DETAILED ACTION
This non-final action replies to application, filed August 12, 2025, that is a reissue application to reissue 11,856,122 with a co-filed amendment that amends the specification to provide notice this is a reissue application and amends claims 1-5, 13 and 14. Claims 1-17 are pending.
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 Application
The following is a quotation of the appropriate paragraphs of pre-AIA 35 U.S.C. §251 that form the basis for the rejections under this section made in this Office action:
(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.
Claims 1-17 are rejected as being based upon a defective reissue application declaration by the inventor 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. The co-filed reissue declaration is defective because the at least one error for at least one pending claim which is relied upon to support the reissue application regards an impermissible error as relating to surrendered subject matter. See 37 CFR 1.175 and MPEP § 1414. MPEP 1414 II.(B) states in part: “In identifying the error, it is sufficient that the reissue oath/declaration identify a single word, phrase, or expression in the specification or in an original patent claim, and how it renders the original patent wholly or partly inoperative or invalid.” The statement in the co-filed declaration fails to specifically identify an error that can be relied on for this reissue. See MPEP 1414 II. (C). Essentially, the declaration states, in-part: “The attorney did not appreciate the full scope of the protectable invention, thereby resulting in the applicant claiming more or less than they had a right to claim. In particular, the limitation in independent claim 1 reciting "the flexible circuit board is arranged between the fingerprint recognition assembly and the reinforcement component" is not an essential component of the fingerprint recognition apparatus in the electronic device. This reissue is a broadening reissue. The nature of the broadening is as follows: the limitation in independent claim 1 is unduly limiting and has been removed." This statement indicates this application broadens claim 1 to remove the limitation "the flexible circuit board is arranged between the fingerprint recognition assembly and the reinforcement component" as “unduly limiting”; however, in this case, this limitation regards surrendered subject matter during examination of 17/608160 that cannot be relied on as an error of this reissue since it is an impermissible error to rely on surrendered subject matter. See 37 CFR 1.175 and MPEP § 1414. See In re Tanaka, 640 F.3d 1246, 1251, 98 USPQ2d 1331, 1334 (Fed. Cir. 2011).
Claims 1-17 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 Greenliant Systems, Inc. et al v. Xicor LLC, 692 F.3d 1261, 103 USPQ2d 1951 (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). 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 (e.g. surrender-generating limitation). 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.
Below are the pertinent findings of fact relevant to this rejection:
11/02/2021
The 17/608160 application (hereafter the ‘033 application) was filed with 14 claims, after entry of a preliminary amendment.
04/11/2023
A first official non-final action on the merits was mailed rejecting the claims 17 and 32 as obvious CN10-6603761 in view of CN10-5206452 and objecting claims 18-31 as dependent upon rejected base claim with reasons for allowable subject matter indicating “the prior art of record fails to disclose alone or in combination a flexible circuit board, and a reinforcement component, wherein the flexible circuit board is arranged between the fingerprint recognition assembly and the reinforcement component; and, wherein in the first direction, a size of the reinforcement component is smaller than a size of the fingerprint recognition assembly, so that the fingerprint recognition assembly is assembled-able from the outside of the middle frame to the inside of the middle frame, in combination with all the limitations of independent claim 17”. Emphasis added herein.
06/20/2023
Applicant filed an amendment/reply amending claims 17, 19, 21-23, 30 and 33-35 and cancelling claims 18 and 20 and 36 where claims 1-16 were previously cancelled. On pages 2, and 8, applicant amends claim 17 “to
include allowable subject matter of now-canceled claim 18” that recites
“wherein the fingerprint recognition apparatus is in contact with the first function button, wherein the fingerprint recognition apparatus comprises an accommodating structure, a fingerprint recognition assembly, a flexible circuit board, and a reinforcement component, wherein the flexible circuit board is arranged between the fingerprint recognition assembly and the reinforcement component, and wherein in a first direction, a size of the reinforcement component is smaller than a size of the fingerprint recognition assembly, so that the fingerprint recognition assembly is assembled from the outside of the middle frame to the inside of the middle frame.” (Emphasis added herein).
