`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria1 Virginia 22313- 1450
`www.uspto.gov
`
`APPLICATION NO.
`
`
`
`
`
` F ING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`
`
`
`
`CONF {MATION NO.
`
`10/486,377
`
`02/10/2004
`
`Eiji Takahashi
`
`W&A—101US
`
`7925
`
`EXAMINER
`RATNERPRESTIA —
`””9”“ —
`7590
`52473
`PO. BOX 980
`COPPOLA, JACOB c
`VALLEY FORGE, PA 19482-0980
`
`PAPER NUMBER
`
`ART UNIT
`
`3621
`
`
`
`
`NOT *ICATION DATE
`
`DELIVERY MODE
`
`12/19/2013
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
`following e—mail address(es):
`
`ptocorrespondence @ratnerprestia.c0m
`
`PTOL—90A (Rev. 04/07)
`
`

`

`
`
`Applicant(s)
`Application No.
` 10/486,377 TAKAHASHI, EIJI
`
`Examiner
`Art Unit
`AIA (First Inventor to File)
`Office Action Summary
`
`JACOB C. COPPOLA [SENS 3621
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`
`
`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 CFR1. 136( a).
`after SIX () 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).
`
`In no event, however, may a reply be timely filed
`
`Status
`
`1)IZI Responsive to communication(s) filed on 22 April 2010.
`El A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`
`2b)|Z| This action is non-final.
`2a)|:l This action is FINAL.
`3)I:I An election was made by the applicant in response to a restriction requirement set forth during the interview on
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`; 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
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`closed in accordance with the practice under Exparte Quay/e, 1935 CD. 11, 453 O.G. 213.
`
`Disposition of Claims*
`
`5)IZI Claim(s) 31 32 37 38 40 and 42 is/are pending in the application.
`5a) Of the above claim(s)
`is/are withdrawn from consideration.
`
`is/are allowed.
`6)I:I Claim(s)
`
`7)|Z| Claim(s) 31 32 37 38 40 and 42 is/are rejected.
`
`8)|:I Claim(s)_ is/are objected to.
`* If any)claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway program at a
`
`
`
`()
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`are subject to restriction and/or election requirement.
`
`participating intellectual property office for the corresponding application. For more information, please see
`
`
`
`:/'I’vaIW.usnI‘.0. ovI’ atentS/init events/
`h/index.‘s orsend an inquiryto PPI-iieedback{®usgtc.00v.
`
`hit
`
`Application Papers
`
`10)IZI The specification is objected to by the Examiner.
`11)I:l The drawing(s) filed on
`is/are: a)I:I accepted or b)I:I objected to by the Examiner.
`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)I:| Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`
`a)I:l All
`
`b)|:l Some” c)I:l None of the:
`
`1.I:I Certified copies of the priority documents have been received.
`2.|:l Certified copies of the priority documents have been received in Application No.
`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)).
`** See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`3) D Interview Summary (PTO-413)
`1) E Notice of References Cited (PTO-892)
`Paper No(s)/Mai| Date.
`.
`.
`4) I:I Other'
`2) E InformatIon DIsclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mai| Date 04/28/2010.
`US. Patent and Trademark Office
`PTOL—326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20131213
`
`

`

`Application Number: 10/486,377
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`Art Unit: 3621
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`Page 2 - 20131213
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`DETAILED ACTION
`
`Continued Examination Under 37 CFR 1. 1 14
`
`1.
`
`A request for continued examination under 37 CFR 1.114, including the fee set
`
`forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this
`
`application is eligible for continued examination under 37 CFR 1.114, and the fee set
`
`forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office Action
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`has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 22 April
`
`2010 has been entered.
`
`Acknowledgements
`
`2.
`
`This Office Action is in reply to Applicant’s response filed 22 April 2010 (“2010
`
`April Response”).
`
`3.
`
`Claims 31, 32, 37, 38, 40, and 42 are currently pending and have been
`
`examined.
`
`4.
`
`This Office Action is given Paper No. 20131213. This Paper No. is for reference
`
`purposes only.
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`Information Disclosure Statement
`
`5.
`
`The Information Disclosure Statement filed on 28 April 2010 has been
`
`considered. An initialed copy of the Form 1449 is enclosed herewith.
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`

