the broadening aspect in this reissue relates to claimed subject matter that applicant previously surrendered during prosecution. 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 claimed subject matter surrendered in the application for the patent cannot be recaptured by the filing of the present reissue application.
Citing both In re Clement2 and North American Container3, section 1412.02 of the MPEP establishes a three-step test for recapture as follows:
Determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims;
Determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and
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.
Step (1)
Independent claims 1 and 5 are broader than corresponding claims 1 and 8 of the ‘238 patent, respectively, because, while some narrowing limitations having been added, most of the deleted limitations are surrendered subject matter, thus, resulting in a broadening of the claim scope and impermissible recapture. “A claim of a reissue application enlarges the scope of the claims of the patent if it is broader in at least one respect, even though it may be narrower in other respects.” See MPEP § 1412.03, subsection I.
Claims 1 and 5 are amended with numerous limitations having been deleted and a few having been added. The following limitations were deleted:
Claims 1 and 5:
wherein the first inner ring and the second inner ring are mounted on the wheel hub such that a pitch circle diameter of the first rolling elements is larger than a pitch circle diameter of the second rolling elements, and
wherein a pre-load transmission member is provided between the first inner ring and the second inner ring, one surface of the pre-load transmission member being in contact with the first inner ring and the other surface of the preload transmission member being in contact with the second inner ring.
The deletion of the limitations above in independent claims 1 and 5 broaden the scope of these claims. The deleted limitations noted above, however, have been added in newly presented claims 10 and 12, which depend from claims 1 and 5, respectively. As a result, only dependent claims 3, 4, 7-9, and 11 are also considered broadened, whereas claims 10 and 12 are not. See MPEP § 1412.03.
Step (2)
Determining whether subject matter was previously surrendered during prosecution of the original patent requires two sub-steps per section 1412.02, subsection II.B of the MPEP. In the first sub-step, “[i]f an original patent claim limitation now being omitted or broadened in the present reissue application was originally relied upon by applicant in the original application to make the claims allowable over the art, the omitted limitation relates to subject matter previously surrendered by applicant.” In the second sub-step, “[t]he examiner must analyze all of the broadening aspects of the reissue claims to determine if any of the omitted/broadened limitation(s) are directed to limitations relied upon by applicant in the original application to make the claims allowable over the art.” See id.
For sub-step 1, all of the limitations noted in step (1) above were relied upon by applicant to distinguish the claims over the prior art during prosecution of the ‘238 patent. In the non-final Office action mailed November 4, 2021 (“non-final OA”) during prosecution, the Examiner indicated dependent claims 6 and 13 as object to but, if rewritten in independent form, would be allowable. Claims 6 and 13 contained the deleted limitations of claims 1 and 5 noted above. In a Response mailed May 4, 2022 (“May Resp.”) to the non-final OA, all limitations from claims 6 and 13 were added into their respective parent claims 1 and 8, and in the May Resp. on page 8, Applicant argued the claims are now allowable because of moving the limitations of claims 6 and 13 into their respective parent claims. A Notice of Allowance was mailed May 20, 2022 (“NOA”) based on Applicant’s claim amendments are arguments as summarized above. As a result, the above deleted limitations are surrendered subject matter.
For sub-step 2, as explained above, all the limitations deleted from original claims 1 and 5 are the same language and scope as the limitations that were added to claims 1 and 8 during prosecution of the ‘238 patent to make them allowable over the prior art. Thus, the claims are broadened by deleting “limitations relied upon by applicant in the original application to make the claims allowable over the art” and these deleted limitations are surrendered subject matter.
Step (3)
A rejection for impermissible recapture may be avoided if “the claims [have been] materially narrowed relative to the surrendered subject matter such that the surrendered subject matter is not entirely or substantially recaptured.” See MPEP § 1412.02, subsection II.C (citing In re Mostafazadeh, 643 F.3d 1353, 1361, 98 U.S.P.Q. 2d 1639, 1644 (Fed. Cir. 2011)).
Claims 1 and 5 have been amended, albeit slightly differently, to also include new limitations further defining the “one or more inner rings,” “a boot fastening portion,” that “the one or more inner rings and the spacer are fixed on the wheel hub by plastically deforming the vehicle-body-side end portion of the wheel hub,” and “a ratio C/B,” all of which were not present in the originally patented independent claims. Thus, these limitations are narrowing limitations.
While the addition of the limitations noted above are narrowing amendments, they are not with respect to the surrendered subject matter relating to the mounting of “the first inner ring and the second inner ring” or “a pre-load transmission member,” as explained above. As a result, the narrowing limitations cannot save claims 1, 3-5, 7-9, and 11 from being subject to impermissible recapture.
For at least the reasons above, claims 1, 3-5, 7-9, and 11 attempt to impermissibly recapture surrendered subject matter and are rejected under section 251.
