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`Case: IPR2018-01592
`Patent No.: 9,320,122
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`EXHIBIT 1012
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`PRIME WIRE & CABLE, INC.
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` Petitioner,
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`v.
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`CANTIGNY LIGHTING
`CONTROL, LLC.
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` Patent owner
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`JASCO PRODUCTS, INC.
`
` Licensee
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`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
`
`ATTORNEY DOCKETNO.
`
`CONFIRMATIONNO.
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`15/822,295
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`11/27/2017
`
`John Joseph King
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`CEIC401D4
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`TAl4
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`THE LAW OFFICE OF JOHN J. KING, P.C.
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`P.O. BOX 1555
`WHEATON,IL 60187-1555
`
`Lene
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`TRAN, ANH Q
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`ART UNIT
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`2844
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`PAPER NUMBER
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`03/26/2018
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`ELECTRONIC
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`Please find below and/or attached an Office communication concerning this application or proceeding.
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`The time period for reply, if any, is set in the attached communication.
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`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`JOHN.KING @JKINGLAWOFFICE.COM
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`PTOL-90A (Rev. 04/07)
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`
`
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`Application No.
`Applicant(s)
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` 15/822,295 KING, JOHN JOSEPH
`Examiner
`Art Unit
`AIA (First Inventor toFile)
`Office Action Summary
`
`2844ANH TRAN vee.
`
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address--
`Period for Reply
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`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING DATE OF
`THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(a).
`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, evenif timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1.704(b).
`
`In no event, however, may a reply be timely filed
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`-
`-
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`Status
`1) Responsive to communication(s) filed on 11/27/17.
`L] A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filedon___
`2a)L] This action is FINAL.
`2b)X] This action is non-final.
`3)L] An election was made bythe applicant in responseto a restriction requirementset forth during the interview on
`; the restriction requirement and election have been incorporated into this action.
`4)L] Sincethis application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordancewith the practice under Ex parte Quayle, 1935 C.D. 11, 453 O.G. 213.
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`Disposition of Claims*
`5) Claim(s) 1-20 is/are pending in the application.
`5a) Of the above claim(s)
`is/are withdrawn from consideration.
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`6)L] Claim(s)
`is/are allowed.
`7) Claim(s) 1-20 is/are rejected.
`8)L] Claim(s)___ is/are objectedto.
`
`9)L] Claim(s)
`are subjectto 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
`hito-//Awww.usoto.gov/oatenis/init events/
`
`
` nvindex.isp or send an inquiry to PPHfeecback@uspto.aoy.
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`Application Papers
`10) The specification is objected to by the Examiner.
`11)KX] The drawing(s)filed on 11/27/17 is/are: a)X] 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)L] Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`a)LJ All
`b)[] Some** c)L] None ofthe:
`1.) Certified copies of the priority documents have been received.
`2.L] Certified copies of the priority documents have been received in Application No.
`3.L] 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.
`
`
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`Attachment(s)
`3) TC Interview Summary (PTO-413)
`1) X Notice of References Cited (PTO-892)
`Paper No(s)/Mail Date.
`.
`.
`4) O Other
`—_
`2) CT] Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date
`U.S. Patent and Trademark Office
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
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`Part of Paper No./Mail Date 20180318
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`
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`Application/Control Number: 15/822,295
`Art Unit: 2844
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`Page 2
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`1.
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`The present application, filed on or after March 16, 2013, is being examined
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`underthe first inventor to file provisions of the AIA.
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`DETAILED ACTION
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`Double Patenting
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`1.
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`The nonstatutory double patenting rejection is based on a judicially created
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`doctrine groundedin 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 wherethe conflicting claims are not identical, but at
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`least one examined application claim is not patentably distinct from the reference
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`claim(s) because the examined application claim is either anticipated by, or would have
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`been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46
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`USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed.
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`Cir. 1993); In re Longi, 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); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
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`A timelyfiled 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 nonstatutory
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`double patenting provided the reference application or patent either is shown to be
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`commonly owned with the examined application, or claims an invention made as a
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`result of activities undertaken within the scopeof a joint research agreement. See
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`MPEP § 717.02 for applications subject to examination underthe first inventor to file
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`
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`Application/Control Number: 15/822,295
`Art Unit: 2844
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`Page 3
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`provisions of the AIA as explained in MPEP § 2159. See MPEP §§ 706.02(I)(1) -
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`706.02(1)(3) for applications not subject to examination underthe first inventor to file
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`provisions of the AIA. A terminal disclaimer must be signed in compliance with 37 CFR
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`1.321 (b).
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`The USPTOInternet website contains terminal disclaimer forms which may be
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`used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application
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`in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26,
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`PTO/AIA/25, or PTO/AIA/26) should be used. A web-based eTerminal Disclaimer may
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`befilled out completely online using web-screens. An eTerminal Disclaimer that meets
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`all requirements is auto-processed and approved immediately upon submission. For
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`more information about eTerminal Disclaimers, refer to
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`www.uspto.gov/patents/process/file/efs/guidance/eT D-info-l.jsp.
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`2.
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`Claims 1, 8-9, 14-15, and 20 are rejected on the ground of nonstatutory double
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`patenting as being unpatentable over claims 1-2, 7, 8, 14-17, and 20 of U.S. Patent No.
