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 .
DETAILED ACTION
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.
This is a Non-Final Action.
The current application filed August 22, 2025 is a reissue application of 18/466,651 (U.S. Patent No. 12,166,944 issued December 10, 2024, hereinafter “the ‘944 patent”).
Claims 1-15 were initially pending in the application. Claims 1, 14, and 15 were amended; claims 2-13 were cancelled; and claims 16-20 were added in a preliminary amendment filed August 22, 2025. Claims 1 and 14-20 are pending.
Reissue
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 Patent No. 12,166,944 is or was involved. These proceedings would include interferences, reissues, reexaminations, 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 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.
Claim Rejections - 35 USC § 251
Claims 1 and 14-20 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. 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.
It is noted that 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.”
(Step 1: MPEP 1412.02(II)(A)) In the instant case and by way of the preliminary amendment, Applicant seeks to broaden independent claims 1, 14, and 15 by amendment in this reissue at least by deleting/omitting the patent claim language requiring that the apparatus includes (using claim 1 as example, similar limitations found in claims 14 and 15) “a moving mechanism configured to move the head with respect to the conveyance mechanism in an orthogonal direction orthogonal to the conveyance direction; a sensor configured to detect an orthogonal edge position the recording medium being conveyed by the conveyance mechanism, the orthogonal edge being an edge of the recording medium in a direction orthogonal to the conveyance direction; and a controller, wherein the controller is configured to perform: deriving a correction amount for a printing position of the head in the orthogonal direction based on the orthogonal edge position detected by the sensor; correcting the printing position of the head by driving the moving mechanism to move the head based on the correction amount; and causing the head to print an image based on image data at the corrected printing position.”
(Step 2: MPEP 1412.02(II)(B)) The record of the prior 18/466,651 application prosecution indicates that an amendment was filed along with Applicant Arguments/Remarks filed on June 6, 2024. Applicant made the following amendments (using claim 1 for reference) to overcome the rejection in view of the prior art:
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Additionally, Applicant explicitly argued in an attempt to overcome the applied prior art references:
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(pages 8 and 9, Applicant’s Arguments/Remarks
filed June 6, 2024 in application 18/466,651)
Thus, at least the following limitations found in patent claim 1 that correspond to the arguments and amendments made during prosecution are considered to be surrender-generating limitations:
a sensor configured to detect an orthogonal edge position the recording medium being conveyed by the conveyance mechanism, the orthogonal edge being an edge of the recording medium in a direction orthogonal to the conveyance direction; and
a controller, wherein the controller is configured to perform:
deriving a correction amount for a printing position of the head in the orthogonal direction based on the orthogonal edge position detected by the sensor;
correcting the printing position of the head by driving the moving mechanism to move the head based on the correction amount; and
causing the head to print an image based on image data at the corrected printing position.
Subject matter is previously surrendered during the prosecution of the original application by reliance on an argument/statement made by applicant that a limitation of the claim(s) defines over the art. Additionally, Reissue recapture applies to related family member applications (See MBO Laboratories, Inc. v. Becton, Dickinson & Co., 474 F.3d 1323, 94 USPQ2d 1598 at 1606 (Fed. Cir. Apr. 12, 2010) (a more limited recapture rule would undercut “the rule against recapture’s public-reliance rationale” and a patent family’s entire prosecution history should be reviewed “when applying both the rule against recapture and prosecution history estoppel.”)). It is 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 and the patent family's prosecution for the patent to be reissued, regardless of whether the Office adopted the argument in allowing the claims. Therefore, in the instant case the omission of the surrender-generating limitations requiring that the terminal assembly include “a sensor configured to detect an orthogonal edge position the recording medium being conveyed by the conveyance mechanism, the orthogonal edge being an edge of the recording medium in a direction orthogonal to the conveyance direction; and a controller, wherein the controller is configured to perform: deriving a correction amount for a printing position of the head in the orthogonal direction based on the orthogonal edge position detected by the sensor; correcting the printing position of the head by driving the moving mechanism to move the head based on the correction amount; and causing the head to print an image based on image data at the corrected printing position.” equates to attempting to recapture surrendered subject matter and thus by omission some of the broadening of the reissue claims, as noted above, are clearly in the area of the surrendered subject matter.
(Step 3: MPEP 1412.02(II)(C)) It must be determined whether the reissue claim omits or broadens any limitation that was added/argued during the original prosecution to overcome an art rejection. Such an omission in a reissue claim, even if it includes 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. Simply stated, claims 1 and 14-20 omit the language requiring “a sensor configured to detect an orthogonal edge position the recording medium being conveyed by the conveyance mechanism, the orthogonal edge being an edge of the recording medium in a direction orthogonal to the conveyance direction; and a controller, wherein the controller is configured to perform: deriving a correction amount for a printing position of the head in the orthogonal direction based on the orthogonal edge position detected by the sensor; correcting the printing position of the head by driving the moving mechanism to move the head based on the correction amount; and causing the head to print an image based on image data at the corrected printing position.” and thus would amount to impermissible recapture due to the omission of surrender-generating limitations. Additionally, reissue claims 1 and 14-20 are not materially narrowed in other respects that relate to the surrendered subject matter to avoid said impermissible recapture.
Therefore, impermissible recapture of broadened claimed subject matter surrendered in the application is clearly present in the instant reissue application.
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 explained above in reference to the rejection in view of impermissible recapture, the error on which the reissue is based on according to the declaration is not an error upon which reissue can be based because it amounts to impermissible recapture.
Claims 1 and 14-20 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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSHUA D CAMPBELL whose telephone number is (571)272-4133. The examiner can normally be reached 7:30-4:00 M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alexander Kosowski can be reached on (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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/JOSHUA D CAMPBELL/Primary Examiner, Art Unit 3992
Conferees:
/ROBERT L NASSER/Primary Examiner, Art Unit 3992
/ALEXANDER J KOSOWSKI/Supervisory Patent Examiner, Art Unit 3992
Prosecution Insights