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`V i$ T {a
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`A
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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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
`
`16/242,289
`
`01/08/2019
`
`Toshiyasu SUGIO
`
`JRL-6631-17
`
`8733
`
`NIXON & VANDERHYE P.C./MARCONI
`
`901 NORTH GLEBE ROAD, 11TH FLOOR
`ARLINGTON, VA 22203
`
`HAQUE MD NAZMUL
`
`ART UNIT
`
`2487
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`PAPER NUMBER
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`NOTIFICATION DATE
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`DELIVERY MODE
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`12/23/2019
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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):
`PTOMAIL @ nixonvancom
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`pair_nixon @ firsttofile. com
`prosecution @ marconi .Com
`
`PTOL-90A (Rev. 04/07)
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`

`

`017/09 A0170” Summary
`
`Application No.
`16/242,289
`Examiner
`MD N HAQUE
`
`Applicant(s)
`SUGIO et al.
`Art Unit
`2487
`
`AIA (FITF) Status
`No
`
`- 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).
`
`Status
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`1). Responsive to communication(s) filed on 01/08/2019.
`CI 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)
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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 Expade 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) His/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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`
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`[:1 Claim(ss)
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`is/are allowed.
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`Claim(ss) 1_—4 is/are rejected.
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`D Claim(ss_) is/are objected to.
`
`) ) ) )
`
`S)
`are subject to restriction and/or election requirement
`[:1 Claim(s
`* If any claims have been determined aflowable. 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
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`10)|:l The specification is objected to by the Examiner.
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`is/are: a)[] accepted or b)l:] objected to by the Examiner.
`11)[:] The drawing(s) filed on
`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
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`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)|:] Some**
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`c)l:i None of the:
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`1.. Certified copies of the priority documents have been received.
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`2C] Certified copies of the priority documents have been received in Application No.
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`3D 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)
`
`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
`
`3) E] 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 20191218
`
`

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`Application/Control Number: 16/242,289
`Art Unit: 2487
`
`Page 2
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`Notice of Pre-AIA or AIA Status
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`The present application is being examined under the pre-AIA first to invent
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`provisions.
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`Information Disclosure Statement
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`The information disclosure statement (IDS) submitted on 01/08/2019 and
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`02/14/2019 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the
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`information disclosure statement is being considered by the examiner.
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`Priority
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`Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C.
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`119 (a)-(d) which papers have been placed of record in the file.
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`Double Patenting
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`1.
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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
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`obviousness-type double patenting rejection is appropriate where the conflicting claims
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`are not identical, but at least one examined application claim is not patentably distinct
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`from the reference claim(s) because the examined application claim is either anticipated
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`by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140
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`

`

`Application/Control Number: 16/242,289
`Art Unit: 2487
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`Page 3
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`F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29
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`USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir.
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`1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422
`
`F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thoringz‘on, 418 F.2d 528, 163
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`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 a nonstatutory
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`double patenting ground provided the conflicting application or patent either is shown to
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`be commonly owned with this application, or claims an invention made as a result of
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`activities undertaken within the scope of a joint research agreement.
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`Effective January 1, 1994, a registered attorney or agent of record may sign a
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`terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with
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`37 CFR 3.73(b).
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`2.
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`Claims 1-4 are rejected on the ground of nonstatutory obviousness-type double
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`patenting as being unpatentable over claim 1,2,4,6 and 9 of U.S. Patent No.
`
`10,218,997 B2. Although the conflicting claims are not identical, they are not patentably
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`distinct from each other because:
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`The independent claims 1 and 3 of the current application include broader
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`limitations of the independent claims 1, 4 and 14 of the U.S. Patent No. 10,218,997 B2.
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`The limitations of claims 1 and 3 of the current application can be read on the
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`limitations of the independent claims 1 and 4 of the U.S. Patent No. 10,218,997 B2.
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`The limitation of claims 2 and 4 of the current application can be read on
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`limitations of claims 2, 6 and 9 of the U.S. Patent No. 10,218,997 B2.
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`

`

`Application/Control Number: 16/242,289
`Art Unit: 2487
`
`Page 4
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`Nonetheless, claims 1-4 of the present application made the claim a broader
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`version of claims 1,2,4,6 and 9 of U.S. Patent No. 10,218,997 B2. Therefore, since
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`omission of an element and its function in a combination is an obvious expedient if the
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`remaining elements perform the same functions as before (In re Karlson (CCPA) 136
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`USPQ 184 (1963)), claim 1-4 is not patentably distinct from claim 1,2,4,6 and 9 of U.S.
`
`Patent No. 10,218,997 B2.
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`3.
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`Claims 1-4 are rejected on the ground of nonstatutory obviousness-type double
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`patenting as being unpatentable over claim 15-17, 19, 21 and 23 of U.S. Patent No.
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`9,877,038 B2. Although the conflicting claims are not identical, they are not patentably
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`distinct from each other because:
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`The independent claims 1 and 3 of the current application include broader
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`limitations of the independent claims 15, 17 and 21 of the U.S. Patent No. 9,877,038
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`B2.
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`The limitations of claims 1 and 3 of the current application can be read on the
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`limitations of the independent claims 15, 17 and 21 of the U.S. Patent No. 9,877,038
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`B2.
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`The limitation of claims 2 and 4 of the current application can be read on
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`limitations of claims 16, 19 and 23 of the U.S. Patent No. 9,877,038 B2.
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`Nonetheless, claims 1-4 of the present application made the claim a broader
`
`version of claims 15-17, 19, 21 and 23 of U.S. Patent No. 9,877,038 B2. Therefore,
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`since omission of an element and its function in a combination is an obvious expedient if
`
`the remaining elements perform the same functions as before (In re Karlson (CCPA)
`
`

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`Application/Control Number: 16/242,289
`Art Unit: 2487
`
`Page 5
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`136 USPQ 184 (1963)), claim 1-4 is not patentably distinct from claim 15-17, 19, 21 and
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`23 of U.S. Patent No. 9,877,038 BZ.
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`Conclusion
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to MD NAZMUL HAQUE whose telephone number is
`
`(571)272-5328. The examiner can normally be reached on IFW.
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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
`
`interview, applicant is encouraged to use the USPTO Automated Interview Request
`
`(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, David Czekaj can be reached on 5712727327. The fax phone number for
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`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 https://ppair-
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`my.uspto.gov/pair/PrivatePair. Should you have questions on access to the Private
`
`PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
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`If you would like assistance from a USPTO Customer Service Representative or access
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`

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`Application/Control Number: 16/242,289
`Art Unit: 2487
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`Page 6
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`to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571 -
`
`272-1000.
`
`/MD N HAQUE/
`
`Primary Examiner, Art Unit 2487
`
`