REISSUE PROCEDURAL REMINDERS
Disclosure of other proceedings. 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 Patent Under Reissue is or was involved. These proceedings would include interferences, reissues, reexaminations, and litigation.
Disclosure of material information. 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 disclosure 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.
Manner of making amendments. Applicant is reminded that changes to the Instant Application must comply with 37 C.F.R. § 1.173, such that all amendments are made in respect to the Patent Under Reissue as opposed to any prior changes entered in the Instant Application. All added material must be underlined, and all omitted material must be enclosed in brackets, in accordance with Rule 173. Applicant may submit an appendix to any response in which claims are marked up to show changes with respect to a previous set of claims, however, such claims should be clearly denoted as “not for entry.”
Priority date
The patent application No. 14/097,339 has been filed December 5th, 2013, therefore since it is filed after March 16, 2013, it is being examined under the first inventor to file provisions of the AIA .
ADS
The Application Data Sheet filed on January 17, 2025 has been considered and entered into the record.
Oath/Declaration
The reissue oath/declaration filed on August 26th, 2025 is defective because it fails to identify at least one error which is relied upon to support the reissue application. See 37 CFR 1.175 and MPEP § 1414. Furthermore, the MPEP 1444 states:
(C) It is not sufficient for an oath/declaration to merely state “this application is being filed to correct errors in the patent which may be noted from the changes made in the disclosure.” Rather, the oath/declaration must specifically identify an error. In addition, it is not sufficient to merely reproduce the claims with brackets and underlining and state that such will identify the error. See In re Constant, 827 F.2d 728, 729, 3 USPQ2d 1479 (Fed. Cir.), cert. denied, 484 U.S. 894 (1987). Any error in the claims must be identified by reference to the specific claim(s) and the specific claim language wherein lies the error.
(D) For continuation or divisional reissue applications:
(1) Where a continuation reissue application is filed with a copy of the reissue oath/declaration from the parent reissue application, and the parent reissue application is not to be abandoned, the reissue oath/declaration should be accepted by the Office of Patent Application Processing (OPAP) without further evaluation, because it is an oath/declaration, albeit improper under 35 U.S.C. 251. The examiner should, however, reject the claims of the continuation reissue application under 35 U.S.C. 251 as being based on an oath/declaration that does not identify an error being corrected by the continuation reissue application, and should require a new oath/declaration that identifies a new error or a statement explaining compliance with 37 CFR 1.175(f)(2) if appropriate. If the same error corrected in the parent is also being corrected in the continuation reissue application, but the error is being corrected in a different way, a statement is needed to explain compliance with 37 CFR 1.175(f)(2) for a reissue application filed on or after September 16, 2012. For these applications, a petition under 37 CFR 1.183 is not needed. For a reissue application filed before September 16, 2012, a petition under 37 CFR 1.183 will be needed to waive pre-AIA 37 CFR 1.175(e) in order to rely on the same error identified in the parent but being corrected in a different way. See 37 CFR 1.175(f)(2) for reissue applications filed on or after September 16, 2012, and pre-AIA 37 CFR 1.175(e) for reissue applications filed before September 16, 2012. One of form paragraphs 14.01.01, 14.01.02, or 14.01.03 may be used.
In this instance, the Applicant filed Oath/Declaration which does not recite the identical error as the one present in the parent reissue applications, however as indicated below, very similar claim has already been filed in the previous reissue applications (see ODP rejections below). Accordingly, the error being corrected and relied upon in this reissue application as indicated in the 8/26/2025 Oath/Dec “New independent claim 15 seeks to obtain protection for the rotating hinge assembly of FIGS, 2 and 3 which were not claimed in issued claims 1-14” appears to be already corrected in the RE50,562 patent.
Additionally, the Examiner would like to note that it appears that language of claim 15, is directed to the overlooked aspects of the invention. More specifically, claim 15 discloses hinge assembly for lighting unit.
Claim 15 is rejected as being based upon a defective reissue oath/declaration under 35 U.S.C. 251 as set forth above. See 37 CFR 1.175.
The nature of the defect(s) in the oath/declaration is set forth in the discussion above in this Office action.