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`Application Number: 10/486,377
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`Art Unit: 3621
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`Page 3 - 20131213
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`Specification
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`6.
`
`The specification is objected to as failing to provide proper antecedent basis for
`
`the claimed subject matter. See 37 CFR 1.75(d)(1), MPEP §608.01(o), and MPEP
`
`§2181 IV and its discussion of C.F.R. §1.75. Correction of the following is required:
`
`a.
`
`In claim 31, the phrase “situation information acquisition part configured to
`
`acquire position information identifying the current position of the information terminal
`
`itself and to store the acquired position information in said at least one memory;”
`
`b.
`
`In claim 31, the phrase “service information acquisition part configured to
`
`acquire condition information of a service identifying a relationship between a content of
`
`the service and a position at which the service can be utilized and to store the acquired
`
`condition information in said at least one memory;”
`
`c.
`
`In claim 31, the phrase “determining part coupled to said situation
`
`information acquisition part and said service information acquisition part, said
`
`determining part configured to select a service which the electronic information terminal
`
`itself can utilize based on the acquired position information, the acquired condition
`
`information and the stored information in said at least one memory;”
`
`d.
`
`In claim 42, the phrase “situation information acquisition part configured to
`
`acquire position information identifying the current position of the information terminal
`
`itself, and to output said acquired position information to a determining part;”
`
`e.
`
`In claim 42, the phrase “service information acquisition part configured to
`
`acquire condition information of a service identifying a relationship between a content of
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`the service and a position at which the service can be utilized, and to output said
`
`acquired condition information to said determining part;” and
`
`f.
`
`In claim 42, the phrase “determining part configured to input said acquired
`
`position information from the situation information acquisition part and said acquired
`
`condition information from the service information acquisition part, and said determining
`
`part configured to select a service which the information terminal itself can utilize based
`
`on the acquired position information, the acquired condition information and the stored
`
`information in said information terminal itself.”
`
`7.
`
`First, the Examiner notes that the USPTO’s Board of Patent Appeal and
`
`lnterferences (“Board”) has recently recognized the lack of antecedent basis of claim
`
`terms in the original specification as a “significant problem.” See 73 Fed. Reg. 32944
`
`(June 10, 2008) (noting that “[o]ne significant problem faced by the Board under Rule
`
`41 .37(c)(1)(v) occurs when the language of a claim does not have direct antecedent
`
`language in the specification”).
`
`8.
`
`Second, the Examiner notes that patent examiners have no authority to waive
`
`the provisions of a rule. See In re Goodman, 3 USPQ2d 1866, 1871 (ComrPats 1987)
`
`noting the examiners have no authority to waive 37 C.F.R. §1.111(b).
`
`9.
`
`Third, MPEP § 2181 IV. expressly states:
`
`Even if the disclosure implicitly sets forth the structure, materials, or acts
`corresponding to a means- (or step-) plus-function claim element in
`compliance with 35 U.S.C. 112, first and second paragraphs, the USPTO
`may still require the applicant to amend the specification pursuant to 37
`CFR 1.75(d) and MPEP § 608.01 (0) to explicitly state, with reference to
`the terms and phrases of the claim element, what structure, materials, or
`acts perform the function recited in the claim element. [Emphasis added.]
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`

