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 .
Reissue Applications
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.
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which Patent No. 11,677,226 is or was involved. These proceedings would include any trial before the Patent Trial and Appeal Board, interferences, reissues, reexaminations, supplemental examinations, 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 material to patentability of the claims under consideration in this reissue application.
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.
Maintenance Fee
Applicant is reminded during the prosecution of the instant reissue patent application, maintenance fees must be kept up to date for the Patent No. 11,677,226 (“the ‘226 patent”). A review of the maintenance fee status for the ‘226 patent shows the 3.5 year fee opens June 13, 2026, the surcharge starts December 15, 2026, and the last day to pay is June 14, 2027.
Defective 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 advanced below, removing the limitation, “hinge point”, which is stated is the error in the error statement causes new independent claim 19 to not meet the Original Patent standard, and thus cannot be the error for the reissue application.
Claim Rejections – 35 USC § 251: Defective Reissue Declaration
Claims 1-19 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.
Claim Rejections – 35 USC § 251: Original Patent
The following is a quotation of the first paragraph of 35 U.S.C. 251:
(a) IN GENERAL.—Whenever any patent is, through error, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.
MPEP 1412.01 states that the reissue claims must be for the same invention as that disclosed as being the invention of the original patent. MPEP 1412.01 further provides guidelines for determining whether the reissue claims are "for the invention disclosed in the original patent" as:
(A) the claims presented in the reissue application are described in the original patent specification and enabled by the original patent specification such that 35 U.S.C. 112, first paragraph is satisfied; and
(B) nothing in the original patent specification indicates an intent not to claim the subject matter of the claims presented in the reissue application.
The presence of some disclosure (description and enablement) in the original patent should evidence that applicant intended to claim or that applicant considered the material now claimed to be his or her invention.
Further, the Federal Circuit addressed the “original patent” requirement of 35 USC 251 in Antares Pharma, Inc. v. Medac Pharma Inc. and Medac GMBH, 771 F.3d 1354, 112 USPQ2d 1865 (Fed. Cir. 2014). In Antares the reissue claims covered embodiments of injection devices (not restricted to jet-injection devices) which the Applicant admitted was a different invention from what was originally claimed. Id. at 1356. The Federal Circuit adopted the Supreme Court's explanation of the “same invention” requirement as “if the original patent specification fully describes the claimed inventions, but not if the broader claims ‘are [] merely suggested or indicated in the original specification’ ”. Id. at 1359. The Federal Circuit further stated that although wording in 35 USC 251 was changed from “same invention” to “original patent” no change in substance was intended. Id. at 1360.
Based on Antares a review of the specification is necessary to determine whether the original specification adequately discloses the invention of the reissue claims. Like in Antares, there is no disclosure in the specification or showings in the drawings of an access port with a cover assembly connected to a base assembly without a hinge point. All of the embodiments in the drawing show the cover assembly and base assembly connected by a hinge. As such removing the hinge point would open the patent to infringers with a cover assembly and base assembly connected by threads, snap fit, bayonet, etc. without a hinge that would not have been infringers when the patent was issued. As the original patent did not have disclosure of such embodiments opening the reissue patent up to new infringers is not allowed. As such, claim 19 does not meet the original patent requirement.
Therefore, claim 19, which is directed to an access port with a cover assembly and base assembly connected without a hinge point does not satisfy the “original patent” requirement.
Claim 19 is rejected under 35 USC 251 for not claiming subject matter directed to the invention disclosed in the original patent.
Response to Arguments
With respect to Applicant’s arguments starting on page 8, line 4 to page 8, line 8, Applicant argues a new reissue declaration overcomes the declaration objections and rejections. While the new declaration does overcome the previous objections and rejections, the amendments, particularly the addition of claim 19 present new issues leading to the new objection and rejection.
With respect to Applicant’s arguments starting on page 8, line 9 to page 8, line 20, Applicant argues the amendments to the claims overcome the 35 USC § 112 rejections. Applicant’s arguments are persuasive and the rejections are withdrawn.
With respect to Applicant’s arguments starting on page 9, line 1 to page 12, line 2, Applicant argues Mortun fails to teach a faceplate disposed within the interior opening of claim 1 and securing the faceplate within the interior opening of claim 13. Applicant’s arguments are persuasive and the 35 USC § 102 rejections are withdrawn.
With respect to Applicant’s arguments starting on page 12, line 3 to page 13, line 10, Applicant argues Shlank and Ehrlich in combination with Mortun does not overcome the deficiencies of Mortun. Applicant’s arguments are persuasive and the 35 USC § 103 rejections are withdrawn.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 WILLIAM E DONDERO whose telephone number is (571)272-5590. The examiner can normally be reached Monday-Friday 6 am - 4 pm ET, Alternate Fridays.
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, EILEEN D LILLIS can be reached at 571-272-6928. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WILLIAM E DONDERO/Reexamination Specialist, Art Unit 3993
CONFEREES:
/Laura Davison/Reexamination Specialist, Art Unit 3993
/EILEEN D LILLIS/SPRS, Art Unit 3993
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