DETAILED ACTION
1. Claims 1, 3-14, and 18-21 are pending in this application for reissue of US Patent 11,329,658 (“the '658 patent”) issued from application no. 17/068,275. Claims 1-17 are patented claims. In this reissue application, claims 2, 15-17 have been cancelled and new claims 18-21 have been added. This Office Action is responsive to amendments filed on August 6, 2026, in response (“the Response”) to the Non-Final Rejection issued on April 6, 2026. In the Response, Applicant amended claims 1, 8, and 18. Claims 1, 3-14, and 18-21 are pending.
Notice of Pre-AIA or AIA Status
2. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Prior or Concurrent Proceedings
3. 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 the ‘658 patents is or was involved. These proceedings would include interferences, reissues, reexaminations, and litigation.
Information Material to Patentability
4. 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.
Response to Amendments and Arguments
5. Claim 18 has been rewritten into independent form and claim 8 has been amended to depend from claim 18. Therefore, the objection to claim 18 is withdrawn. Claim 18 and its dependent claims 5-11 are allowable.
6. Claim 1 has been amended. Applicant’s arguments regarding amended claims have been considered but they are not persuasive. Applicant argues that Yun fails to satisfy the specific requirement that the first FLC is adapted to calibrate the frequency of the fist operator based on detection of intermittently available over-the-air reference signal allegedly because there’s no teaching or suggestion in Yun that the signal is intended to be intermittent. The examiner disagrees. In paragraph [0061], Yun teaches that “the frequency calibrator 110 is applicable to technical fields in which a wireless transceiver needs to be miniaturized, for example, the field of Internet of Things (IoT), the field of medical implant communication system (MSC), a small sized sensor system requiring wireless communication, or a low-power communication system.” Yun’s calibration circuit is intended to be used in the same environment as Applicant’s invention, for example, in the field of IoT with low-power communication system (see the specification of the ‘586 patent, 1:22-55). Yun’s circuit is also intended to be used in the field of medical implant communication system. A patient with a medical implant is expected to move around in and out of coverage area of the transmitted signal. For example, as one of ordinary skill in the art would be aware, typically, an elevator in a building is an area where there’s no wireless communication coverage. Thus, intermittent availability of a wireless signal is inevitable during the normal daily activity of a patient with a medical implant communication system.
Rejection under 35 U.S.C. 251 – Original Patent
7. The following is a quotation of the appropriate paragraphs of pre-AIA 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.
MPEP 1412.01 states that the reissue claims must be for the same invention as that disclosed as being the invention of the original patent. MPEP 1412.01 further provides guidelines for determining whether the reissue claims are “for the invention disclosed in the original patent” as follows:
Examiners should review the reissue application to determine if:
(A) the claims presented in the reissue application are described in the original patent specification and enabled by the original patent specification such that 35 U.S.C. 112, first paragraph is satisfied;
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(B) nothing in the original patent specification indicates an intent not to claim the subject matter of the claims presented in the reissue application; and
(C) the newly claimed invention is clearly and unequivocally disclosed in the specification as a separate invention with the claimed combination of features.
In Forum US, Inc. v. Flow Valve, LLC, Appeal 2018-1765 (Fed. Cir. June 17, 2019) Federal Circuit stated,
Thus, for broadening reissue claims, the specification of the original patent must do more than merely suggest or indicate the invention recited in reissue claims; “[i]t must appear from the face of the instrument that what is covered by the reissue was intended to have been covered and secured by the original.” Indus. Chems., 315 U.S. at 676 (emphasis added). Stated differently, the original patent “must clearly and unequivocally disclose the newly claimed invention as a separate invention.” Antares, 771 F.3d at 1362. We apply the standard set forth in Industrial Chemicals and Antares to this case and hold that the reissue claims are invalid.”
(emphasis added).
8. Claims 1, 3-4, 12-14, and 19-21 are rejected under 35 USC 251 for claiming subject matter that is not directed to the invention disclosed in the original patent.
The specification of the original patent does not clearly and unequivocally disclose an oscillator calibration circuit comprising an FLC that is adapted to calibrate 1) the first oscillator only substantially immediately prior to a data transmission session, and 2) the frequency of the first oscillator only when the over-the-air references signal, that is only available intermittently, only when the over-the-air reference signal is detected to be available.