Claim Rejections - 35 USC § 112
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.
Claims 1, 3-5, and 7-12 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claims 1, 3-5, and 7-12 recite various limitations making the claims indefinite and/or unclear. The following are the reasons claims 1, 3-5, and 7-12 are indefinite under section 112(b).
Wherein Clauses
At least independent claims 1 and 5 recite numerous “wherein” clauses. While “wherein” clauses are acceptable in claims, there inclusion must still be evaluated as to their limiting effect on a claim’s interpretation. See MPEP § 2111.04, subsection I. The following “wherein” clauses in claims 1 and 5 raise issues of their limiting effect on each claim’s interpretation.
Claim 1, starting at about the seventh clause, recites:
wherein a plurality of recesses for accommodating rotating elements of a constant velocity joint are formed on an inner peripheral surface of the vehicle-body-side end portion of the wheel hub in a spaced-apart relationship with each other along a circumferential direction,
wherein a heat-treated hardened portion is formed on the inner peripheral surface of the vehicle-body-side end portion of the wheel hub, wherein the heat-treated hardened portion is formed to include at least a region with which the rotating elements of the constant velocity joint are brought into contact,
wherein a vehicle-body-side end portion of the spacer is positioned spaced apart from a vehicle-body-side axial end portion of the heat-treated hardened portion to the vehicle-body-side,
…
wherein a boot fastening portion is further provided radially outward of the spacer.
Claim 5, starting at about the sixth clause, recites:
wherein a plurality of recesses for accommodating rotating elements of a constant velocity joint are formed on an inner peripheral surface of the vehicle-body-side end portion of the wheel hub in a spaced-apart relationship with each other along a circumferential direction,
wherein a heat-treated hardened portion is formed on the inner peripheral surface of the vehicle-body-side end portion of the wheel hub,
wherein the heat-treated hardened portion is formed to include at least a region with which the rotating elements of the constant velocity joint are brought into contact,
…
wherein a vehicle-body-side end portion of an inner ring disposed on a vehicle-body-side in the one or more inner rings is positioned spaced apart from a vehicle-body-side axial end portion of the heat-treated hardened portion to the vehicle-body-side,
wherein a boot fastening portion is further provided radially outward of the inner ring disposed on the vehicle-body-side among the one or more rings,
wherein the one or more inner rings and a spacer are fixed on the wheel hub by plastically deforming the vehicle-body-side end portion of the wheel hub.
The above limitations create confusion as to whether or not they are part of the “wheel bearing assembly” of claim 1 and claim 5. If “a plurality of recesses,” “a heat-treated hardened portion,” “a vehicle-body-side end portion of an inner ring disposed on a vehicle-body-side,” “a boot fastening portion,” etc., are meant to be constituent parts of the “wheel bearing assembly” in each of claims 1 and 5, it is not clear how the fact that they are first introduced in a “wherein” clause should be interpreted. This is especially true since “wherein” clauses in patent claims are normally used to further define an already-existing element or limitation of the claim.
Additionally, language such as, “is provided” or “is formed” in this clauses creates confusion as to how this language affects the claim scope. For example, it is not clear if this language imparts a functional aspect onto the physical elements in their respective “wherein” clauses or not, and if so, it is unclear how that functional language should be interpreted (e.g., what does it mean for a part of the “wheel bearing assembly,” namely the “boot fastening portion,” to be “further provided”?).
For at least these reasons, claims 1, 3-5, and 7-12 are indefinite under section 112(a).
It is highly recommended these and similar elements be written as being explicitly part of the “wheel bearing assembly” in each of claims 1 and 5 to avoid confusion, and if needed, amending the wherein clauses to refer back to these initially recited elements and removing unclear functional language.
For purposes of examination, all elements will be considered to be part of the “wheel bearing assembly” in each of claims 1 and 5, and the functional aspects will be given no patentable weight as they are understood to be merely stating those elements exist.
Broad and Narrow Limitation in Same Claim
Claims 1 and 5 recite, “one or more inner rings” in the second clause. The claims also recite at the eleventh clause in claim 1 and ninth clause in claim 5, “the one or more rings comprise a first inner ring … and a second inner ring.” This language create confusion because the first limitation indicates the minimum number of inner rings is one, while the other limitation indicates the minimum number of inner rings is two (i.e., “first” and “second”). Thus, there is a discrepancy as to the range of inner rings required by the claims. See MPEP § 2173.05(c), subsection I. For at least this reason, claims 1, 3-5, and 7-12 are indefinite under section 112(a).
