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
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`16/926,231
`
`07/10/2020
`
`Masayuki Hoshino
`
`731456.407C3
`
`TTI5
`
`Seed IP Law Group LLP/Panasonic (PIPCA)
`701 5th Avenue, Suite 5400
`Seattle, WA 98104
`
`NOORISTANY, SULAIMAN
`
`ART UNIT
`
`2415
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`PAPER NUMBER
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`NOTIFICATION DATE
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`DELIVERY MODE
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`07/02/2021
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`ELECTRONIC
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`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):
`USPTOeAction @ SeedIP.com
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`pairlinkdktg @seedip.com
`
`PTOL-90A (Rev. 04/07)
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`

`

`
`
`Disposition of Claims*
`1-16 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`C} Claim(s)
`is/are allowed.
`Claim(s) 1-16 is/are rejected.
`S)
`) © Claim(s)____is/are objected to.
`Cj) 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)(J 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)1) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`c)Z None ofthe:
`b)() Some**
`a)C All
`1.2 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 receivedin 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 7/10/20.
`U.S. Patent and Trademark Office
`
`3) (J Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
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`4)
`
`PTOL-326 (Rev. 11-13)
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`Office Action Summary
`
`Part of Paper No./Mail Date 20210629
`
`Application No.
`Applicant(s)
`16/926 231
`Hoshino etal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`SULAIMAN NOORISTANY
`2415
`Yes
`
`
`
`-- 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 7/10/20.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
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`2a)L) This action is FINAL. 2b)¥)This action is non-final.
`3)02 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\0) 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.
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`

`

`Application/Control Number: 16/926,231
`Art Unit: 2415
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`Page 2
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`Double Patenting
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`The nonstatutory double patenting rejection is based on a judicially created doctrine
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`grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or
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`improper timewise extension of the “right to exclude” granted by a patent and to prevent possible
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`harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate
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`where the claimsat issue are not identical, but at least one examined application claim is not
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`patentably distinct from the reference claim(s) because the examined application claim is either
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`anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg,
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`140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d
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`2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van
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`Ornum, 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); and 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) may
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`be used to overcome an actual or provisional rejection based on a nonstatutory double patenting
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`ground provided the reference application or patent either is shown to be commonly owned with
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`this application, or claims an invention madeasa result of activities undertaken within the scope
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`of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR
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`1.321(b).
`
`The USPTOinternet Website contains terminal disclaimer forms which maybeused.
`
`Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what
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`form should be used. A web-based eTerminal Disclaimer maybefilled out completely online
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`using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and
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`

`

`Application/Control Number: 16/926,231
`Art Unit: 2415
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`Page 3
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`approved immediately upon submission. For more information about eTerminal Disclaimers,
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`refer to http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-Ljsp.
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`Claims 1-16 are provisionally rejected on the ground of nonstatutory double patenting as
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`being unpatentable over claims 15-36 of parent Application No. 16038960. Although the claims
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`at issue are identical, they are not patentably distinct from each other because they are same
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`variants of each other.
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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 Sulaiman Nooristany whose telephone numberis (571) 270-1929.
`
`The examiner can normally be reached on M-F from 9 to 5. If attempts to reach the examiner by
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`telephone are unsuccessful, the examiner's supervisor, Jeffrey Rutkowski, can be reached on
`
`(571) 270-1215. The fax phone numberfor 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 may be obtained from either Private PAIR or Public
`
`PAIR. Status information for unpublished applications is available through Private PAIR only.
`
`Should you have questions on access to the Private PAIR system, contact the Electronic Business
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`Center (EBC) at 866-217-9197 (toll-free).
`
`/SULAIMAN NOORISTANY/
`Primary Examiner, Art Unit 2415
`
`