DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Reissue: Non-Final Office Action
Status of the Claims
On 07/28/2009 US Patent 7,566,771 issued to Adair et al. with claims 1-19. Claims 1-19 have been cancelled, and claims 20-25 are newly presented in the instant reissue application. This is the first Office Action on the merits in reissue Application 18/760,979.
Maintenance Fees
Applicants are reminded of the requirement to pay all applicable maintenance fees on the original patent. See MPEP § 1415.01.
Ongoing Duty To Disclose
Applicants are reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which Patent 7,566,771 is or was involved. These proceedings would include any trial at the Patent Trial and Appeal Board, interferences, reissues, reexaminations, supplemental examinations, 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 material to patentability of the claims under consideration in this reissue application.
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.
Information Disclosure Statement
References lined-through on the information disclosure statement(s) were not considered because copies were not provided. See MPEP 1406 (requiring compliance with 37 CFR 1.97 and 1.98 in reissue applications).
None of the references listed on the IDS(s) in the applications to which this application claims benefit will appear on the face of a patent issuing from this application unless they are properly listed on an IDS in this application. Should applicants wish to ensure that all of the references which were cited in the original patent are considered and cited in the reissue application, an information disclosure statement (IDS) in compliance with 37 CFR 1.97 and 1.98 should be filed in the reissue application. 37 CFR 1.98(a)(2) requires a legible copy of each foreign patent and each publication other than US patents and US patent application publications. See MPEP § 1406.
Official Gazette Publication
The Official Gazette (O.G.) publication date for this reissue application was 03/18/2025.
Priority Document
A copy of the foreign priority document (GB 8928874) was not located in the file wrapper of this case, or any of the cases of which this case claims benefit. A document labeled “Certified Copy of Foreign Priority Application” dated 07/23/1991 is present in 07/743,329, of which this application claims benefit. However, that document is a one-page cover sheet, and the actual GB document is not present.
Multiple Reissue Applications
The instant case is a (reissue) CON of reissue application 17/464,970 (now RE50,178), which is a (reissue) CON of reissue application 16/378,731 (now RE48,787). 37 CFR 1.177(a) requires that all multiple reissue applications resulting from a single patent must include as the first sentence of their respective specifications a cross reference to the other reissue application(s). Accordingly, the first sentence of each reissue specification must provide notice stating that more than one reissue application has been filed, and it must identify each of the reissue applications and their relationship within the family of reissue applications, and to the original patent. An example of the suggested language to be inserted is as follows:
Notice: More than one reissue application has been filed for the reissue of Patent No. 99,999,999. The reissue applications are application number 99/999,994 (the present application); and application number 99/999,995, which is a continuation reissue of Patent No. 99,999,999.
See MPEP § 1451.
The specification of this reissue application has been amended to identify two other reissue applications, now reissue patents, specifically RE48,787 and RE50,178. The specifications of those patents, however, have not been amended by certificates of correction. See 37 CFR 1.177(a); MPEP 1451(I) (“The examiner should object to the specification and require an appropriate amendment if applicant fails to include such a cross reference to the other reissue applications in the first sentence of the specification of each of the reissue applications.”).
A certificate of correction is required in the underlying patents RE48,787 and RE50,178 to inform the public of the presence of all reissue applications for US patent 7,566,771.
Defective Declaration/Oath
The reissue oath/declaration filed with this application is defective because it fails to properly identify at least one error which is relied upon to support the reissue application. See 37 CFR 1.175 and MPEP § 1414.
It is unclear why the original patent is wholly or partially inoperative or invalid because the patentee claimed more than they had the right to claim in the patent. Patentee does not detail specifically why these amendments are necessary because the original patent was wholly or partially inoperative or invalid. See MPEP § 1414 I and II, which state, in relevant part:
A statement in the oath/declaration of "…failure to include a claim directed to…" and then reciting all the limitations of a newly added claim, would not be considered a sufficient "error" statement because applicant has not pointed out what the other claims lacked that the newly added claim has, or vice versa. Such a statement would be no better than saying in the reissue oath or declaration that "this application is being filed to correct errors in the patent which may be noted from the change made by adding new claim 10." In both cases, the error has not been identified.
Applicants do not refer to any particular claim that is sought to be corrected. It is noted that there are two reissue declarations, one filed 02/07/2025, and one filed 04/11/2025. The 02/07/2025 declaration refers to “the independent claim”. However, there are multiple independent claims in US Patent 7,566,771, and it is not clear which claim(s) are being referenced. Further, the 04/11/2025 declaration fails to mention any claim that is being corrected. The examiner suggests expressly pointing to a claim(s) sought to be corrected, and then specifically detailing what the new claims lacked that the newly added claim(s) has, or vice versa.
Claims 20-25 are rejected as being based upon a defective reissue declaration under 35 U.S.C. 251 as set forth above. See 37 CFR 1.175.
The nature of the defect(s) in the declaration is set forth in the discussion above in this Office action.
Conclusion
Claims 20-25 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kevin S Orwig whose telephone number is (571)270-5869. The examiner can normally be reached Mon.-Fri. 8AM-5PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Patricia Engle can be reached at (571) 272-6660. The fax phone number for the organization where this application or proceeding is assigned is 571-273-9900.
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.
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/Kevin S Orwig/ Patent Reexamination Specialist, Art Unit 3991
Conferees:
/LBD/ Patent Reexamination Specialist, Art Unit 3991
/Patricia L Engle/ SPRS, Art Unit 3991
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