DETAILED ACTION
This is a Reissue Final Office Action regarding U.S. Patent 11,491,752 (hereafter “the ‘752 patent” and equivalent). This Action addresses the response 02 September 2026.
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 .
Status of the Claims
The following is a status of the claims as provided 02 September 2026:
Claims 1-19 are cancelled.
Claims 20-23 are new.
Original Disclosure - Definition
The present application is a reissue of US Patent No. 11,491,752, which issued from App. No. 16/590,978 having a filing date of 02 October 2019. Any subject matter added during either the examination of the present reissue application or the earlier concluded examination of the ‘752 application does not constitute part of the “original disclosure”.
Maintenance Fees
Review of the record indicates no maintenance fee is due at this time. The 7.5-year fee has a window that opens 08 November 2029. The fee with surcharge has a date that begins 09 May 2030, and the last day to pay the fee with surcharge is 08 November 2030.
Information Disclosure Statement
The Information Disclosure Statements dated 02 September 2026, is entered. Applicant provided authorization for fee charges on page 1 of the Response.
Drawings
Applicant’s amended drawing (1 sheet) is not entered as it contains new matter. The replacement sheet is directed to an embodiment that includes a force sensor and a distance sensor. The patented disclosure does not appear to provide an embodiment that includes both sensors. See rejection under 35 USC 112(a), below for an explanation as to why this is considered new matter. See MPEP 608.02, specifically 608.02(x).
Specification
Applicant’s amended specification is entered.
Response to Arguments
The following addresses applicant’s remarks/arguments dated 02 September 2026. Applicant’s courtesies are appreciated.
Objection to Drawings (response: beginning page 7) –
Applicant’s replacement drawing is not entered for reasons set for the above.
Amendment to the Specification (response: page 8) –
Applicant’s amendment to the specification overcomes the objection and the objection is withdrawn.
Claim rejection – 35 USC 251 (response: beginning page 8) –
Applicant’s amendment to the claims do not overcome the rejection under this heading reasons provided below, which will not be repeated here for brevity.
Claim rejection – 35 USC 112(b) (response: page 10) –
Applicant’s amendment to the claim overcomes the rejection previously raised under this heading and it is withdrawn; however a new rejection arises in light of the new claims presented.
Claim rejection – 35 USC 102/103 (response: beginning page 10) –
Applicant’s amendments to the claims overcome the rejection previously raised under this heading and the rejection is withdrawn. A new rejection is made in light of the newly presented claims.
Claim Interpretation
The following the position taken by the examiner in the interpretation of the claims as now presented by applicant:
Independent Claims 20 and 22: Each of the claims includes language directed to a) a force sensor and b) a distance sensor. The language associated with the respective sensors states, “a sensor comprising at least one of…” per claim 20 and “the sensor comprises at least one of…” per claim 22 (emphasis added). This language provides three embodiments with respect to the sensors: 1) a force sensor, 2) a distance sensor and 3) both a force sensor and a distance sensor. As a result, the examiner will address the claims below with this interpretation of the claims as provided.
35 USC 251
35 USC 251:
The following is a quotation of 35 USC §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.
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(c) APPLICABILITY OF THIS TITLE.— The provisions of this title relating to applications for patent shall be applicable to applications for reissue of a patent, except that application for reissue may be made and sworn to by the assignee of the entire interest if the application does not seek to enlarge the scope of the claims of the original patent or the application for the original patent was filed by the assignee of the entire interest.
Claim Rejection – 35 USC 251 Recapture:
Examiner’s Note: this recapture rejection is made in light of the alternate claiming of the sensor being a “force sensor”, which does not require a “distance sensor”, which is provided in embodiment 1) under the “Claim Interpretation” heading above.
Independent Claims 20 and 22, and 21 and 23 by dependency, are rejected under 35 U.S.C. 251 as being an improper recapture of broadened claimed subject matter surrendered in the application for the patent upon which the present reissue is based. See Greenliant Systems, Inc. et al v. Xicor LLC, 692 F.3d 1261, 103 USPQ2d 1951 (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). A broadening aspect is present in the reissue which was not present in the application for patent. The record of the application for the patent 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.
MPEP 1412.02 establishes a three-step test for recapture. The three-step process is as follows:
(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.
Step 1:
Reissue Independent Claims 20 and 22 are broader than claims Patented Independent Claims 1 and 11, but are otherwise substantially similar respective reproductions. Reissue Claims 20 and 22 include an embodiment that does not require the distance sensor and its respective function. See Patented Claim 1, lines 9 and paragraphs beginning at lines 14 and 18, and see Claim 11, paragraphs beginning at lines 5 and 9.
Therefore step 1 of the three-step test is met for Reissue Claims 20 and 21.
Step 2:
The step of determining whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution includes two sub-steps. The first sub-step is to determine whether the applicant surrendered any subject matter in the prosecution of the original application. MPEP 1412.02 defines surrendered subject matter as a claim limitation that was originally relied upon by applicant in the original prosecution to make the claims allowable over the art.