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`9,320,122. Although the claims at issue are not identical, they are not patentably distinct
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`from each other becausethe claim recitations are merely reworded to recite the same
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`limitation in different language and some ofthe limitations have been grouped in a
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`slightly different mannerbutstill overall set forth the same limitations. All the recited
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`elements and limitations are found in claims 1-2, 7, 8, 14-17, and 20 of U.S. Patent No.
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`9,320,122.
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`
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`Application/Control Number: 15/822,295
`Art Unit: 2844
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`Page 4
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`Claim Rejections - 35 USC § 102
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`2.
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`In the event the determination of the status of the application as subject to AIA 35
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`U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any
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`correction of the statutory basis for the rejection will not be considered a new ground of
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`rejection if the prior art relied upon, and the rationale supporting the rejection, would be
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`the same under either status.
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`3.
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`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that
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`form the basis for the rejections underthis section madein this Office action:
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`A personshall be entitled to a patent unless —
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`(a)(1) the claimed invention was patented, described in a printed publication, or in public use,
`on sale or otherwise available to the public before the effectivefiling date of the claimed
`invention.
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`4.
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`Claim(s) 1-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by
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`Hatemata et al. (6,658,303).
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`Claim 1, Hatemata showsa timer(A, fig. 33 and 120, fig. 28) adapted to apply
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`powerto a device(light L, fig. 33), the timer comprising:
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`a first user selectable button (K1, fig. 28) of a user interface, wherein thefirst
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`user selectable button establishes an on time and an off time ofafirst timing pattern
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`(...NORMAL... see col. 28, lines 12-50); and
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`a second userselectable button (K7, K8, or Daylight Saving Time K10 , fig. 28) of
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`the user interface, wherein the second user selectable button establishes an on time
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`and an off time of a second timing pattern thatis different than the first timing pattern
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`(e.g., Daylight Saving Time K10 and see, col. 33, lines 12-34...The microcomputer 102
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`adopts the time resulting from advancing the time counted by the real-time clock 104 by
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`
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`Application/Control Number: 15/822,295
`Art Unit: 2844
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`Page 5
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`a predetermined time as the current time for performing timer control, etc....; therefore,
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`the on time and anoff time are advancing time whichis different).
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`Claim 2, Hatemata showsthe timer of claim 1 wherein eachofthe first timing
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`pattern and the second timing pattern comprises a daily timing pattern (e.g., see Fig.
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`34).
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`Claim 3, Hatemata showsthe timer of claim 1 wherein only one ofthe first user
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`selectable button and the second user selectable button can be selected at a time (only
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`one can be select at a time).
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`Claim 4, Hatemata showsthe timer of claim 3 wherein a selected button of the
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`first user selectable button and the second user selectable button will be deactivated
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`whenthe other of the first user selectable button and the second userselectable button
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`is selected (when Daylight Saving Time K10 is press, the NOMALis deactivated
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`becausethe pattern for NORMAL mode is not operated).
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`Claim 5, Hatemata showsthe timer of claim 1 further comprising a selection
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`indicator indicating wheneitherthe first user selectable button or the second user
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`selectable button has been selected (...reverse-displayed...col. 28 and col. 33, lines 12-
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`22).
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`Claim 6, Hatemata showsthe timer of claim 1 wherein each of the first user
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`selectable button and the second user selectable button comprises a selection indicator
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`indicating when the user selectable button has been selected (...reverse-
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`displayed...col. 28 and col. 33, lines 12-22).
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`
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`Application/Control Number: 15/822,295
`Art Unit: 2844
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`Page 6
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`Claim 7, Hatemata showsthe timer of claim 1 wherein a selection indicator
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`associated with a selected button of the first user selectable button and the second user
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`selectable button will be turnedoff if the other of the first user selectable button and the
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`second user selectable button is selected (the reverse-displayed only shows one
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`selected button at a time).
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`Claim 8, Hatemata showsthe timer of claim 1 further comprising an actuator
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`(Timer Off K9, Fig. 28 and see, col. 32, lines 5-25) for overriding a state of the timer to
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`turn a device attachedto the timer on or off.
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`Claims 9-20 are rejected as above because of similar elements and limitations.
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`Conclusion
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`Anyinquiry concerning this communication or earlier communications from the
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`examiner should be directed to ANH TRAN whosetelephone numberis (571)272-1813.
`
`The examiner can normally be reached on M-Th (8:00-6:30).
`
`Examiner interviews are available via telephone, in-person, and video
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`conferencing using a USPTO supplied web-based collaboration tool. To schedule an
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`interview, applicant is encouraged to use the USPTO Automated Interview Request
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`(AIR) at http://(www.uspto.gov/interviewpractice.
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, Alexander Taningco can be reached on 571-272-2048. The fax phone
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`numberfor the organization where this application or proceeding is assignedis 571 -
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`273-8300.
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`
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`Application/Control Number: 15/822,295
`Art Unit: 2844
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`Page 7
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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 accessto the Private PAIR system, contact the Electronic
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`
`/ANH TRAN/
`Primary Examiner, Art Unit 2844
`3/18/18
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`