DETAILED ACTION
This office action addresses claims 1 and 2 as set forth in the Applicant’s response filed on November 27, 2024.
Bauman Type Non-Provisional Application
The instant application was identified, on filing, as a continuation of Application No. 17/535,484, which is a reissue of US Patent Application No. 15/743,156 (US Patent No. 10,492,098). See the Application Data Sheet (ADS) and the first paragraph of the specification, which were filed on November 27, 2024 as part of the original filing of the instant application.
The mere fact that an application purports to be a continuation or divisional of a parent reissue application does not make it a reissue application itself because it is possible to file a 35 USC 111(a) continuing application of a reissue application. See In re Bauman, 683 F.2d 405, 409, 214 USPQ 585, 589 (CCPA 1982) (a patentee may file a regular continuation of a reissue application that obtains the benefit of the reissue application’s filing date). Accordingly, in order for a continuation or divisional of a parent reissue application to be treated as a reissue application itself, there must be an identification, on filing, that the application is a “continuation reissue application” or a “divisional reissue application”, as opposed to a Bauman type continuing application. Indicia that a continuation or divisional reissue application is being filed are:
A 37 CFR 1.175 reissue oath/declaration, which is not merely a copy of the parent’s reissue oath/declaration.
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A specification and/or claims in proper double column reissue format per 37 CFR 1.173.
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Amendments in proper format per 37 CFR 1.173.
A 37 CFR 3.73 statement of assignee ownership and consent by assignee
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A correct transmittal letter (preferably Form PTO/AIA /50) identifying the application as a reissue filing under 35 U.S.C. § 251.
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An identification of the application as being “a reissue continuation of Application No. [the parent reissue application]”, or “an application for reissue of Patent No. [the original patent sought to be reissued] and a continuation of Application No. [the parent reissue application]”, or equivalent language that identifies the application as both a continuation and a reissue application1. The same applies for a divisional reissue application, with the word “divisional” substituted for “continuation”.
See MPEP 1451.
The instant application was not filed with any of the above-listed indicia of a continuation reissue application. Rather, the ADS and the first paragraph of the specification filed as part of the original application papers both identify the instant application as a continuation of reissue Application No. 17/535,484, which was an application for reissue of Patent No. 10,492,098. Thus, the instant application was not identified, on filing, as both a continuation and a reissue application. In addition, the fees paid by the Applicant are based on Utility – Nonprovisional Application under 35 USC 111(a) as opposed to Utility – Reissue. Accordingly, the instant application:
Was processed as a 35 USC 111(a) continuing application of a reissue application. See the Filing Receipt mailed on December 10, 2024.
Will be examined as a Bauman type continuing application, i.e., a 35 USC 111(a) continuing application of a reissue application. Again see MPEP 1451.
As established by In re Bauman, a Bauman type continuing application:
Receives the benefit of the actual filing date of the parent reissue application.
Does not receive the benefit of the filing date of the patent sought to be reissued by the parent reissue application because the copendency requirement of 35 USC 120 is not met.
Accordingly, the effective filing date of the instant Bauman type continuing application is November 24, 2021, i.e., the actual filing date of reissue Application No. 17/535,484.
In a Bauman type continuing application, the patent sought to be reissued by the parent (or grandparent) reissue application is available as prior art under pre-AIA 35 USC 102(b) or AIA 35 USC 102(a)(1) with respect to the Bauman type continuing application if the parent (or grandparent) reissue application was filed more than one year after the grant date of the patent.
In this case, US Patent No. 10,492,098 (i.e., the patent sought to be reissued by the parent reissue application) qualifies as prior art under pre-AIA 35 USC 102(b) or AIA 35 USC 102(a)(1) with respect to the instant Bauman type continuing application because parent reissue Application No. 17/535,4/84 was filed more than one year after the grant date of Patent No. 10,492,098.
Option to Convert Bauman Type Application to Reissue Application
Should applicant desire that this application be treated as a continuation/divisional reissue application, as opposed to a Bauman type continuing application, applicant may file a petition under 37 CFR 1.182 to have this application treated as a continuation/divisional reissue application under 35 USC 251. Applicant should point out in the petition what, as of the filing date in the record, supports the filing as a reissue application under 35 USC 251. Further, applicant should ensure the application fulfills all of the requirements for a reissue application. See 35 USC 251 and 37 CFR 1.172, 1.173 and 1.175. With respect to the required fees, see 37 CFR 1.16(e), (n) and (r).
Information Disclosure Statement
The information disclosure statements (IDS) submitted on November 27, 2024, December 5, 2024, December 6, 2024 and April 10, 2025 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner. In addition, any document which is not dated in accordance with 37 CFR 1.98 has been crossed-out.
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 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) 1 and 2 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US Patent No. 10,492,098.
It is noted that the instant application and the Patent No. 10,492,098 share the same disclosure. As explained above, Patent No. 10,492,098 qualifies as prior art under AIA 35 USC 102(a)(1) with respect to the instant Bauman type non-provisional application.
Since both the instant specification and the specification of US Patent No. 10,492,098 have the same disclosure then each limitation set forth in claims 1 and 2 is disclosed in US Patent 10,492,098. See also col. 2, lines 31-col. 4, line 4 and col. 9, lines 48-65, col. 10, lines 19-46. Figures 2, 3 and 5-9 and its associated text.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ovidio Escalante whose telephone number is (571)272-7537. The examiner can normally be reached on Monday to Friday - 6:00 AM to 2:30 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Michael Fuelling can be reached on (571) 270-1367 The fax phone number for the organization where this application or proceeding is assigned is 571-273-9000. 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.
/Ovidio Escalante/
Primary Examiner
Central Reexamination Unit - Art Unit 3992
(571) 272-7537
Conferees:
/MATTHEW E HENEGHAN/Primary Examiner, Art Unit 3992 /MICHAEL FUELLING/Supervisory Patent Examiner, Art Unit 3992
1 In contrast, a Bauman type continuing application is identified as “a continuation of reissue Application No. [the parent reissue application], or “a continuation of reissue Application No. [the parent reissue application], which is an application for reissue of Patent No. [the original patent sought to be reissued by the parent reissue application]”. The same applies for a Bauman type divisional application, with the word “divisional” substituted for “continuation”.