Case 1:24-cv-00733-MN Document 28-3 Filed 11/25/24 Page 1 of 6 PageID #: 1635
`Case 1:24-cv-00733-MN Document 28-3
`Filed 11/25/24
`Page 1 of 6 PagelD #: 1635
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`EXHIBIT L
`EXHIBIT L
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`Case 1:24-cv-00733-MN Document 28-3
`Filed 11/25/24
`Page 1 of 6 PagelD #: 1635
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`EXHIBIT L
`EXHIBIT L
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`Case 1:24-cv-00733-MN Document 28-3 Filed 11/25/24 Page 2 of 6 PageID #: 1636
`Case TENOR 33-M
`Document
`28-3
`Filed 11/25/24
`Page 2 of 6 PagelD #: 1636
`NITED STATES
`PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`www.uspto.gov
`
`
`
`18/197,071
`
`05/14/2023
`
`Paresh K. Patel
`
`104402-5075-US
`
`9843
`
`Morgan, Lewis & Bockius LLP (PA)
`1400 Page Mill Road
`Palo Alto, CA 94304-1124
`
`EGINWILLANTZ
`
`ART UNIT
`
`3698
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`08/16/2023
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`Thetime 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):
`
`donald.mixon @ morganlewis.com
`padocketingdepartment @ morganlewis.com
`
`PTOL-90A (Rev. 04/07)
`
`
`
`Case 1:24-cv-00733-MN Document 28-3 Filed 11/25/24 Page 3 of 6 PageID #: 1637
`Case 1:24-cv-00733-MN Document 28-3
`Filed 11/25/24
`Page 3 of 6 PagelD #: 1637
`
`Application/Control Number: 18/197,071
`Art Unit: 3698
`
`Page 2
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`DETAILED ACTION
`
`Notice ofPre-AlA or AIA Status
`
`1.
`
`Thepresent application,filed on or after March 16, 2013, is being examined underthefirst
`
`inventorto file provisions of the AIA.
`
`Claim Rejections - 35 USC § 112
`
`2.
`
`Claims 2 and 16 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA), second
`
`paragraph,as being indefinite for failing to particularly point out and distinctly claim the subject matter
`
`which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the
`
`applicant), regards as the invention.
`
`As per claims 2 and 16, acronymsare not permitted in the claims. They should be clearly
`
`expressed.
`
`As per claim 2, line 5, the acronym “LED’s” should be changedto - -light emitted diodes
`
`(LED’s) - -.
`
`Also, as per claim 16, line 5, the acronym “LED’s” should be changedto- -light emitted diodes
`
`(LED’s) - -
`
`
`
`3: The nonstatutory double patenting rejection is based onajudicially created doctrine
`
`Double Patenting
`
`grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or
`
`improper timewise extension of the "right to exclude" granted by a patent and to prevent possible
`
`harassment by multiple assignees. See In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed.
`
`Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686
`
`F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA
`
`1970);and, In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
`
`
`
`Case 1:24-cv-00733-MN Document 28-3 Filed 11/25/24 Page 4 of 6 PageID #: 1638
`Case 1:24-cv-00733-MN Document 28-3
`Filed 11/25/24
`Page 4 of 6 PagelD #: 1638
`
`Application/Control Number: 18/197,071
`Art Unit: 3698
`
`Page 3
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`A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) may be used to overcome
`
`an actual or provisional rejection based on a nonstatutory double patenting ground provided the
`
`conflicting application or patent is shown to be commonly owned with this application. See 37
`
`CFR 1.130(b).
`
`Effective January 1, 1994, a registered attorney or agent of record maysign a terminal
`
`disclaimer. A terminal disclaimer signed by the assignee mustfully comply with 37 CFR
`
`3.73(b).
`
`Claims 1-20 are rejected under the judicially created doctrine of obviousness-type double
`
`patenting as being unpatentable over claims 1-23 of U.S. Patent No. 9,659,296. Although the
`
`conflicting claims are not identical,
`
`they are not patentably distinct from each other because
`
`claims 1-20 of the instant application are directed to a similar subject matter contained in claims
`
`1-23 of the '296 patent. The only difference betweenthe instant application and the '296 patent
`
`is merely a labeling difference. It is noted that all the features of claims 1-20 are contained in
`
`claims 1-23 of the '296 patent.
`
`
`
`
`
`Case 1:24-cv-00733-MN Document 28-3 Filed 11/25/24 Page 5 of 6 PageID #: 1639
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`Case 1:24-cv-00733-MN Document 28-3 Page5of 6 PagelD #: 1639Filed 11/25/24
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`
`Application/Control Number: 18/197,071
`Art Unit: 3698
`
`Page 4
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`Claims 1-20 are rejected under the judicially created doctrine of obviousness-type double
`
`patenting as being unpatentable over claims 1-28 of U.S. Patent No. 11,501,296. Although the
`
`conflicting claims are not identical,
`
`they are not patentably distinct from each other because
`
`claims 1-20 of the instant application are directed to a similar subject matter contained in claims
`
`1-28 of the '296 patent. The only difference betweenthe instant application and the '296 patent
`
`is merely a labeling difference. It is noted that all the features of claims 1-20 are contained in
`
`claims 1-28 of the '296 patent.
`
`
`
`Claims 1-20 are provisionally rejected under the Judicially created doctrine of
`
`obviousness-type double patenting as being unpatentable over claims 1-20 of
`
`copending Application No. 17,973,507. Although the conflicting claims are not patentably
`
`distinct from each other because claims 1-20 of the instant application are directed to a similar
`
`subject matter contained in claims 1-20 of the '507 application. Both inventions are obvious
`
`variations of each other achieving the same end result.
`
`It would have been obvious to one of
`
`
`
`Case 1:24-cv-00733-MN Document 28-3 Filed 11/25/24 Page 6 of 6 PageID #: 1640
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`Case 1:24-cv-00733-MN Document 28-3 Page6of 6 PagelD #: 1640Filed 11/25/24
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`Application/Control Number: 18/197,071
`Art Unit: 3698
`
`Page 7
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`Information regarding the status of published or unpublished applications may be
`
`obtained from Patent Center. Unpublished application information in Patent Center is available
`
`to registered users. To file and manage patent submissions in Patent Center, visit:
`
`https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/a pply/patent-center for more
`
`information about Patent Center and https://www.uspto.gov/patents/docx for information about
`
`filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC)
`
`at 866-217-9197 (toll-free). If you would like assistance from a USPTO CustomerService
`
`Representative, call 800-786-9199 (INUSA OR CANADA)or 571-272-1000.
`
`/fp/
`
`/FRANTZY POINVIL/
`Primary Examiner, Art Unit 3698
`
`August 1, 2023
`
`
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