DETAILED ACTION
I. Introduction
This Office action addresses U.S. application number 18/830,457 (“’457 Application” or “instant application”), having a filing date of 10 September 2024. Because the instant application was filed on or after September 16, 2012, the statutory provisions of the America Invents Act (“AIA ”) will govern this proceeding.
II. Priority
The instant application is a continuation of U.S. reissue application number 17/323,980 (“Parent Reissue Application”), filed 18 May 2021, titled “STATISTICAL PROJECTION FOR CONTROLLING BLER”, which issued as U.S. Reissue Patent RE50,120 (“’120 reissue patent”) on 10 September 2024. The Parent Reissue Application is a reissue of U.S. Patent 10,917,856 (“’856 patent”).
The Parent Reissue Application claims ultimate priority to U.S. Provisional Applications 62/728,726, filed 7 September 2018, U.S. Provisional Application 62/770,460, filed 21 November 2018, and U.S. Provisional Application 62/792,565, filed 15 January 2019.
However, as provided in MPEP § 1451, the fact that an application purports to be a continuation or divisional of a parent reissue application does not make it a reissue application itself, since it is possible to file a 35 U.S.C. § 111(a) continuing application of a reissue application. See In re Bauman, 214 USPQ 585, 589 (CCPA 1982) (a patentee may file a regular continuation of a reissue application that obtains the benefit of the reissue application's filing date).
There must be an identification, on filing, that Applicant intends the application be treated as a continuation reissue application, as opposed to a continuation of a reissue application (i.e., a Bauman-type continuation application). The Application Data Sheet must state, or the specification must be amended to state that the application is a "continuation reissue application" of its parent reissue application. If the Application Data Sheet states, or the specification is amended to state that the application is a "continuation" of its parent reissue application, the application may very well be treated as a Bauman-type continuation application. In general, an application which is a continuation of a reissue application will be considered a Bauman-type application where it lacks sufficient indicia on filing that a continuation reissue application is being filed. Indicia that a continuation reissue application is being filed are:
(1) A 37 C.F.R. § 1.175 reissue oath/declaration, which is not merely a copy of the parent’s reissue oath/declaration.
(2) A specification and/or claims in proper double column reissue format per 37 C.F.R. § 1.173.
(3) Amendments in proper format per 37 C.F.R. § 1.173.
(4) A 37 C.F.R. § 3.73 statement of assignee ownership and consent by assignee.
(5) A correct transmittal letter identifying the application as a reissue filing under 35 U.S.C. § 251. It is recommended that Form PTO/AIA /50 be used.
(6) An identification of the application as being "a reissue continuation of application number [the parent reissue application]" or "a continuation and reissue of application number [the parent reissue application]" or equivalent language, rather than being "a continuation of reissue application number [the parent reissue application]."
Regarding factor (1), Applicant has failed to file a declaration of any kind (utility or reissue), and so no error has been identified which might provide grounds for the filing of a reissue application.
Regarding factor (2), neither the specification nor the claims were filed in double column format as required by 37 C.F.R. § 1.173 for reissue applications. Rather, both the specification and claims were filed in single column format as in regular utility continuation applications.
Regarding factor (3), original claims were filed concurrently with the filing of the application, on 10 September 2024. However, the claims include change markings, as if they were from a preliminary amendment.
It is further noted that the claims as presented are not consistent with issued claims 1-15 of the ‘856 patent. Specifically, the claims presented, 1-18, are different than originally issued claims 1-15 of the ‘856 patent, but changes relative to the issued claims are not indicated by change markings as required by 37 C.F.R. § 1.173(d). Claim numbering of the ‘856 patent has not been preserved, as required by 37 U.S.C. § 1.173(e). No statement as to support for the changes made was provided, as required by 37 C.F.R. § 1.173(c).
The specification was also amended relative to the ‘856 patent, by including additional entries in the cross-reference section, but again no change markings as required in reissue applications were provided.
Regarding factor (4), Applicant has not filed a Statement under 37 C.F.R. § 3.73(c) indicating assignment, nor a consent of the assignee.
Regarding factor (5), no transmittal letter identifying the application as a reissue was received by the Office. Instead, the transmittal letter indicated the filing of a utility patent application.
Regarding factor (6), the first line of the specification identifies the instant application as “a continuation of U.S. Application No. 17/323,980, filed May 18, 2021, which is a reissue of U.S. Appl. No. 16/564,929, filed September 9, 2019, now U.S. Patent No. 10,917,856…”. The instant application is not identified as a reissue of the ‘856 patent, nor as a continuation reissue of the Parent Reissue Application.
Furthermore, an Application Data Sheet was submitted that specifically identifies the instant application as a continuation of application 17/323,980, while failing to identify the application as a reissue and/or a continuation reissue.
In addition, there are other indications that the instant application was filed as a Bauman-type continuation, and not a continuation reissue. For example, Applicant paid the utility application examination fee under 37 C.F.R. § 1.16(o), and not the higher reissue application examination fee required by § 1.16(r). See Electronic Payment Receipt (document code N417.PYMT in the Image File Wrapper), generated 18 November 2024, referring to “Utility” filing, search, and examination fees.1
In view of the forgoing, it is apparent that the instant application was filed with insufficient evidence or indicia that it is a continuation reissue application. Rather, the indicia indicate the instant application to be a continuation of the Parent Reissue Application, i.e., a Bauman-type continuation application. In view of this conclusion, the instant application:
(a) was/is processed as a 35 U.S.C. § 111(a) continuation application of a reissue application.
(b) will be examined as a Bauman-type continuation application, i.e., a 35 U.S.C. § 111(a) continuation application of a reissue application.
