DETAILED ACTION
1. Claims 1-39 are pending in this continuation application for reissue of US Patent 9,047,547 (hereinafter “the '547 patent”) issued from application no. 13/353,850. Claims 1-19 are patented claims.
Prior or Concurrent Proceedings
2. 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 the ‘547 patent is or was involved. These proceedings would include interferences, reissues, reexaminations, and litigation.
Information Material to Patentability
3. 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.
Notice of Pre-AIA or AIA Status
4. The present application is being examined under the pre-AIA first to invent provisions.
Application Data Sheet
5. The application data sheet (ADS) filed on November 22, 2024 is objected to because the domestic benefit information does not properly identify the present application as both a continuation of U.S. Application No. 17/579,820 and a reissue application of the '547 patent.
See the Reissue Application Filing Guide for more information at: http://www.uspto.gov/sites/default/files/forms/uspto_reissue_ads_guide_Sept2014.pdf
In particular see the screen shot on page 10 given the sample facts presented on page 9. The corrected ADS should comply with 37 CFR 1.76(c)(2), which requires that any changes to an ADS be identified with markings (underline for addition, strike through for deletion).
Applicant should additionally file, as a paper separate from its next response, a Request for Corrected Filing Receipt to ensure that these changes are acted upon and corrected by the appropriate official.
Claim Objection - 37 C.F.R. 1.173
6. 37 CFR 1.173 (c) states:
(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 (emphasis added).
Applicant has not provided any explanation of the support in the disclosure of the patent for the changes made to the claims for new claims 20-39. Applicant must explain how each of the limitations of the new claims are supported in the specification with reference to specific passages in the specification with accompanying explanations, not mere citations to columns and lines or paragraph numbers in the specification. Failure to comply in the next response will result in a notice of non-compliance with no substantive examination. Failure to provide sufficient explanation of support to satisfy the written description requirements under 35 USC 112(a) may result in additional new rejections under that statute.
Double Patenting – Non-Statutory
7. The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP §§ 706.02(l)(1) - 706.02(l)(3) for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
8. Claims 20, 23-24, 30-36, and 38-39 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 20-39 of US RE48,939 (“the 939 patent”).
Claim 20 of the instant application is anticipated by claim 20 of the ‘939 patent, except for the number of second pins being more than the number of the first pins. However, only two pairs of pins are used functionally in the claim. It would be obvious to one skilled in the art at the time of the invention to add non-functional pins in a memory device.
9. Claims 20, 23-24, and 29-39 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 20-39 of US RE50,274 (“the 274 patent”).
Claim 20 of the instant application is anticipated by claim 1 of the ‘274 patent, except for the number of second pins being more than the number of the first pins. However, only two pairs of pins are used functionally in the claim. It would be obvious to one skilled in the art at the time of the invention to add non-functional pins in a memory device.
Rejection under 35 U.S.C. 251
10. The following is a quotation of the appropriate paragraphs of pre-AIA 35 U.S.C. §251 that form the basis for the rejections under this section made in this Office action:
(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.
11. Claims 1-19 are rejected under 35 U.S.C. 251 pursuant to 37 CFR 1.177(b). Instant reissue application presents original claims 1-19. However, these claims have been superseded by the reissuance of claims in the RE50,274 patent. Only one set of original patent claims, in its original or amended form, can be examined in a reissue application family. See MPEP 1451.
To overcome this rejection, Applicant may cancel all original patent claims and present the amended claims as new claims.
12. MPEP 1412.01 states that the reissue claims must be for the same invention as that disclosed as being the invention of the original patent. MPEP 1412.01 further provides guidelines for determining whether the reissue claims are “for the invention disclosed in the original patent” as follows:
Examiners should review the reissue application to determine if:
(A) the claims presented in the reissue application are described in the original patent specification and enabled by the original patent specification such that 35 U.S.C. 112, first paragraph is satisfied;
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(B) nothing in the original patent specification indicates an intent not to claim the subject matter of the claims presented in the reissue application; and
(C) the newly claimed invention is clearly and unequivocally disclosed in the specification as a separate invention with the claimed combination of features.
In Forum US, Inc. v. Flow Valve, LLC, Appeal 2018-1765 (Fed. Cir. June 17, 2019) Federal Circuit stated,
Thus, for broadening reissue claims, the specification of the original patent must do more than merely suggest or indicate the invention recited in reissue claims; “[i]t must appear from the face of the instrument that what is covered by the reissue was intended to have been covered and secured by the original.” Indus. Chems., 315 U.S. at 676 (emphasis added). Stated differently, the original patent “must clearly and unequivocally disclose the newly claimed invention as a separate invention.” Antares, 771 F.3d at 1362. We apply the standard set forth in Industrial Chemicals and Antares to this case and hold that the reissue claims are invalid.”
(emphasis added).
13. Claims 29, 30-31, 33, and 35-37 are rejected under 35 USC 251 for claiming subject matter that is not directed to the invention disclosed in the original patent.
14. With respect to claim 29, the original patent does not clearly and unequivocally disclose that first pins other than the one pair of first pins in the first pin group are invalidated in the second mode. The specification discloses that “the function in the normal mode is invalidated for pins other than GND (3rd and 6th) and VCC (4th) out of the 1st to 9th pins.”
