Reissue
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.
Claim Status
Amended patent claims 1-15 and new claims 19-38 are pending.
35 U.S.C. §251
Claims 1-15 are rejected under 35 U.S.C. 251.
The same claim of the patent cannot be presented for examination in more than one reissue application, as a pending claim, in either its original or amended versions. If a patent claim is presented in one reissue application of a reissue application "family," then that patent claim must be presented as a canceled claim in all the other reissue applications of that family. Moreover, once a claim in the patent has been reissued, it does not exist in the original patent; thus, it cannot be reissued from the original patent in another reissue application.
Thus, the instant reissue application is not correcting an error in the original patent, because original claims 1-15 are superseded by the reissuance of claims 1-15 in RE50,251, which issued from 17/097,797. See MPEP 1451.
The reissue oath/declaration filed with this application is defective (see 37 CFR 1.175 and MPEP § 1414) because of the following:
The instant reissue is broadening. 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 an original patent claim that the application seeks to broaden in the identification of the error that is relied upon to support the reissue application. It is not sufficient to reference “original claims” – reference to a specific claim number is required. 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. See MPEP 1414 II.
Claims 1-15 and 19-38 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.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process… may obtain a patent therefor…” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1-15 and 19-38 is/are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-15 and 19-33, and 35-39 of prior U.S. Patent No. RE50,251.
This is a statutory double patenting rejection.
The claims of the instant reissue application are identical to those of RE50,251.
Certificate of Correction
Because the parent reissue application (17/097,797) issued without any cross reference to the instant continuation reissue application, amendment of the parent reissue patent to include a cross-reference to the continuation reissue application is required under 37 CFR 1.177(a).
Patent Owner is urged to file a Certificate of Correction in RE50,251 E adding the following as the first sentence of the specification:
Notice: More than one reissue application has been filed for the reissue of Patent No. 10,126,596. The reissue applications are application number 17/097,797 (the present application) and application number 17/945,247.
Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 8,480,288 to Kuromizu et al. teaches a display having a supporter 29' with a hook-shaped coupling projection 31'. See Figure 45.
Conclusion
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. 10,126,596 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELIZABETH L MCKANE whose telephone number is (571)272-1275. The examiner can normally be reached Mon-Thu 6:30a-4:30p EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Patricia Engle can be reached at 571-272-6660. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ELIZABETH L MCKANE/ Specialist, Art Unit 3991
Conferees:
/LEONARDO ANDUJAR/ Primary Examiner, Art Unit 3991
/Patricia L Engle/ SPRS, Art Unit 3991