As held by Bauman, a Bauman-type continuation application:
(a) receives the benefit of the actual filing date of the parent reissue application under 35 U.S.C. § 120.
(b) does NOT receive the benefit of the filing date of the patent sought to be reissued by the parent reissue application because the copendency requirement of 35 U.S.C. § 120 is not met. Furthermore, 35 U.S.C. § 100(i)(2) is not applicable to the present application as it is not a reissue application.
Accordingly, the instant application has an effective filing date of 18 May 2021, the filing date of the Parent Reissue Application. That being the case, the original patent, U.S. Patent 10,917,856, which issued on 9 February 2021, as well as the corresponding Pre-Grant Publication 2020/0120613, published 16 April 2020, qualify as prior art.
It is noted that there is no mechanism in the statute or regulations for changing the manner in which an application was filed from a regular application to a reissue application. Accordingly, Applicant must file a grantable petition under 37 C.F.R. § 1.182 in order for the instant application to be converted from a Bauman-type continuation of a reissue into a continuation reissue application.
In determining whether to grant such a petition, the Office will look generally to indicia of Applicant’s intent in determining the type of application that Applicant meant to file; therefore, any such petition should address how the record demonstrates Applicant’s intent. To warrant a conversion, Applicant must show evidence in the file that would independently point to the intention to file the application as a reissue application.
It is further noted that a grantable petition to convert the application to a reissue application must be accompanied by a proper reissue specification, claims, reissue declaration, 37 C.F.R. § 3.73 statement of assignee ownership and consent of the assignee, and all other requirements associated with the filing of a continuation reissue application, including payment of the applicable reissue fees. As noted above, these documents/fees have not been filed in the instant application.
Because the effective filing date of the instant application is on or after March 16, 2013, the AIA First Inventor to File (“AIA -FITF”) provisions apply.
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 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.
III. Other Proceedings
After review of Applicant’s statements as set forth in the instant application, and the examiner's independent review of the ‘856 patent itself and its prosecution history, the examiner has failed to locate any current ongoing litigation. The examiner has likewise failed to locate any previous reexaminations (ex parte or inter partes), supplemental examinations, or other post issuance proceedings.
IV. Claim Interpretation
During examination, claims are given the broadest reasonable interpretation consistent with the specification and limitations in the specification are not read into the claims. See MPEP § 2111 et seq.
Upon review of the original specification and prosecution history, the examiner has found no instances of lexicographic definitions, either express or implied, that are inconsistent with the ordinary and customary meaning of the respective terms. Therefore, for the purposes of claim interpretation, the examiner concludes that there are no claim terms for which applicant is acting as their own lexicographer. See MPEP § 2111.01(IV).
If applicant intended lexicographic definitions that have not been identified as such by the examiner, they are asked to note the term and the location in the specification or prosecution history supporting the lexicographic definition in response to this Office action.
Additionally, upon review of the pending claims, the examiner finds no instances where the claim terms explicitly include functional language which invokes the provisions of 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph.
V. Oath/Declaration
The Office has not received an Oath/Declaration signed by Applicants as required by 37 C.F.R. § 1.63.
VI. Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. § 102 that form the basis for the rejections under this section made in this Office action:
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A person shall be entitled to a patent unless
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-18 are rejected under 35 U.S.C. § 102(a)(1) as being clearly anticipated by U.S. Patent Application Publication 2020/0120613 to Eric Mrozinski et al. (“Mrozinski”).
Both Mrozinski and the instant application share substantially identical disclosures (both drawings and specification). Consequently, there can be no claims presented in the instant application that would not be clearly anticipated by Mrozinski.
It is on this basis that claims 1-18 are rejected.
VII. Conclusion
Applicant(s) 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 '646 patent is or was involved. These proceedings would include interferences, reissues, reexaminations, other post-grant proceedings in the Office, and litigation.
Applicant(s) are further reminded of the continuing obligation under 37 C.F.R. § 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this application.
Applicant(s) are also reminded that any amendments to the claims must comply with the provisions of 35 U.S.C. § 112 first paragraph, having clear support and antecedent basis in the specification. See 37 C.F.R. § 1.75(d)(1) and MPEP § 608.01(o).
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Luke S. Wassum whose telephone number is (571)272-4119. The examiner can normally be reached on Monday - Friday 8 AM-5 PM, alternate Fridays off.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Fuelling can be reached on 571-270-1367. The fax phone number for the organization where this application or proceeding is assigned is 571-273-9900.
In addition, INFORMAL or DRAFT communications may be faxed directly to the examiner at 571-273-4119. Such communications must be clearly marked as INFORMAL, DRAFT or UNOFFICIAL.
Patent Center
Patent Center is available to all users for electronic filing and management of patent applications. For more information, please visit the Patent Center information page at www.uspto.gov/patents/apply/patent-center.
/LUKE S WASSUM/Primary Examiner, Art Unit 3992
Conferees:
/Stephen J. Ralis/Primary Examiner, Art Unit 3992 /MF/Michael Fuelling
Supervisory Patent Examiner
Art Unit 3992
lsw
16 March 2026
1 The filing and search fees are the same for utility and reissue applications, 37 CFR § 1.16(a),(e), (k), & (n), but the examination fee for reissue applications is higher than for utility applications. In this case, Applicant paid the utility application fees and not the reissue application fees. The N417.PYMT form in the instant application lists utility fee codes 4011, 2111, and 2311 as having been paid. By contrast, reissue fee codes 2014, 2114, and 2314 were listed as having been paid on the Electronic Patent Application Fee Transmittal (Image File Wrapper document code WFEE) form generated 18 May 2021 in parent reissue application 17/323,980.