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. 12,150,430 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 U.S. Patent No. 12,150,430 (“the ‘430 patent”). A review of the maintenance fee status for the ‘430 patent shows the 3.5 year fee opens November 26, 2027, the surcharge starts May 27, 2028, and the last day to pay is November 27, 2028.
Information Disclosure Statement (IDS)
It is noted that Applicant did not appear to file an Information Disclosure Statement (IDS). As such any references printed on the front of U.S. Patent No. 12,150,430 (“the ‘430 patent”) that are not cited on the attached PTO-892 will not be printed on any publication of the instant application unless an IDS is submitted.
Amendments
The claim amendments of July 8, 2025 do not comply with 37 CFR 1.173(b)-(g). 37 CFR 1.173(d)(1) “The matter to be omitted by reissue must be enclosed in brackets”. 37 CFR 1.173(d)(2) states “The matter to be added by reissue must be underlined”. The Applicant is also reminded that 37 CFR 1.173(g) states that all amendments must be made relative to the patent.
Some of the deletions in claims 1, 3, 4, 6, 8, 10, 12, 13, 16, and 17 are shown with double brackets instead of single brackets.
In Claim 4, the phrase, “in a side surface…the arcuate”, is all in a single bracket to be deleted, but the word, “display” within this phrase is in its only single bracket. This extra single bracket should be removed or further explained.
Consent of Assignee and Reissue Declaration Signature
While the title, Deputy General Manager, is not a recognized title for someone with apparent authority to sign on behalf of an assignee, even in a foreign filed application (see MPEP 324(V) or 325(V)), it is noted the same person who signed the consent of assignee and reissue declaration also signed the power of attorney, which states, “The undersigned (whose title is supplied below) is authorized to act on behalf of the applicant (e.g. where the applicant is a juristic entity)”. As such, the person who signed the consent of assignee and reissue declaration is seen to have apparent authority to sign on behalf of the assignee.
Reissue Declaration
The reissue oath/declaration filed with this application is defective because it fails to identify at least one error which is relied upon to support the reissue application. See 37 CFR 1.175 and MPEP § 1414.
MPEP 1414 (II) (B), in part states,
“For an application filed on or after September 16, 2012 that seeks to enlarge the scope of the claims of the patent, the reissue oath or declaration must also identify a claim that the application seeks to broaden in the identification of the error that is relied upon to support the reissue application. A general statement, e.g., that all claims are broadened, is not sufficient to satisfy this requirement. In specifically identifying the error as required by 37 CFR 1.175(a), it is sufficient that the reissue oath/declaration identify the claim being broadened and a single word, phrase, or expression in the specification or in an original claim, and how it renders the original patent wholly or partly inoperative or invalid. The corresponding corrective action which has been taken to correct the original patent need not be identified in the oath/declaration. If the initial reissue oath/declaration "states at least one error" in the original patent, and, in addition, recites the specific corrective action taken in the reissue application, the oath/declaration would be considered acceptable, even though the corrective action statement is not required.” (emphasis added).
The current error statement is merely a general statement; does not identify a claim being broadened; does not identify a single word, phrase, or expression in the specification or in an original claim; and does not state how the word, phrase, or expression renders the original patent wholly or partly inoperative or invalid. As such it fails to identify a proper error to support the reissue application.
Claim Rejections – 35 USC § 251: Improper Reissue Declaration
Claims 1-18 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: Recapture
Claims 17-18 are rejected under 35 U.S.C. 251 as being an impermissible recapture of broadened claimed subject matter surrendered in the application for the patent upon which the present reissue is based. In re McDonald, 43 F.4th 1340, 1345, 2022 USPQ2d 745 (Fed. Cir. 2022); Greenliant Systems, Inc. et al v. Xicor LLC, 692 F.3d 1261, 103 USPQ2d 1951 (Fed. Cir. 2012); In re Youman, 679 F.3d 1335, 102 USPQ2d 1862 (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). The reissue application contains claim(s) that are broader than the issued patent claims. The record of the application for the patent family 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.
MPEP 1412.02 establishes a three-step test for recapture. The three-step process is as follows:
(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.
Instant Reissue Claims 1-18 are broader than patented claims 1-18. Instant Reissue Claim 1 does not require a lens, a groove, and the lens being disposed in the groove and adhered to a bottom surface of the groove by using a waterproof adhesive. Instant Reissue Claim 17 does not require the first connector is located beside the battery.
Therefore step 1 of the three-step test is met for claims 1-18.
The step of determining whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution includes two sub-steps. The first sub-step is to determine whether the applicant surrendered any subject matter in the prosecution of the original application. MPEP 1412.02 defines surrendered subject matter as a claim limitation that was originally relied upon by applicant in the original prosecution to make the claims allowable over the art.
MPEP 1412.02(I)(B)(1)(A) states “[w]ith respect to whether applicant surrendered any subject matter, it is to be 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 for the patent to be reissued, regardless of whether the Office adopted the argument in allowing the claims. Greenliant Systems, Inc. v. Xicor LLC, 692 F.3d 1261, 1271, 103 USPQ2d 1951, 1958 (Fed. Cir. 2012). As pointed out by the court, ‘[i]t does not matter whether the examiner or the Board adopted a certain argument for allowance; the sole question is whether the argument was made.’ Id.”
