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 .
DETAILED ACTION
For reissue applications filed before September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the law and rules in effect on September 15, 2012. Where specifically designated, these are “pre-AIA ” provisions.
For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions.
This is a Non-Final Action.
The current application filed November 5, 2024 is a reissue application of 15/849,468 (U.S. Patent No. 10,684,929 issued June 16, 2020, hereinafter “the ‘929 patent”).
Claims 1-18 were initially pending in the application. Claim 17 was amended and claims 19-34 were added in a preliminary amendment filed November 5, 2024. Claims 1-34 are pending.
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 Patent No. 10,684,929 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.
Content of Reissue Applications
The applicant has failed to satisfy the requirements of 37 CFR 1.173(c) in the amendment filed January 30, 2022:
(c) Status of claims and support for claim changes. Whenever there is an amendment to the claims pursuant to paragraph (b) of this section, there must also be supplied, on pages separate from the pages containing the changes, the status (i.e., pending or canceled), as of the date of the amendment, of all patent claims and of all added claims, and an explanation of the support in the disclosure of the patent for the changes made to the claims.
Applicant has not provided a proper explanation of support for the claim amendments made. The citations provided do not constitute an actual explanation of support (see rejection under 35 U.S.C. 251 below). In order to overcome this objection applicant must provide a specific explanation of support for all matter added via this amendment and all future amendments. This is further evidenced by the rejections under 35 U.S.C. 112 and 35 U.S.C. 251 found below regarding lack of written description support and new matter. The examiner recommends providing an explicit citation and explanation of support for each and every added or amended limitation of the claims separately to avoid the same error in the future.
Appropriate correction is required for the current amendment and all future amendments must also conform to this practice. Failure to conform to these practices for all previous amendments and any future amendments will result in the response being deemed as noncompliant.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on February 5, 2025 has been considered by the examiner.
Specification
The specification amendment filed November 5, 2024 is proper and has been entered.
Claim Rejections - 35 USC § 251
Claim 17 is rejected under 35 U.S.C. 251 as being broadened in a reissue application filed outside the two-year statutory period. The applicant may not broaden the claims in any way when making amendments because there was no intent to broaden the claims within 2 years of the date of patent, thus broadening is not allowed in this reissue proceeding.
A broadened claim can be presented within two years from the grant of the original patent in a reissue application. In addition, a broadened claim can be presented after two years from the grant of the original patent in a broadening reissue application which was filed within two years from the grant. Where any intent to broaden is unequivocally indicated in the reissue application within the two years from the patent grant, a broadened claim can subsequently be presented in the reissue after the two year period. (Note: A statement that "the patent is wholly or partly inoperative by reason of claiming more or less than applicant had a right to claim" is NOT an unequivocal statement of an intent to broaden.) Thus, a broadened claim may be presented in a reissue application after the two years, even though the broadened claim presented after the two years is different than the broadened claim presented within the two years. Finally, if intent to broaden is indicated in a parent reissue application within the two years, a broadened claim can be presented in a continuing (continuation or divisional) reissue application after the two year period. See In re Staats, 671 F.3d 1350, 101 USPQ2d 1930 (Fed. Cir. 2012) which dealt with a continuation of a first reissue application in which the first reissue application was filed within two years of the patent grant. The broadened claims in the continuation reissue application were to an embodiment "alternative" to, and "unrelated" to, the broadened claims of the first reissue application that were filed within the 2-year limit. Notice of broadening was found to be sufficient in this instance, with the court holding that there is no basis for requiring the later broadened claims in the continuation reissue application to be related to, or directed to the same embodiment as in the first reissue application. Id. at 1355, 101 USPQ2d at 1934. "[A]fter a broadening reissue application has been filed within the two year statutory period, an applicant is ‘not barred from making further broadening changes’ after the two year period" regardless of whether the further broadening changes are unrelated to the prior broadening reissue application. Id. A reissue application filed on the 2-year anniversary date from the patent grant is considered to be filed within 2 years of the patent grant. See Switzer v. Sockman, 333 F.2d 935, 142 USPQ 226 (CCPA 1964) for a similar rule in interferences.
(MPEP 1412.03(IV), emphasis added)
A claim is broader in scope than the original claims if it contains within its scope any conceivable product or process which would not have infringed the original patent. A claim is broadened if it is broader in any one respect even though it may be narrower in other respects. Amended independent claim 17 no longer require, “at least some of the arrays of memory block portions are sized and spaced such that they align with the compute block portions of the data processing units in the compute arrays on the first wafer when the wafers are correctly aligned;” (using original claim 17 as example). The amendment removes the requirement that the compute block portions of the data processing units are specifically “in the compute arrays”, which by definition broadens the scope of the original claim.
Additionally, claims 19-34 are rejected under 35 U.S.C. 251 as being based upon new matter added to the patent for which reissue is sought. Applicant has cited Figs. 2A-2G and column 4, line 20-column 5, line 52 of the ‘929 Patent specification as supporting the added new claims 19-34. There is no discussion of multiple elements of the claims found in the alleged supporting citations. For example, but not limited to, the cited support provides no discussion of the use of “hybrid bonding” as it is claimed, “scribing” as it is claimed, etc. In order to overcome this rejection, it would be necessary to either amend the claims to only supported language or provide explicit citations of support from the ‘929 Patent specification. Proper correction is required.
Additionally, 37 C.F.R. 1.175(b) requires, “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.” Thus, the reissue oath/declaration is now defective. Examiner notes that as stated above, the applicant may not broaden the claims in any way when making amendments because there was no intent to broaden the claims within 2 years of the date of patent, thus broadening is not allowed in this reissue proceeding. Thus, the reissue oath/declaration would not be defective if the rejection above regarding broadening outside the 2-year limit was overcome the rejection of the reissue oath/declaration found below would no longer be necessary.
Claims 1-34 are rejected as being based upon a defective reissue oath/declaration under 35 U.S.C. 251 as set forth above. See 37 CFR 1.175.
The nature of the defect(s) in the reissue oath/declaration is set forth in the discussion above in this Office action.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 19-34 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Applicant has cited Figs. 2A-2G and column 4, line 20-column 5, line 52 of the ‘929 Patent specification as supporting the added new claims 19-34. There is no discussion of multiple elements of the claims found in the alleged supporting citations. For example, but not limited to, the cited support provides no discussion of the use of “hybrid bonding” as it is claimed, “scribing” as it is claimed, etc. In order to overcome this rejection, it would be necessary to either amend the claims to only supported language or provide explicit citations of support from the ‘929 Patent specification. Proper correction is required.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSHUA D CAMPBELL whose telephone number is (571)272-4133. The examiner can normally be reached 7:30-4:00 M-F.
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, Alexander Kosowski can be reached on (571) 272-3744. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSHUA D CAMPBELL/Primary Examiner, Art Unit 3992
Conferees:
/ADAM L BASEHOAR/Primary Examiner, Art Unit 3992
/ALEXANDER J KOSOWSKI/Supervisory Patent Examiner, Art Unit 3992