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 .
Bauman Type Continuation
The instant application was identified, on filing, as a continuation of Application No. 19/205,365, which is/was an application for reissue of Patent No. 12,257,598. See the Application Data Sheet (ADS) filed on 7 June 2025 as part of the original filing of the instant application and the first paragraph of the specification filed 7 June 2025. The mere fact that an application purports to be a continuation of a parent reissue application does not make it a reissue application itself because it is possible to file a 35 USC 111(a) continuing application of a reissue application. See In re Bauman, 683 F.2d 405, 409, 214 USPQ 585, 589 (CCPA 1982) (a patentee may file a regular continuation of a reissue application that obtains the benefit of the reissue application's filing date). Accordingly, in order for a continuation of a parent reissue application to be treated as a reissue application itself, there must be an identification, on filing, that the application is a "continuation reissue application" as opposed to a Bauman type continuing application. Indicia that a continuation application is being filed are:
a) A 37 CFR 1.175 reissue oath/declaration, which is not merely a copy of the parent's reissue oath/declaration.
b) A specification and/or claims in proper double column reissue format per 37 CFR 1.173.
c) Amendments in proper format per 37 CFR 1.175.
d) A 37 CFR 3.73 statement of assignee ownership and consent by assignee.
e) A correct transmittal letter (preferably Form PTO/AIA /50) identifying the application as a reissue filing under 35 U.S.C. § 251.
f) An identification of the application as being "a reissue continuation of Application No. [the parent reissue application]", or "an application for reissue of Patent No. [the original patent sought to be reissued] and a continuation of Application No. [the parent reissue application]", or equivalent language that identifies the application as both a continuation and a reissue application.1
See MPEP 1451.
The instant application was not filed with any of the above-listed indicia of a continuation reissue application. Rather, the ADS and the first paragraph of the specification filed as part of the original application papers both identify the instant application as a continuation of reissue Application No. 19/205,365. Thus, the instant application was not identified, on filing, as both a continuation and a reissue application. Accordingly, the instant application:
Was processed as a 35 USC 111(a) continuing application of a reissue application. See the Filing Receipt mailed on 20 June 2025.
Will be examined as a Bauman type continuing application, i.e., a 35 USC 111(a) continuing application of a reissue application. Again see MPEP 1451.
As established by In re Bauman, a Bauman type continuing application:
Receives the benefit of the actual filing date of the parent reissue application.
b) Does not receive the benefit of the filing date of the patent sought to be reissued by the parent reissue application because the co-pendency requirement of 35 USC 120 is not met.
Therefore, the pre-grant publication of the patent sought to be reissued by the parent reissue application is available as prior art under pre-AIA 35 USC 102(b) or AIA 35 USC 102(a)(1) with respect to the Bauman type continuing application if the parent reissue application was filed more than one year after the publishing date.
Accordingly, the effective filing date of the instant Bauman type continuing application is 12 May 2025, i.e., the actual filing date of the parent reissue Application No. 19/205,365. Since the parent reissue application was filed more than one year after the publication date of US 2023/0182163, the publication qualifies as prior art under pre-AIA 35 USC 102(b) or AIA 35 USC 102(a)(1) with respect to the instant Bauman type continuing application.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-20 is/are rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by US 2023/0182163 to Li et al. (hereinafter Li).
The disclosure of Li is identical to that filed with the original application papers and thus, clearly anticipates all claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELIZABETH L MCKANE whose telephone number is (571)272-1275. The examiner can normally be reached Mon-Thu 6:30a-4:30p EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Patricia Engle can be reached at 571-272-6660. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ELIZABETH L MCKANE/Specialist, Art Unit 3991
Conferee:
/LEE E SANDERSON/Reexamination Specialist, Art Unit 3991
/Patricia L Engle/SPRS, Art Unit 3991
1 In contrast, a Bauman type continuing application is identified as "a continuation of reissue Application No. [the parent reissue application], or "a continuation of reissue Application No. [the parent reissue application], which is an application for reissue of Patent No. [the original patent sought to be reissued by the parent reissue application]".
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