UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`PO. Box 1450
`Alexandria, Virginia 2231371450
`www.uspto.gov
`
`15/966,485
`
`04/30/2018
`
`Noritaka IGUCHI
`
`2018-0648
`
`1208
`
`Wenderoth, L1nd & Ponaek, L.L.P.
`1030 15th Street, NW, Suite 400 East
`Washington, DC 20005
`
`FLYNN' RANDYA
`
`PAPER NUMBER
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`ART UNIT
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`2424
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`NOTIFICATION DATE
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`DELIVERY MODE
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`12/18/2018
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`ELECTRONIC
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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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`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
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`following e—mail address(es):
`eoa @ wenderoth. com
`kmiller @ wenderotheom
`
`PTOL-90A (Rev. 04/07)
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`

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`Off/09 A0170” Summary
`
`Application No.
`15/966,485
`Examiner
`RAN DY A FLYNN
`
`Applicant(s)
`IGUCHI et al.
`Art Unit
`2424
`
`AIA Status
`Yes
`
`- The MAILING DA TE of this communication appears on the cover sheet wit/7 the correspondence address -
`Period for Reply
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`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE g MONTHS 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.
`|f 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).
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`Status
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`1). Responsive to communication(s) filed on 26 November 2018.
`[:1 A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2a)D This action is FINAL.
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`2b)
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`This action is non-final.
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`3)[:] An election was made by the applicant in response to a restriction requirement set forth during the interview on
`; the restriction requirement and election have been incorporated into this action.
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`4)[:] Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Expat/7e Quay/e, 1935 CD. 11, 453 O.G. 213.
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`Disposition of Claims*
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`5)
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`Claim(s) fl is/are pending in the application.
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`5a) Of the above claim(s)
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`is/are withdrawn from consideration.
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`E] Claim(s)
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`is/are allowed.
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`Claim(s) fl is/are rejected.
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`[:1 Claim(s) _ is/are objected to.
`
`) ) ) )
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`6 7
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`8
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`
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`are subject to restriction and/or election requirement
`[j Claim(s)
`9
`* If any claims have been determined aflowabte. you may be eligible to benefit from the Patent Prosecution Highway program at a
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`participating intellectual property office for the corresponding application. For more information, please see
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`http://www.uspto.gov/patents/init events/pph/index.jsp or send an inquiry to PPeredback@uspto.gov.
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`Application Papers
`10)[:] The specification is objected to by the Examiner.
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`11)[:] The drawing(s) filed on
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`is/are: a)D accepted or b)l:] 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).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12). Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
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`a). All
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`b)I:J Some”
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`c)C] None of the:
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`1.[:] Certified copies of the priority documents have been received.
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`2.. Certified copies of the priority documents have been received in Application No. 15/139,209.
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`3:] Copies of the certified copies of the priority documents have been received in this National Stage
`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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`Attachment(s)
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`1)
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`Notice of References Cited (PTO-892)
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`2) E] Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date_
`U.S. Patent and Trademark Office
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`3) C] Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) CI Other-
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`PTOL-326 (Rev. 11-13)
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`Office Action Summary
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`Part of Paper No./Mai| Date 20181212
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`

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`Application/Control Number: 15/966,485
`Art Unit: 2424
`
`Page 2
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`DETAILED ACTION
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`Notice relating to Pre-AIA or AIA Status
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`1.
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`In the event the determination of the status of the application as subject to NA 35
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`U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any
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`correction of the statutory basis for the rejection will not be considered a new ground of
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`rejection if the prior art relied upon, and the rationale supporting the rejection, would be
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`the same under either status.
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`The present application, filed on or after March 16, 2013, is being examined
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`under the first inventor to file provisions of the AIA.
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`Interview Request
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`2.
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`If Applicant feels a telephonic interview could help, Applicant is kindly requested
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`to contact the Examiner prior to any further action/amendment on the merits, in order to
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`discuss the application and claims (contact information can be found at the end of this
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`office action).
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`Response to Arguments
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`3.
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`Applicant’s arguments with respect to the claims have been considered but are
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`moot because the arguments do not apply to new ground(s) of rejection being used in
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`the current office action.
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`

