DETAILED ACTION
This is a Non-Final Office Action responsive to Patent Owner’s filings of 11 February 2025 and the petition decision rendered 5 December 2025 granting resumption of prosecution of the instant reissue application. The instant application was filed as a narrowing reissue of US Application 17/241,119 (US Patent 11,272,034 B2 to Shribman et al., hereinafter “the ‘034 patent”, published 8 March 2022).
The 11 February 2025 response includes new claims 28-49. Original claims 1-27 were cancelled during prosecution of PGR2022-00052. Claim 28 is an independent claim.
Claims 28-49 are rejected herein.
Notice of Pre-AIA or AIA Status
The present application, filed on or after 16 March 2013, is being examined under the first inventor to file provisions of the AIA .
Reissue
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 US Patent 11,272,034 B2 is or was involved. These proceedings would include interferences, reissues, reexaminations, 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 also MPEP §§ 1404, 1442.01 and 1442.04.
Applicant is notified that any subsequent amendment to the specification and/or claims must comply with 37 CFR 1.173(b).
Information Disclosure Statement
The Information Disclosure Statements (IDS) submitted on 7 May 2024, 11 September 2024, 27 January 2025, 20 June 2025, 8 August 2025, 16 October 2025, and 7 November 2025 have been considered by the Examiner.
Related Post-Grant Proceedings
PGR2022-00052
A petition for post grant review of US Patent 11,272,034 under 35 USC § 321 was filed before the Patent Trial and Appeal Board on 21 July 2022. The petition challenged the validity of claims 1-27 of the ‘034 patent in view of prior art to Mithyantha and “RFC 2616”, as well as challenging eligibility of claims 1-27 with respect to 35 USC 101 (see 21 July 2022 petition at 12-13). A Final Written Decision in PGR2022-00052 was rendered on 19 March 2024, in which all original patent claims 1-27 were cancelled per Patent Owner’s Revised Non-Contingent Motion to Amend, and all substitute claims 28-51 were denied entry, as it was determined that “the original disclosure fails to set forth sufficient support for the proposed substitute claims” (19 March 2024 Final Written decision at 11 and 21).
35 USC 251
The petition decision rendered by the Office of Patent Legal Administration on 5 December 2025 at 6 states:
Thus, patent owner has presented a facially colorable argument that new claims 28-49 of the ‘394 reissue application, as presented in the February 11, 2025 preliminary amendment, are narrower in scope than those claims of the ‘034 patent that were canceled by the post grant review certificate and any claims added in the ‘052 trial before the PTAB.
The footnote associated with the above citation, at 6, states:
Note that the Office of Patent Legal Administration is not making an independent determination as to the scope of the ‘394 reissue application claims relative to those claims of the ‘034 patent that were canceled by the post grant review certificate and any claims added in the ‘052 trial before the PTAB and is taking patent owner’s assertion that the reissue claims are narrower on its face. However, should the examiner subsequently determine that the reissue claims are not in fact narrower than those claims of the ‘034 patent that were canceled by the post grant review certificate and any claims added in the ‘052 trial before the PTAB, then such claims will be rejected pursuant to MPEP 1449.01I.A.(B)(3)
MPEP 1421.03(I) states:
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
Upon examination of the 11 February 2025 claims, it has been determined that pending independent claim 28 is broader “in at least one respect” in relation to original patent claims 1-27, particularly original independent claim 1 (the sole independent claim of the ‘034 Patent).
Claim 1 of the ‘034 Patent, at col. 173, lines 3-4, discloses the limitation “receiving, by the first client device from the third server, the second content” (emphasis added). Pending claim 28 has essentially removed the aforementioned limitation without presenting a limitation analogous in scope. Pending claim 28 is thus determined to be broader in this respect, and as a result is broader as a whole.
Specifically, pending claim 28 appears to recite the limitation “receiving, by the selected intermediary client device from the third server, the second content” in place of the identified limitation of original claim 1 (see the last two lines of the 11 February 2025 claims at 11). Original patent claim 1 requires that second content be received by a first (requesting) client device from a third server. Pending claim 28 does not include this limitation, instead apparently replacing “the first client device” with “the selected intermediary client device”. This apparent amendment to the original patent limitation results in an effective removal of the original limitation, as pending claim 28 contains no analogous limitation in which the first client device receives the second content. Subsequent to the removal of the original patent limitation, pending claim 28 is broader in scope than original patent claim 1, though it may be narrower in other respects.
Pending dependent claims 29-49 fail to cure this deficiency.
With respect to situations “where a reexamination certificate or PTAB trial certificate is to be issued for a patent, while a reissue application for the patent is pending and will not be merged with the reexamination or trial before the PTAB”, MPEP 1449.01(I)(A)(B)(3) states:
Generally, further [reissue] prosecution will be limited to claims narrower than those claims canceled as a result of the certificate (this includes any existing patent claims and any claims added in the reexamination proceeding or trial before the PTAB). Any claims added thereafter, which are equal in scope to claims canceled as a result of the certificate, or are broader than the scope of the claims canceled as a result of the certificate, will generally be deemed as surrendered based on the patent owner’s failure to prosecute claims of equal scope, and to present claims of broader scope in the reexamination proceeding or trial before the PTAB. Such claims will be rejected under 35 USC 251. Further, a rejection of such claims based on estoppel will be made, citing to MPEP §2308.03 as to treatment of claims lost in a proceeding before the Office, and noting that a reexamination or trial before the PTAB is a “proceeding”.
Therefore, claims 28-49 are rejected under 35 USC 251 for presenting claims broader in scope than those canceled as a result of the certificate issued subsequent to PGR2022-00052.
Furthermore, claims 28-49 are rejected under 35 USC 251 as being broadened in a reissue application filed outside the two year statutory period. The ‘034 Patent was published on 8 March 2022. Reissue application 18/657,394 was filed on 7 May 2024, outside of the two year statutory period for presenting broadening claims in a reissue application.
Per MPEP 1449.01(I)(A)(B)(3), claims 28-49 are rejected as being estopped from re-litigation before the examiner. MPEP 2308.03 states that “a losing party is barred on the merits from seeking a claim that would have been anticipated or rendered obvious by the subject matter of the lost count.” Claims 28-49 are considered broader with respect to the subject matter of the lost count, and Patent Owner is therefore estopped from litigation of such claims.
In light of the above issues, the claims will not be analyzed with respect to 35 USC 102/103, 35 USC 101, and 35 USC 112 until such time as they are deemed to be in compliance with the provisions of 35 USC 251 and MPEP 1449.
Conclusion
Claims 28-49 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL R ROSWELL whose telephone number is (571) 272-4055. The examiner can normally be reached Monday-Friday 8:30-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, ALEXANDER J KOSOWSKI can be reached on (571) 272-3744. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL ROSWELL/Primary Examiner, Art Unit 3992
Conferees:
/ADAM L BASEHOAR/Primary Examiner, Art Unit 3992
/ALEXANDER J KOSOWSKI/Supervisory Patent Examiner, Art Unit 3992