UNITED STA TES p A TENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`www .uspto.gov
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`APPLICATION NO.
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`FILING DATE
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`FIRST NAMED INVENTOR
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`ATTORNEY DOCKET NO.
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`CONFIRMATION NO.
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`14/530,407
`
`10/31/2014
`
`Joseph N. Romriell
`
`2792.0l-9354.2US
`
`1048
`
`7590
`24247
`TRASKBRITT, P.C.
`P.O. BOX 2550
`SALT LAKE CITY, UT 84110
`
`10/22/2015
`
`EXAMINER
`
`GAUTHIER, GERALD
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`ART UNIT
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`PAPER NUMBER
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`2653
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`NOTIFICATION DATE
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`DELIVERY MODE
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`10/22/2015
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`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):
`USPTOMail@traskbritt.com
`
`PTOL-90A (Rev. 04/07)
`
`Ultratec Exhibit 1018
`Ultratec v Sorenson IP Holdings Page 1 of 7
`
`

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`Application No.
`14/530,407
`
`Applicant(s)
`ROMRIELL ET AL.
`
`Office Action Summary
`
`AIA (First Inventor to File)
`Status
`No
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address -(cid:173)
`Period for Reply
`
`Examiner
`GERALD GAUTHIER
`
`Art Unit
`2653
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE ;J. MONTHS FROM THE MAILING DATE OF
`THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(a). In no event, however, may a reply be timely filed
`after SIX (6) MONTHS from 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) MONTHS from 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, even if timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1.704(b).
`
`Status
`1 )~ Responsive to communication(s) filed on 1012012014.
`0 A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on __ .
`2a)0 This action is FINAL.
`2b)~ This action is non-final.
`3)0 An election was made by the applicant in response to 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 Ex parte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`Disposition of Claims*
`5)~ Claim(s) 1-21 is/are pending in the application.
`5a) Of the above claim(s) __ is/are withdrawn from consideration.
`6)0 Claim(s) __ is/are allowed.
`7)~ Claim(s) 1-21 is/are rejected.
`8)0 Claim(s) __ is/are objected to.
`9)0 Claim(s) __ are subject to restriction and/or election requirement.
`* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http:ilwww.uspto.gov/patents/init events/pph/index.jsp or send an inquiry to PPHfeedback(wuspto.aov.
`
`Application Papers
`10)0 The specification is objected to by the Examiner.
`11 )~The drawing(s) filed on 1013112014 is/are: a)O accepted orb)~ 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:
`a)O All b)O Some** c)O None of the:
`Certified copies of the priority documents have been received.
`1.0
`Certified copies of the priority documents have been received in Application No. __ .
`2.0
`Copies of the certified copies of the priority documents have been received in this National Stage
`3.0
`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 (PT0-892)
`
`2) ~ Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date 1013112014. 1110612014.
`
`3) 0 Interview Summary (PT0-413)
`Paper No(s)/Mail Date. __ .
`4) 0 Other: __ .
`
`U.S. Patent and Trademark Office
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20151019
`
`Ultratec Exhibit 1018
`Ultratec v Sorenson IP Holdings Page 2 of 7
`
`

`

`Application/Control Number: 14/530,407
`Art Unit: 2653
`
`Page 2
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`DETAILED ACTION
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`Notice of Pre-A/A or AJA Status
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`1.
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`The present application is being examined under the pre-AIA first to invent
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`provisions.
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`Information Disclosure Statement
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`2.
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`The information disclosure statements submitted on October 31, 2014 and
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`November 6, 2014 are in compliance with the provisions of 37 CFR 1.97. Accordingly
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`the information disclosure statement is being considered by the examiner, except where
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`lined trough.
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`Claim Objections
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`3.
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`The numbering of claims is not in accordance with 37 CFR 1.126 which requires
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`the original numbering of the claims to be preserved throughout the prosecution. When
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`claims are canceled, the remaining claims must not be renumbered. When new claims
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`are presented, they must be numbered consecutively beginning with the number next
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`following the highest numbered claims previously presented (whether entered or not).
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`Misnumbered claims 3 and 16 have been renumbered 1-21.
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`Ultratec Exhibit 1018
`Ultratec v Sorenson IP Holdings Page 3 of 7
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`