The claims require the FLC to be adapted to calibrate the first oscillator only substantially immediately prior to a data transmission session, which means that it must not be capable of calibrating the oscillator at any other time. The specification of the original patent discloses that the “oscillator’s frequency is locked during a session immediately prior to transmitting data, and remains free running during the transmit session” at 3:54-56. The specification also discloses that FLC is disabled during transmission sessions (see 4:36-41). However, the specification does not clearly and unequivocally disclose that the calibration cannot be done before the period that is substantially immediately prior to transmitting data, as required by amended claim 1.
Claims also require an FLC that is adapted to calibrate the frequency of the first oscillator only when the over-the-air references signal, that is only available intermittently, is detected to be available. There’s no clear and unequivocal disclosure that the FLC is not capable of calibrating the first frequency, or disabled, when the over-the air reference signal that is continuously available is detected (i.e., not intermittent).
Claim Rejections - 35 USC § 112
9. The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
10. Claims 1, 3-4, 12-14, and 19-21rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. Claim 1 recites the limitation “wherein the over-the-air reference signal is only available intermittently and wherein the first FLC is adapted to calibrate the frequency of the fist oscillator only when the over-the-air reference signal is detected to be available.” According to Applicant’s argument, an oscillator calibration circuit that works with continuously available over-the-air signal does not teach the claimed limitation. However, the specification does not enable one of ordinary skill in the art to determine whether an over-the-air signal detected is from a source only available intermittently and not from a continuously available source so that it does not operate when an over-the-air signal is available continuously.
11. Claims 1, 3-4, 12-14, and 19-21 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. See the rejection of these claims under 35 USC 251 above.
12. 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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
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.
13. Claims 1, 3-4, 12-14, and 19-21 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, 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.
Claim 1 recites the limitation “wherein the over-the-air reference signal is only available intermittently, and wherein the first FLC is adapted to calibrate the frequency of the fist oscillator only when the over-the-air reference signal is detected to be available.” According to Applicant’s argument, an oscillator calibration circuit that works with continuously available over-the-air signal does not teach this limitation. However, the specification does not disclose any standard to determine when a signal is considered intermittently available as opposed to continuously available. For example, would a signal that is available for 24 hours and off for 10 minutes be considered intermittent or continuous? The claim and its dependent claims are indefinite because their metes and bounds are not clear.
Claim Rejections - 35 USC § 103
14. In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
15. Claims 1, 3, 12, 13, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over US Pub. 2018/0048263 (“Yun”) in view of US Pub. 2015/0097627 (“Jiang”).
16. With respect to claim 1, Yun discloses an oscillator calibration circuit, comprising:
a first oscillator (see FIG. 6, 612; see also FIGs. 7, 8, 11, 12); and
a first frequency locking circuit (FLC) (540),
wherein the first FLC is coupled to the first oscillator that is to be
calibrated by the oscillator calibration circuit (see FIG. 6),
wherein the first FLC is adapted to calibrate a frequency of the first oscillator using an over-the-air reference signal (see FIG. 1; see also FIGs. 14, 15, 16),
wherein the first FLC is adapted to calibrate the first oscillator only substantially immediately prior to a data transmission session (see [0151], calibration is to obtain transmission frequency, thus, calibration should be done prior to data transmission);
[wherein the first FLC is disabled during data transmission thus allowing the first oscillator to be free running during the data transmission session;]
wherein the first oscillator is a local oscillator and it is calibrated by the oscillator calibration circuit to any of: a radio frequency (RF) frequency (see FIG. 1) and an intermediate frequency (IF) employed as the over-the-air reference signal, and
wherein the over-the-air reference signal is only available intermittently (this is not a structural limitation of the calibration circuit; see also paragraph [0061], Yun’s circuit is used for medical implant communication system, thus a patient with an implant conducting normal daily activities, such as taking an elevator or moving in and out of coverage area of the transmitted signal would experience intermittent availability) and the first FLC is adapted to calibrate the frequency of the first oscillator only when the over-the-air reference is detected to be available (see FIGs. 2-4, the calibration circuit operates when the external signal with the frequency fRF is detected).
However, Yun does not specifically disclose disabling the FLC during data transmission (limitation is square brackets above). On the other hand, Jiang discloses a calibration circuit that deactivates calibration and enter free running mode after applying a correction teaching the limitation in square brackets above. It would have been obvious to one of ordinary skill in the art to use calibration mode switching technique taught by Jiang in the calibration circuit of Yun in order to reduce power consumption (see Jiang paragraph [0009]).
