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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`02/08/2019
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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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`Off/09 A0170” Summary
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`Application No.
`16/218,244
`Examiner
`GBEMILEKE J ONAMUTI
`
`Applicant(s)
`Basu Mallick et al.
`Art Unit
`AIA Status
`2463
`Yes
`
`- 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 12/12/2018.
`[:1 A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2a)D 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 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 aflowabte. 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 12/12/2018 is/are: a). accepted or b)[:] 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). All
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`b)D Some”
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`C)D 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 20190203
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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,
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`is being examined
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`under the first inventor to file provisions of the AIA.
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`Double Patenting
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`2.
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`The nonstatutory double patenting rejection is based on ajudicially 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 double
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`patenting rejection is appropriate where the conflicting claims are not identical, but at
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`least one examined application claim is not patentably distinct from the reference
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`claim(s) because the examined application claim is either anticipated by, or would have
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`been obvious over, the reference claim(s). See, e.g.,
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`In re Berg, 140 F.3d 1428, 46
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`USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed.
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`Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985);
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`In re Van Ornum,
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`686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619
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`(CCPA 1970); In re Thorington, 418 F.2d 528, 163 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 nonstatutory
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`double patenting provided the reference application or patent either is shown to be
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`commonly owned with the examined application, or claims an invention made as a
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`result of activities undertaken within the scope of ajoint research agreement. See
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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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`MPEP § 717.02 for applications subject to examination under the first inventor to file
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`provisions of the AIA as explained in MPEP § 2159. See MPEP §§ 706.02(I)(1) -
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`706.02(I)(3) for applications not subject to examination under the first inventor to file
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`provisions of the AIA. A terminal disclaimer must be signed in compliance with 37 CFR
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`1.321(b).
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`The USPTO Internet website contains terminal disclaimer forms which may be
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`used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application
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`in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26,
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`PTO/AlA/25, or PTO/AlA/26) should be used. A web-based eTerminal Disclaimer may
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`be filled out completely online using web-screens. An eTerminal Disclaimer that meets
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`all requirements is auto-processed and approved immediately upon submission. For
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`more information about eTerminal Disclaimers, refer to
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`www. us pto.gov/patents/process/file/efs/gui dance/eTD -i nfo- l. isp.
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`3.
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`Claims 1-16 are rejected on the ground of nonstatutory double patenting as
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`being unpatentable over Claims 1-16 of Patent No.: US 9,888,424 B2 to Basu Mallick et
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`al. Although the claims at issue are not identical, they are not patentably distinct from
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`each other because Claims 1-16 of this instant application is obvious variant of Claims
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`1-16 of Patent No.: US 9,888,424 B2 to Basu Mallick et al.
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`in that they contain
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`substantially the same subject matter. See table below:
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`Patent No.: US 9,888,424 BZ
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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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`Claim 15
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`Claim 16
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`Claim 15
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`Claim 16
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`Double Parenting
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`4.
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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 US. 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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`

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`Application/Control Number: 16/218,244
`Art Unit: 2463
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`Page 5
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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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`5.
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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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`
`
`

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`Application/Control Number: 16/218,244
`Art Unit: 2463
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`Page 6
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`Claim 16
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`Claim 14
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`Claim 15
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`Claim 14
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`Claim 15
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`Claim 16
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`6.
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`Claims 1-16 are provisionally rejected 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. Although the claims at issue are not identical, they are
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`not patentably distinct from each other because Claims 1-16 of this instant application
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`is obvious variant of Claims 1-12 of copending application No.: 15/855,841 to Basu
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`Mallick et al.
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`in that they contain substantially the same subject matter. See table
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`below:
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`This is a provisional nonstatutory double patenting rejection because the
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`patentably indistinct claims have not in fact been patented.
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`

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`Application/Control Number: 16/218,244
`Art Unit: 2463
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`Page 7
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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 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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`

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`Application/Control Number: 16/218,244
`Art Unit: 2463
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`Page 8
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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).
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`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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`