UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMIVHSSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria1 Virginia 22313-1450
`www.uspto.gov
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`13/241,785
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`09/23/2011
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`Takuo Shimada
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`WASH1-48548
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`2155
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`02/25/2015 —PEARNE & GORDON LLP m
`7590
`52054
`1801 EAST 9TH STREET
`LIPITZ’ JEFFREY BRIAN
`S UITE 1 200
`CLEVELAND, OH 441 14-3 108
`
`PAPER NUMBER
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`3769
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`NOTIFICATION DATE
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`DELIVERY MODE
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`02/25/2015
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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
`following e—mail address(es):
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`patdocket @ pearne.c0m
`jcholley @pearne.c0m
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`PTOL—90A (Rev. 04/07)
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`

`

`
`
`Applicant(s)
`Application No.
` 13/241,785 SHIMADA, TAKUO
`
`Examiner
`Art Unit
`AIA (First Inventorto File)
`Office Action Summary
`
`3769JEFFREY LIPITZ first“
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`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
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`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 2 MONTHS FROM THE MAILING DATE OF
`THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(a).
`after SIX (6) MONTHS from the mailing date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1.704(b).
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`In no event, however, may a reply be timely filed
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`-
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`Status
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`1)IXI Responsive to communication(s) filed on 12/9/2011.
`[I A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2b)|:| This action is non-final.
`2a)I:| 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)|:I 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 EX parte Quay/e, 1935 CD. 11, 453 O.G. 213.
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`Disposition of Claims*
`5)IXI Claim(s) 1-17is/are pending in the application.
`5a) Of the above claim(s)
`is/are withdrawn from consideration.
`6)|:l Claim(s) _ is/are allowed.
`7)I:l Claim(s) _ is/are rejected.
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`8)I:I Claim(s)
`is/are objected to.
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`9)|XI Claim(s 1-17are subject to restriction and/or election requirement.
`I
`* 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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`participating intellectual property office for the corresponding application. For more information, please see
`htt
`://www.usoto. ov/ atents/init events"
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`
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`h/index.‘s or send an inquiry to PRI-Ifeedback{<‘buspto.qov.
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`Application Papers
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`10)I:I The specification is objected to by the Examiner.
`11)|:I 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).
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`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
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`Priority under 35 U.S.C. § 119
`12)I:I 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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`b)I:I Some” c)I:I None of the:
`a)I:I All
`1.I:I Certified copies of the priority documents have been received.
`2.I:I Certified copies of the priority documents have been received in Application No.
`3.I:I Copies of the certified copies of the priority documents have been received in this National Stage
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`application from the International Bureau (PCT Rule 17.2(a)).
`** 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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`
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`3) D Interview Summary (PT0_413)
`1) D Notice of References Cited (PTO-892)
`Paper No(s)/Mai| Date.
`.
`.
`—
`4) I:I Other'
`2) D Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
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`Paper No(s)/Mai| Date .
`U.S. Patent and Trademark Office
`PTOL-326 (Rev. 11-13)
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`Office Action Summary
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`Part of Paper No./Mai| Date 20150210
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`

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`Application/Control Number: 13/241 ,785
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`Page 2
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`Art Unit: 3769
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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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`DETAILED ACTION
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`This application contains claims directed to the following patentably distinct
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`species Embodiments 1, 2 and 3 corresponding to Figures 1, 4 and 6, respectively.
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`The species are independent or distinct because the optical treatment
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`apparatuses comprise unique configurations of light modules and associated control
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`systems that are not structural equivalents and require distinct 112 analyses and
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`searches. In addition, these species are not obvious variants of each other based on the
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`current record.
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`Applicant is required under 35 U.S.C. 121 to elect a single disclosed species, or
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`a single grouping of patentably indistinct species, for prosecution on the merits to which
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`the claims shall be restricted if no generic claim is finally held to be allowable. Currently,
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`no claims are generic.
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`There is a search and/or examination burden for the patentably distinct species
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`as set forth above because at least the following reason(s) apply: Each of the
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`embodiments requires unique considerations to evaluate 112 issues as well as search.
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`Applicant is advised that the reply to this requirement to be complete must
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`include (i) an election of a species to be examined even though the requirement
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`may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing
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`the elected species or grouping of patentably indistinct species, including any
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`

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`Application/Control Number: 13/241 ,785
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`Page 3
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`Art Unit: 3769
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`claims subsequently added. An argument that a claim is allowable or that all claims are
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`generic is considered nonresponsive unless accompanied by an election.
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`The election may be made with or without traverse. To preserve a right to
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`petition, the election must be made with traverse. If the reply does not distinctly and
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`specifically point out supposed errors in the election of species requirement, the election
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`shall be treated as an election without traverse. Traversal must be presented at the time
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`of election in order to be considered timely. Failure to timely traverse the requirement
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`will result in the loss of right to petition under 37 CFR 1.144. If claims are added after
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`the election, applicant must indicate which of these claims are readable on the elected
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`species or grouping of patentably indistinct species.
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`Should applicant traverse on the ground that the species, or groupings of
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`patentably indistinct species from which election is required, are not patentably distinct,
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`applicant should submit evidence or identify such evidence now of record showing them
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`to be obvious variants or clearly admit on the record that this is the case. In either
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`instance, if the examiner finds one of the species unpatentable over the prior art, the
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`evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35
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`U.S.C. 103(a) of the other species.
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`Upon the allowance of a generic claim, applicant will be entitled to consideration
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`of claims to additional species which depend from or otherwise require all the limitations
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`of an allowable generic claim as provided by 37 CFR 1.141.
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`Applicant is reminded that upon the cancellation of claims to a non-elected
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`invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one
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`

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`Application/Control Number: 13/241 ,785
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`Page 4
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`Art Unit: 3769
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`or more of the currently named inventors is no longer an inventor of at least one claim
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`remaining in the application. A request to correct inventorship under 37 CFR 1.48(a)
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`must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that
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`identifies each inventor by his or her legal name and by the processing fee required
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`under 37 CFR1.17(i).
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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 JEFFREY LIPITZ whose telephone number is (571 )270-
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`5612. The examiner can normally be reached on Monday to Thursday, 10 am to 6:30
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`pm.
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, William Thomson can be reached on (571)272-3718. The fax phone
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`number for the organization where this application or proceeding is assigned is 571 -
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`273-8300.
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`

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`Application/Control Number: 13/241 ,785
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`Page 5
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`Art Unit: 3769
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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.
`
`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 -272-1 000.
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`/JEFFREY LIPITZ/
`
`Examiner, Art Unit 3769
`
`/Bill Thomson/
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`Supervisory Patent Examiner, Art Unit 3769
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`