Attorney Docket No. P65860
`
`Application No.17/695,361
`
`IN THE UNITED STATES PATENT AND TRADEMARKOFFICE
`
`Inventors :
`
`Hiroshi YAHATAetal.
`
`Conf. No.:
`
`8800
`
`Appl. No.
`
`:
`
` 17/695,361
`
`Examiner: Not Yet Assigned
`
`Filed
`
`: March 15, 2022
`
`Group Art Unit: Not Yet Assigned
`
`For
`
`: METHOD FOR CONTROLLING FOOD PRINTER
`
`RESPONSE TO DECISION ON REQUEST TO PARTICIPATE IN THE PATENT
`PROSECUTION HIGHWAY PROGRAM AND PETITION TO MAKE SPECIAL
`UNDER37 C.F.R. §102(a)
`
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Commissioner:
`
`This Responseis in reply to the Decision, dated November 15, 2021, dismissing
`
`Applicant’s “Request For Participation In The Global/IPS Patent Prosecution Highway (PPH)
`
`Pilot Program In The USPTO,” filed September 27, 2022, setting a one month period to correct
`
`the deficiencies noted in the Decision, which extends until December 15, 2022.
`
`Morespecifically, the Decision stated that with regard to the requirement of condition
`
`(2), U.S. claims 1 and 2 do not sufficiently correspond with the allowable OEE claims 1 and 2
`
`because the limitations have been recited in U.S. claims 1 and 2 that are not recited in OEE
`
`claims 1 and 2.
`
`Initially, Applicant wishes to respectfully thank Paralegal Specialist Schene Gray and
`
`Lead Paralegal Specialist Joanne L. Burke for telephone interviews/discussions between
`
`December 2, 2022 and December 7, 2022. During the telephone interviews, Applicant’s
`
`representative requested clarification of the reasons for dismissal of the PPH request. In
`
`{P65860 05539677.docx}
`1
`
`
`
`Application No.17/695,361
`
`IN THE UNITED STATES PATENT AND TRADEMARKOFFICE
`
`Inventors :
`
`Hiroshi YAHATAetal.
`
`Conf. No.:
`
`8800
`
`Appl. No.
`
`:
`
` 17/695,361
`
`Examiner: Not Yet Assigned
`
`Filed
`
`: March 15, 2022
`
`Group Art Unit: Not Yet Assigned
`
`For
`
`: METHOD FOR CONTROLLING FOOD PRINTER
`
`RESPONSE TO DECISION ON REQUEST TO PARTICIPATE IN THE PATENT
`PROSECUTION HIGHWAY PROGRAM AND PETITION TO MAKE SPECIAL
`UNDER37 C.F.R. §102(a)
`
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Commissioner:
`
`This Responseis in reply to the Decision, dated November 15, 2021, dismissing
`
`Applicant’s “Request For Participation In The Global/IPS Patent Prosecution Highway (PPH)
`
`Pilot Program In The USPTO,” filed September 27, 2022, setting a one month period to correct
`
`the deficiencies noted in the Decision, which extends until December 15, 2022.
`
`Morespecifically, the Decision stated that with regard to the requirement of condition
`
`(2), U.S. claims 1 and 2 do not sufficiently correspond with the allowable OEE claims 1 and 2
`
`because the limitations have been recited in U.S. claims 1 and 2 that are not recited in OEE
`
`claims 1 and 2.
`
`Initially, Applicant wishes to respectfully thank Paralegal Specialist Schene Gray and
`
`Lead Paralegal Specialist Joanne L. Burke for telephone interviews/discussions between
`
`December 2, 2022 and December 7, 2022. During the telephone interviews, Applicant’s
`
`representative requested clarification of the reasons for dismissal of the PPH request. In
`
`{P65860 05539677.docx}
`1
`
`
`
`Attorney Docket No. P65860
`
`Application No.17/695,361
`
`particular, Applicant requested to clarify which part of U.S. claims 1 and 2 do not correspond to
`
`OEEclaims 1 and 2.
