DETAILED ACTION
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 .
Reissue Application
This application seeks to reissue US Patent No. 11,470,233 (“the ‘233 patent”). In a 09/15/2026 response to the 06/16/2026 final Office action (“FOA”), the applicant has amended claims 1, 8, 14, 18-20, 27, 29, and 35. Claims 1-37 are pending.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 09/15/2026 has been entered.
Applicant’s Response to the Final Office Action
Defective Declaration
The declaration was objected to in the FOA, and the claims of this application were rejected under § 251 as being based on a defective reissue declaration. The applicant has responded by submitting a supplemental error statement. This error statement is insufficient, and these issues remain.
The new error statement describes that the patent claimed “less than Applicant had a right to claim.” Remarks at 13. This implies that the reissue claims are broader than the patent claims. But the next sentence reads: “For example, new claims 27-37 added with this reissue recite previously unclaimed features.” This implies that claims 27-37 include previously unclaimed limitations, thus are narrower than the patent claims. It is not clear from the error statement that the reissue application seeks to broaden the patent claims. But, as described in the § 251 rejection below, claims 27 and 31 are broader than the patent claims in at least one respect. The declaration in a broadening reissue application must “identify a claim that the application seeks to broaden in the identification of the error that is relied upon to support the reissue application.” MPEP 1414(II).
In addition, an “error in the claims must be identified by reference to the specific claim(s) and the specific claim language wherein lies the error.” Id. The updated error statement does not identify a claim that the application seeks to broaden, and it does not refer to the specific claim language of this error. This error statement is therefore insufficient.
§ 251 Recapture Rejection
The applicant submits that claim 27 has been amended such that it is “materially narrowed in aspects related to the surrendered subject matter.” Remarks at 13. The examiner disagrees. See the § 251 rejection below for a description of why this claim, and claim 31, violate the recapture rule of § 251.
Res Judicata
The rejections under res judicata are overcome by the recent amendment of claims 8-26. These claims are now directed to an invention that is patentably distinct from the claims of the ‘567 application.
Prior Art Rejections
All prior art rejections are overcome by the recent amendments.
Objection, 37 CFR 1.175 – Defective Reissue Declaration
The reissue declaration filed with this application is defective (see 37 CFR 1.175 and MPEP § 1414).
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.
Any error in the claims must be identified by reference to the specific claim(s) and the specific claim language wherein lies the error.
See MPEP 1414 II.
The error statement that was filed with the Remarks on 09/15/2026 describes that the patent claimed “less than Applicant had a right to claim.” Remarks at 13. This implies that the reissue claims are broader than the patent claims. But the next sentence reads: “For example, new claims 27-37 added with this reissue recite previously unclaimed features.” This implies that claims 27-37 include previously unclaimed limitations, thus are narrower than the patent claims. It is not clear from the error statement that the reissue application seeks to broaden the patent claims. But, as described in the § 251 rejection below, claims 27 and 31 are broader than the patent claims in at least one respect.
The error statement does not indicate whether, or how, new claims 27-37 represent a broadening of the claims of the ‘233 patent. The error statement also fails to identify the specific claim language of this error.
Claim Rejections, 35 U.S.C. §251
Claims 1-37 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.
Claims 27-32 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. See MPEP 1412.02 for a listing of relevant case law. 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 recapture analysis involves a 3-step process:
(1) first, we determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims;
(2) next, we determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and
(3) finally, we determine whether the reissue claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule.
MPEP 1412.02(II).
Step 1: claims 27 and 31 omit limitations describing the content of the frame sync signal. Each claim of the ‘233 patent recited that the frame synch signal is indicative of “a time to receive the transmissions from the first serial interface circuit and the second serial interface circuit.” By omitting this limitation, claims 27 and 31 have been broadened relative to the broadest claims of the ‘233 patent. Analysis therefore proceeds to step 2.
Step 2: during prosecution of US Application 15/910,567 (the parent application of the application from which the ‘233 patent issued), the claims were amended on 02/19/2020 to overcome prior art rejections of the 11/19/2019 non-final Office action. For example, claim 1 of this application was amended to recite:
encode a clock signal and a frame sync signal in the control information, the frame sync signal indicative of (a) a timing of video data capture by the first camera and the second camera and (b) a time to receive the transmissions from the first serial interface circuit and the second serial interface circuit.