17. With respect to claim 3, Yun and Jiang disclose the oscillator calibration circuit of claim 1, wherein the RF frequency is any one of: a single point carrier frequency (see Yun, FIG. 1, fRF), a single point carrier frequency (fo) with a positive offset frequency value f; a single point carrier frequency (fo) with a negative offset frequency value f; two calibration points having a carrier frequency (fo) with a negative offset frequency value f; and a carrier frequency (fo) with a positive offset frequency value f.
18. With respect to claim 12, Yun and Jiang disclose the oscillator calibration circuit of claim 1, wherein the over-the-air reference signal is derived from any one of: a constant-tone signal (see FIG. 1), a modulated signal, and a frequency-hopping signal.
19. With respect to claim 13, Yun and Jiang disclose the oscillator calibration circuit of claim 1, wherein the over-the-air reference signal is received through an antenna utilized for the data transmission (see FIG. 1).
20. With respect to claim 19, Yun and Jiang disclose the oscillator calibration circuit of claim 1 wherein the first FLC is adapted to be disenabled so as to be without power during said data transmission and thereby causing the calibrated first oscillator to be free running during the data transmission session (see the rejection of claim 1 above).
21. Claims 4, 14, 20, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Yun in view of Jiang and further in view of US Pat. 9,860,096 (“Ganwani”).
22. With respect to claim 4, Yun and Jiang disclose all of the limitations of the parent claim 3 as discussed above. Yun and Jiang also disclose that the calibration circuit is used in a smart phone with a Bluetooth transmitter (see Jiang, FIG. 1, 100, see also paragraph [0012]). However, Jiang does not specifically disclose that the Bluetooth transmitter use in the smart phone is a Bluetooth Low Energy (BLE) transmitter. On the other hand, Gawani discloses a smart phone with a Bluetooth low energy (BLE) transmitter (Gawani, FIG. 1, 106a). It would have been obvious to use Yun and Jiang’s teachings of calibration circuit in the smartphone of Gawani to save battery power. Applying a known technique to improve similar devices in the same way is obvious under KSR v. Teleflex. Alternatively, it would have been obvious to one of ordinary skill in the art to substitute Jiang’s smart phone with Gawani’s smart phone to be able to use Bluetooth transmitter that uses less energy.
Regarding the carrier frequency and offset frequency, they are specified in the BLE standard as noted in the specification at 2:3-8 and is known to one skilled in the art.
23. With respect to claim 14, Yun, Jiang, and Gawani disclose the oscillator calibration circuit of claim 1, wherein the oscillator calibration circuit is operable in at least a Bluetooth low energy (BLE) transmitter (see the rejection of claim 4 above).
24. With respect to claim 20, Yun, Jiang, and Gawani disclose a Bluetooth low energy (BLE) transmitter comprising the oscillator calibration circuit of claim 1 (see the rejection of claim 4 above).
25. With respect to claim 21, Yun, Jiang, and Gawani disclose a Bluetooth low energy (BLE) transmitter comprising the oscillator calibration circuit of claim 1 wherein the BLE transmitter employs for transmission and reception a carrier frequency (fo) of 2.4 GHz and an offset frequency value Δf of about 185 Khz (see the rejection of claim 4 above).
Allowable Subject Matter
26. Claims 5-11 and 18 are allowed.
The following is an examiner’s statement of reasons for allowance: when considered in combination with all of the other limitations of the claims, the prior art of record does not teach or suggest
“a second oscillator, a second FLC, wherein the second FLC is coupled to the second oscillarot, wherein the second FLC is coupled to the second oscillator, wherein the second FLC calibrates the frequency of the second oscillator using the over-the-air reference signal, wherein the second FLC is adapted to calibrate the second oscillator immediately prior to a data transmission session and remains free running during the data transmission session, and wherein the second FLC is disabled during data transmission thus causing the second oscillator to be free running during the data transmission session.”
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
27. THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 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 extension fee pursuant to 37 CFR 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Woo H Choi whose telephone number is (571)272-4179. The examiner can normally be reached 9 am - 5 pm.
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, Hetul Patel can be reached on (571) 272-4184. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Woo H. Choi/
Primary Examiner, Art Unit 3992
Conferees:
/Cameron Saadat/Primary Examiner, Art Unit 3992
/ANDREW J. FISCHER/Supervisory Patent Examiner, Art Unit 3992
Prosecution Insights