MPEP 1412.02(I)(B)(1)(A) states “[w]ith respect to whether applicant surrendered any subject matter, it is to be noted that a patent owner (reissue applicant) is bound by the argument that applicant relied upon to overcome an art rejection in the original application for the patent to be reissued, regardless of whether the Office adopted the argument in allowing the claims. Greenliant Systems, Inc. v. Xicor LLC, 692 F.3d 1261, 1271, 103 USPQ2d 1951, 1958 (Fed. Cir. 2012). As pointed out by the court, ‘[i]t does not matter whether the examiner or the Board adopted a certain argument for allowance; the sole question is whether the argument was made.’ Id.”
During the prosecution of the ‘752 patent (see serial number 16/590978), the Examiner rejected independent claims 1 and 11 citing art (see 17 March 2022 Action: beginning at pate 6). The Applicant responded with arguments and amendments, including adding in the distance sensor that is now being deleted (see response dated 26 April 2022).
Therefore, the Patent Owner amended claims 1 and 11 to add the limitations directed to a distance sensor and argued that the prior art did not include the limitations. The newly presented claims must include the limitations of patented claims 1 and 11. Reissue Independent Claims 20 and 22 as now provided include an embodiment directed to the force sensor only, which does not require the distance sensor. As noted, the distance sensor was amended into the independent claims during original prosecution to make them allowable.
Therefore, the limitations of patented Claims 1 and 11, as directed to the distance sensor are limitations which are considered surrendered subject matter.
The second sub-step is to determine whether any of the broadening of the reissue claims is in the area of the surrendered subject matter. The examiner must analyze all of the broadening aspects of the reissue claims to determine if any of the omitted/broadened limitation(s) are directed to limitations relied upon by applicant in the original application to make the claims allowable over the art.
Reissue Claims 20 and 22 are being broadened to include an embodiment that omits the surrendered subject matter. Claims 20 and 22 eliminate the details of the surrendered subject matter, which was directed to the distance sensor.
Therefore step 2 of the three-part test is met.
Step 3:
MPEP 1412.02(I)(B)(1)(B) states “[w]ith respect to the “second step” in the recapture analysis, it is to be noted that if the reissue claim(s), are broadened with respect to the previously surrendered subject matter, then recapture will be present regardless of other unrelated narrowing limitations. In the decision of In re Mostafazadeh, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011), the Federal Circuit stated:
[T]he recapture rule is violated when a limitation added during prosecution is eliminated entirely, even if other narrowing limitations are added to the claim. If the added limitation is modified but not eliminated, the claims must be materially narrowed relative to the surrendered subject matter such that the surrendered subject matter is not entirely or substantially recaptured. Id. at 1361.”
The third step in the recapture analysis is to 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. The third step include two different types of analysis that must be performed.
First, the reissue claim must be compared to any claims canceled or amended during prosecution of the original application. It is impermissible recapture for a reissue claim to be as broad as, or broader in scope than any claim that was canceled or amended in the original prosecution to define over the art. Claim scope that was canceled or amended is deemed surrendered and therefore barred from reissue. Clement, 131 F.3d at 1470, 45 USPQ2d at 1165.
Reissue Independent Claims 20 and 22 as amended include an embodiment that does not require the details of distance sensor.
Second, it must be determined whether the reissue claim omits or broadens any limitation that was added or argued during the original prosecution to overcome an art rejection. Such an omission in a reissue claim, even if it is accompanied by other limitations making the reissue claim narrower than the patent claim in other aspects, is impermissible recapture. Pannu, 258 F.3d at 1371-72, 59 USPQ2d at 1600. In any broadening reissue application, the examiner will determine, on a claim-by-claim basis, whether the broadening in the reissue application claim(s) relates to subject matter that was surrendered during the examination of the patent for which reissue is requested) by an amendment narrowing claim scope in order to overcome a rejection and/or argument relying on a claim limitation in order to overcome a rejection.
As noted above, the language directed to the distance sensor is being omitted from the respective independent claims. The language was added in during prosecution to overcome a rejection under art, which resulted in the subsequent notice of allowance. During the present reissue, applicant amended the claims to incorporate an embodiment that does not require the surrendered generating limitations by not requiring the distance sensor, but has narrowed in unrelated aspects by adding a force sensor. A force sensor is a completely different mechanism than a distance sensor and is unrelated as it measures a completely different feature than a distance sensor. See MPEP 1312.02(III).
Claims 20 and 22, and thereby dependent claims 21 and 23 are rejected under 35 U.S.C. 251 as being an improper recapture of broadened claimed subject matter surrendered in the application for the patent upon which the present reissue is based.
Claim Rejections - 35 USC § 112
35 USC 112(a):
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 20-23 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.
