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 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.
This is a Non-Final Action.
The current application filed April 2, 2025 is a reissue application of 17/359,236 (U.S. Patent No. 11,621,525 issued April 4, 2023, hereinafter “the ‘525 patent”).
Claims 1-26 were initially pending in the application. Claim 27-42 were added in a preliminary amendment filed April 2, 2025. Claims 1-42 are pending.
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. 11,621,525 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.
Claim Rejections - 35 USC § 251
Claims 27-42 are rejected under 35 U.S.C. 251 as being an improper recapture of broadened claimed subject matter surrendered in the application for the patent upon which the present reissue is based. See Greenliant Systems, Inc. et al v. Xicor LLC, 692 F.3d 1261, 103 USPQ2d 1951 (Fed. Cir. 2012); In re Shahram Mostafazadeh and Joseph O. Smith, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011); North American Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 75 USPQ2d 1545 (Fed. Cir. 2005); Pannu v. Storz Instruments Inc., 258 F.3d 1366, 59 USPQ2d 1597 (Fed. Cir. 2001); Hester Industries, Inc. v. Stein, Inc., 142 F.3d 1472, 46 USPQ2d 1641 (Fed. Cir. 1998); In re Clement, 131 F.3d 1464, 45 USPQ2d 1161 (Fed. Cir. 1997); Ball Corp. v. United States, 729 F.2d 1429, 1436, 221 USPQ 289, 295 (Fed. Cir. 1984). A broadening aspect is present in the reissue which was not present in the application for patent. The record of the application for the patent shows that the broadening aspect (in the reissue) relates to claimed subject matter that applicant previously surrendered during the prosecution of the application. Accordingly, the narrow scope of the claims in the patent was not an error within the meaning of 35 U.S.C. 251, and the broader scope of claim subject matter surrendered in the application for the patent cannot be recaptured by the filing of the present reissue application.
It is noted that the following is the three step test for determining recapture in reissue applications (see: MPEP 1412.02(II)):
“(1) first, we determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims;
(2) next, we determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and
(3) finally, we determine whether the reissue claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule.”
(Step 1: MPEP 1412.02(II)(A)) In the instant case and by way of the preliminary amendment, Applicant seeks to broaden independent claim 1 and/or independent claim 21 with the addition of claims 27 and 41 in this reissue at least by deleting/omitting the patent claim language requiring that the apparatus includes (using claim 1 as example, similar limitations found in claim 21) “a high-speed signal area and a low-speed signal area; wherein a plurality of first distances exist between the plurality of ground pins and the plurality of signal pins; the high-speed signal area comprising the plurality of ground terminals and the plurality of the signal terminals, a plurality of second distances existing between the plurality of ground assembling pins and the plurality of signal assembling pins in the high-speed signal area, and the second distance is between the two adjacent ground assembling pins, or between the two adjacent signal assembling pins, or between the adjacent ground assembling pin and the signal assembling pin in the high-speed signal area; the low-speed signal area comprising a plurality of the signal terminals, a plurality of third distances existing between the plurality of two adjacent signal assembling pins in the low-speed signal area, and the third distance is between the two adjacent signal assembling pins in the low-speed signal area; the third distance is greater than the second distance and is equal to the first distance; wherein in the high-speed signal area, a width of the ground terminal body of each of the ground terminals in the first direction is wider than a width of the signal terminal body of each of the signal terminals in the first direction since the another end of the ground terminal body comprises the plurality of ground assembling pins at intervals, and the plurality of second distances between the plurality of ground assembling pins and the plurality of signal assembling pins in the high-speed signal area are all the same.”.
(Step 2: MPEP 1412.02(II)(B)) The record of the prior 17/359,236 application prosecution indicates that an amendment was filed along with Applicant Arguments/Remarks filed on December 28, 2022. Applicant made the following amendments (using claim 1 for reference) to overcome the rejection in view of the prior art:
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Additionally, Applicant explicitly argued in an attempt to overcome the applied prior art references:
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(pages 14, 15, and 22, Applicant’s Arguments/Remarks
filed December 22, 2022 in application 17/359,236)
Thus, at least the following limitations found in patent claim 1 that correspond to the arguments and amendments made during prosecution which state “a high-speed signal area and a low-speed signal area; wherein a plurality of first distances exist between the plurality of ground pins and the plurality of signal pins; the high-speed signal area comprising the plurality of ground terminals and the plurality of the signal terminals, a plurality of second distances existing between the plurality of ground assembling pins and the plurality of signal assembling pins in the high-speed signal area, and the second distance is between the two adjacent ground assembling pins, or between the two adjacent signal assembling pins, or between the adjacent ground assembling pin and the signal assembling pin in the high-speed signal area; the low-speed signal area comprising a plurality of the signal terminals, a plurality of third distances existing between the plurality of two adjacent signal assembling pins in the low-speed signal area, and the third distance is between the two adjacent signal assembling pins in the low-speed signal area; the third distance is greater than the second distance and is equal to the first distance; wherein in the high-speed signal area, a width of the ground terminal body of each of the ground terminals in the first direction is wider than a width of the signal terminal body of each of the signal terminals in the first direction since the another end of the ground terminal body comprises the plurality of ground assembling pins at intervals, and the plurality of second distances between the plurality of ground assembling pins and the plurality of signal assembling pins in the high-speed signal area are all the same.” are considered to be a surrender-generating limitations.
