`
`
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`PO. Box 1450
`Alexandria, Virginia 2231371450
`www.uspto.gov
`
`15/604,760
`
`05/25/2017
`
`MITSUO ABE
`
`PANDP0220US
`
`5043
`
`MARK D. SARALINO (PAN)
`RENNER, OTTO, BOISSELLE & SKLAR, LLP
`1621 EUCLID AVENUE
`19TH FLOOR
`CLEVELAND, OH 441 15
`
`SMITHLINDAB
`
`ART UNIT
`2852
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`05/31/2019
`
`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):
`
`ipdoeket@rennerotto.eom
`
`PTOL-90A (Rev. 04/07)
`
`
`
`0/7709 A0170” Summary
`
`Application No.
`15/604,760
`Examiner
`LINDA B SMITH
`
`Applicant(s)
`ABE et al.
`Art Unit
`2852
`
`AIA (FITF) Status
`Yes
`
`- The MAILING DA TE of this communication appears on the cover sheet wit/7 the correspondence address -
`Period for Reply
`
`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). 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
`
`1). Responsive to communication(s) filed on 1/16/19.
`[:1 A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`
`2a)D This action is FINAL.
`
`2b)
`
`This action is non-final.
`
`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.
`
`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.
`
`Disposition of Claims*
`
`5)
`
`Claim(s) fl is/are pending in the application.
`
`5a) Of the above claim(s)
`
`is/are withdrawn from consideration.
`
`E] Claim(s)
`
`is/are allowed.
`
`Claim(s) 1—2,5 and 8—9 is/are rejected.
`
`Claim(s) 3—4 and 6-7 is/are objected to.
`
`) ) ) )
`
`6 7
`
`8
`
`
`
`are subject to restriction and/or election requirement
`[:1 Claim(s)
`9
`* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway program at a
`
`participating intellectual property office for the corresponding application. For more information, please see
`
`http://www.uspto.gov/patents/init events/pph/index.'sp or send an inquiry to PPeredback@uspto.gov.
`
`Application Papers
`10):] The specification is objected to by the Examiner.
`
`11):] The drawing(s) filed on
`
`is/are: a)C] accepted or b)E] 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)C] Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`
`a)CI All
`
`b)C] Some**
`
`c)CI None of the:
`
`1C] Certified copies of the priority documents have been received.
`
`2C] 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)
`
`1) C] Notice of References Cited (PTO-892)
`
`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
`
`3) C] Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) CI Other-
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20190513
`
`
`
`Application/Control Number: 15/604,760
`Art Unit: 2852
`
`Page 2
`
`DETAILED ACTION
`
`1.
`
`2.
`
`The communication received on 1/16/19 has been entered into record.
`
`Claims 1—9 are now pending.
`
`Appeal Brief
`
`3.
`
`In view of the appeal brief filed on 1/ 16/ 19, PROSECUTION IS HEREBY REOPENED.
`
`A new ground of rejection is set forth below.
`
`To avoid abandonment of the application, appellant must exercise one of the following
`
`two options:
`
`(1) file a reply under 37 CFR 1.111 (if this Office action is non—final) or a reply under 37
`
`CFR 1.113 (if this Office action is final); or,
`
`(2) initiate a new appeal by filing a notice of appeal under 37 CFR 41.31 followed by an
`
`appeal brief under 37 CFR 41.37. The previously paid notice of appeal fee and appeal brief fee
`
`can be applied to the new appeal. If, however, the appeal fees set forth in 37 CFR 41.20 have
`
`been increased since they were previously paid, then appellant must pay the difference between
`
`the increased fees and the amount previously paid.
`
`A Supervisory Patent Examiner (SPE) has approved of reopening prosecution by signing
`
`below:
`
`/Clayton E. LaBalle/
`Supervisory Patent Examiner, Art Unit 2852
`
`Claim Rejections - 35 US C § 112
`
`4.
`
`The following is a quotation of 35 USC. 112(b):
`(b) CONCLUSION.7The specification shall conclude with one or more claims particularly pointing
`out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the
`invention.
`
`The following is a quotation of 35 USC. 112 (pre—AIA), second paragraph:
`
`
`
`Application/Control Number: 15/604,760
`Art Unit: 2852
`
`Page 3
`
`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.
`
`5.
`
`Claims 1 and 9 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre—AIA), second
`
`paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject
`
`matter which the inventor or a joint inventor, or for pre—AIA the applicant regards as the
`
`invention.
`
`6.
`
`Claims 1 and 9 are indefinite because the claims recite an apparatus and method of use of
`
`that apparatus.
`
`a.
`
`. . .a dispiay unit for dispiayiiig a range designaiieii screen fer use iii
`
`designating a desired inni’ecds name by a user,” {Ciainis i and is}
`
`Please see the follow case law for more information:
`
`
`
`au m ‘7114
`
`n,
`
`ll)w ”I.
`
`42‘:“I;
`
` paragraph 2, Ex parts? Lyeii, 1"?
`
`USPQ2d 1543 (19%). As the Bdard mated in Lyeii, "the statutery eiass rd" inveniien is impartant in
`
`determining patentahiiity and iiii‘ringement.” {do at 1558 (citing In re Kuehi, 4’75 F.2d 658, 665
`
`.. 738., 796, 19 L.Ed. 566 (1869))0
`
`{1973); Rubber Ce, 1", (3095236531; 9 Waii. ".783, 76
`
`
`
`
`
`Application/Control Number: 15/604,760
`Art Unit: 2852
`
`Page 4
`
`
` d, at laSG—SE, This rule is well recognized and has been incorporated into the PHYS
`
`
`it?
`
`
`
`we also Robert (I. Faber, hamlet on Mechanics of Patent moire Brafting 9: 66,4
`
`Manual of Patent Examination Procedure. 3? 2} 7'3, 9135;?){39'} (1999)
`
`{255361) ("Never mix claim types to different classes of invention in a single slain/1.”),
`
`Allowable Subject Matter
`
`7.
`
`Claims 1—9 would be allowable if rewritten or amended to overcome the rejection(s)
`
`under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre—AIA), 2nd paragraph, set forth in this Office
`
`action.
`
`Conclusion
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to LINDA B SMITH whose telephone number is (571)270—3 827.
`
`The examiner can normally be reached on Monday—Friday, 9:30am—6:30pm, EST.
`
`Examiner interviews are available via telephone, in—person, and video 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.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
`
`supervisor, Clayton LaB alle can be reached on (571) 272—1594. The fax phone number for 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
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ ChargeStill Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site