06/03/2021
An allowability notice was mailed with reasons for allowance stating n -part: “CN106603762A and CN105206452A alone or in combination fail to teach, disclose or suggest wherein the fingerprint recognition apparatus comprises an accommodating structure, a fingerprint recognition assembly, a flexible circuit board, and a reinforcement component, wherein the flexible circuit board is arranged between the fingerprint recognition assembly and the reinforcement component, and wherein in a first direction, a size of the reinforcement component is smaller than a size of the fingerprint recognition assembly, so that the fingerprint recognition assembly is assembled from the outside of the middle frame to the inside of the middle frame, in combination with all the limitations in the claim.” (Emphasis added herein).
A reissue will not be granted to "recapture" claimed subject matter which was surrendered in an application to obtain the original patent. See MPEP §1412.20. A three step process is used to apply the recapture rule:
(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.” See MPEP §1412.02(I).
The first step of the three-step process we determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims. Upon review of the new independent claims 1 of the present reissue application in comparison to claim 1-13 of ‘122 Patent, the Examiner finds that the Applicant through the August 12, 2025 Amendment herein has broadened the claims by omitting a limitation (bolded text in ‘122 as compared to similar text is broadening herein as shown in table next.
Claim 1 herein
Claim 1 of ‘122
An electronic device, wherein the electronic device comprises:
An electronic device, wherein the electronic device comprises:
a middle frame, wherein the middle frame is provided with a first function button fixedly connected to the middle frame, and
a fingerprint hole is arranged on a side surface of the middle frame;
a fingerprint recognition apparatus,
wherein the fingerprint recognition apparatus comprises an accommodating structure, a fingerprint recognition assembly and a reinforcement component,
wherein the fingerprint recognition apparatus passes through the fingerprint hole and the fingerprint recognition apparatus is in contact with the first function button;
a stopping assembly, wherein the stopping assembly comprises a retaining wall structure, the stopping assembly is arranged on a side of the fingerprint hole close to the first function button, and is connected to the middle frame,
and a partial area of the retaining wall structure inserted into the accommodating structure;
wherein in a first direction, a size of the partial area is smaller than a size of a movement space, the movement space comprises space of the accommodating structure on the side of the fingerprint hole close to the first function button, and the first direction is perpendicular to the side surface of the middle frame;
in a second direction of a first plane and/or a third direction of the first plane, a size of the retaining wall structure is greater than a size of the fingerprint hole, the first plane is parallel to the side surface of the middle frame, the second direction is a thickness direction of the middle frame, and the third direction is perpendicular to the second direction;
and a size of the reinforcement component is smaller than a size of the fingerprint recognition assembly on the first plane, so that the fingerprint recognition assembly is assembled from the outside of the middle frame to the inside of the middle frame.
a middle frame connected to a first function button, wherein
a fingerprint hole is arranged on the middle frame,
a fingerprint recognition apparatus passing through the fingerprint hole, wherein the fingerprint recognition apparatus is in contact with the first function button,
wherein the fingerprint recognition apparatus comprises an accommodating structure, a fingerprint recognition assembly, a flexible circuit board, and a reinforcement component,
wherein the flexible circuit board is arranged between the fingerprint recognition assembly and the reinforcement component, and wherein in a first direction, a size of the reinforcement component is smaller than a size of the fingerprint recognition assembly, so that the fingerprint recognition assembly is assembled from the outside of the middle frame to the inside of the middle frame;
and a stopping assembly arranged on a side of the fingerprint hole close to the first function button, and is connected to the middle frame, wherein the stopping assembly comprises a retaining wall structure, and the retaining wall structure is partly inserted into the accommodating structure; and
wherein in the first direction, a size of a partial area is smaller than a size of movement space, and the movement space comprises space of the accommodating structure on the side of the fingerprint hole close to the first function button;
and in a second direction of a first plane and/or a third direction of the first plane, a size of the retaining wall structure is greater than a size of the fingerprint hole, wherein the first direction is perpendicular to the side surface of the middle frame, the first plane is parallel to the side surface of the middle frame, the second direction is a thickness direction of the middle frame, and the third direction is perpendicular to the second direction.
