Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
DETAILED ACTION
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.
This is a Final Action responsive to communications: Applicant’s Response filed on 08/21/2026. Applicant’s Response includes a new Terminal Disclaimer, a new Consent of Assignee, a new Reissue Declaration, and Remarks. Applicant’s Response has been entered and made of record.
Claims 39-59 are currently pending in the application. Claims 39 and 50 are independent claims.
The objection to the application under 37 CFR 1.172(a) (see: Non-Final Action, pp. 4-5) has been withdrawn as necessitated by the new Consent of Assignee.
The rejection of representative independent claims 39 and 50 on the ground of nonstatutory double patenting (see: Non-Final Action, pp. 6-8) has been withdrawn as necessitated by the new Terminal Disclaimer.
The new Terminal Disclaimer filed on 08/21/2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of U.S. Patent No. RE50,400 has been reviewed and is accepted. The new Terminal Disclaimer has been recorded.
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 Patent No. 10,205,981 B2 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).
Should Applicant wish to ensure that all of the references which were cited in the original patent are considered and cited in the reissue application, an information disclosure statement (IDS) in compliance with 37 CFR 1.97 and 1.98 should be filed in the reissue application (see: MPEP § 1406). Per Applicant’s request (see: Remarks, p. 4), the Examiner acknowledges that they have considered information which has been considered by the Office in a parent application as required by MPEP § 609.02(II)(A)(2).
Claim Objections
Claims 39-59 remain objected to because of the following informalities:
The prior Amendment to the Claims, filed on 05/04/2026, proposes amendments that do not comply with 37 CFR 1.173, which sets forth the manner of making amendments in reissue applications. Specifically, claims 39-59 do not comply with 1.173(d)(2) which requires “matter to be added by reissue must be underlined” and 1.173(g) which requires “All amendments must be made relative to the patent specification, including the claims, and drawings, which are in effect as of the date of filing of the reissue application.” Claims 39-59 are new claims relative to the Amidei ‘981 patent and as such should be completely underlined.
For example, note:
MPEP 1453(II)(B) - “For each new claim added to the reissue by the amendment being submitted (the current amendment), the entire text of the added claim must be presented completely underlined”;
MPEP 1453(IV) - “all underlining and bracketing in the reissue application should be made relative to the text of the patent…All amendments subsequent to the first amendment must also be made relative to the patent specification in effect as of the date of the filing of the reissue application, and not relative to the prior amendment”; and
MPEP 1453(V)(D) - “An amendment of a ‘new claim’ (i.e., a claim not found in the patent, that was previously presented in the reissue application) must be done by presenting the amended ‘new claim’ containing the amendatory material, and completely underlining the claim, including the claim number…Although 37 CFR 1.173(b)(2) does not require using the status identifier ‘new’, its use is recommended so that examiners can easily identify the presentation of new claim(s). The presentation cannot contain any bracketing or other indication of what was in the previous version of the claim. This is because all changes in the reissue are made vis-à-vis the original patent, and not in comparison to the prior amendment.” (underline emphasis added)
Appropriate correction is still required.
Claim Rejections - 35 USC § 251
The new Reissue Declaration filed with this application is defective (see 37 CFR 1.175 and MPEP § 1414) because of the following:
For an application filed on or after September 16, 2012 that seeks to enlarge the scope of the claims of the patent, the Reissue Declaration must properly identify an error in a claim that the application seeks to broaden. In specifically identifying the error, it is sufficient that the Reissue Declaration identify the claim being broadened and identify a single word, phrase, or expression in an original claim, and how it renders the original patent wholly or partly inoperative or invalid.
In the instant case, the new Reissue Declaration is defective at least because it does not “identify a claim that the application seeks to broaden” (e.g., see: 37 CFR 1.175(b)). And while Applicant’s Remarks reflect a clear intent to broaden (see: Remarks, p. 3: “At least claims 1 and 13 of the Amidei ‘981 patent are too limiting and broadening is desired”), the new Reissue Declaration is lacking a corresponding specific statement and is thus considered defective. It is also unclear how the amendments alluded to on page 3 of the Remarks specifically broaden the claim scope of original independent claims 1 and/or 13 of the Amidei ‘981 patent. Further explanation is necessary and would also be appreciated.
Appropriate correction is required.
Claims 39-59 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 Reissue Declaration is set forth in the discussion above in this Office action.
Allowable Subject Matter
Claims 39-59 would be allowable if the rejection under 35 U.S.C. 251 set forth in this Final Action is overcome. Additionally, the claim objections must also be resolved.
Conclusion
THIS ACTION IS MADE FINAL. 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 Adam L Basehoar whose telephone number is (571)272-4121. The examiner can normally be reached 8:00AM - 4:30PM.
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 at 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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/ADAM L BASEHOAR/Primary Examiner, Art Unit 3992
Conferees:
/JOSHUA D CAMPBELL/Primary Examiner, Art Unit 3992 /ALEXANDER J KOSOWSKI/Supervisory Patent Examiner, Art Unit 3992
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