During the prosecution of the ‘430 patent, the Examiner rejected claims 1, 11, 15, 16, 19, and 20 as unpatentable over Van Curen et al. (US-20180249680, “Van Curen”) in view of Satoh et al. (US-6523996, “Satoh”) and Schrick (US-7707974, “Schrick”), rejected claim 2 as unpatentable over Van Curen in view of Satoh and Schrick in further view of Lee et al. (US-20200225528, “Lee”), rejected claim 10 as unpatentable over Van Curen in view of Satoh and Schrick and further in view of Rich et al. (US-20110232585, “Rich”), and objected to claims 12, 13, 17, and 18 as dependent upon a rejected claim but would be allowable if rewritten in independent form in a non-final rejection mailed on March 27, 2024. The Applicant responded with arguments and amendments. The Applicant added the limitations of claims 11-12 into claim 1, rewrote claim 17 in independent form, added new claims 21-22, and argued Van Curen, Satoh, and Schrick fail to teach an outer top surface of a main body defining a groove of new claim 21 in a response filed June 26, 2024. The Examiner rejected claim 21 as unpatentable over Van Curen, Satoh, and Schrick, rejected claim 22 as unpatentable over Van Curen, Satoh, and Schrick in further view of Van Curen et al. (US-20180368365, “Van Curen ‘365”), and indicated claims 1-10 and 13-20 as allowable in a final rejection mailed July 18, 2024. The Applicant responded with arguments and amendments. The Applicant cancelled claims 21-22 in a response filed September 23, 2024.
Therefore, the Patent Owner amended claim 1 to add the limitations of claims 11-12 and amended claim 17 to be independent and argued that the prior art did not include the limitations of claims 11, 12, and 17. Therefore, the newly presented claims must include the limitations of claims 11-12 and 17 and the argued limitation.
Claims 1-16 still discloses the limitations of claims 11-12, and thus does not have recapture.
Claims 17-18 fail to disclose all of the limitations added to the claims to make them allowable.
Therefore, the limitations of claims 11-12 and 17 are limitations which are considered surrendered subject matter.
The second sub-step is to determine whether any of the broadening of the reissue claims is in the area of the surrendered subject matter. The examiner must analyze all of the broadening aspects of the reissue claims to determine if any of the omitted/broadened limitation(s) are directed to limitations relied upon by applicant in the original application to make the claims allowable over the art.
Claim 17 is being broadened to omit the surrendered subject matter. Claim 17 includes some of the details of the surrendered subject matter and eliminate some of the details of the surrendered subject matter.
Therefore step 2 of the three-part test is met.
MPEP 1412.02(I)(B)(1)(B) states “[w]ith respect to the “second step” in the recapture analysis, it is to be noted that if the reissue claim(s), are broadened with respect to the previously surrendered subject matter, then recapture will be present regardless of other unrelated narrowing limitations. In the decision of In re Mostafazadeh, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011), the Federal Circuit stated:
[T]he recapture rule is violated when a limitation added during prosecution is eliminated entirely, even if other narrowing limitations are added to the claim. If the added limitation is modified but not eliminated, the claims must be materially narrowed relative to the surrendered subject matter such that the surrendered subject matter is not entirely or substantially recaptured. Id. at 1361.”
The third step in the recapture analysis is to 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. The third step includes two different types of analysis that must be performed.
First, the reissue claim must be compared to any claims canceled or amended during prosecution of the original application. It is impermissible recapture for a reissue claim to be as broad as, or broader in scope than any claim that was canceled or amended in the original prosecution to define over the art. Claim scope that was canceled or amended is deemed surrendered and therefore barred from reissue. Clement, 131 F.3d at 1470, 45 USPQ2d at 1165.
Claim 17 deletes the details of the first connector being located beside the battery.
Second, it must be determined whether the reissue claim omits or broadens any limitation that was added or argued during the original prosecution to overcome an art rejection. Such an omission in a reissue claim, even if it is accompanied by 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. In any broadening reissue application, the examiner will determine, on a claim-by-claim basis, whether the broadening in the reissue application claim(s) relates to subject matter that was surrendered during the examination of the patent for which reissue is requested) by an amendment narrowing claim scope in order to overcome a rejection and/or argument relying on a claim limitation in order to overcome a rejection.
During the prosecution of the ‘430 patent, Applicant rewrote claim 17 in independent form to overcome the prior art, the limitation, “the first connector is located beside the battery” was part of dependent claim 17 and thus a limitation that overcame the prior art, as such removing part of the limitation is considered recapture.
Claims 17-18 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.
Claims 1-16 are NOT 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.
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, removing the lens, groove, and the lens being in the groove with a waterproof adhesive does not satisfy the “original patent requirement”. As clearly explained in the background and summary of the invention, the intention of the invention to provide better resistance from rain and other water from getting into the main body of the bark control device by forming a groove in the housing for the lens to set into and waterproof glue to be applied to the bottom of the lens in the groove to prevent any potential water leakage. Removing this limitations from claim 1 leaves a device that is nowhere disclosed or shown in the four corners of the patent. Without a lens the display would not be viewable. Without a groove and waterproof glue there would be no protection for water getting inside the housing of the device. As such, the original patent does not show support for a bark control device without a lens, groove in which the lens sits, and waterproof glue securing the lens in the groove.
Therefore, claims 1-16, which are directed to bark control device without a lens, groove, and the lens secured in the groove with waterproof adhesive do not satisfy the “original patent” requirement.
Claims 1-16 are rejected under 35 USC 251 for not claiming subject matter directed to the invention disclosed in the original patent.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Van Curen et al. (US-20180249680) is the closest prior art showing a bark control device with a shock device 122 connected to a circuit board 111 and a display module 150.
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