DETAILED ACTION
This action is responsive to the Applicant’s amendment filed on April 14, 2026. As set forth in the Applicant’s response, claims 1-15 are canceled and claims 16-18 are newly added.
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Reissue Applications
For reissue applications filed before September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the law and rules in effect on September 15, 2012. Where specifically designated, these are “pre-AIA ” provisions.
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.
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. 8,867,753 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.
In accordance with MPEP 1405, 35 U.S.C. 251 prescribes the effect of reissue on the patent term by stating that "the Director shall… reissue the patent… for the unexpired term of the original patent." The Examiner notes that the maximum term of the original patent is fixed at the time the patent is granted, subject to any adjustments to the number of days of extension or adjustment. See MPEP § 2720 and § 2734. While the term may be subsequently shortened, it cannot be extended through the filing of a reissue.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on October 7, 2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Response to Arguments
Reissue Declaration
The Examiner notes that the previous non-final office action set forth two issues for finding that the reissue declaration was defective.
As to the first issue, due to the filing of multiple copending reissue applications with the same pending original claim numbers of the original patent, the Examiner found that the reissue declaration to be defective since the reissuance of claim 1 in the instant proceeding would be superseded by the reissue of original claim 1 in another reissue application.
In view of the submitted amendment, the Examiner finds that this issue has been resolved and thus the rejection to the claims for this first issue will be withdrawn.
As to the second issue, The Examiner found that the stated error already recited the entirety of the claim in the form of dependent claim 10 and that dependent claim 10 of the ‘753 patent was the same as the claim of the reissue claim. That is, all of the limitations of dependent claim 10 are recited in at least independent claim 1 (currently reissue claim 1) of the reissue claims.
The Applicant states that new claim 16 (previously presented as claim 1) recites the newly presented feature of “wherein the apparatus for unmixing is implemented using a hardware apparatus, or using a computer, or using a combination of a hardware apparatus and a computer” and that this feature was not recited in any of the claims of the ‘753 patent, such that proposed new claim 16 corrects an error in claim 1 of the ‘753 patent.
The Examiner does not find this argument persuasive since the Applicant did not submit a corrected reissue declaration which set forth this new error in the original claims. That is, the originally submitted reissue declaration was not directed to the currently stated error (in the Applicant’s response) that is currently being relied upon. Thus, a new reissue declaration which is directed to the new reason for the error in the original claims, would be required to correct this issue since the original reissue declaration was determined to be defective.
In addition, the Examiner notes that the Applicant also stated that proposed new claims 17 and 18 (previously presented as claims 14 and 15) are corrected to include the features of claim 10 of the ‘753 patent and that claims 14 and 15 of the ‘753 patent do not have any dependent claims, such that proposed new claims 17 and 18 correct errors in claims 14 and 15 of the ‘753 patent by including the features of claim 10 of the ‘753 patent.
The Examiner acknowledges the Applicant’s position, however, the Examiner finds that the error of original claims 14 and 15 (current claims 17 and 18) were not set forth in the original Reissue Declaration and therefore, this argument is not persuasive. It is noted that the Reissue Declaration of March 20, 2025 only references original claim 1.
The Examiner notes that since the originally stated error is maintained to be defective, the Applicant must submit a corrected reissue declaration.
Therefore, for the reasons set forth above, the Examiner finds that Applicant’s arguments are not persuasive and thus the rejection to the claims under this issue will be maintained.
112 6th paragraph and 112 2nd paragraph
The Applicant maintains that “upmixer” and “parameter interpolator” 1) do not use “means for” or 2) connote or describe in general a structure which is understood in the relevant prior art and defined in dictionaries as having a well-known meaning in the electrical arts connotative of structure (i.e. the structure of an upmixer to apply parameters to upmix an audio signal and a parameter interpolator to interpolate magnitude and phase values, both of which are included in an apparatus for upmixing a downmix audio signal into an upmixed audio signal) and 3) the terms “upmixer” and “parameter interpolator” are names for structure drawn from functions they perform.
The Applicant further notes that claim 16 is amended to recite “wherein the apparatus for upmixing is implemented using a hardware apparatus, or using a computer, or using a combination of a hardware apparatus and a computer”. Reference was made to col. 15, line 15 to col. 16, line 29 of the ‘756 patent.
The Examiner notes that as set forth in the citation provided by the Applicant, the following is disclosed:
“…embodiments of the invention can be implemented in hardware or in software...” (col. 15, lines 46-47)
“.. embodiments of the present invention can be implemented as a computer program product with a program code, the program code being operative for performing one of the methods when the computer program product runs on a computer.” (col. 15, lines 59-63)
“A further embodiment comprises a processing means, for example a computer, or a programmable logic device, configured to or adapted to perform one of the methods described herein.” (col. 16, lines 2-22)
The Examiner notes that the apparatus for upmixing is disclosed as “apparatus 100” (see col. 6, lines 24-57). See also Figure 1 which shows the apparatus 100 comprises both an upmixer 130 and a parameters interpolator 140.
In view of the amendment to Claim 16 which states that ‘the apparatus for unmixing’ is implemented using “a hardware apparatus” or “a computer” or “combination of a hardware apparatus and a computer” as in combination with the citation provided by the Applicant, the Examiner finds that the Applicant has shown that the apparatus includes structure as: “a hardware apparatus, or using a computer, or using a combination of a hardware apparatus and a computer”.
Thus, the claimed apparatus is modified by sufficient structure for performing the claim functions. Therefore, in view of the amendment and the Applicant’s comments, the 112 2nd paragraph rejection will be withdrawn.
Double Patenting and Terminal Disclaimer
The terminal disclaimer filed on April 14, 2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of 19/028,602, 19/028,163, 19/028,644, 19/029,024, 19/028,144, 19/029,584, 19/02 has been reviewed and is accepted. The terminal disclaimer has been recorded.
The Examiner finds that in view of the submitted Terminal Disclaimer, the Applicant has overcome the Double Patenting rejections and therefore, the Double Patent Rejections are withdrawn.
Reissue Declaration
The reissue oath/declaration filed with this application 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.
The reissue oath/declaration filed with this application is defective (see 37 CFR 1.175 and MPEP § 1414) because of the following:
The Examiner notes that the stated error states “In error, claim 1 does not recite “wherein the upmixer is configured to apply the temporarily variable upmixing parameters to combine one or more downmix audio signals with one or more de-correlated versions of the one or more downmix audio signals.” The Examiner finds that US Patent 8,867,753 already recited the entirety of amended claim 16 (previous claim 1) in the form of dependent claim 10. Dependent claim 10 of the ‘753 patent is substantially the same as claim 16 of the reissue claim1. Therefore, the stated error is not being corrected.
Claims 16-18 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.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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 at telephone number (571)272-7537. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Ovidio Escalante/
Primary Examiner
Central Reexamination Unit - Art Unit 3992
(571) 272-7537
Conferee:
/MATTHEW E HENEGHAN/Primary Examiner, Art Unit 3992 /M.F/Supervisory Patent Examiner, Art Unit 3992
1 The Examiner notes that the Applicant has further amended claim 16 to recite “wherein the apparatus for upmixing is implemented using a hardware apparatus, or using a computer, or using a combination of a hardware apparatus and a computer”. Thus, it is acknowledged that the claim sets are no longer ‘identical’, however, the stated error, in the previous reissue declaration was already part of the original patent claims.
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