For instance, the claims in the amendment broadens by omitting the feature “a flexible circuit board” and “wherein the flexible circuit board is arranged between the fingerprint recognition assembly and the reinforcement component” as recited in issued claim 1 and dependent claims 2-17.
Regarding step 2, Examiner finds that some of the broadening aspects relate to subject matter surrendered during prosecution of the 17/608160 Application leading to the original claims of ‘122 Patent. The Examiner finds that the Applicant through their Aug. 12, 2025 Amendment in this reissue has broadened the claims by omitting a feature relating to the above identified limitation argued during examination of the ‘160 application as now particularly recited in issued claims 1-17, that regards language amended into independent claim and concurrently argued by Applicant in the reply filed June 20, 2023 amendment in 17/608160. As noted above in the findings of fact, Examiner stated reason for allowance allowed certain claims because the prior art of record do not disclose the added/argued limitation of claim 2 that was subsequently incorporated into independent claim 1 in the noted June 2023 amendment during examination of ‘160 application as present in issued claims 1-17 in ‘122 patent. It is emphasized that Applicant incorporated this limitation and concurrently argued in their response that the added limitation relating to the now omitted feature with consideration of the Comparison of claim 1 herein as compared to issued claim 1 in ‘122 Patent) were a distinguishing limitation over the applied art (e.g., a surrender-generating limitation). As noted above, Applicant argued this feature in their response/amendment during examination. Thus, the noted limitation “a flexible circuit board” and “wherein the flexible circuit board is arranged between the fingerprint recognition assembly and the reinforcement component” in issued claims 1-17 in ‘122 regards subject matter surrendered during prosecution of the '160 Application leading to the original ‘122 Patent. From prosecution of ‘160 Application, the noted limitation regarding surrendered subject matter must be recited in present claims to avoid improper recapture.
Regarding step 3, Examiner further determines there is/are no narrowing limitation(s) herein as compared to ‘122 claims that materially narrow the surrendered subject matter such that they are not directed to the surrendered subject matter.
Thus, Examiner specifically finds that the claims 1 (and its dependent claims) have eliminated a feature/limitation through amendment in this application for which the claims of the original Patent were allowed. The Aug. 2025 amendment herein attempts to improperly recapture surrendered subject matter explicitly surrendered during prosecution of ‘160 Application leading to the ‘122 Patent since an amended/argued limitation during examination of ‘160 Application is eliminated in this reissue application that coincidently regards subject matter relied on during prosecution of parent application to obtain the original patent. 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. In re Mostafazadeh, 98 USPQ2d 1639 (Fed Cir 2011), In re Youman, 102 USPQ2d 1862 (Fed Cir 2012). Next, there is no narrowing feature added by the preliminary amendment herein that materially narrows relative to the surrender-generating limitation. Specifically, independent claim 1 (and its associated dependent claims) herein have omitted the limitation “a flexible circuit board” and “wherein the flexible circuit board is arranged between the fingerprint recognition assembly and the reinforcement component” as recited in issued claims 1-17. While to the extent there is/are added or narrowed element(s) herein that are not present in ‘122 claims, those element(s) is/are not directed to the noted surrendered subject matter. 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. See MPEP 1412.02 (I)(C). 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. See Id.
In view of the forgoing, the Applicant has attempted in the Aug. 2025 Amendment herein to improperly recapture subject matter explicitly surrendered during prosecution of the ‘160 Application leading to the ‘122 Patent for reasons stated above.
Allowable Subject Matter
Claims 1-17 contain allowable subject matter.
