DETAILED ACTION
This Non-Final Office Action is in response to Applicant’s filings of 18 July 2024.
The instant application is a reissue of US Application 17/396,688 (US Patent 11,848,045 B2 to Shang, hereinafter “the ‘045 Patent”, published 19 December 2023).
The 18 July 2024 response amends original claims 1, 7, 9-12, 16, 17, and 19. Claims 20-39 are newly added. Claims 1-39 are pending, of which claims 1, 16, 20, 24, and 35 are independent claims.
Claims 1-23 and 29 are allowed.
Claims 24-28 and 30-39 are rejected.
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 11,848,045 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).
Claim Rejections – 35 USC § 251
Claims 24-28 and 30-39 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 is based. In re McDonald, 43 F.4th 1340, 1345, 2022 USPQ2d 745 (Fed. Cir. 2022); Greenliant Systems, Inc. et al v. Xicor LLC, 692 F.3d 1261, 103 USPQ2d 1951 (Fed. Cir. 2022); In re Youman, 679 F.3d 1335, 102 USPQ2d 1862 (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). The reissue application contains claim(s) that are broader than the issued patent claims. The record of the application for the patent family shows that the broadening aspect (in the reissue) relates to claimed subject matter that applicant previously surrendered during the prosecution of the application. 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 claim subject matter surrendered in the application for the patent cannot be recaptured by the filing of the present reissue application.
The 18 July 2024 submission presents amendments to original claims 1, 7, 9-12, 16, 17, and 19, and adds new claims 20-39.
The amendments to original claims 1, 7, 9-12, 16, 17, and 19 are directed towards matters of form and claim dependency. The Reissue Application Declaration filed 18 July 2024 states that, “claim 1 requires a read-write control signal that is not sufficiently broad to cover mere write operations. New claims 20-39 are added for this purpose.” As a result, the instant reissue application is a broadening reissue.
US Patent 11,848,045 was originally filed as US Application 17/396,688 (the ‘688 Application). The prosecution history of the ‘688 Application includes a 9 August 2023 Notice of Allowability, which allowed originally presented claims 1-3 and 5-20. The 9 August 2023 Notice of Allowability states that the “closes prior art of record” does not teach “all the limitations of the claim 1…as persuasively argued in Remarks filed 07/24/2023 in accordance with most recent amendment [sic]”. The 24 July 2023 remarks argued at 9 that the cited prior art failed to disclose the following limitations of claim 1 (originally filed on 7 August 2021 as dependent claim 4):
wherein the local read-write conversion module is configured to reduce voltage potential of second data line during the memory read operation, wherein a discharge speed of the local read-write conversion module is greater than a discharge speed of the reference module
The remarks at 10 argued further cited prior art failed to disclose the following limitations of claim 1:
a reference module to output the reference signal to the local read-write conversion module in response to receiving a read control signal of the read write control signal.
wherein the reference module is configured to reduce voltage potential of the reference signal during a memory read operation, and
wherein the local read-write conversion module is configured to reduce voltage potential of second data line during the memory read operation, wherein a discharge speed of the local read-write conversion module is greater than a discharge speed of the reference module
Such limitations, persuasively argued by Patent Owner, amount to surrender generating limitation (SGL) for the purposes of recapture analysis in a broadening reissue application, consistent with MPEP § 1412.02.
Newly presented independent claims 20, 24, and 35 do not include the limitation “a local read-write conversion module configured to perform, during a memory read-write operation, in response to a read-write control signal, data transmission from at least one of the first data line or the first complementary data line to the second data line”, or similar, as in claim 1.
Notably, the SGLs referenced above recite “the local read-write conversion module”, which requires antecedent basis to the now-removed limitation, and as written imports any structural limitations recited by such limitation. However, the remarks at 10 make clear that Patent Owner found the prior art deficient with respect to the claimed “reference module”, and the thrust of the limitation asserted as allowable by Patent Owner in the remarks at 9 centers around the read-write conversion module being “configured to reduce voltage potential of second data line during the memory read operation, wherein a discharge speed of the local read-write conversion module is greater than a discharge speed of the reference module”. As such, which the SGLs identified above require antecedent basis to the now-removed limitation, it is the Examiner’s contention that the structural recitations of the “local read-write conversion module” do not themselves amount to surrender generating limitations.
However, newly presented claims 24 and 35 entirely omit the above identified SGLs. The elimination of SGLs in a reissue claim amounts to impermissible recapture. See MPEP § 1412.02(II)(C). As a result, independent claims 24 and 35 are rejected under 35 USC 251 under the grounds of impermissible recapture. Dependent claims 25-28 and 30-34 and 36-39 fail to cure the deficiencies of independent claims 24 and 35, and as a result are similarly rejected.
Subsequently, claims 24-28 and 30-39 are rejected under 35 USC 251. As reissue will not be granted to recapture claimed subject matter surrendered in an application to obtain the original patent (MPEP § 1412.02), claims 24-28 and 30-39 will not be evaluated further herein.
Allowable Subject Matter
Claims 1-23 and 29 are allowed.
As discussed supra, in the original prosecution of the ‘688 Application, at least the limitation
wherein the local read-write conversion module is configured to reduce voltage potential of second data line during the memory read operation, wherein a discharge speed of the local read-write conversion module is greater than a discharge speed of the reference module
was argued as an allowable limitation of original independent claim 1, and a similar limitation is disclosed in further independent claim 14. Such limitation is not disclosed by the cited prior art.
For example, Kitagawa (US Publication 2007/0217260) discloses changing the magnitude of a control voltage to optimize a discharge speed (see Kitagawa, [0247-0248] and [0253]), but is silent with respect to optimizing the discharge speed of a local read-wrote module such that is it greater than a discharge speed of a reference module. Likewise, Lee (US Publication 2019/0198067) discloses wherein the discharge speed of a reference signal may be slower than the discharge speed “of each of the first through N-th data signals during data transmission”, but does not explicitly disclose that such data signals and/or their related data drivers are analogous to a “local read-write conversion module”. See Lee at [0007-0008].
Independent claims 1, 14, and 20 recite similar limitations, and as such are allowed.
Claim 29, which recites similar subject matter, is part of a dependency chain including dependent claims 25, 26, and 28, and ultimately depends from independent claim 24. Taken as a whole, claim 29 in combination with the limitations of claims 24-26 and 28, discloses all surrender generating limitations as discussed supra. As a result, claim 29 is allowed based on similar rationale with respect to independent claims 1, 14, and 20.
Conclusion
By virtue of this Office Action, claims 1-23 and 29 are allowed.
Claims 24-28 and 30-39 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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/MICHAEL ROSWELL/Primary Examiner, Art Unit 3992
Conferees:
/DENNIS G BONSHOCK/Primary Examiner, Art Unit 3992
/ALEXANDER J KOSOWSKI/Supervisory Patent Examiner, Art Unit 3992
Prosecution Insights