DETAILED ACTION
Claims 6-10 are currently pending in the application. Cancelled claims 1-5 are original claims to patent US 9,146,866 B2 to Fujimoto and claims 6-10 are newly added claims.
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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. 9,146,866 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.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 10/24/2025 is considered by the examiner in accordance with 37 CFR 1.97, 37 CFR 1.98, MPEP 609, and MPEP 1406, to the fullest extent of the items presented including any concise explanation. Documents not meeting particular criteria are lined-through and not considered.
Consent of Assignee
This application is objected to under 37 CFR 1.172(a) as lacking the written consent of all assignees owning an undivided interest in the patent. The consent of the assignee must be in compliance with 37 CFR 1.172. See MPEP § 1410.01. For example, the consent of assignee filed on 11/20/2025 fails to mark either of box 1 or 2.
A proper assent of the assignee in compliance with 37 CFR 1.172 and 3.73 is required in reply to this Office action.
Objections – Declaration
The reissue oath/declaration filed with this application is defective (see 37 CFR 1.175 and MPEP § 1414) and objected to because it fails: (1) to properly identify at least one error under 35 USC 251 (37 CFR 1.175(a)); (2) to properly identify the broadened claims (37 CFR 1.175(b)); and (3) to properly identify the application to which it is directed (37 CFR 1.63(a)(2)). The error statement of this proceeding, provided in the Declaration of 03/09/2023, is the same as the error statement of the parent application 18/093,242, found in the Declaration of 03/09/2023. As such, this proceeding does not identify an error being corrected by this continuation reissue application (see MPEP 1414.II.D.1). Correction requires: a new oath/declaration that identifies a new error; OR a statement explaining compliance with 37 CFR 1.175(f)(2), if appropriate. If the same error corrected in the parent is also being corrected in the continuation reissue application, but the error is being corrected in a different way, a statement is needed to explain compliance with 37 CFR 1.175(f)(2). Additionally, the broadened claims listed (claims 7-15) do not correspond to the actual claims of the current application (claims 6-10, broadening original claims 1-5). Further, the declaration identifies the specification of the parent application (18/093,242), instead of the current application 19/368,066 filed 10/24/2025.
Claim Rejections – 35 USC § 251 – Declaration
Claims 6-10 are rejected as being based upon a defective reissue declaration under 35 U.S.C. 251 as set forth above (see “Objections – Declaration”). The reissue oath/declaration filed with this application is defective (see 37 CFR 1.175 and MPEP § 1414) because of the following: (1) if fails to properly identify at least one error under 35 USC 251 (37 CFR 1.175(a)); (2) to properly identify the broadened claims (37 CFR 1.175(b)); and (3) to properly identify the application to which it is directed (37 CFR 1.63(a)(2)).
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.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 6-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 6-10 of U.S. Patent No. RE48,514 (herein ‘514) in view of US 2008/0137467 A1 to Pyeon et al. (herein Pyeon). Although the claims at issue are not identical, they are not patentably distinct from each other. The limitations of instant claims 6-10 are found in claims 6-10 of ‘514 except, “an input signal” through which a command is received (see instant claim 6). However, Pyeon demonstrates that it was known at the time of the claimed invention to make use of serially connected memory devices receiving input including commands on an input pin (Pyeon: [0004]). It would have been obvious to one of ordinary skill in the art at the time of the claimed invention to implement the electronic device of claim 6 in ‘514 with an input pin through which a command is received as suggested by the teachings of Pyeon. This implementation would have been obvious because one of ordinary skill in the art would have found: both ‘514 and Pyeon are directed toward flash memories; and the implementation of is an application of a known element/technique yielding a predictable result with regard to memory devices.
Claims 6-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. RE47,290 (herein ‘290) in view of claims 6-10 of RE48,514 (herein ‘514) in further view of US 2008/0137467 A1 to Pyeon et al. (herein Pyeon). Although the claims at issue are not identical, they are not patentably distinct from each other because it would have been obvious to implement the claimed invention of ‘290 with the minor differences found in the claimed invention of ‘514 (both deriving from the same disclosure and claiming variant versions/scopes). Further, as discussed above, Pyeon shows the limitation “an input signal” through which a command is received (see instant claim 6). The instant claims 7-10 are shown by at least claims 7-10 of ‘514.
Claims 6-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 6-8 of U.S. Patent No. RE49,424 (herein ‘424) in view of claims 6-10 of RE48,514 (herein ‘514) in further view of US 2008/0137467 A1 to Pyeon et al. (herein Pyeon). Although the claims at issue are not identical, they are not patentably distinct from each other because it would have been obvious to implement the claimed invention of ‘424 with the minor differences found in the claimed invention of ‘514 (both deriving from the same disclosure and claiming variant versions/scopes). Further, as discussed above, Pyeon shows the limitation “an input signal” through which a command is received (see instant claim 6). The instant claims 7-10 are shown by at least claims 7-10 of ‘514. Further, instant claims 7-8 are shown by claims 7-8 of ‘424.
Claims 6-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 6-14 of U.S. Patent No. RE50,685 (herein ‘685) in view of claims 6-10 of RE48,514 (herein ‘514) in further view of US 2008/0137467 A1 to Pyeon et al. (herein Pyeon). Although the claims at issue are not identical, they are not patentably distinct from each other because it would have been obvious to implement the claimed invention of ‘685 with the minor differences found in the claimed invention of ‘514 (both deriving from the same disclosure and claiming variant versions/scopes). Further, as discussed above, Pyeon shows the limitation “an input signal” through which a command is received (see instant claim 6). The instant claims 7-10 are shown by at least claims 7-10 of ‘514.
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