www.uspto.gov
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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address; COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`16/655,486
`
`10/17/2019
`
`Kenji OKANO
`
`WASHB-S51501US3
`
`4624
`
`mm
`
`aR
`PEA
`PEARNE & GORDON LLP
`1801 EAST 9TH STREET
`SUITE 1200
`CLEVELAND,OH 44114-3108
`
`ESCALANTE, OVIDIO
`
`3992
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`12/09/2019
`
`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):
`
`patdocket@ pearne.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`Disposition of Claims*
`1-16 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`CC) Claim(s)
`is/are allowed.
`Claim(s) 1-16 is/are rejected.
`S)
`) O Claim(s)___is/are objected to.
`C) Claim(s
`are subjectto restriction and/or election requirement
`)
`S)
`* If any claims have been determined allowable, you maybeeligible 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.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) )
`
`Application Papers
`10) The specification is objected to by the Examiner.
`11)0) The drawing(s) filedon__ is/are: a)) accepted or b)() 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)0) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`c)X None ofthe:
`b)L) Some**
`a)L) All
`1... Certified copies of the priority documents have been received.
`2.1.) Certified copies of the priority documents have been received in Application No.
`3.1.) 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)
`
`Notice of References Cited (PTO-892)
`
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date 10/17/2019.
`U.S. Patent and Trademark Office
`
`3) (J Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
`
`4)
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20191119
`
`Application No.
`Applicant(s)
`16/655,486
`OKANO etal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`OVIDIO ESCALANTE
`3992
`No
`
`
`
`-- The MAILING DATEofthis communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom 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) MONTHSfrom 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, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`1) Responsive to communication(s) filed on 10/17/2019.
`LC} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`2a)(J This action is FINAL. 2b))This action is non-final.
`3) An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
`4\(Z 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 Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`

`

`Applic ation/Control Number: 16/655,486
`Art Unit: 3992
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`Page 2
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`DETAILED ACTION
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`Reuman Type Non-Provisional Applica tian
`
`The instant application wasidentified, on filing, asa continuation of Application No.
`
`16/54%.04%, which was an application for reissue of Patent No. 9,799,132. See the Application
`
`Data Sheet (ADS) and the first paragraph of the specification, which werefiled on October 17,
`
`2018 as part of the original filing of the instant application.
`
`The mere fact that an application purports fo be 4 contraation or divisional of a parent
`
`reissue application does nol make # a ressue application itself because it is possible to Me a 35
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`USC Lita) contimung application of a reissue application. See in re Baunwin, 683 F.2d 405,
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`400, 214 USPO 385, 589 (CCPA 1982) (a patentee may [de a regular continuation of a reissue
`
`appheoation that obtams the benefit of the reissue appheation’s filme date). Accordingly,
`
`imorder
`
`for a continuation or divisional of a parent reissue application to be treated as a reissue
`
`application itself, there must be an identification, on filmg,
`
`that the application is a “continuation
`
`reissue applcahon” or a “deisional rewsue application’, as opposed toa Bauman type
`
`continuing apphcation,
`
`indicia that a continuation or divisional reissue application is being filed
`
`are:
`
`a} AST CFR LI7S rei
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`oath/declaration, which is not merely a copy of the parent’s
`
`reweue oablvdeclaration.
`
`by) Aspecification and/or claims in proper double cohunn reissue format per 37 (CPR
`
`LATS.
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`c} Amendments in proper format per 37 CPR L173.
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`ad} A 3? CPR 3.73 statement of assignee ownership and consent by assignee.
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`2) A correct transmittal letter (preferably Form PTO/VATA/SO} identifying the application
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`asareissue Filme ander 35 U.S.C. 3 251,
`
`f) Anidentfication of the application as being “a reissue continuation of Application
`
`No. [the parent reissue appkeation)’, or “an application for reissue of Patent No. [the
`
`onginal patent sought to be reissued] and a continnation of Application Ne. [the
`
`parent reissue apphcation)’, or equivalent language that xlentifies the application as
`
`

`

`Applic ation/Control Number: 16/655,486
`Art Unit: 3992
`
`Page 3
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`both a continuation and areissne application’. The sarne applies for a divisional
`
`reissue application, with the ward “divisional” substituted for “continuation”.
`
`See MPEP 1451.
`
`The instant application wasnotfiled with any of the above-listed indicia of 2 continuation
`
`reissue application. Rather, the ADS and the first paragraph of the specification fied as part of
`
`the orgmal appheation papers both wWentiiy the slant apphcation as acontrmation of remsue
`
`Application No, 16/54¢,046, which was an application for reissue of Patent No. 9799132.
`
`‘Phus,
`
`the instant application was not identified, on filing, as both acontinuation andareissue
`
`application. Accordingly,
`
`the instant application:
`
`a) Wasprocessed as a 35 USC 111(a) continuing application of a reissue application.
`
`See the Filing Receipt mailed on November4, 2019.
`
`b) Will be examined as a Bauman type continuing application, Le., a 35 USC 111(a)
`
`continuing application of a reissue application. Again see MPEP 1451.
`
`As established by In re Bauman, a Bauman type continuing application:
`
`a} Receives the bene?of the actual Ming date of the parent reissue apphcation.
`
`bh} Does not receive the benefa of the filing date of the patent sought to be reissued by
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`ihe parent rowsue application because the copendency requirernent of 35 USC 120
`
`not met,
`
`Accordingly, the effective fille date ofthe instant Rasnan type continuing application is
`
`August 22, 2019,.¢., the actual fine date of parcni rewsue Application No. 16/54¢,048.
`
`Ina Bauman type continning application,
`
`the patent sought to be reissued by the parent Cor
`
`grandparent} reissue application is available as prior art under pre-ATA 35 USO Ld2(b) or ATA
`
`‘Tn contrast, a Bouman type continuing applicahonis identified as “a continuation of reissue Application
`Mo. ithe parent reissue apphcation], or “a continuation of reissue Application No. [the parent reissue
`apple ation}, which is an application for reissue of Patent No. [the original patent sought 3 be reissued by
`the parent reissue applicalion!”. The sarne apphes for a Baumantype divisional application, with the worl
`“divisional” substituted for “contmuation”.
`
`

