www.uspto.gov
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`16/733,624
`
`01/03/2020
`
`Hiroshi YAHATA
`
`P59537
`
`1080
`
`125331
`
`7590
`
`12/12/2023
`
`Panasonic Intellectual Property Corporation
`of America c/o Greenblum & Bernstein, P.L.C.
`1950 Roland Clarke Place
`Reston, VA 20191
`
`EXAMINER
`
`YANG, NIEN
`
`ART UNIT
`2484
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`12/12/2023
`
`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):
`
`gbpatent @ gbpatent.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

` Commissioner for Patents
`
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`www.uspto.gov
`
`Panasonic Intellectual Property Corporation of America c/o Greenblum & Bernstein, P.L.C.
`1950 Roland Clarke Place
`Reston, VA 20191
`
`In re Application of
`PANASONIC INTELLECTUAL PROPERTY
`CORPORATION OF AMERICA
`Application No.: 16/733,624
`Filing Date: 03 January 2020
`Attomey Docket No.: P59537
`For: RECORDING MEDIUM, PLAYBACK
`METHOD, AND PLAYBACK DEVICE
`
`DECISION ON PETITION
`UNDER37 CFR1.78(c)
`
`This is a decision on the petition under 37 CFR 1.78(c), filed 25 May 2022, to accept an
`unintentionally delayed claim under 35 U.S.C. 119(e) for the benefit of priority to one or more
`prior-filed provisional applications.
`
`Under 37 CFR 1.78(c), a petition to accept an unintentionally delayed claim under 35 U.S.C.119(e)
`for the benefit of a prior-filed application must be accompaniedby:
`
`Gi)
`
`the reference required by 35 U.S.C. 119(e) and 37 CFR 1.78(a)(3) to the
`prior-filed application, unless previously submitted;
`
`Gi)
`
`the petition fee set forth in 37 CFR 1.17(m); and
`
`(iii)
`
`a statement that the entire delay between the date the claim was due under 37
`CFR 1.78(a)(4) and the date the claim was filed was unintentional. The Director
`may require additional information where there is a question whether the delay
`was unintentional.
`
`With regard to item (i), a proper referenceto the prior-filed application(s) has been included in an
`application data sheet as required by 37 CFR 1.78(a)(3).
`
`With regard to item (ii), the petition fee set forth in 37 CFR 1.17(m)has been submitted.
`
`With regard to item (iii), the statement of unintentional delay containedin the petition differs slightly
`from the language contained in 37 CFR 1.78(c)(3) and is hereby construed as a statement that the
`entire delay between the date the claim was due under 1.78(a)(4) and the date the claim wasfiled was
`unintentional. If this interpretation is incorrect, applicant is required to immediately notify the Office.
`Asconstrued, the provided statement of unintentional delay is acceptable.
`
`However, this petition was filed more than twoyears after the date the domestic benefit
`claim was due.
`
`

`

`The USPTOrequires additional information concerning whethera delay in seeking
`acceptance of a delayed benefit claim was unintentional where the petition to accept such
`benefit claim was filed more than twoyears after the date the benefit claim was due. See
`Clarification of the Practice for Requiring Additional Information in Petitions Filed in Patent
`Applications and Patents Based on Unintentional Delay, 85 FR 12222 (March 2, 2020). Therefore
`, additional information that provides an explanation of the circumstances surrounding the
`delay that establishes the entire delay was unintentional is required.
`
`The USPTOis concerned with three periods of delay. Petitioner is reminded the burden of
`proof to establish that the delay from the due date for the domestic benefit claim until the
`filing of a grantable petition was unintentional within the meaning of 35 U.S.C. 119 and 120
`and 37 CFR 1.78 rests with the petitioner.
`
`The first period of delay petitioner must address on renewedpetition is the delay in filing the
`domestic benefit claim. Petitioner must explain the delay between whenthe benefit claim
`wasdue and whenthe benefit claim wasfiled.
`
`The secondperiod of delay petitioner must address on renewedpetition is the delay in filing
`the initial petition pursuant to 37 CFR 1.78. Petitioner must explain whytheinitial petition
`wasnotfiled until M ay 25, 2022.The third period of delay petitioner must address on
`renewedpetition is the delay in filing a grantable petition pursuant to 37 CFR 1.78.
`
`Whenaddressing each of these three periods of delay, petitioner is reminded that an
`intentional course of action is not rendered unintentional when, upon reconsideration, the
`petitioner changeshis or her mindasto the course of action that should have been taken. See
`In re Maldague, 10 USPQ2d 1477, 1478 (Comm’r Pat. 1988). Petitioner’s failure to carry the
`burden of proof to establish that the “entire” delay was “unintentional” may lead to the denial
`of a petition under 37 CFR 1.78, regardless of the circumstancesthat originally resulted in
`the failure to timely submit the domestic benefit claim.
`
`Petitioner should note that the party whose delayis relevant is the party having the right or
`authority to file the domestic benefit claim in the above-identified application. When the
`applicant assigns the entire right, title, and interest in an invention to a third party (and thus
`does not retain any legal or equitable interest in the invention), the applicant’s delay is
`irrelevant in evaluating whether the delay was unintentional. See Kim v. Quigg, 718 F. Supp.
`1280, 1284, 12 USPQ2d 1604, 1607-08 (E.D. Va. 1989). See MPEP 711.03(c)(II)(C)-(F) for
`additional guidance on the information required to establish that the entire delay was
`unintentional.
`
`The additional information provided by petitioner is deemed to be adequate.
`
`For the reasons above, the petition under 37 CFR 1.78(c) is GRANTED.
`
`Patentee is advised that the inclusion of a prior-filed application on any patent, published application,
`or certificate of correction should not be construed as meaning that the present application is
`necessarily entitled to the benefit of the prior-filed application. In order for an application to be
`entitled to the benefit of the prior-filed application, all other requirements under 35 U.S.C. 119(e) and
`37 CFR 1.78 must be met.
`
`This application is being forwardedto the Office of Data Management, Certificates of Correction
`Branch,for treatment of patentee’s requestfor a certificate of correction.
`
`/George Dombroske/
`
`

`

`GEORGE DOMBROSKE
`PCT Legal Examiner
`International Patent Legal Administration
`(571)272-3283
`
`