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`Application Number: 10/486,377
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`Art Unit: 3621
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`10.
`
`Because the lack of antecedent basis is currently recognized by the USPTO as a
`
`significant problem, because the Examiner has no authority to waive the provisions of a
`
`rule, and because the USPTO can require an applicant to amend the specification to
`
`expressly recite the corresponding structure for performing the claimed function, the
`
`Examiner concludes that, in accordance with 37 C.F.R. § 1.75(d), an amendment of the
`
`specification (or other appropriate correction of the above noted objections to the
`
`specification) is required.
`
`Claim Rejections — 35 us. C. § 1 12, Second Paragraph
`
`11.
`
`The following is a quotation of the second paragraph of 35 U.S.C. § 112:
`
`The specification shall conclude with one or more claims particularly pointing out and
`distinctly claiming the subject matter which the applicant regards as his invention.
`
`12.
`
`Claims 31, 32, 37, 38, and 42 are rejected under 35 U.S.C. § 112, second
`
`paragraph, as being indefinite for failing to particularly point out and distinctly claim the
`
`subject matter which Applicant regards as the invention.
`
`Regarding Claims 31, 32, 37, 38, and 42
`
`13.
`
`For the Non-Structural Phrases discussed below (see § Claim Interpretation), the
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`corresponding structure cannot be determined.
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`14.
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`Particularly, claims 31, 32, 37, 38, and 42 recite the limitations “[x] part
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`configured to
`
`It is self-evident that these claim limitations do not use the phrase
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`“means for” or “step for.” However, the claim limitations use a non-structural term, e.g.
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`“situation information acquisition part configured to,” which is a term that is simply a
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`substitute for “means for.” Therefore, the Examiner will apply §112, 116 to the claim
`
`limitations that use the non-structural term associated with functional language. See
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`MPEP § 2181 I.
`
`15.
`
`In light of the above, and in light of the Invocation Analysis — 35 U.S.C. §112, 16
`
`applied below in the § “Claim Interpretation,” the following claim phrases are limitations
`
`that invoke 35 U.S.C. §112, 116:
`
`g.
`
`In claim 31, the phrase “situation information acquisition part configured to
`
`acquire position information identifying the current position of the information terminal
`
`itself and to store the acquired position information in said at least one memory;”
`
`h.
`
`In claim 31, the phrase “service information acquisition part configured to
`
`acquire condition information of a service identifying a relationship between a content of
`
`the service and a position at which the service can be utilized and to store the acquired
`
`condition information in said at least one memory;”
`
`i.
`
`In claim 31, the phrase “determining part coupled to said situation
`
`information acquisition part and said service information acquisition part, said
`
`determining part configured to select a service which the electronic information terminal
`
`itself can utilize based on the acquired position information, the acquired condition
`
`information and the stored information in said at least one memory;”
`
`j.
`
`In claim 42, the phrase “situation information acquisition part configured to
`
`acquire position information identifying the current position of the information terminal
`
`itself, and to output said acquired position information to a determining part;”
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`

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`k.
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`In claim 42, the phrase “service information acquisition part configured to
`
`acquire condition information of a service identifying a relationship between a content of
`
`the service and a position at which the service can be utilized, and to output said
`
`acquired condition information to said determining part;” and
`
`I.
`
`In claim 42, the phrase “determining part configured to input said acquired
`
`position information from the situation information acquisition part and said acquired
`
`condition information from the service information acquisition part, and said determining
`
`part configured to select a service which the information terminal itself can utilize based
`
`on the acquired position information, the acquired condition information and the stored
`
`information in said information terminal itself.”
`
`16.
`
`For each claimed phrase that invokes 35 U.S.C. §112, 116, the written description
`
`fails to clearly link or associate the disclosed structure to the claimed function such that
`
`one of ordinary skill in the art would recognize what structure performs the claimed
`
`function.
`
`17.
`
`For each claimed phrase that invokes 35 U.S.C. §112, 16, Applicant is required
`
`to either:
`
`(a) Amend the claim so that the claim limitation will no longer be a non-structural
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`term plus function limitation under 35 U.S.C. §112, 116; or
`
`(b) Amend the written description of the specification such that it clearly links or
`
`associates the corresponding structure to the claimed function without introducing any
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`new matter. See 35 U.S.C. 132(a).
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`