`

`Application/Control Number: 15/966,485
`Art Unit: 2424
`
`Page 3
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`Terminal Disclaimer
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`4.
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`The terminal disclaimer filed on 26 NOVEMBER 2018 disclaiming the terminal
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`portion of any patent granted on this application which would extend beyond the
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`expiration date of US PATENT 9,992,550 has been reviewed and is accepted. The
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`terminal disclaimer has been recorded.
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`Double Parenting
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`5.
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`The nonstatutory double patenting rejection is based on a judicially created
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`doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the
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`unjustified or improper timewise extension of the “right to exclude” granted by a patent
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`and to prevent possible harassment by multiple assignees. A nonstatutory double
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`patenting rejection is appropriate where the conflicting claims are not identical, but at
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`least one examined application claim is not patentably distinct from the reference
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`claim(s) because the examined application claim is either anticipated by, or would have
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`been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46
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`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,
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`686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619
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`(CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
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`A timely filed terminal disclaimer in compliance with 37 CFR 1.321 (c) or 1.321 (d)
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`may be used to overcome an actual or provisional rejection based on nonstatutory
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`double patenting provided the reference application or patent either is shown to be
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`commonly owned with the examined application, or claims an invention made as a
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`

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`Application/Control Number: 15/966,485
`Art Unit: 2424
`
`Page 4
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`result of activities undertaken within the scope of a joint research agreement. See
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`MPEP § 717.02 for applications subject to examination under the first inventor to file
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`provisions of the AIA as explained in MPEP § 2159. See MPEP §§ 706.02(I)(1) -
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`706.02(I)(3) for applications not subject to examination under the first inventor to file
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`provisions of the AIA. A terminal disclaimer must be signed in compliance with 37 CFR
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`1.321 (b).
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`The USPTO Internet website contains terminal disclaimer forms which may be
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`used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application
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`in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26,
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`PTO/AlA/25, or PTO/AlA/26) should be used. A web-based eTerminal Disclaimer may
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`be filled out completely online using web-screens. An eTerminal Disclaimer that meets
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`all requirements is auto-processed and approved immediately upon submission. For
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`more information about eTerminal Disclaimers, refer to
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`www.uspto.gov/patents/process/file/efs/guidance/eTD-info-l.jsp.
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`6.
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`Claims 1-8 are provisionally rejected on the ground of nonstatutory double
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`patenting as being unpatentable over at least claims 1 and 3-10 of copending
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`Application No. 15/157,496 (reference application). Although the claims at issue are not
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`identical, they are not patentably distinct from each other because the current
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`applications claims are only worded in a way which is slightly different than the
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`copending reference applications claims, while still leading to the same inventive
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`outcome/result.
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`This is a provisional nonstatutory double patenting rejection because the
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`patentably indistinct claims have not in fact been patented.
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`

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`Application/Control Number: 15/966,485
`Art Unit: 2424
`
`Page 5
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`Claim Rejections - 35 USC § 101
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`7.
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`35 U.S.C. 101 reads as follows:
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`Whoever invents or discovers any new and useful process, machine, manufacture, or
`composition of matter, or any new and useful improvement thereof, may obtain a patent
`therefor, subject to the conditions and requirements of this title.
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`Claims 1-8 are rejected under 35 U.S.C. 101 because the claimed invention is
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`directed to a judicial exception (Le, a law of nature, a natural phenomenon, or an
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`abstract idea) without significantly more.
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`Claims 1-8 are directed to the abstract idea of generating and
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`transmission/reception of data. The claims recite various steps including generating,
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`transmitting, receiving, and/or extracting. This is similar to concepts that the courts
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`have found to be abstract ideas. For example, generating a menu (ie. data) and
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`sending the menu to another incatien (Amaranth), detivering content te devices (Affinity
`
`Labs v. Amezon.oem), and/er providing access to broadcast centent (Affinity Labs. v.
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`DirecTV).
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`The claims do not include additional elements that are sufficient to amount to
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`significantly more than the judicial exception. The claims recite that elements such as a
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`generator, a transmitter, a receiver, an extractor are available for performing functions.
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`However, these additional elements amount to nothing more than what they are
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`generically programmed to do (generating/processing data by a computer/processor,
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`transmitting by a transmitter, receiving by a receiver, and/or extracting/parsing data by a
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`computer/processor). Such a generic interpretation of these elements is based on
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`Applicant's own specification and available prior art which describes the elements in a
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`

