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 .
Maintenance Fees
Review of the file indicates that applicant’s window for the 3.5 year maintenance fee for US Patent No. 11,596,416 (“the ‘416 patent”) without surcharge opened 07 Mar. 2026 and will close 07 June 2026. Payment of the maintenance fee with surcharge begins 08 June 2026 and will close 07 Mar. 2027. If the last day for paying a maintenance fee with or without surcharge falls on a Saturday, Sunday, or a federal holiday within the District of Columbia, the fee plus surcharge if applicable may be paid on the next succeeding day which is not a Saturday, Sunday or federal holiday. Applicant is encouraged to ensure all payments are current and proper. See 37 CFR §1.362(d) and (e).
Election/Restrictions
MPEP 1412.01.II. states:
Where a restriction (or an election of species) requirement was made in an application and applicant permitted the elected invention to issue as a patent without filing a continuing application on the non-elected invention(s) or on non-claimed subject matter distinct from the elected invention, the non-elected invention(s) and non-claimed, distinct subject matter cannot be recovered by filing a reissue application. A reissue applicant’s failure to timely file a continuing application is not considered to be error causing a patent granted on the elected claims to be partially inoperative by reason of claiming less than the applicant had a right to claim. Accordingly, this is not correctable by reissue of the original patent under 35 U.S.C. 251. See In re Watkinson, 900 F.2d 230, 14 USPQ2d 1407 (Fed. Cir. 1990); In re Weiler, 790 F.2d 1576, 229 USPQ 673 (Fed. Cir. 1986); In re Orita, 550 F.2d 1277, 1280, 193 USPQ 145, 148 (CCPA 1977); see also In re Mead, 581 F.2d 251, 198 USPQ 412 (CCPA 1978). In this situation, the reissue claims should be rejected under 35 U.S.C. 251 for lack of any defect in the original patent and lack of any error in obtaining the original patent. In addition, amended reissue claims that clearly fall within the scope of the original non-elected claims should also be rejected under 35 U.S.C. 251. See Ex parte Sandwick, Appeal No. 2018-008369, op. at 25 (PTAB July 23, 2019) ("narrower reissue claims fall clearly within the scope of the broader original non-elected claims, and thus within the scope of the non-elected and restricted inventions that should have been properly pursued in a divisional application, whether claimed more broadly or more narrowly."). Compare with In re Doyle, 293 F.3d 1355, 63 USPQ2d 1161 (Fed. Cir. 2002) where the court permitted the patentee to file a reissue application to present a so-called linking claim, a claim broad enough to read on or link the invention elected (and patented) together with the invention not elected. The non-elected invention(s) were inadvertently not filed as a divisional application.
The instant ‘416 patent was filed as a divisional application of US application 15/891,594 (the ‘594 application”), which issued as US Patent No. 10,779,839. During the prosecution of the ‘594 application, the Examiner issued a restriction requirement. See Requirement for Restriction/Election mailed 09/09/2019. Applicant elected species A and identified claims 1-4,8-13 and 17-19 as being drawn to the elected species. Applicant then filed the application for the underlying patent having claims drawn to species B. Subsequent to the issuance of the ‘416 patent, applicant filed US application 18/190,568 (“the ‘568 application”) including claims directed to species C. However, this application was not afforded priority to the underlying application of the ‘416 patent since the ‘568 application was filed after issuance of the ‘416 patent.
As provided above MPEP 1412.02.II. states, “[w]here a restriction (or an election of species) requirement was made in an application and applicant permitted the elected invention to issue as a patent without filing a continuing application on the non-elected invention(s) or on non-claimed subject matter distinct from the elected invention, the non-elected invention(s) and non-claimed, distinct subject matter cannot be recovered by filing a reissue application.” (emphasis added)
This application contains claims directed to the following patentably distinct species:
i. Species A corresponding to Figures 10A-B pulleys;
ii. Species B corresponding to Figures 11A-B mechanical linkage gears; and
iii. Species C corresponding to Figures 12A-E actuation plates.