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`Art Unit: 3621
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`Page 8 - 20131213
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`18.
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`For more information, see 37 C.F.R. § 1.75(d); MPEP §608.01(o); and MPEP
`
`§2181.
`
`Claim Rejections — 35 us. C. § 112, First Paragraph
`
`19.
`
`The following is a quotation of the first paragraph of 35 U.S.C. § 112:
`
`(a) The specification shall contain a written description of the invention, and of the
`manner and process of making and using it, in such full, clear, concise, and exact terms
`as to enable any person skilled in the art to which it pertains, or with which it is most
`nearly connected, to make and use the same and shall set forth the best mode
`contemplated by the inventor of carrying out his invention.
`
`20.
`
`Claim 40 is rejected under 35 U.S.C. § 112, first paragraph, as failing to comply
`
`with the written description requirement.
`
`21.
`
`The claims contain subject matter which was not described in the specification in
`
`such a way as to reasonably convey to one skilled in the relevant art that the inventors,
`
`at the time the application was filed, had possession of the claimed invention.
`
`22.
`
`The first paragraph of 35 U.S.C. § 112 contains a written description requirement
`
`that is separate and distinct from the enablement requirement. Ariad Pharms., Inc. v. Eli
`
`Lilly & Co., 598 F.3d 1336, 1340 (Fed. Cir. 2010) (en banc). The purpose of the written
`
`description requirement is to “ensure that the scope of the right to exclude, as set forth
`
`in the claims, does not overreach the scope of the inventor’s contribution to the field of
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`art as described in the patent specification.” Id. at 1353-54 (citation omitted). This
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`requirement “ensures that the public receives a meaningful disclosure in exchange for
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`being excluded from practicing an invention for a period of time.” Id.
`
`23.
`
`To satisfy the written description requirement, the specification must describe the
`
`claimed invention in sufficient detail that one skilled in the art can reasonably conclude
`
`that the inventor had possession of the claimed subject matter as of the filing date. Vas-
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`Cath Inc. v. Mahurkar, 935 F.2d 1555, 1562-63 (Fed. Cir. 1991). Specifically, the
`
`specification must describe the claimed invention in a manner understandable to a
`
`person of ordinary skill in the art and show that the inventor actually invented the
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`claimed invention. Id.; Ariad, 598 F.3d at 1351. The written description requirement
`
`does not demand any particular form of disclosure; however, “a description that merely
`
`renders the invention obvious does not satisfy the requirement.” Ariad, 598 F.3d at 1352
`
`(citations omitted). The written description requirement of 35 U.S.C. § 112, first
`
`paragraph, applies to all claims including original claims that are part of the disclosure
`
`as filed. Id. at 1349. Original claim language does not necessarily satisfy the written
`
`description requirement for the claimed subject matter. Id.
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`Regarding Claim 40
`
`24.
`
`Claim 40 is directed to a computer implemented method including, among other
`
`limitations, “selecting a service which the information terminal itself can utilize based on
`
`the acquired position information, the acquired condition information and the stored
`
`information in the at least one memory.” As an initial matter, the Examiner notes that
`
`claim 40 is not an originally-filed claim. The Examiner also finds that none of originally-
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`filed claims 1-30 recite the above limitation, and therefore original claims 1-30 do not
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`provide the necessary written description support for pending claim 40. Accord Ariad,
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`598 F.3d at 1349 (indicating original claim language does not necessarily satisfy the
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`written description requirement for the claimed subject matter).
`
`25.
`
`Applicant’s specification does not describe how a service is selected based on
`
`the acquired position information, the acquired condition information and the stored
`
`information in the at least one memory. Because of the phrase “based on,” the claimed
`
`acquired position information, acquired condition information and stored information in
`
`the at least one memory appear to be three inputs for an algorithm that outputs the
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`selection when executed by a computer, however the specification only identifies a
`
`generic computer (e.g., fig. 3) and does not disclose an algorithm for “selecting a
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`service which the information terminal itself can utilize based on the acquired position
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`information, the acquired condition information and the stored information in the at least
`
`one memory.” Beyond general statements of the function to be performed, which, at
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`most, may render the claimed function obvious, the inventor has not shown how the
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`recited “selecting a service” is made. This disclosure is not sufficient because a
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`description that merely renders the invention obvious does not satisfy the written
`
`description requirement. Ariad, 598 F.3d at 1352.
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`26.
`
`Because Applicant’s disclosure, as originally filed, does not convey to an
`
`ordinarily skilled artisan that Applicant had possession of the claimed invention, the
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`Examiner concludes that claim 40 does not have sufficient written description support to
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`satisfy 35 U.S.C. § 112, first paragraph.
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`

