DETAILED ACTION
Claims 28-47 are currently pending in the application. Claims 1-28 are original claims to patent US 11,711,177 to Goktepe et al. (herein Goktepe ‘177) and claims 29-47 are newly added claims.
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. 11,711,177 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.
Oath/Declaration Objections
The reissue oath/declaration filed 08/25/2025 for this application is defective (see 37 CFR 1.175 and MPEP § 1414) and objected to because it fails: (1) to identify the broadened claims (37 CFR 1.175(b)); and (2) to be signed by all the inventors when the claim scope is enlarged (37 CFR 1.175(c)). First, no broadened claim is specifically identified (for example, a correction might entail a simple statement that claim 29 is broadened). Second, a declaration by the assignee broadening the claim language is possible under certain circumstances, however the filed declaration does not indicate the original patent was filed under 37 CFR 1.46 (review of the record indicates it is appropriate to check this box, and thus overcome the objection to lack of inventor signatures).
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.
Claim Rejections – 35 USC § 251
Claims 29-47 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 (see Oath/Declaration Objections): (1) to identify the broadened claims (37 CFR 1.175(b)); and (2) to be signed by all the inventors when the claim scope is enlarged (37 CFR 1.175(c)).
Claims 29-47 are rejected under 35 U.S.C. 251 as being improperly broadened in a reissue application made and sworn to by the assignee. The application for reissue may be made and sworn to by the assignee of the entire interest only if the application does not seek to enlarge the scope of the claims of the original patent or, for reissue applications filed on or after September 16, 2012, the application for the original patent was filed by the assignee of the entire interest under 37 CFR 1.46.
Claim Rejections – 35 USC § 251 – Recapture
Claims 29-47 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. See In re McDonald, 43 F.4th 1340, 1345, 2022 USPQ2d 745 (Fed. Cir. 2022); Greenliant Systems, Inc. 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 Mostafazadeh, 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); In re Wadlinger, 496 F.2d 1200, 181 USPQ 826 (CCPA 1974); In re Richman, 409 F.2d 269, 276, 161 USPQ 359, 363-364 (CCPA 1969); In re Willingham, 282 F.2d 353, 127 USPQ 211 (CCPA 1960). The question as to whether a reissue patent violates the rule against recapture of subject matter surrendered during original prosecution is a question of law. Mostafazadeh, 643 F.3d at 1358, 98 USPQ2d at 1642. See MPEP 1412.02.
Claims directed toward separate inventions/embodiments/species that were disclosed but never covered by the original prosecution claims may be to overlooked aspects. Claims to overlooked aspects are not subject to recapture because the claims are, by definition, unrelated to subject matter that was surrendered during the prosecution of the original application (see MPEP 1412.01 II. and MPEP 1402.02).
The following is the three step test for determining recapture in reissue applications (see: MPEP 1412.02 II.):
“(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.”
A broadening aspect is present in the reissue which was not present in the application for patent. The record of the application for the patent 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.
Step 1 – “Is There Broadening?” (MPEP 1412.02 II.A):
Yes, the instant reissue application of patent 11,711,177 (Goktepe ‘177), by way of the preliminary amendment of 07/23/2025, does have broadening:
Patent Owner seeks to broaden independent claim 28 by deleting/omitting the limitations:
“A receiver
“
“
“” (emphasis shown for context)
“
“when the control message and the redundant control message are in the common control region of the radio signal, the certain location is indicated by an offset in time and/or frequency and/or spatial domain relative to the detected control message in the common control region, or relative to a border of the common control region, and” (entirely omitted)
“when the control message is in the first control region of the radio signal and the redundant control message is in the second control region of the radio signal, the certain location is indicated by an offset in time and/or frequency and/or spatial domain relative to a border of the second control region” (entirely omitted)
Patent Owner seeks to broaden independent claim 47 in a similar manner as stated for claim 1 (see patented claim 23).
Step 2 – “Does Any Broadening Aspect of the Reissue Claim Relate to Surrendered Subject Matter?” (MPEP 1412.02 II.B):
Yes, the broadening relates to surrendered subject matter. Subject matter is previously surrendered during the prosecution of the original application by amendment to define over the art, OR reliance on an argument/statement made by applicant that a limitation of the claim(s) defines over the art. It is noted that a patent owner (reissue applicant) is bound by the amendment and/or 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. The record of the prior proceedings from which this reissue application claims priority indicate:
During the prosecution of application 16/992,944 that would result in patent 11,711,177 (Goktepe ‘177):
The amendment of 02/14/2023 added, (1) “when the control message and the redundant control message are in the common control region of the radio signal, the certain location is indicated by an offset in time and/or frequency and/or spatial domain relative to the detected control message in the common control region, or relative to a border of the common control region”, and (2) “when the control message is in the first control region of the radio signal and the redundant control message is in the second control region of the radio signal, the certain location is indicated by an offset in time and/or frequency and/or spatial domain relative to a border of the second control region” (the last two claim limitations), to independent claim 1 in order to overcome the cited prior art 2013/0294547 to Lane et al. Similar language was added to the other independent claims.
The accompanying remarks of 02/14/2023 (see pages 19-20) argued the independent claims are now allowable for being amended to include the limitations of at least claim 6 (previously indicated as allowable by the Office Action of 10/14/2022). The above added limitations correspond to the limitations of claim 6.
The other amendments to claim 1 of 02/14/2023 appear to be primarily directed toward addressing the 35 USC 101 and 35 USC 112 rejections (by adding structural elements) and/or antecedent language necessary for adding the two limitations described at 2.1.a.