The species are independent or distinct because as disclosed the different species have mutually exclusive characteristics for each actuation mechanism. In addition, these species are not obvious variants of each other based on the current record.
Newly submitted claims 18-25 are directed to a species that is independent or distinct from the invention originally claimed as explained above.
Since applicant has received a patent for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 18-25 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
Reissue Declaration
37 CFR 1.175 reads, in pertinent part:
(a) The inventor’s oath or declaration for a reissue application, in addition to complying with the requirements of § 1.63, § 1.64, or § 1.67, must also specifically identify at least one error pursuant to 35 U.S.C. 251 being relied upon as the basis for reissue and state that the applicant believes the original patent to be 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 the patentee had the right to claim in the patent.
(b) If the reissue application seeks to enlarge the scope of the claims of the patent (a basis for the reissue is the patentee claiming less than the patentee had the right to claim in the patent), the inventor’s oath or declaration for a reissue application must identify a claim that the application seeks to broaden. A claim is a broadened claim if the claim is broadened in any respect.
Further, MPEP § 1414 (II) states,
For an application filed on or after September 16, 2012 that seeks to enlarge the scope of the claims of the patent, the reissue oath or declaration must also identify a claim that the application seeks to broaden in the identification of the error that is relied upon to support the reissue application. A general statement, e.g., that all claims are broadened, is not sufficient to satisfy this requirement. In specifically identifying the error as required by 37 CFR 1.175(a), it is sufficient that the reissue oath/declaration identify the claim being broadened and a single word, phrase, or expression in the specification or in an original claim, and how it renders the original patent wholly or partly inoperative or invalid. The corresponding corrective action which has been taken to correct the original patent need not be identified in the oath/declaration. (emphasis added).
PNG
media_image1.png
18
19
media_image1.png
Greyscale
The reissue declaration filed with this application is defective because it fails to sufficiently identify the error which is relied upon to support the reissue application. See 37 CFR 1.175 and MPEP § 1414. This reissue application seeks to enlarge the scope of the claims of the patent and the error statement must list a claim number and at least one word in that claim that caused the error.
Claim Rejections - 35 USC § 251 - Reissue Declaration
The following is a quotation of the first paragraph of 35 U.S.C. 251:
(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.
Claims 1-17 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 in the declaration is set forth in the discussion above in this Office action.
Additionally, the 37 CFR 1.46 box is not checked on the Declaration.
Further, the patent issue date is incorrect on the Declaration.
Consent of Assignee
This application is objected to under 37 CFR § 1.172(a) as lacking a proper written consent of all assignees owning an undivided interest in the patent. Specifically, the consent has an incorrect issue date for the underlying patent.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings submitted in a reissue application must be the issued patent drawings which include the patent number in the upper right corner. The drawings submitted 07/25/2024 seem to be drawings from the original patent application which do not fulfill the drawing requirement for reissue applications. New issued patent drawings must be submitted.
Abstract
The abstract submitted on 08/20/2024 is missing the second page. Please file the second page of the abstract in order to avoid any delays in publishing the reissue patent.
Information Disclosure Statement
To date, no information disclosure statement (IDS) has been filed in this reissue application that includes a list of all patents, publications, applications, or other information submitted for consideration by the Office and published on the face of the original ‘416 patent. In order for those references to be published on the face of any reissue patent resulting from this proceeding, an IDS must be filed including a list of all patents, publications, applications, or other information that appear on the face of the published ‘416 patent.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. USPNs 10,085,795; 8,663,270; 2013/0267949; and 5,921,996.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CATHERINE SERKE WILLIAMS whose telephone number is (571)272-4970. The examiner can normally be reached Monday through Friday core hours 8am-4pm ET.
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.
/CATHERINE S WILLIAMS/ Reexamination Specialist, Art Unit 3993
Conferees: /WILLIAM E DONDERO/ Reexamination Specialist, Art Unit 3993
/EILEEN D LILLIS/ SPRS, Art Unit 3993
Prosecution Insights