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`Art Unit: 3621
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`27.
`
`If claims 31, 32, 37, 38, and 42 were not construed under § 112, sixth paragraph,
`
`and therefore were not indefinite under § 112, second paragraph, the Examiner would
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`also reject claims 31, 32, 37, 38, and 42 as failing to satisfy the written description
`
`requirement § 112, first paragraph, because claims 31 and 42 contain similar limitations
`
`to claim 40 and claims 32, 37, and 38 depend from claim 31.
`
`Claim Rejections - 35 USC §102
`
`28.
`
`The following is a quotation of the appropriate paragraphs of 35 U.S.C. §102 that
`
`form the basis for the rejections under this section made in this Office action:
`
`A person shall be entitled to a patent unless —
`
`(e) the invention was described in (1) an application for patent, published under section
`122(b), by another filed in the United States before the invention by the applicant for
`patent or (2) a patent granted on an application for patent by another filed in the United
`States before the invention by the applicant for patent, except that an international
`application filed under the treaty defined in section 351 (a) shall have the effects for
`purposes of this subsection of an application filed in the United States only if the
`international application designated the United States and was published under Article
`21(2) of such treaty in the English language.
`
`29.
`
`Claims 31, 32, 37, 38,40, and 42 are rejected under 35 U.S.C. §102(e) as being
`
`anticipated by Horita et al. (US. 6,759,970 B1) (“Horita”).
`
`Regarding Claims 31,40, and 42
`
`30.
`
`Horita discloses:
`
`m.
`
`An electronic information terminal (“contents receiving station 3180”)
`
`comprising: at least one memory (“vehicle type information table 3150” and the
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`“share[d] ‘storage units of the components of fig. 3 (see also c. 14, I. 57-62), which
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`directly translate to the components of fig. 31), an input-output device (the “input unit”
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`and “output unit” of the “receiving equipment 326” (c . 14, |. 57-62) are common to the
`
`“transmitting equipment 3126”; alternative/y, transmitting equipment 3126 is itself an
`
`input/output device) and a central processing unit (CPU) (components of fig. 31 share
`
`an information processing unit in the manner similar to the components of fig. 3, see c.
`
`15, |. 6-13; see also “information processing unit” of the “receiving equipment 326” (c .
`
`14, I. 57-62) also common to the “transmitting equipment 3126”), said at least one
`
`memory, input-output device and CPU being connected to one another for transfer of
`
`data and control signals therebetween (see fig. 31 for configuration), said at least one
`
`memory storing information specific to at least one of the information terminal itself and
`
`a user of the information terminal, said information terminal comprising:
`
`n.
`
`a situation information acquisition part (“intended-vehicle location
`
`information retrieval equipment 3144”) configured to acquire position information
`
`identifying the current position of the information terminal itself and to store the acquired
`
`position information in said at least one memory;
`
`0.
`
`a service information acquisition part (“destination/route/distance/vehicle
`
`type information retrieval equipment 3130”) configured to acquire condition information
`
`of a service identifying a relationship between a content of the service and a position at
`
`which the service can be utilized and to store the acquired condition information in said
`
`at least one memory;
`
`p.
`
`a determining part (“information selecting equipment 3138”) coupled to
`
`said situation information acquisition part and said service information acquisition part,
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`said determining part configured to select a service which the electronic information
`
`terminal itself can utilize based on the acquired position information, the acquired
`
`condition information and the stored information in said at least one memory; and
`
`q.
`
`a display (“display equipment 3152”) coupled to said determining part,
`
`said display configured to display the utilizable service selected by said determining
`
`part.
`
`31.
`
`Horita also discloses wherein the information stored in the at least one memory
`
`of the information terminal is information relating to the gender of the user and the age
`
`of the user, since vehicle type is inherently related to both.
`
`Regarding Claims 32, 37, and 38
`
`32.
`
`Horita discloses the limitations of claim 31, as shown above, and further
`
`discloses the limitations of:
`
`r.
`
`Claim 32: The information terminal according to claim 31, wherein the
`
`information held in the information terminal itself is information relating to the user of the
`
`information terminal itself (see fig. 31 with associated text);
`
`s.
`
`Claim 37: The information terminal according to claim 31, wherein said at
`
`least one memory contains instructions stored on computer readable media for
`
`performing steps of selecting a service in said determining part (see c. 15, l. 1+); and
`
`t.
`
`Claim 38: The information terminal according to claim 31, wherein said
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`display comprises a visual display screen (see at least fig. 31 with associated text).
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`Application Number: 10/486,377
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`Page 14 - 20131213
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`Art Unit: 3621
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`Claim Interpretation
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`33.
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`Unless expressly noted otherwise by the Examiner, the Examiner maintains his
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`position on claim interpretation as noted in Paragraph No. 10, Paper No. 20100210.
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`34.
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`The Examiner withdraws his position on claim interpretation as noted in
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`Paragraph No. 11, Paper No. 20100210.
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`Conclusion
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`35.
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`Should Applicant desire in the future to receive formal or informal email
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`communications from the Examiner (e.g., acknowledgments, references, courtesy
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`copies of documents, etc.), the electronic file must contain written authorization to
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`conduct email communications. See MPEP §502.03 III. For Applicant’s benefit,
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`exemplary language for written authorization is in MPEP §502.03 III. 114. The exemplary
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`language is:
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`Recognizing that Internet communications are not secure, I hereby
`authorize the USPTO to communicate with me concerning any subject
`matter of this application by electronic mail.
`I understand that a copy of
`these communications will be made of record in the application file.
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`36.
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`In the situation where Applicant desires to receive email communications from
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`the Examiner, the Examiner suggests placing the above exemplary language in
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`Applicant’s next correspondence.
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`37.
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`Applicant is respectfully reminded that any suggestions or examples of claim
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`language provided by the Examiner are just that—suggestions or examples—and do
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`not constitute a formal requirement mandated by the Examiner. To be especially clear,
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`