`
`In response, Ms. Gray and Ms. Burke indicated that the allowable OEE claims, in
`
`particular, the machine English translation thereof obtained from Dossier Access System, do not
`
`include “performed by a computer” added by the Preliminary Amendment submitted September
`
`27, 2022 together with the PPH request.
`
`Applicant representative indicated that the machine English translation of the allowable
`
`OEEclaims obtained from Dossier Access System is inaccurate, and the allowable OEE claims
`
`(original language) include the feature sufficiently corresponding to “performed by a computer.”
`
`Ms. Burke suggested filing a response showing and explaining how/whythe USclaims1
`
`and 2, including “performed by a computer”, sufficiently correspond to the allowable OEE
`
`claims.
`
`Thus, the present response is based on and in accordance with the above-noted telephone
`
`discussions.
`
`Applicant respectfully traverses the above-noted reasons for dismissal of the PPH request
`
`and submits that the independent claims | and 2 of the present application sufficiently
`
`correspond to the allowable OEEclaims.
`
`Asdiscussed during the above-noted interview, Applicant submits that the allowable
`
`OEEclaims(original language) include the feature sufficiently correspondsto “performed by a
`
`computer,” and the machinetranslation of the allowable OEEclaims obtained from Dossier
`
`Access System is inaccurate.
`
`{P65860 05539677.docx}
`2
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`Attorney Docket No. P65860
`
`Application No.17/695,361
`
`For supporting the above, Applicant herewith submits a verified English translation of the
`
`allowable OEE claims 1 and 2 (Japan Patent Application No. 2021-559001).
`
`As shownin the attached verified English translation, each of the allowable OEE claims
`
`1 and 2 recites that “a computer in the food-material providing system acquires
`
`chewing/swallowing information ...; determines ...; and transmits print control information ...”.
`
`At least based on suchrecitation in the verified translation, it is clear that, in the method
`
`of allowable OEEclaims 1 and 2, a computer performs the claimed method/process of
`
`“acquiring chewing/swallowing information ...”, “determining ...” and “transmitting print
`
`control information ...” (the method recited in lines 5-14 in claim 1 and lines 5-12 in claim 2 in
`
`the US claims).
`
`Applicant also submits that the difference between the US claims and the allowable OEE
`
`claims is based on the differences due to claim format requirements, and thus, the scope of the
`
`US claimsis the sameasor similar to the scope of the allowable OEEclaims.
`
`At least based on the above-noted reasons, Applicant’s respectfully submits that the
`
`claims of the present application sufficiently correspond to the allowable OEE claims.
`
`Nevertheless, Applicant has further amended each of US claims 1 and 2 to more closely
`
`correspond to the language of allowable OEE claims, such that “the method by a computerin the
`
`
`food-material providing system comprising: acquiring chewing/swallowing information...;
`
`determines ...; and transmitting print control information ...” as amended in the second
`
`Preliminary Amendmentconcurrently filed with the present response.
`
`By such an amendment, Applicant respectfully submits that it is further clarified that
`
`independentclaims 1 and 2 of the present application are sufficiently correspond to the allowable
`
`OEEclaims 1| and 2.
`
`{P65860 05539677.docx}
`3
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`
`
`Attorney Docket No. P65860
`
`Application No.17/695,361
`
`Thus, for at least the above noted reasons, Applicant respectfully requests that
`
`Applicant’s “Request For Participation In The Global/IPS Patent Prosecution Highway (PPH)
`
`Pilot Program In The USPTO” be Granted.
`
`Should there be any questions regarding this matter, please contact the undersigned at the
`
`telephone numberlisted below.
`
`Respectfully Submitted,
`
`/Naoko Ohashi/
`Reg. No. 66,999
`Naoko Ohashi
`
`Bruce H. Bernstein
`Reg. No. 29027
`
`December 13, 2022
`GREENBLUM & BERNSTEIN,P.L.C.
`1950 Roland Clarke Place
`Reston, VA 20191
`(703) 716-1191
`
`{P65860 05539677.docx}
`4
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