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`Application/Control Number: 15/966,485
`Art Unit: 2424
`
`Page 6
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`conventional/generic form. See for example, paragraph 220 of the originally filed
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`specification, describing "...transmission apparatus 30 includes generator 31 and
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`transmitter 32. Note that each component of transmission apparatus 30 is specifically
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`implemented by a microcomputer, a processor, a dedicated circuit, or the like... ";
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`paragraph 227 of the originally filed specification, describing "...the aforementioned
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`exemplary embodiments, components may each include dedicated hardware or may be
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`implemented through execution of a software program suitable for each component.
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`The components may be each implemented by a program execution unit, such as a
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`CPU and a processor, reading and executing the software program recorded in a
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`recording medium such as a hard disk and a semiconductor memory... "; and paragraph
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`228 of the originally filed specification, describing "...each of these circuits may be a
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`general-purpose circuit, and may be a dedicated circuit... "; as well as the provided prior
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`art of Hwang (US 2013/0097627), describing a package generator (Fig. 8, element 803,
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`and page 40, paragraphs 675 and 677), a transmitter (Fig. 8, element 805, and page
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`40, paragraphs 678-679), a receiver (Fig. 9, element 901, and page 40, paragraphs
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`682-683), and a parser (Fig. 9, element 903, and page 40, paragraphs 682 and 684).
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`These disclosures therefore indicate that such elements are well-understood, routine,
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`and conventional.
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`Viewing the limitations as an ordered combination does not add anything further
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`than looking at the limitations individually. When viewed either individually, or as an
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`ordered combination, the additional limitations do not amount to claims as a whole that
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`are significantly more than the abstract idea. Therefore, the claims are not patent
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`eligible. See Alice Corporation v. CLS Bank International, (S. Ct. 2014).
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`

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`Application/Control Number: 15/966,485
`Art Unit: 2424
`
`Page 7
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`Conclusion
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`8.
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to RANDY A FLYNN whose telephone number is
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`(571)270-5680. The examiner can normally be reached on Monday - Thursday, 6:00am
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`- 3:30pm ET.
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`Examiner interviews are available via telephone, in-person, and video
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`conferencing using a USPTO supplied web-based collaboration tool. To schedule an
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`interview, applicant is encouraged to use the USPTO Automated Interview Request
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`(AIR) at http://www.uspto.gov/interviewpractice.
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, PANKAJ KUMAR can be reached on 571 -272-301 1. The fax phone number
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`for the organization where this application or proceeding is assigned is 571-273-8300.
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`Information regarding the status of an application may be obtained from the
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`Patent Application Information Retrieval (PAIR) system. Status information for
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`published applications may be obtained from either Private PAIR or Public PAIR.
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`Status information for unpublished applications is available through Private PAIR only.
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`For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
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`you have questions on access to the Private PAIR system, contact the Electronic
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`Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a
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`USPTO Customer Service Representative or access to the automated information
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`system, call 800-786-9199 (IN USA OR CANADA) or 571-272—1000.
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`

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`Application/Control Number: 15/966,485
`Art Unit: 2424
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`Page 8
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`/RANDY A FLYNN/
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`Primary Examiner, Art Unit 2424
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`