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`Application Number: 10/486,377
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`Page 15 - 20131213
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`Art Unit: 3621
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`any suggestion or example provided in this Office Action (or in any future office action)
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`does not constitute a formal requirement mandated by the Examiner.
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`u.
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`Should Applicant decide to amend the claims, Applicant is also reminded
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`that—like always—no new matter is allowed. The Examiner therefore leaves it up to
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`Applicant to choose the precise claim language of the amendment in order to ensure
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`that the amended language complies with 35 U.S.C. § 112, 111.
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`v.
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`Independent of the requirements under 35 U.S.C. § 112, 11, Applicant is
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`also respectfully reminded that when amending a particular claim, all claim terms must
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`have clear support or antecedent basis in the specification. See 37 C.F.R. § 1.75(d)(1)
`
`and MPEP § 608.01 (0). Should Applicant amend the claims such that the claim
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`language no longer has clear support or antecedent basis in the specification, an
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`objection to the specification may result. Therefore, in these situations where the
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`amended claim language does not have clear support or antecedent basis in the
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`specification and to prevent a subsequent ‘Objection to the Specification’ in the next
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`office action, Applicant is encouraged to either (1) re-evaluate the amendment and
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`change the claim language so the claims do have clear support or antecedent basis or,
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`(2) amend the specification to ensure that the claim language does have clear support
`
`or antecedent basis. See again MPEP § 608.01(o) (113). Should Applicant choose to
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`amend the specification, Applicant is reminded that—like always—no new matter in the
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`specification is allowed. See 35 U.S.C. § 132(a).
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`lf Applicant has any questions on this
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`matter, Applicant is encouraged to contact the Examiner via the telephone number
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`listed below.
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`

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`Application Number: 10/486,377
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`Page 16 - 20131213
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`Art Unit: 3621
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`38.
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`Any inquiry of a general nature or relating to the status of this application or
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`concerning this communication or earlier communications from the Examiner should be
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`directed to Jacob C. Coppola whose telephone number is (571) 270-3922. The
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`Examiner can normally be reached on Monday-Friday, 9:00 am. - 5:00 pm.
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`If attempts
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`to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, Rutao
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`Wu can be reached at (571) 272-3136.
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`39.
`
`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.
`
`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, please contact the Electronic
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`Business Center (EBC) at (866) 217-9197 (toll-free).
`
`/JACOB C. COPPOLA/
`
`Primary Examiner, Art Unit 3621
`
`