DETAILED ACTION
This application was filed to broaden the claim that issued in D985,715. The changes to the scope of the design are acceptable in that the resulting design is enabling and complies with the written description requirement of 35 USC 112. Furthermore, a new prior art search was performed and no potential grounds for rejection were uncovered. However, the markings for changes to the specification and drawings do not comply with the rules of reissue, and the declaration does not fulfill the requirements of 35 USC 251.
Drawings
The amendment does not comply with 37 CFR. 1.173 because the replacement drawings are not labeled correctly.
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."
“Ceancelled” is not a word. The proper term is “Canceled”.
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Specification
The amendment does not comply with 37 CFR. 1.173.The canceled matter must be enclosed in brackets; not lined through.
Any changes relative to the patent being reissued which are made to the specification, including the claims, upon filing, or by an amendment paper in the reissue application, must include the following markings:
(1) The matter to be omitted by reissue must be enclosed in brackets; and
(2) The matter to be added by reissue must be underlined, except for amendments submitted on compact discs (§§ 1.96 and 1.821(c) ).
Claim Rejections - 35 USC § 251
The claim is 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 reissue declaration filed with this application is defective because it fails to identify at least one error which is relied upon to support the reissue application. See 37 CFR 1.175 and MPEP § 1414.
A reissue applicant must acknowledge the existence of an error in the specification, drawings, or claims, which error causes the original patent to be defective. In re Wilder, 736 F.2d 1516, 222 USPQ 369 (Fed. Cir. 1984). A change or departure from the original specification or claims represents an “error” in the original patent under 35 U.S.C. 251.
(C) It is not sufficient for an oath/declaration to merely state "this application is being filed to correct errors in the patent which may be noted from the changes made in the disclosure." Rather, the oath/declaration must specifically identify an error. In addition, it is not sufficient to merely reproduce the claims with brackets and underlining and state that such will identify the error. Any error in the claims must be identified by reference to the specific claim(s) and the specific claim language wherein lies the error.
A statement in the oath/declaration of "…failure to include a claim directed to …" and then reciting all the limitations of a newly added claim, would not be considered a sufficient "error" statement because applicant has not pointed out what the other claims lacked that the newly added claim has, or vice versa. Such a statement would be no better than saying in the reissue oath or declaration that "this application is being filed to correct errors in the patent which may be noted from the change made by adding new claim 10." In both cases, the error has not been identified.
Likewise, a statement of the error as "…the inclusion of claims 3-5 which were unduly broad…" and then canceling claims 3-5, would not be considered a sufficient "error" statement because applicant has not pointed out what the canceled claims lacked that the remaining claims contain..."
The list of the changes being made to the drawings does not fulfill the requirement of identifying an error in the original patent.
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Conclusion
The claim is rejected under 35 U.S.C. §251.
Any inquiry concerning this communication should be directed to PHILIP S. HYDER at telephone number (571)272-2621.
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 contact the examiner directly or 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, Justin Jonaitis can be reached on 571-270-5150.
/Philip S. Hyder/
Primary Examiner, Art Unit 2924
psh
Prosecution Insights