UNITED STATES PATENT AND TRADEMARK OFFICE
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`
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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`PO. Box 1450
`Alexandria, Virginia 2231371450
`www.uspto.gov
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`16/218,244
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`12/12/2018
`
`Prateek Basu Mallick
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`736456.434C2
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`7249
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`Seed IP Law Group LLP/Panason1e (PIPCA)
`701 5th Avenue, Suite 5400
`Seattle, WA 98104
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`ONAMUTL GBEMILEKE J
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`ART UNIT
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`2463
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`PAPER NUMBER
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`NOTIFICATION DATE
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`DELIVERY MODE
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`05/23/2019
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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):
`US PTOeACtion @ SeedIP .Com
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`pairlinkdktg @ seedip .eom
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`PTOL-90A (Rev. 04/07)
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`

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`0,7709 A0170” Summary
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`Application No.
`16/218,244
`Examiner
`GBEMILEKE J ONAMUTI
`
`Applicant(s)
`Basu Mallick et al.
`Art Unit
`AIA (FITF) Status
`2463
`Yes
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`- 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 05/06/2019.
`[:1 A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2a). This action is FINAL.
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`2b) C] 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*
`5)
`Claim(s)
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`1—16 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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`) ) ) )
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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 aflowabie. 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).
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`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)D 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.
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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) C] Notice of References Cited (PTO-892)
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`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`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 20190520
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`

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`Application/Control Number: 16/218,244
`Art Unit: 2463
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`Page 2
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`DETAILED ACTION
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`Notice of Pre-AIA or AIA Status
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`1.
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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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`2.
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`This communication is considered fully responsive to the response filed on the 6th
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`Response to Remarks
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`of May, 2019.
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`(a).
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`The rejection(s) of Claims 1-16 on the ground of nonstatutory double
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`patenting as being unpatentable over Claims 1-16 of Patent No.: US 9,888,424
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`B2 to Basu Mallick et al. and Claims 1-16 on the ground of nonstatutory double
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`patenting as being unpatentable over Claims 1-12 of copending application No.:
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`15/855,841 to Basu Mallick et al. is withdrawn because the terminal disclaimer
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`filed on the 6th of May, 2019 is approved.
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`(b).
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`The rejection(s) of Claims 1-16 under 35 U.S.C. 101 as claiming the same
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`invention as that of Claims 1-16 of prior Patent No.: US 9,888,424 B2 to Basu
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`Mallick et al. is MAINTAINED because a statutory type (35 U.S.C. 101) double
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`patenting reiection can be overcome by canceling or amending the claims that
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`are directed to the same invention so they are no longer coextensive in scope.
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`The filing of a terminal disclaimer cannot overcome a double patenting
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`rejection based upon 35 U.S.C. 101.
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`

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`Application/Control Number: 16/218,244
`Art Unit: 2463
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`Page 3
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`Double Parenting
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`3.
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`A rejection based on double patenting of the “same invention” type finds its
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`support in the language of 35 U.S.C. 101 which states that “whoever invents or
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`discovers any new and useful process... may obtain a patent therefor...” (Emphasis
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`added). Thus, the term “same invention,” in this context, means an invention drawn to
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`identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel,
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`422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330
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`(CCPA 1957).
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`A statutory type (35 U.S.C. 101 ) double patenting rejection can be overcome by
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`canceling or amending the claims that are directed to the same invention so they are no
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`longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a
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`double patenting rejection based upon 35 U.S.C. 101.
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`4.
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`Claims 1-16 are rejected under 35 U.S.C. 101 as claiming the same invention as
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`that of Claims 1-16 of prior Patent No.: US 9,888,424 B2 to Basu Mallick et al. This is a
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`statutory double patenting rejection. See table below:
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`Patent No.: US 9,888,424 B2
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`Instant Application 16/218,244
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`
`
`

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`Application/Control Number: 16/218,244
`Art Unit: 2463
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`Page 4
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`
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`Conclusion
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`5.
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`THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time
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`policy as set forth in 37 CFR 1.136(a).
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`A shortened statutory period for reply to this final action is set to expire THREE
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`MONTHS from the mailing date of this action.
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`In the event a first reply is filed within
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`TWO MONTHS of the mailing date of this final action and the advisory action is not
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`mailed until after the end of the THREE-MONTH shortened statutory period, then the
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`shortened statutory period will expire on the date the advisory action is mailed, and any
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`extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of
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`the advisory action.
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`In no event, however, will the statutory period for reply expire later
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`than SIX MONTHS from the mailing date of this final action.
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`

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`Application/Control Number: 16/218,244
`Art Unit: 2463
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`Page 5
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to GBEMILEKE J ONAMUTI whose telephone number is
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`(571)270-5619. The examiner can normally be reached on 8:00 AM - 5:00 PM.
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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, MARK RINEHART can be reached on 5712723632. 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.
`
`/GBEMILEKE J ONAMUTI/
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`Primary Examiner, Art Unit 2463
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`