`

`Applic ation/Control Number: 16/655,486
`Art Unit: 3992
`
`Page 4
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`35 USC 1021) with respect to the Bauman type contmume application df the parent Cor
`
`grandparent} reissue application was fed more than one year afier the grant date of the patent.
`
`in this case, US Patent No. 9,799,132 (ie., the patent sought to be reissuedby the parent
`
`reissue apphcation) gealifes as prior artunder pre-ATA 35 USC 102¢b) or ATA 38 USC
`
`1O2¢a}(1} with respect to the instant Bauman type comtinumg application because parent reissue
`
`Appicahion No. 16/348.048 was filed more than one year after the grant date of Patent No.
`
`9,799,132. Farther. related US Publication Nos. 2017005342 and 20130521634 and related US
`
`Patent Nos. 9709132 and 9516275 all qualify as prior art under pre-ATA 35 USC 102) or
`
`ATA 35 USC LORai) with respect io the mstant Baionan type contmume application because
`
`each of these publications was published more than one year pnor to the effective Ailing date of
`
`the instant application.
`
`Option to Refiie Proper Continuation/Divisional Reissue Applicaton
`
`If applicant intended for this application to be a continuation/divisional reissue
`
`application, as opposed to a Bauman type continuing application, applicant may abandonthis
`
`application and refile a proper continuation/divisional reissue application while parent reissue
`
`Application No. 16/548,048 is still pending. See MPEP 1451 concerning the filing of a
`
`continuation/divisional reissue application. See also the Reissue Application Filing Guide which
`
`is available at:
`
`http ://www.uspto. gov/sites/default/files/forms/uspto_reissue_ads_guide_Sept2014.pdf
`
`Applicant should ensure the continuation/divisional reissue application fulfills all the
`
`requirements for a reissue application. See 35 USC 251 and 37 CFR 1.172, 1.173 and 1.175.
`
`With respect to the required fees, see 37 CFR 1.16(e), (n) and (r).
`
`Option to Convert Bauman Type Application io Reissue Application
`
`Should applicant desire that this application be treated as a continuation/divisional reissue
`
`application, as opposed to a Bauman type continuing application, applicant mayfile a petition
`
`under 37 CFR 1.182 to have this application treated as a continuation/divisional reissue
`
`application under 35 USC 251. Applicant should point out in the petition what, as of the filing
`
`date in the record, supports the filing asa reissue application under 35 USC 251. Further,
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`

`

`Applic ation/Control Number: 16/655,486
`Art Unit: 3992
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`Page 5
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`applicant should ensure the application fulfills all of the requirements for a reissue application.
`
`See 35 USC 251 and 37 CFR 1.172, 1.173 and 1.175. With respect to the required fees, see 37
`
`CFR 1.16(e), (n) and (r).
`
`Claim Rejections - 35 USC § 102
`
`In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and
`
`103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for
`
`the rejection will not be considered a new groundofrejectionif the priorart relied upon, and the rationale
`
`supporting the rejection, would be the same undereitherstatus.
`
`(b) the invention was patented or described in a printed publication in this or a foreign country or in
`public use or on sale in this country, more than one year prior to the date of application for patent in the
`United States.
`
`Claim(s) 1-16 is/are rejected under pre- AIA 35 U.S.C. 102(b) as being clearly anticipated US
`
`Patient No. 9799132 (.e., the patent sought io be reissued by the parent reissue application).
`
`It is noted that the instant application and the Patent No. 9,799132 share the same
`
`disclosure. As explained above, Patent No. 9,799,132 qualifies as prior art under AIA 35 USC
`
`102(b) with respect to the instant Bauman type non-provisional application.
`
`Conclusion
`
`Any inquiry concerning this communication or earlier communications from the examiner should
`
`be directed to Ovidio Escalante whose telephone numberis (571)272-7537. The examiner can normally
`
`be reached on Mondayto Friday - 6:00 AM to 2:30 PM.
`
`If attempts to reach the examinerby telephone are unsuccessful, the examiner's supervisor,
`
`Michael Fuelling can be reached on (571) 270-1367 The fax phone numberfor the organization where
`
`this application or proceeding is assigned is 571-273-9000. 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 applicationsis available through Private PAIR only. For more
`
`

`

`Applic ation/Control Number: 16/655,486
`Art Unit: 3992
`
`Page 6
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`information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access
`
`to the Private PAIR system,contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If
`
`you would like assistance from a USPTO Customer Service Representative or access to the automated
`
`information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
`
`/Ovidio Escalante/
`
`Ovidio Escalante
`Reexamination Specialist
`Central Reexamination Unit - Art Unit 3992
`(571) 272-7537
`
`Conferees:
`
`/Majid Banankhah/
`Reexamination Specialist
`CRU, Art Unit 3992
`
`/M.F/
`Supervisory Patent Examiner, Art Unit 3992
`
`