Parts With the Same Name
Claims 1 and 5 recite, “one or more inner rings” in the second clause. The claims also recite at the fourth clause of claim 1 and the tenth clause of claim 5, “an inner ring.” It is unclear if “an inner ring” is part of the “one or more inner rings” or not. This also creates confusion because, as explained above, if there is a minimum of two inner rings (i.e., the “first inner ring” and “second inner ring”), then another recitation of “an inner ring” creates ambiguity as to the minimum number of inner rings, which seemingly appears to be a minimum of three. For at least these reasons, claims 1, 3-5, and 7-12 are indefinite under section 112(a).
“Wheel Bearing Assembly” in Two States
Claims 1 and 5 each recite, “wherein the one or more inner rings are configured to be held on the wheel hub by plastically deforming a vehicle-body-side end portion of the wheel hub in a radially outward direction” and “wherein, before plastically deforming the vehicle-body-side end portion of the wheel hub, a ratio C/B between a height B of the inner ring disposed on the vehicle-body-side in the one or more inner rings and an axial distance C from the inner ring disposed on the vehicle-body-side in the one or more inner rings to the vehicle-body-side end portion of the wheel hub is formed to be greater than or equal to 0.5 and less than or equal to 2.” These two limitations when read together create confusion as to the scope of the claim (and when potential infringement would occur) because they are describing characteristics of the “wheel bearing assembly” both before and after plastic deformation.
For example, interpreting the “wheel bearing assembly” as having gone through plastic deformation, then a potentially infringing product would need to have “one or more inner rings … held on the wheel hub by plastically deforming a vehicle-body-side end portion of the wheel hub in a radially outward direction,” but it would be unclear how to determine infringement based on the claimed “ratio” as that is based on measurements (i.e., “B” and “C”) taken prior to plastic deformation. Similarly, if the “wheel bearing assembly” is understood to be in a configuration prior to plastic deformation, then the “ratio” can easily be determined, but it is unclear whether the “one or more inner rings [are] held on the wheel hub by plastically deforming a vehicle-body-side end portion of the wheel hub in a radially outward direction” or not.
Moreover, the fact that the claims recite the “one or more inner rings are configured to be held on the wheel by plastically deforming a vehicle-body-side end portion of the wheel hub in a radially outward direction” does not resolve the ambiguity because this creates uncertainty as to whether or not the “vehicle-body-side end portion of the wheel hub” needs to actually be plastically deformed or only needs to be capable of being plastically deformed to infringe the claims.
For the reasons above, the claims appear to be covering at least two states of a “wheel bearing assembly,” and thus, the scope of what is claimed is not clear.
For at least this reason, claims 1, 3-5, and 7-12 are indefinite under section 112(a).
Amendments in Reissue Applications
Amendments made during examination of a reissue application are different than amendments made during examination of a standard utility application. See 37 CFR § 1.173; see also MPEP § 1453.
A few notable, but by no means the only, differences are:
Throughout examination of a reissue application, amendments are always with respect to the original patent regardless of any amendments that have already been filed. See 37 CFR § 1.173(g).
Deleted limitations must be shown in single brackets while newly added limitations and the entirety of newly added claims are underlined, including number and status identifier. See 37 CFR § 1.173(d).
Changes to the specification must mention where in the issued patent (i.e., column and lines numbers) the changes are to be made and the entirety of an amended paragraph must be presented, unless canceling the paragraph. See 37 CFR § 1.173(b)(1)(i); see also MPEP § 1453, subsection V.A., Example (1).
Status identifiers, after the first amendment, must indicate how many times an original patent claim has been amended during examination of the reissue application (e.g., “Twice Amended”, etc.). See 37 CFR § 1.173(b)(2).
When claims are amended, “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.” 37 CFR § 1.173(c).
Applicant Obligations
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceed-ing in which Patent No. 11,453,238 is or was involved. These proceedings would include interferences, reissues, reexaminations, post-grant proceedings before the Patent Trial and Appeal Board, 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 mate-rial to patentability of the claims under consideration in this reissue appli-cation.
These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See MPEP §§ 1404, 1442.01 and 1442.04.
Conclusion
There are no prior art rejections at this time; however, the claims are rejected under 35 U.S.C. §§ 112(a) and 251 as explained above.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSHUA KADING whose telephone number is (571) 270-3413. The examiner can normally be reached Monday-Friday, 8:00 AM to 5:00 PM Eastern Time.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eileen Lillis can be reached at 571-272-6928. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JOSHUA KADING/ Reexamination Specialist, Art Unit 3993
Conferees:
/WILLIAM V GILBERT/Reexamination Specialist, Art Unit 3993
/EILEEN D LILLIS/SPRS, Art Unit 3993
1 See Greenliant Systems, Inc. et al v. Xicor LLC, 692 F.3d 1261, 103 USPQ2d 1951 (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).
2 131 F.3d 1464, 45 U.S.P.Q. 2d 1161 (Fed. Cir. 1997).
3 415 F.3d 1335, 75 U.S.P.Q. 2d 1545 (Fed. Cir. 2005).