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 .
NONFINAL OFFICE ACTION
This Office Action addresses U.S. Patent Application No. 19/187,976, entitled “USB REPEATER DEVICE AND OPERATION METHOD THEREOF”, filed April 23, 2025, and claims priority from Provisional Application No. 63/673,173, filed July 19, 2024, and from TW 114106020, filed February 19, 2025.
Claims 1-19 are pending.
REQUIREMENT FOR INFORMATION UNDER 37 CFR 1.105
37 CFR 1.105(a)(1) states:
In the course of examining or treating a matter in a pending or abandoned application … the examiner or other Office employee may require the submission, from individuals identified under § 1.56(c), or any assignee, of such information as may be reasonably necessary to properly examine or treat the matter.
37 CFR 1.63(c) states:
A person may not execute an oath or declaration for an application unless that person has reviewed and understands the contents of the application, including the claims, and is aware of the duty to disclose to the Office all information known to the person to be material to patentability as defined in § 1.56.
(1) On April 23, 2025, the inventors acknowledged, under oath, a declaration under 37 C.F.R. § 1.63, indicating awareness of the duty to disclose to the Patent and Trademark Office all information known to be material to patentability of the subject matter claimed in this application, as “materiality” is defined in Title 37, Code of Federal Regulations, § 1.56.
(2) On April 23, 2025, U.S. Patent Application No. 19/187,976 was filed with claims directed to a “USB repeater” device and operating method.
(3) On July 21, 2026 a search of the prior art revealed published patent applications by the assignee relating to the use of USB repeater(s). Some examples are:
U.S. Patent Application No. 20220138135
U.S. Patent Application No. 20220171732
U.S. Patent Application No. 20220269630
Applicants have not satisfied the sworn duty to disclose all information known to be material to patentability of the subject matter claimed in this application.
Related applications or publications by the applicant (inventor(s) and/or assignee) suggest that applicant likely has access to information necessary to a more complete understanding of the invention and its context than has been disclosed. The record suggests that the details of such information may be relevant to the issue of patentability, and thus shows the need for information. See MPEP 704.11.
Applicant is required under 37 CFR 1.105 to provide the following information that the examiner has determined is reasonably necessary to the examination of this application.
The information is required to enter in the record the art suggested by the applicant as relevant to this examination, narrowed to the scope of technologies that utilize USB repeaters.
(1) In response to this requirement, please provide copies of each publication which any of the inventors authored or co-authored and which describe the disclosed subject matter, narrowed to the scope of technologies that utilize USB repeaters.
(2) In response to this requirement, please provide the title, citation and copy of each publication that is a source used for the description of the prior art in the disclosure, narrowed to technologies that utilize USB repeaters. For each publication, please provide a concise explanation of that publication’s contribution to the description of the prior art.
(3) In response to this requirement, please provide the title, citation and copy of each publication that any of the inventors relied upon to develop and/or draft the disclosed subject matter that describes the invention, particularly as to technologies that utilize USB repeaters. For each publication, please provide a concise explanation of the reliance placed on that publication in the development of the disclosed subject matter.
(4) In response to this requirement, please state the specific improvements of the subject matter in claims 1-19 over the disclosed prior art and indicate the specific elements in the claimed subject matter that provide those improvements.
The timing fee and certification requirements of 37 CFR 1.97 are waived for those documents submitted in reply to the requirement. This waiver extends only to those documents within the scope of this requirement under 37 CFR 1.105 that are included in the applicant’s first complete communication responding to this requirement. Any supplemental replies subsequent to the first communication responding to this requirement and any information disclosures beyond the scope of this requirement under 37 CFR 1.105 are subject to the fee and certification requirements of 37 CFR 1.97 where appropriate.
The applicant is reminded that the reply to this requirement must be made with candor and good faith under 37 CFR 1.56. Where the applicant does not have or cannot readily obtain an item of required information, a statement that the item is unknown or cannot be readily obtained may be accepted as a complete reply to the requirement for that item.
This requirement is an attachment of the following Office action. A complete reply to the Office action must include a complete reply to this requirement. The time period for reply to this requirement coincides with the time period for reply to the enclosed Office action. A reply, or a failure to reply, to a requirement for information under 37 CFR 1.105(a)(1) will be governed by §§ 1.135 and 1.136.
INFORMATION DISCLOSURE STATEMENT
Regarding the information disclosure statement (IDS) filed August 27, 2025, the non-patent literature document Cite No. 1 has been crossed out, as “Office Action of Taiwan Counterpart Application” does not properly identify the document to which it is referring.
DRAWING OBJECTIONS
Figures 3-5 of the drawings are objected to under 37 CFR 1.83(a) because they include the language “waiting transaction-start mode” and “waiting transaction-finish mode” objected to with regard to the specification.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
SPECIFICATION
The disclosure is objected to because of the following informalities:
(1) The title of the invention is not descriptive of the claimed invention. For example, each of the claims require a USB with two ports, each with a repeater, wherein an operation mode is determined for a standby state for power savings.
A new title is required that is clearly indicative of the invention to which the claims are directed.
(2) In the abstract of the disclosure, the language “waiting transaction-start mode” and “waiting transaction-finish mode” is an error in English idiom.
For example, “waiting transaction-start mode” should be either “waiting for transaction-start mode” or “awaiting transaction-start mode”.
(3) In the specification, the language “waiting transaction-start mode” and “waiting transaction-finish mode” should be corrected throughout.
(4) In the specification, ¶ [0015] the language “(including the scope of the application”), both occurrences, is unclear.
CLAIM INTERPRETATION
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
An application may include one or more claim limitations that use the words “means for” and also limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) use(s) a generic placeholder.
Three Prong Analysis
There is no claim element that satisfies Prong (B) of the Three Prong Analysis.
(B) Regarding Prong (B), the MPEP states:
the term "means" or "step" or the generic placeholder is modified by
functional language, typically, but not always linked by the transition word "for" (e.g., "means for") or another linking word or phrase, such as "configured to" or "so that"...
Consequently, the present claims do not invoke 35 U.S.C. § 112, 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph.
PRIOR ART
The disposition of the claims and any rejections based on prior art (e.g., nonstatutory double patenting, 35 U.S.C. §102 or 35 U.S.C. §103) will be held in abeyance until applicant has fully complied with the requirement for information and the duty to disclose under 37 CFR 1.105.
CONCLUSION
Any inquiry concerning this communication or earlier communications from the examiner should be directed to B. James Peikari at telephone number (571)272-4185. The examiner can normally be reached M-F 8:30am - 5:30pm, EST.
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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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/B. James Peikari/
Primary Examiner, Art Unit 3992
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