`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`PO. Box 1450
`313- 1450
`Alexandria1 Virginia 22
`wwwnsptogov
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`APPLICATION NO.
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`11/133,373
`
`23364
`
`
`
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` F ING DATE
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`05/20/2005
`
`7590
`
`03/18/2008
`
`BACON & THOMAS, PLLC
`625 SLATERS LANE
`FOURTH FLOOR
`ALEXANDRIA, VA 22314
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`
`
`
`CONF {MATION NO.
`
`Kazuyuki Ouchi
`
`OUCH3005/JJC/JS
`
`7792
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`EXAMINER
`
`LANDRUM,
`
`EDWARD F
`
`ART UNIT
`
`3724
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`MAIL DATE
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`03/18/2008
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`PAPER NUMBER
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`DELIVERY MODE
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`PAPER
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`Please find below and/or attached an Office communication concerning this application or proceeding.
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`The time period for reply, if any, is set in the attached communication.
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`PTOL—90A (Rev. 04/07)
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`

`

`
`
`Application No.
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`11/133,373
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`Applicant(s)
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`OUCHI ET AL.
`
`Office Action Summary
`
`Examiner
`
`Edward F. Landrum
`
`Art Unit
`
`3724 -
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
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`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 1 MONTH(S) OR THIRTY (30) DAYS,
`WHICHEVER IS LONGER, FROM THE MAILING DATE OF THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(a).
`In no event however may a reply be timely filed
`after SIX (6) MONTHS from the mailing date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1.704(b).
`
`Status
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`1)IXI Responsive to communication(s) filed on 19 February 2008.
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`2a)I:I This action is FINAL.
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`2b)I:I This action is non-final.
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`3)I:I Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
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`closed in accordance with the practice under EX parte Quayle, 1935 CD. 11, 453 O.G. 213.
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`Disposition of Claims
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`4)IZI Claim(s) 1 and 3-10 is/are pending in the application.
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`4a) Of the above claim(s)
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`is/are withdrawn from consideration.
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`5)I:I Claim(s) _ is/are allowed.
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`6)I:I Claim(s) _ is/are rejected.
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`7)I:I Claim(s)
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`is/are objected to.
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`8)IXI Claim(s) 1 and 3-10 are subject to restriction and/or election requirement.
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`Application Papers
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`9)I:I The specification is objected to by the Examiner.
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`
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`10)I:I The drawing(s) filed on
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`is/are: a)I:I accepted or b)I:I objected to by the Examiner.
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`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
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`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121(d).
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`11)I:I The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PTO-152.
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`Priority under 35 U.S.C. § 119
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`12)I:I Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)—(d) or (f).
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`a)I:I AII
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`b)I:I Some * c)I:I None of:
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`Certified copies of the priority documents have been received.
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`Certified copies of the priority documents have been received in Application No.
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`Copies of the certified copies of the priority documents have been received in this National Stage
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`application from the International Bureau (PCT Rule 17.2(a)).
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`* See the attached detailed Office action for a list of the certified copies not received.
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`Attach ment(s)
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`1) D Notice of References Cited (PTO-892)
`2) D Notice of Draftsperson‘s Patent Drawing Review (PTO-948)
`3) |:| Information Disclosure Statement(s) (PTO/SB/08)
`Paper No(s)/Mai| Date
`.
`U.S. Patent and Trademark Office
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`4) D Interview Summary (PTO-413)
`Paper No(s)/Mai| Date. _
`5) I:I Notice of Informal Patent Application
`6) D Other:
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`PTOL-326 (Rev. 08-06)
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`Office Action Summary
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`Part of Paper No./Mai| Date 20080312
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`

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`Application/Control Number: 11/133,373
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`Page 2
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`Art Unit: 3724
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`DETAILED ACTION
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`Election/Restrictions
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`1.
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`This application contains claims directed to the following patentably distinct
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`species:
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`Species A - Figures 9A and QB
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`Species B - Figures 10A and 1GB
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`Species C - Figures 11A and 11B
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`Species D - Figures 12A and 128
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`The species are independent or distinct because claims to the different species
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`recite the mutually exclusive characteristics of such species.
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`In addition, these species
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`are not obvious variants of each other based on the current record.
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`Applicant is required under 35 U.S.C. 121 to elect a single disclosed species for
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`prosecution on the merits to which the claims shall be restricted if no generic claim is
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`finally held to be allowable. Currently, at least claim 1 appears to be generic.
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`There is an examination and search burden for these patentably distinct species
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`due to their mutually exclusive characteristics. The species require a different field of
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`search (e.g., searching different classes/subclasses or electronic resources, or
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`employing different search queries); and/or the prior art applicable to one species would
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`not likely be applicable to another species; and/or the species are likely to raise different
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`non-prior art issues under 35 U.S.C. 101 and/or 35 U.S.C. 112, first paragraph.
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`Applicant is advised that the reply to this requirement to be complete must
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`include (i) an election of a species to be examined even though the requirement
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`

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`Application/Control Number: 11/133,373
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`Page 3
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`Art Unit: 3724
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`may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing
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`the elected species, including any claims subsequently added. An argument that a
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`claim is allowable or that all claims are generic is considered nonresponsive unless
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`accompanied by an election.
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`The election of the species may be made with or without traverse. To preserve a
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`right to petition, the election must be made with traverse. If the reply does not distinctly
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`and specifically point out supposed errors in the election of species requirement, the
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`election shall be treated as an election without traverse. Traversal must be presented at
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`the time of election in order to be considered timely. Failure to timely traverse the
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`requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are
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`added after the election, applicant must indicate which of these claims are readable on
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`the elected species.
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`Should applicant traverse on the ground that the species are not patentably
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`distinct, applicant should submit evidence or identify such evidence now of record
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`showing the species to be obvious variants or clearly admit on the record that this is the
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`case. In either instance, if the examiner finds one of the species unpatentable over the
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`prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103(a)
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`of the other species.
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`Upon the allowance of a generic claim, applicant will be entitled to consideration
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`of claims to additional species which depend from or othen/vise require all the limitations
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`of an allowable generic claim as provided by 37 CFR 1.141.
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`

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`Application/Control Number: 11/133,373
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`Page 4
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`Art Unit: 3724
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`2.
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`Applicant is reminded that upon the cancellation of claims to a non-elected
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`invention, the inventorship must be amended in compliance with 37 CFR 1.48(b) if one
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`or more of the currently named inventors is no longer an inventor of at least one claim
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`remaining in the application. Any amendment of inventorship must be accompanied by
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`a request under 37 CFR 1.48(b) and by the fee required under 37 CFR 1.17(i).
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`3.
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to Edward F. Landrum whose telephone number is 571-
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`272-5567. The examiner can normally be reached on Monday-Friday 8—4:30.
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
`supervisor, Boyer Ashley can be reached on 571-272-4502. The fax phone number for
`the organization where this application or proceeding is assigned is 571 -273-8300.
`Information regarding the status of an application may be obtained from the
`Patent Application Information Retrieval (PAIR) system. Status information for
`published applications may be obtained from either Private PAIR or Public PAIR.
`Status information for unpublished applications is available through Private PAIR only.
`For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
`you have questions on access to the Private PAIR system, contact the Electronic
`Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a
`USPTO Customer Service Representative or access to the automated information
`system, call 800-786—9199 (IN USA OR CANADA) or 571-272-1000.
`
`/E. F. L./
`
`Examiner, Art Unit 3724
`3/12/2008
`
`/Boyer D. Ashley/
`Supervisory Patent Examiner, Art Unit 3724
`
`