Subject matter is previously surrendered during the prosecution of the original application by reliance on an argument/statement made by applicant that a limitation of the claim(s) defines over the art. Additionally, Reissue recapture applies to related family member applications (See MBO Laboratories, Inc. v. Becton, Dickinson & Co., 474 F.3d 1323, 94 USPQ2d 1598 at 1606 (Fed. Cir. Apr. 12, 2010) (a more limited recapture rule would undercut “the rule against recapture’s public-reliance rationale” and a patent family’s entire prosecution history should be reviewed “when applying both the rule against recapture and prosecution history estoppel.”)). It is noted that a patent owner (reissue applicant) is bound by the argument that applicant relied upon to overcome an art rejection in the original application and the patent family's prosecution for the patent to be reissued, regardless of whether the Office adopted the argument in allowing the claims. Therefore, in the instant case the omission of the surrender-generating limitations requiring that the terminal assembly include “a high-speed signal area and a low-speed signal area; wherein a plurality of first distances exist between the plurality of ground pins and the plurality of signal pins; the high-speed signal area comprising the plurality of ground terminals and the plurality of the signal terminals, a plurality of second distances existing between the plurality of ground assembling pins and the plurality of signal assembling pins in the high-speed signal area, and the second distance is between the two adjacent ground assembling pins, or between the two adjacent signal assembling pins, or between the adjacent ground assembling pin and the signal assembling pin in the high-speed signal area; the low-speed signal area comprising a plurality of the signal terminals, a plurality of third distances existing between the plurality of two adjacent signal assembling pins in the low-speed signal area, and the third distance is between the two adjacent signal assembling pins in the low-speed signal area; the third distance is greater than the second distance and is equal to the first distance; wherein in the high-speed signal area, a width of the ground terminal body of each of the ground terminals in the first direction is wider than a width of the signal terminal body of each of the signal terminals in the first direction since the another end of the ground terminal body comprises the plurality of ground assembling pins at intervals, and the plurality of second distances between the plurality of ground assembling pins and the plurality of signal assembling pins in the high-speed signal area are all the same.” equates to attempting to recapture surrendered subject matter and thus by omission some of the broadening of the reissue claims, as noted above, are clearly in the area of the surrendered subject matter.
(Step 3: MPEP 1412.02(II)(C)) It must be determined whether the reissue claim omits or broadens any limitation that was added/argued during the original prosecution to overcome an art rejection. Such an omission in a reissue claim, even if it includes other limitations making the reissue claim narrower than the patent claim in other aspects, is impermissible recapture. Pannu , 258 F.3d at 1371-72, 59 USPQ2d at 1600. Simply stated, claims 27-42 omit the language requiring “a high-speed signal area and a low-speed signal area; wherein a plurality of first distances exist between the plurality of ground pins and the plurality of signal pins; the high-speed signal area comprising the plurality of ground terminals and the plurality of the signal terminals, a plurality of second distances existing between the plurality of ground assembling pins and the plurality of signal assembling pins in the high-speed signal area, and the second distance is between the two adjacent ground assembling pins, or between the two adjacent signal assembling pins, or between the adjacent ground assembling pin and the signal assembling pin in the high-speed signal area; the low-speed signal area comprising a plurality of the signal terminals, a plurality of third distances existing between the plurality of two adjacent signal assembling pins in the low-speed signal area, and the third distance is between the two adjacent signal assembling pins in the low-speed signal area; the third distance is greater than the second distance and is equal to the first distance; wherein in the high-speed signal area, a width of the ground terminal body of each of the ground terminals in the first direction is wider than a width of the signal terminal body of each of the signal terminals in the first direction since the another end of the ground terminal body comprises the plurality of ground assembling pins at intervals, and the plurality of second distances between the plurality of ground assembling pins and the plurality of signal assembling pins in the high-speed signal area are all the same.” and thus would amount to impermissible recapture due to the omission of surrender-generating limitations. Additionally, reissue claims 27-42 are not materially narrowed in other respects that relate to the surrendered subject matter to avoid said impermissible recapture.
Therefore, impermissible recapture of broadened claimed subject matter surrendered in the application is clearly present in the instant reissue application.
Reissue Declaration
The reissue oath/declaration filed with this application is defective because the error which is relied upon to support the reissue application is not an error upon which a reissue can be based (see 37 CFR 1.175 and MPEP § 1414). As explained above in reference to the rejection in view of impermissible recapture, the error on which the reissue is based on according to the declaration is not an error upon which reissue can be based because it amounts to impermissible recapture.
Claims 1-42 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
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSHUA D CAMPBELL whose telephone number is (571)272-4133. The examiner can normally be reached 7:30-4:00 M-F.
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/JOSHUA D CAMPBELL/Primary Examiner, Art Unit 3992
Conferees:
/ADAM L BASEHOAR/Primary Examiner, Art Unit 3992
/ALEXANDER J KOSOWSKI/Supervisory Patent Examiner, Art Unit 3992
Prosecution Insights