The following is a statement of reasons for the indication of allowable subject matter: lacking evidence to the contrary, with broadest reasonable interpretation of the claims, where although claim 1 herein is amended, the patentable aspect/feature remain, for similar reason as stated in allowability notice, mailed Aug.29, 2023 in application 17/608160, regarding limitations of claim 1, the closest art CN106603762 and CN105206452 fail to teach/suggest the combination of features in claim 1, as copied next, as tailored herein for broadened claims:
CN106603762A discloses an electronic device (par. [002], “mobile terminals”), where the electronic device comprises:
a middle frame (par. [0051], “side frame” reads on “middle frame”) connected to a first function button (Fig. 3, “power key 11” reads on “function button”), where
a fingerprint hole (par. [0028], “installing hole”) is arranged on the middle frame (par. [0052], “power key 11 is generally positioned…the Right Border of machine.”), a fingerprint recognition apparatus (Figs. 3-4, “identification sensor 12”) passing through the fingerprint hole (pars. [0026], ,[0028], “fingerprint identification sensor…located in the same hole”), where the fingerprint recognition apparatus comprises an accommodating structure and is in contact with the first function button (Fig. 3; pars. [0067], [0075]; where the “power key and fingerprint identification sensor are phases Connect, when finger identification sensor is depressed, equivalent to power key pressing is also received…” and “the power key of power terminal connects fingerprint identification sensor”); and
a stopping assembly (Fig. 3, “rotary-type mounting bracket 13” reads on “stopping assembly”) arranged on a side of the fingerprint hole close to the first function button, and is connected to the middle frame (Fig. 3; pars [0016],[0028],[0052],[0075], “mounting bracket…and…fingerprint sensor are located in the same installation hole”).
CN106603762A does not specifically disclose where the stopping assembly comprises a retaining wall structure, and the retaining wall structure is partly inserted into the accommodating structure; and, wherein
in a first direction, a size of a partial area is smaller than a size of movement space, and the movement space comprises space of the accommodating structure on the side of the fingerprint hole close to the first function button; and
in a second direction of a first plane and/or a third direction of the first plane, a size of the retaining wall structure is greater than a size of the fingerprint hole, wherein the first direction is perpendicular to the side surface of the middle frame, the first plane is parallel to the side surface of the middle frame, the second direction is a thickness direction of the middle frame, and the third direction is perpendicular to the second direction.
CN105206452A discloses where the stopping assembly (Figs. 1-8, “fixing component 20”) comprises a retaining wall structure (Figs. 1 and 4, “limiting part 201” reading on “retaining wall structure”), and the retaining wall structure is partly inserted (Figs. 1 and 4, “snap fit part 202, with the limiting part 201 being arranged in the limiting groove 103”) into the accommodating structure (Figs. 1, 3-4, “groove 103” reads on “accommodating structure”); and, wherein
in a first direction (x-direction), a size of a partial area (Fig. 4, length of “limiting part 201”) is smaller than a size of movement space (Fig. 4, smaller than the “limit groove 103” depth space), and the movement space comprises space of the accommodating structure (space of “groove 103”) on the side of the fingerprint hole close to the first function button (Fig. 8, “key component 10”); and
in a second direction of a first plane and/or a third direction (z-direction) of the first plane, a size of the retaining wall structure (“limiting part 202”) is greater than a size of the fingerprint hole (Fig. 8, hole 301) , wherein the first direction is perpendicular to the side surface of the middle frame (Fig. 8, in the direction perpendicular to the surface of “shell 30”), the first plane is parallel to the side surface of the middle frame (Fig. 8, the side surface corresponds to the side surface, perpendicular to the surface of “shell 30”), the second direction is a thickness direction of the middle frame (y-direction), and the third direction is perpendicular to the second direction (z-direction).
However, in this case, CN106603762A and CN105206452A alone or in combination fail to teach, disclose or suggest wherein the fingerprint recognition apparatus comprises an accommodating structure, a fingerprint recognition assembly, and a reinforcement component, and wherein in a first direction, a size of the reinforcement component is smaller than a size of the fingerprint recognition assembly, so that the fingerprint recognition assembly is assembled from the outside of the middle frame to the inside of the middle frame, in combination with all the limitations now recited in claim 1.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Prior or Concurrent Proceedings
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceed-ing in which the US Patent 11,856,122 is or was involved. These proceedings would include interferences, reissues, reexaminations, and litigation.
Information Material to Patentability
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is mate-rial to patentability of the claims under consideration in this reissue appli-cation. 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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Mark Sager whose telephone number is (571) 272-4454. The examiner can normally be reached M-Th, 6:30 AM - 3 PM, EST.
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, 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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MARK SAGER/Primary Examiner, Art Unit 3992
Conferees:
/JEFFREY D CARLSON/Primary Examiner, Art Unit 3992
/ALEXANDER J KOSOWSKI/Supervisory Patent Examiner, Art Unit 3992