Claim Interpretation
During examination, claims are given the broadest reasonable interpretation consistent with the specification and limitations in the specification are not read into the claims. See MPEP § 2111 et seq.
Upon review of the original specification and prosecution history, the examiner has found no instances where applicants have included lexicographic definitions, either express or implied. Therefore, for the purposes of claim interpretation, the examiner concludes that there are no claim terms for which Applicants are acting as their own lexicographer. See MPEP § 2111.01.IV.
Additionally, upon review of the pending claims, the examiner finds no instances where the claim terms explicitly include functional language which would invoke 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on January 16, 2026 has been acknowledged. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Drawings
The amended drawings submitted by the Applicant on 01/17/2025 have been reviewed and appear to comply with the requirements set forth in 37 CFR §1.84. Additionally, the drawings do not introduce new subject matter. Therefore, the drawings have been accepted.
Double Patenting
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 § 2146 et seq. 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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claim 15 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 15 of U.S. Patent No. RE50,562. Although the claims at issue are not identical, they are not patentably distinct from each other because they are both are directed to a similar mounting bracket comprising the same elements.
Current ‘333 Application
Reissue Patent No. RE50,562
Claim 15: A light-emitting diode (LED) illumination device, comprising: a mounting bracket for attaching the illumination device to a surface; a swing arm extending from the mounting bracket, a first end of the swing arm engaging the mounting bracket and an opposite second end of the swing arm having an opening for receiving a power cable to power the illumination device; an end cap coupled to the second end of the swing arm adjacent to the opening of the swing arm, the end cap and the swing arm cooperating to define a rotational axis, wherein the rotational axis is shared by an axis defined by a route of the power cable, and wherein the end cap has a plurality of teeth arranged radially at distance from the rotational axis; and a hinge element extending from the swing arm between the first and second ends, wherein the hinge element engages the teeth of the end cap to provide a resistance to secure the illumination device in a rotational position with respect to the mounting bracket around the rotational axis.
Claim 15: A light-emitting diode (LED) illumination device, comprising: a mounting bracket for attaching the illumination device to a surface; a swing arm extending from the mounting bracket, a first end of the swing arm engaging the mounting bracket and an opposite second end of the swing arm having an opening for receiving a power cable to power the illumination device; an end cap rotatably coupled to the second end of the swing arm adjacent to the opening of the swing arm, the end cap and the swing arm cooperating to define a rotational axis, wherein the rotational axis is shared by an axis defined by a route of the power cable, and wherein the end cap has a plurality of teeth disposed a radial distance from the rotational axis and arranged in a semi-circle; and a hinge element extending from an intermediate location on the swing arm in a position between the first and second ends, a portion of the hinge element engaging the teeth to provide a resistance to secure the illumination device in a rotational position with respect to the mounting bracket around the rotational axis.
Allowable Subject Matter
Claim 15 would be allowed, contingent upon overcoming rejection and objection recited above.
The following is a statement of reasons for the indication of allowable subject matter: the prior art of record does not anticipate nor render obvious the illumination device comprising a attachment mechanism comprising mounting bracket, a swing arm, an end cap having plurality of teeth arranged radially at distance from the rotational axis, a hinge element, all arranged in manner as disclosed in claim 15.
Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANGELA M LIE whose telephone number is (571)272-8445. The examiner can normally be reached on M-F, 7:30 am - 3:30 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Hetul Patel can be reached on 571-272-4184.
All correspondence relating to this reissue proceeding should be directed:
Patent Center
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By Mail to: Mail Stop Reissue
Central Reexamination Unit
Commissioner for Patents
United States Patent & Trademark Office
P.O. Box 1450
Alexandria, VA 22313-1450
By FAX to: (571) 273-9900
Central Reexamination Unit
By hand: Customer Service Window
Knox Bulding
501 Dulany Street
Alexandria, VA 22314
/ANGELA M LIE/Primary Examiner, Art Unit 3992
Conferees:
/LUKE S WASSUM/Primary Examiner, Art Unit 3992
/H.B.P/
Hetul PatelSupervisory Patent Examiner, Art Unit 3992
Prosecution Insights