The applicant also pointed to these limitations to argue that the amended claim was not taught or suggested by the prior art of record. See the 02/19/2020 Remarks at 7-9. The added limitations were surrendered because they were “relied upon by applicant in the original application to make the claims allowable.” MPEP 1412.02(II)(B)(1). By removing these limitations from claim 27, the applicant has omitted surrendered subject matter. Analysis therefore proceeds to step 3.
Step 3: claims 27 and 31 have not been materially narrowed relative to the surrendered subject matter. Claims 27 and 31 now recite that the frame sync signal indicates timing of capture of the first and second cameras, but do not recite that the frame sync signal indicates “a time to receive the transmissions from the first serial interface circuit and the second serial interface circuit.” Therefore claims 27 and 31 recite a modified (broadened) version of the surrendered limitation. But this modified limitation does not represent a material narrowing relative to the surrendered limitation.
“Where the modified limitation was contained within the prior art relied upon by the examiner in the original prosecution … the limitation is not materially narrowing.” MPEP 1412.02(III)(B)(4) and In re Youman et al., 679 F.3d 1335, 1347 (Fed. Cir. 2012). As described in the PTAB decision in the ‘567 application, the entire surrendered limitation was contained within the prior art that was relied upon by the examiner in the ‘567 application. See the 09/29/2022 Decision on Appeal in the ‘567 application at 4-7. Therefore, according to this PTAB decision, the Mizosoe-Shimizu combination renders obvious the modified version of the surrendered limitation that the claims now recite. By omitting the limitation requiring that the frame sync signal indicates a time to receive transmissions from first and second serial interface circuits, claims 27 and 31 violate the recapture rule of §251.
Claim 33 recites that “the frame sync signal indicating a timing of capture of first video data by the first camera, a timing of capture of second video data by the second camera, a timing of transfer of the first video data from the first serial interface circuit to the hub interface circuit, and a timing of transfer of the second video data from the second serial interface circuit to the hub interface circuit.” This retains the requirements of the surrendered limitation, and claim 33 is not rejected here.
Allowable Subject Matter
Claims 1-37 are rejected under § 251, but otherwise recite allowable subject matter.
The closest prior art is the Mizosoe-Shimizu combination that was described previously and in the PTAB Decision in the ‘567 application. This prior art fails to teach or suggest:
“a clock generator circuit having a first input, a second input and an output wherein the first input is coupled to a reference clock signal; a frame sync generation circuit having a first output and a second output wherein the first output is coupled to the second input of the clock generator circuit” as recited in claim 1.
“at least one of the clock signal and the frame sync signal is encoded into the control information by providing transitions in the control information, the transitions indicating the at least one of the clock signal and the frame sync signal” as recited in claim 8, and similarly recited in claims 14 and 20.
transceivers are configured to: “receive first video data from an output of a first serial interface circuit at a third input of the transceivers; receive second video data from an output of a second serial interface circuit at a fourth input of the transceivers” and “encode the clock signal and the frame sync signal into the control information, wherein the transceivers encode the clock signal into the control information by providing transitions in the control information, the transitions indicating the clock signal” as recited in claim 27, and similarly in claim 31.
“the frame sync signal indicating a timing of capture of first video data by the first camera, a timing of capture of second video data by the second camera, a timing of transfer of the first video data from the first serial interface circuit to the hub interface circuit, and a timing of transfer of the second video data from the second serial interface circuit to the hub interface circuit” and “wherein the timing of the capture of the first video data by the first camera and the timing of the capture of the second video data by the second camera are synchronized according to both the clock signal and the frame sync signal recovered from the control information” as recited in claim 33.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT J HANCE whose telephone number is (571)270-5319. The examiner can normally be reached M-F 11:00am-7:00pm ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Fuelling can be reached at (571) 270-1367. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT J HANCE/ Reexamination Specialist, Art Unit 3992
Conferees:
/CHARLES R CRAVER/ Reexamination Specialist, Art Unit 3992 /M.F/Supervisory Patent Examiner, Art Unit 3992
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