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`Application/Control Number: 14/530,407
`Art Unit: 2653
`
`Page 3
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`Double Patenting
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`4.
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`The nonstatutory double patenting rejection is based on a judicially created
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`doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the
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`unjustified or improper timewise extension of the "right to exclude" granted by a patent
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`and to prevent possible harassment by multiple assignees. A nonstatutory double
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`patenting rejection is appropriate where the claims at issue are not identical, but at least
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`one examined application claim is not patentably distinct from the reference claim(s)
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`because the examined application claim is either anticipated by, or would have been
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`obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d
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`1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir.
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`1993); In re Langi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum,
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`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(CCPA1969).
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`A timely filed terminal disclaimer in compliance with 37 CFR 1.321 (c) or 1.321 (d)
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`may be used to overcome an actual or provisional rejection based on a nonstatutory
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`double patenting ground provided the reference application or patent either is shown to
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`be commonly owned with this application, or claims an invention made as a result of
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`activities undertaken within the scope of a joint research agreement. See MPEP §
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`717.02 for applications subject to examination under the first inventor to file provisions
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`of the AIA as explained in MPEP § 2159. See MPEP §§ 706.02(1)(1) - 706.02(1)(3) for
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`applications not subject to examination under the first inventor to file provisions of the
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`AIA. A terminal disclaimer must be signed in compliance with 37 CFR 1.321 (b).
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`Ultratec Exhibit 1018
`Ultratec v Sorenson IP Holdings Page 4 of 7
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`

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`Application/Control Number: 14/530,407
`Art Unit: 2653
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`Page 4
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`The USPTO Internet website contains terminal disclaimer forms which may be
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`used. Please visit www.uspto.gov/forms/. The filing date of the application in which the
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`form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA/25, or
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`PTO/AIA/26) should be used. A web-based eTerminal Disclaimer may be filled out
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`completely online using web-screens. An eTerminal Disclaimer that meets all
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`requirements is auto-processed and approved immediately upon submission. For more
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`information about eTerminal Disclaimers, refer to
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`http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-l.jsp.
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`5.
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`Claims 1-21 are rejected on the ground of nonstatutory double patenting as being
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`unpatentable over claims 1, 9, 14, 17, 25 and 29 of U.S. Patent No. 8,379,801 B2.
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`Although the claims at issue are not identical, they are not patentably distinct from each
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`other because at least one claim of the instant application is being taught by the claims
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`of the U.S. Patent. The patent claims would reject the application claims since they are
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`narrower than the application claims.
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`Claim Rejections - 35 USC§ 101
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`6.
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`35 U.S.C. 101 reads as follows:
`
`Whoever invents or discovers any new and useful process, machine, manufacture, or
`composition of matter, or any new and useful improvement thereof, may obtain a patent
`therefor, subject to the conditions and requirements of this title.
`
`Ultratec Exhibit 1018
`Ultratec v Sorenson IP Holdings Page 5 of 7
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`

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`Application/Control Number: 14/530,407
`Art Unit: 2653
`
`Page 5
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`Claims 1-21 are rejected under 35 U.S.C. 101 because the claimed invention is
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`directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an
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`abstract idea) without significantly more. Claim(s) 1-21 is/are directed to providing
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`assistance for a hearing-impaired user. The claim(s) does/do not include additional
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`elements that are sufficient to amount to significantly more than the judicial exception
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`because viewing the limitations as a combination, the claim simply instructs the
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`practitioner to implement the concept of providing assistance for a hearing-impaired
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`user with routine, conventional activity specified at a high level of generality in a
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`particular technological environment. When viewed either as individual limitations or as
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`an ordered combination, the claim as a whole does not add significantly more to the
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`abstract idea of providing assistance for a hearing-impaired user. The claim is not
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`patent eligible.
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`Conclusion
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`7.
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`The prior art made of record and not relied upon is considered pertinent to
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`applicant's disclosure. See PT0-892 form.
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to GERALD GAUTHIER whose telephone number is
`
`(571 )272-7539. The examiner can normally be reached on 8:00 AM to 4:30 PM.
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`Ultratec Exhibit 1018
`Ultratec v Sorenson IP Holdings Page 6 of 7
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`

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`Application/Control Number: 14/530,407
`Art Unit: 2653
`
`Page 6
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
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`supervisor, Fan Tsang can be reached on (571) 272-7547. The fax phone number for
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`the organization where this application or proceeding is assigned is 571-273-8300.
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`Information regarding the status of an application may be obtained from the
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`Patent Application Information Retrieval (PAIR) system. Status information for
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`published applications may be obtained from either Private PAIR or Public PAIR.
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`Status information for unpublished applications is available through Private PAIR only.
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`For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
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`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
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`USPTO Customer Service Representative or access to the automated information
`
`system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
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`October 19, 2015
`
`/GERALD GAUTHIER/
`Primary Examiner, Art Unit 2653
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`Ultratec Exhibit 1018
`Ultratec v Sorenson IP Holdings Page 7 of 7
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`