DETAILED ACTION
This is a Non-Final Office Action responsive to the instant application filed 17 January 2025, which is a reissue of application 18/742,135 (US Patent 12,164,847 B1 to Farid et al., hereinafter “the ‘847 patent”, published 10 December 2024).
The instant application includes pending claims 1-3, 5-15, 17, 18, 21, 23-28, and 31-35.
Claims 1-3, 5-15, 17, 18, 21, 23-28, and 31-35 are rejected.
Notice of Pre-AIA or AIA Status
The present application, filed on or after 16 March 2013, is being examined under the first inventor to file provisions of the AIA .
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 US Patent 12,164,847 B1 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.
Applicant is notified that any subsequent amendment to the specification and/or claims must comply with 37 CFR 1.173(b).
Claim Objections
MPEP § 1453 and 37 CFR 1.173 set forth the manner of amending claims in a reissue application. As noted in MPEP § 1453(II), 37 CFR 1.173(b)(2) requires that for each claim that is being amended (by the current amendment), the entire text of the claim must be presented with markings as defined by 37 CFR 1.173(b)(2) and 37 CFR 1.173(d), namely that claims to be changed or added by the amendment are accompanied by a parenthetical expression indicating such (i.e., “amended”, “new”, etc.), and that matter to be omitted from the claim must be enclosed in brackets.
Applicant presented two claim sets in the instant application, the first filed 17 January 2025, and a preliminary amendment to the first filing dated 25 February 2025. Significant issues exist with respect to both claim sets. Initially, the 17 January 2025 claim set does not reflect the patent claims, nor does it include any markup in accordance with 37 CFR 1.173. The 25 February 2025 claim set acknowledges issues present in the 17 January 2025 claim set, but fails to cure such deficiencies. For example, the 25 February 2025 claim set does not present the original patent claims or changes to be made relative to such claims, and utilizes improper markup of such claims (see, for example, the strikethrough of claim 25). The amendments presented in the 25 February 2025 claim set are made with respect to the 17 January 2025 claim set, and not the original claims of the patent.
See further 37 CFR 1.173(g), stating that “[a]ll amendments must be made relative to the patent specification, including the claims, and drawings, which are in effect as of the date of the filing of the reissue application”, and MPEP § 1453(IV), stating that “all amendments in the reissue application must be made relative to…the patent specification in effect as of the date of the filing of the reissue application.”
Subsequently, the 25 February 2025 claim set is objected to.
35 USC § 251
MPEP 1414 and 35 USC 251 define the requirements of the content of a reissues oath/declaration. Per MPEP 1414:
Much of the required content of a reissue oath or declaration will differ based on the filing date of the reissue application. However, all reissue oaths or declarations must contain the following:
(A) A statement that the applicant believes the original patent to be wholly or partly inoperative or invalid—
(1) by reason of a defective specification or drawing, or
(2) by reason of the patentee claiming more or less than patentee had the right to claim in the patent; and
(B) A statement of at least one error which is relied upon to support the reissue application, i.e., as the basis for the reissue.
The instant reissue declaration filed 17 January 2025 states that the original patent is believed to be wholly or partially inoperative or invalid “by reason of other errors”, and the error upon the reissue is based is described as “Applicant did not cite references listed on the International Search Report of PCT/IL2024/050514 during prosecution of the original application”. The error described in the declaration is not a valid basis for reissue.
MPEP § 1402 details further common bases for filing a reissue application, including errors based on the scope of the claims, inventorship errors, errors related to priority/benefit claims, errors in the drawings, and errors in filing terminal disclaimers. The consideration of references cited in a related International Search Report is not alone sufficient to create a basis for reissue, as it does not rise to the level of such basis as outlined in 35 USC 251, MPEP § 1402, and MPEP § 1414.
Similarly, MPEP § 1455(VII) states that “[a] patent cannot be reissued solely for the purpose of adding citations of additional prior art.”
Subsequently, claims 1-3, 5-15, 17, 18, 21, 23-28, and 31-35 are rejected as being based upon a defective reissue declaration under 35 USC 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.
Per MPEP § 1402, “[i]f there is no error in the patent, the patent will not be reissued.” As Applicant has not presented a valid basis for reissue of US Patent 12,164,847, the instant application will not be further examined on the merits herein.
Information Disclosure Statement
The information disclosure statements (IDS) of 17 January 2025 are noted. The instant filings fail to provide a valid basis for reissue. Subsequently, a cursory review and consideration of such IDSs has been performed.
Conclusion
Claims 1-3, 5-15, 17, 18, 21, 23-28, and 31-35 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL R ROSWELL whose telephone number is (571) 272-4055. The examiner can normally be reached Monday-Friday 8:30-5:00.
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 J 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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/MICHAEL ROSWELL/Primary Examiner, Art Unit 3992
Conferees:
/ADAM L BASEHOAR/Primary Examiner, Art Unit 3992
/ALEXANDER J KOSOWSKI/Supervisory Patent Examiner, Art Unit 3992
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