Regarding Independent Claims 20 and 22, the claims incorporate three different combinations between the force sensor and distance sensor (see “Claim Interpretation” section above). Upon review of the patented disclosure, a force sensor is discussed in Col. 9, beginning at line 66; Col. 11, lines 6-10 and lines 55-57. As provided, the disclosure does not clearly provide an embodiment that includes both a distance sensor and a force sensor. The disclosure appears to provide embodiments directed to either a distance sensor or a force sensor. Further, the disclosure is unclear how both a distance sensor and force sensor would both be used and interrelate with respect to the remaining features of the invention. As a result, the examiner concludes the embodiment directed to include both the distance sensor and force sensor lacks written description.
Regarding Claims 21 and 23, the claims are directed to the force sensor being a load cell. As written, Independent Claims 20 and 22 include an embodiment that claims a distance cell only, which would not require the presence of a load cell. As a result, the claim lacks written description as to how a load cell relates to a distance cell.
35 USC 112(b) – indefiniteness:
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 21 and 23 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. The language of the respective claims states “the sensor comprises a load cell”; however, “sensor” includes a distance sensor. The disclosure does not relate a load cell to a distance cell, and as a result, the language of the claim is unclear as to how a load cell could be a type of distance cell, as load cells are a type of force cell.
Claim Rejections - 35 USC § 102
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 (i.e., changing from AIA to pre-AIA ) 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.
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:
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.
Claim(s) 20-23 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tipton et al. (U.S. Patent 6,393,807 B2), hereafter “Tipton” and equivalent.
Claim 20 Tipton discloses A strapping machine comprising:
a frame (Fig. 1: generally including but not limited to 20, 28);
a top platen (22) supported by the frame;
a load supporter (55) below the top platen (as shown), the load supporter being configured to facilitate movement of a load moving through the strapping machine (via conveyor rollers 56);
a top-platen actuator (Col. 7, lines 20-25 indicates the top platen moves downward, which means an actuator would necessarily be incorporated to facilitate the movement) operably connected to the top platen to move the top platen toward and away from the load supporter;
a strapping head (50);
a sensor comprising at least one of: (a) a force sensor; and (b) a distance sensor (“electric eye system” as described in Col. 12, lines 62-67); and
a controller (e.g., Fig. 12) configured to:
control the top-platen actuator to move the top platen toward the load supporter and a 1oad positioned on the load supporter (174, 176; see Col. 13, lines 43-50); and
at least one of:
(1) as the top platen moves toward the load supporter and the load, monitor a compressive force the top platen applies to the load based on feedback from the sensor; and responsive to determining that the compressive force the top platen applies to the load has reached a target compressive force, control the strapping head to strap the load (as (1) and (2) are in alternate form, the examiner will consider option 2); and
(2) as the top platen moves toward the load supporter and the load, determine and monitor a distance between the top platen and the load supporter based on feedback from the sensor (this is done by the “electric eye system” as described in Col. 12, lines 62-67); and responsive to a distance between the top platen and the load supporter reaching a target distance, control the strapping head to strap the load (50 is the strapping head applying straps 54).
Claim 21: The strapping machine of claim 20, wherein the sensor comprises a load cell. Due to the scope of the claim in light of the rejections under 35 USC 112(a) and (b), the examiner is unable to provide comment regarding applicable art at this time.
Claim 22: Tipton discloses A method of operating a strapping machine, the method comprising:
moving a top platen (22) downward toward a load supporter (55) on which a load is positioned (Col. 7, lines 20-25); and at least one of:
(1) as the top platen moves downward toward the load supporter and the load, monitor a compressive force the top platen applies to the load based on feedback from a sensor; and responsive to determining that the compressive force the top platen applies to the load has reached a target compressive force, strapping the load by a strapping head (as this is considered alternate language, the examiner is not addressing the features of (1)); and
(2) as the top platen moves toward the load supporter and the load, determine and monitor a distance between the top platen and the load supporter based on feedback from the sensor (this is done by the “electric eye system” as described in Col. 12, lines 62-67); and responsive to a distance between the top platen and the load supporter reaching a target distance (as disclosed), strapping the load by the strapping head (50 is the strapping head applying straps 54)),
wherein the sensor comprises at least one of: (a) a force sensor; and (b) a distance sensor (the “electric eye system” functions as a distance sensor).
Claim 23: The method of claim 22, wherein the sensor comprises a load cell. Due to the scope of the claim in light of the rejections under 35 USC 112(a) and (b), the examiner is unable to provide comment regarding applicable art at this time.
Continuing Obligations
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which Patent No. 11,491,752 is or was involved. These proceedings would include any trial before the Patent Trial and Appeal Board, interferences, reissues, reexaminations, supplemental examinations, 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 material to patentability of the claims under consideration in this reissue application. 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.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM V GILBERT whose telephone number is (571)272-9055. The examiner can normally be reached M-F 0800-0430 Eastern.
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.
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/WILLIAM V GILBERT/Reexamination Specialist, Art Unit 3993
CONFEREES:
/JOSHUA KADING/Reexamination Specialist, Art Unit 3993
/EILEEN D LILLIS/SPRS, Art Unit 3993
