Office Action
Remarks
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . Accordingly, this application has been examined with the following effect set forth herein.
Objections to the Drawings
Where a drawing of the reissue application is to include any changes relative to the patent being reissued, the changes to the drawing must be made in accordance with paragraph (b)(3) of this section. The changes made to the patented drawings must be correctly documented by the appropriate annotations. Any changes to a patent drawing must be submitted as a replacement sheet of drawings which shall be an attachment to the amendment document. Any replacement sheet of drawings must be in compliance with § 1.84 and shall include all of the figures appearing on the original version of the sheet, even if only one figure is amended. Amended figures must be identified as "Amended," and any added figure must be identified as "New." In the event that a figure is canceled, the figure must be surrounded by brackets and identified as "Canceled." All changes to the drawing(s) shall be explained, in detail, beginning on a separate sheet accompanying the papers including the amendment to the drawings.
Applicant has not complied with the aforementioned requirements. Specifically, the changes are not annotated to indicate whether they are amended, new, or canceled. Additionally, the replacement set of drawings include two instances of FIGS. 1-7. This numbering of the figures is also not aligned with the descriptions of the figures.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application.
Non-Final Rejection
35 U.S.C. § 251 – Defective Reissue Oath/Declaration
The claim is rejected under 35 U.S.C. § 251 because the reissue oath or declaration submitted with this application for reissue is defective. Specifically, it fails to clearly identify at least one particular error upon which the reissue is based, as required by 37 CFR 1.175(a)(1) and MPEP § 1414. The indication that the error is “by reason of the patentee claiming more or less than he had the right to claim in the patent” is not, in and of itself, sufficient. The aforementioned statement contains some discussion of the concept of error but never in fact identifies a specific error to be relied upon.
The lack of specificity in identifying the error renders the reissue oath or declaration defective. While the declaration mentions an intent to broaden the design claim, it fails to pinpoint the specific nature or location of the alleged error within the drawing disclosure. Since the drawings and the claim are inseparable, identifying a specific error in the claim requires identifying a specific error in the drawings.
Applicant’s reliance on the statement, “by reason of the patentee claiming more or less than he had the right to claim in the patent,” is no different than the inadequate statement of, “this application is being filed to correct errors in the patent which may be noted from the changes made in the disclosure." Both statements require making inferences to what the drawings show. However, these inferences may be inaccurate if left to the examiner to identify. For this reason, an explicit description of the what the actual alleged error is must be stated.
Reminder of Duties under 37 CFR §§ 1.178(b) and 1.56
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. D964,522 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 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.
Conclusion
The claim is rejected under 35 U.S.C. § 251.
The prior art that is cited but not applied in the rejection is considered to be relevant to the disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Darlington Ly whose telephone number is 571-272-2617. The examiner can normally be reached on Monday-Friday between 9AM-5PM. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Dana K. Weiland can be reached on (571) 570-0253. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DARLINGTON LY/
Primary Examiner, Art Unit 2914