Therefore, (1) “when the control message and the redundant control message are in the common control region of the radio signal, the certain location is indicated by an offset in time and/or frequency and/or spatial domain relative to the detected control message in the common control region, or relative to a border of the common control region”, and (2) “when the control message is in the first control region of the radio signal and the redundant control message is in the second control region of the radio signal, the certain location is indicated by an offset in time and/or frequency and/or spatial domain relative to a border of the second control region”, are surrendered subject matter; and at least some of the broadening of the reissue claims (see Step 1) is in the area of the surrendered subject matter.
Step 3 – “Are the Reissue Claims Materially Narrowed in Other Respects, and Hence Avoid the Recapture Rule?” (MPEP 1412.02 II.C):
No, the reissue claims are not materially narrowed in other respects related to the surrendered subject matter. It is noted that if surrendered subject matter has been entirely eliminated from a claim present in the reissue application, then a recapture rejection under 35 U.S.C. 251 is proper and must be made for that claim. Stated another way, if a claim limitation present in the original patent that was added to overcome a rejection or that was argued by applicant to distinguish over the prior art is entirely eliminated from a claim in the reissue application, then a recapture rejection under 35 U.S.C. 251 is proper and must be made for that claim. In the decision of In re Mostafazadeh, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011), the Federal Circuit stated that to avoid the recapture rule "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, 98 USPQ2d at 1644.
Therefore, improper recapture of broadened claimed subject matter surrendered in the application is clearly present in the instant reissue application.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter: the cited prior art of record does not teach or fairly suggest the limitations of independent claims 29 and 47 (if the other outstanding issues noted above are addressed). For example, the cited prior art does not show the combined limitations of claim 29: wherein in case the control message and the redundant control message are in a common control region of the radio signal, the other location indicates an offset in time and/or frequency and/or spatial domain relative to the detected control message in the common control region, or relative to a border of the common control region, and in case the control message is in a first control region of the radio signal and the redundant control message is in a second control region of the radio signal, the other location indicates an offset in time and/or frequency and/or spatial domain relative to a border of the second control region.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
Withdrawn Objections and Rejections
The following objections/rejections from the Office Action of 02/09/2026 are withdrawn in view of the Patent Owner Response of 07/29/2026: (1) objection of claims 28-47 over changes relative to the patent and preserving the claim numbering (overcome by the current amendment’s correct usage of claim numbers); (2) objection of the specification (overcome by the current amendment); (3) objection/rejection of the declaration for failure to identify at least one error (overcome by the newly submitted Declaration); (4) rejection of claims 28-46 under 35 U.S.C. 112(b) with regard to the “wherein the receiver is configured to …” claim elements of claim 28, now claim 29, (the presented arguments are persuasive, the claim is reasonably using functional language to describe the apparatus/receiver); (5) rejection of claims 32, 39-42, and 44-46 are rejected under 35 U.S.C. 112(b) with regard to various issues of form (overcome by the current amendment); (6) rejection of claims 28-46 under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter (it is persuasive that the claim is to an apparatus/receiver); and (7) rejections to claims 28-32, 34-40, 42-44, and 46-47 under 35 U.S.C. 102/103 (overcome by the current amendment).
Response to Arguments
Patent Owner's arguments filed 07/29/2026 (herein Remarks) have been fully considered but they are not persuasive with regard to: (1) the broadening rejections are moot in view of the amendments; (2) the 35 USC 251 recapture rejections are moot in view of the amendment.
This is a broadening reissue application and as such the objections/rejections are maintained as indicated above: (1) failure of the declaration to identify at least one broadened claim; (2) failure of the declaration to be signed by all the inventors; and (3) improper broadening reissue application by assignee. “A claim of a reissue application enlarges the scope of the claims of the patent if it is broader in at least one respect, even though it may be narrower in other respects” (MPEP 1412.03 I.). The scope of claim 29 is broader than the scope of original claim 1 (e.g. several limitations are removed, including antennas, signal processors, the certain location being a second part of the common control region of the radio signal or a second control region of the radio signal, etc.). It may be that the declaration can be corrected by either all inventors signing or checking the box regarding 37 CFR 1.46 (though identifying at least one broadened claim will still be necessary). Note, a correction with regard to improperly recaptured surrendered claim subject matter does not necessarily mean the claim language is not still broadening. Therefore, the presented arguments are not persuasive.
The language added to the independent claims 29 and 47 does not contain the same language or meaning as the language added during prosecution. In particular, both limitations added state in part, “… the other location indicates an offset in time and/or frequency …”. The original language stated in part, “… the certain location is indicated by an offset in time and/or frequency …”. The current version reads as the location giving/providing information (i.e., the location indicates or provides some value). The original version reads as a descriptor of the location (i.e., the location is found at a location or described by some characteristic). This view of the original version is supported by the argument made at the time of the original amendment during prosecution (see Amendment of 02/14/2023, p. 18, first paragraph, describing the location itself). As such, the amendment does not overcome the Recapture rejection. Therefore, the presented arguments are not persuasive.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Correspondence Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM H WOOD whose telephone number is (571)272-3736. The examiner can normally be reached Monday-Friday 7am-3pm.
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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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/William H. Wood/
Reexamination Specialist, Art Unit 3992
Conferees:
/RACHNA S DESAI/Reexamination Specialist, Art Unit 3992 /ALEXANDER J KOSOWSKI/Supervisory Patent Examiner, Art Unit 3992
Prosecution Insights