15. With respect to claims 30 and 31, the original patent does not clearly and unequivocally disclose a memory card with first and second terminals arranged on the front side and a different side, respectively, as claimed. The only disclosed embodiments of claim 1, where the number of the second pins is more than the number of the first pins are shown in FIGs. 10A and 10B. The second pins shown in the figures are not arranged in the middle of the memory cards, not on any sides of the cards.
16. With respect to claim 33, the original patent does not clearly and unequivocally disclose that the second pin group is at a position that is offset from a central position in the embodiments of FIGs. 10A and 10B.
17. With respect to claims 35-37, the original patent does not clearly and unequivocally disclose that the wires connecting the pins for differential signals and the controller have approximately equal length in the embodiments of FIGs. 10A and 10B.
Claim Rejections - 35 USC § 112
18. 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.
19. Claim 29 is 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. See the rejection of claim 29 under 35 USC 251 above.
20. 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.
21. Claims 20-39 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.
22. Claim 20 recites the limitation “a plurality of first pins arranged with aligning along the front edge of the substrate.” This grammatically unusual phase does not distinctly point out the metes and bounds of the claims. For the purpose of this examination, the limitation will be interpreted as “a plurality of first pins arranged to align along the front edge of the substrate.”
Claim Rejections - 35 USC § 103
23. 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 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
24. Claims 20, 27-28, 32, 34, and 38 are rejected under 35 U.S.C. 103 as being US Pub. 2009/0254704 (“Nakamura”) in view of US Pub. 2005/0281010 (“Wang”).
25. With respect to claim 20, Nakamura discloses a memory card (FIG. 1, ) including a memory and a controller mounted on a substrate, the memory being capable of storing data and outputting stored data (see paragraph [0038]), the controller controlling an operation of the memory in a first mode and a second mode, data transfer speed of the second mode being higher than that of the first mode (paragraph [0011] and [0021]; see also FIG. 4) the substrate having a front edge, and a back edge, the back edge being an edge arranged on an opposite side of the front edge, the memory card further including:
a first pin group which includes a plurality of first pins arranged with aligning along the front edge of the substrate (see FIG. 3), the plurality of first pins functioning as four data pins, one command pin, one power source pin, one clock pin, and two ground pins in the first mode (see FIG. 4, pins 1-9 used in SD mode), part of the plurality of first pins being used both in the first mode and the second mode (see FIG. 4, some of the same pins are used in high speed mode); and
a second pin group which includes a plurality of second pins arranged with aligning along the front edge of the substrate (FIG 3., 202 and 205 pin pairs) [and being apart from the first pin group toward the back edge], at least two pairs of the plurality of second pins being used for differential data signal in the second mode (see FIG. 4, pins 10-13), [and the number of the second pins being more than the number of the first pins].
However, Nakamura does not specifically disclose limitations in square brackets above. On the other hand, Wang discloses a memory card where second pins are apart from the first pin group toward the back edge (Wang, FIG. 1, pins 124). It would have been obvious to one of ordinary skill in the art to adopt Wang’s arrangement of differential data pins in a second row in the memory card of Nakamura to provide more surface areas for higher speed data pins. Simple substitution of one known element (four small contact pins) for another (larger contact pins) to obtain predictable result is obvious under KSR v. Teleflex. Applying a known technique (increase contact surface area) to a known device ready for improvement to yield predictable results is also obvious under KSR.
Nakamura and Wang teach all of the limitations of claim 20 as discuss above, with the exception of the number of the second pins being more than the number of the first pins. However, only four of the second pins are associated with functionalities of the memory card of claim 20. Adding pins that do not provide any functionality is within the capability one or ordinary skill in the art.
26. With respect to claim 27, Nakamura discloses the memory card according to claim 20, wherein the part of the plurality of first pins used both in the first mode and the second mode is one pair of first pins used for data transfer in the first mode (FIG. 4, pins 7-8).
27. With respect to claim 28, Nakamura discloses the memory card according to claim 27, wherein the one pair of first pins is used for differential clock in the second mode (see FIG. 4).
28. With respect to claim 32, Nakamura discloses the memory card according to claim 20, wherein the second pin group is arranged in approximately same direction as the first pin group at a position that is near a central position between the front edge and the back edge and that is near the central position of the substrate (see Wang, FIG. 4).
29. With respect to 34, Nakamura discloses the memory card according to claim 20, wherein an area of the second pins arranged is smaller than an area of the first pins arranged (area occupied by pins 3-4 and 6-13 is smaller than the area occupied by pins 1-9). Nakamura provides evidence of having second pins smaller that the first pin.
30. With respect to claim 38, Oshima discloses the memory card according to claim 20, wherein the memory has a first memory and a second memory, each includes a NAND-type flash memory (the examiner takes official notice that NAND-type flash memory is well known in the art).
Conclusion
31. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Woo H Choi whose telephone number is (571) 272-4179. The examiner can normally be reached on weekdays between 9:00 am to 5:00 pm.
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.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Woo H. Choi/
Primary Examiner, Art Unit 3992
Conferees:
/Cameron Saadat/Primary Examiner, Art Unit 3992
/ALEXANDER J KOSOWSKI/Supervisory Patent Examiner, Art Unit 3992
Prosecution Insights