Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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 15, 2025 is a continuation reissue application of reissue application 18/107,720 (U.S. Patent No. RE50,433 issued May 13, 2025), both of which are reissue applications of 13/395,092 (U.S. Patent No. 8,654,400 issued February 18, 2014, hereinafter “the ‘400 Patent”).
Claims 1-15 were initially pending in the application. Claims 16-46 were newly added and claims 1-15 were cancelled in a preliminary amendment filed April 15, 2025. This amendment has been entered.
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 U.S. Patent No. 8,654,400 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.
Specification
The amendment to the specification filed April 15, 2025 is objected to because said amendment improperly states that the ‘400 patent was “granted on February 15, 2015”. The ‘400 patent was granted on February 18, 2014. Additionally, the amendment does not provide the proper patent number for RE50,433, which is currently shown as blank in said amendment. The amendment to the specification has not been entered and a proper amendment is required.
Reissue Oath/Declaration
The reissue oath/declaration filed with this application is defective because it fails to properly identify at least one error being correct by the continuation reissue application. See 37 CFR 1.175 and MPEP § 1414(II)(D)(1). As stated in MPEP § 1414(II)(D)(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.”
Claims 16-46 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.
Consent of Assignee
This application is objected to under 37 CFR 1.172(a) as lacking the written consent of all assignees owning an undivided interest in the patent. The consent of the assignee must be in compliance with 37 CFR 1.172. See MPEP § 1410.01.
A proper assent of the assignee in compliance with 37 CFR 1.172 and 3.73 is required in reply to this Office action.
The consent of assignee filed appears to be a copy of the consent of assignee filed in the parent reissue proceeding. Applicant must file a new consent of assignee.
Claims 16-46 are rejected as being based upon a defective consent of assignee under 35 U.S.C. 251 as set forth above.
Claim Rejections - 35 USC § 251
Claims 16-46 are rejected under 35 U.S.C. 251 as being broadened in a reissue application filed outside the two year statutory period. Regarding claims 16-46, using claim 16 as example (similar changes exist in all of the independent claims), the claims have actively broadened the “deriving, by the computer system, from the multiple-bit pixel values 1-bit image data” (claim 1, emphasis added) by replacing said limitation with “deriving 1-bit image data from the multiple-bit image data, by the computer system, the 1-bit image data derived by applying an AM screening algorithm to at least some of the multiple-bit pixel values,”. The language “from the multiple-bit image data” is broader than the language “from the multiple-bit pixel values”. Additionally, the qualifier of application to “at least some of the multiple-bit pixel values” does not remedy this problem because “at least some of the multiple-bit pixel values” is broader than “the multiple-bit pixel values”, and thus said changes are not permitted. Finally, claims 26 and 40 both change language from original claim 13 from “1-bit image data that produces” to “1-bit image data is configure to produce” which is also clearly broader.
A claim is broader in scope than the original claims if it contains within its scope any conceivable product or process which would not have infringed the original patent. A claim is broadened if it is broader in any one respect even though it may be narrower in other respects. Proper correction is required.
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.
Claims 16-46 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 16-59 of U.S. Patent No. RE50,433 in view of Ninomiya et al. (U.S. Patent Application Publication No. 2006/0216630, hereinafter Ninomiya).
Although the claims at issue are not identical, they are not patentably distinct from each other because (using claim 16 of RE50,433 and claim 16 of the current application as example) at least the independent claims of the current application are not patentably distinct of the claims of the RE50,433 patent, thus most of the features of at least the independent claims of the current application can be fully rejected on the grounds of nonstatutory double patenting in view of the claims of the RE50,433 patent.
The only limitations that can not be fully rejected by the claims of the RE50,433 patent are the following:
deriving 1-bit image data from the multiple-bit image data, by the computer system, the 1-bit image data derived by applying an AM screening algorithm to at least some of the multiple-bit pixel values,
(using claim 16 as example, emphasis added, similar limitations in claim 26)
deriving 1-bit image data from the multiple-bit image data, by the computer system, the 1-bit image data derived by applying an FM screening algorithm to at least some of the multiple-bit pixel values,
(using claim 33 as example, emphasis added, similar limitations in claim 40)
Thus, the claims of the RE50,433 patent do not explicitly disclose deriving 1-bit image data from the multiple-bit image data, by the computer system, the 1-bit image data derived by applying either of an AM screening algorithm or a FM screening algorithm to at least some of the multiple-bit pixel values. However, Ninomiya discloses the notoriously well-known teachings of using either of an AM screening algorithm or a FM screening algorithm to process multivalued pixel data (multiple-bit) into a smaller number of displayable gradations per pixel (1-bit) (paragraphs [0015]-[0017] of Ninomiya). It would have been obvious to one of ordinary skill in the art at the time the invention was made to have combined the teaches of the claims of the RE50,433 patent with the teachings of Ninomiya because both AM screening and FM screening can improve graininess of the resulting image (paragraph [0017] of Ninomiya).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alexander 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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/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
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