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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
`
`18/197,876
`
`05/16/2023
`
`Atsumi NIWA
`
`6810-842-CON-6
`
`9314
`
`Sheridan Ross P.C.
`Bradley M. Knepper
`1560 Broadway
`Suite 1200
`Denver, CO 80202
`
`CAMARGO, MARLYS.B.
`
`Pana
`
`2638
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`12/30/2024
`
`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):
`edocket @sheridanross.com
`
`sony @sheridanross.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`Disposition of Claims*
`1-14 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) _ is/are withdrawn from consideration.
`CL] Claim(s)__is/are allowed.
`Claim(s) 1-14 is/are rejected.
`(] Claim(s)__ is/are objectedto.
`C] Claim(s
`are subjectto restriction and/or election requirement
`)
`* 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) The drawing(s) filed on 05/16/2023 is/are: a)[¥) 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)(¥) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`_—_c)L) None ofthe:
`b)L) Some**
`a)Y) All
`1.1) Certified copies of the priority documents have been received.
`2.{v] Certified copies of the priority documents have been received in Application No. 15/303645.
`3.2.) 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
`U.S. Patent and Trademark Office
`
`3)
`
`4)
`
`(LJ Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20241220
`
`Application No.
`Applicant(s)
`18/197,876
`NIWAet al.
`
`Office Action Summary Art Unit|AIA (FITF)StatusExaminer
`MARLY S CAMARGO
`2638
`Yes
`
`
`
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORYPERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensionsof 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 05/16/2023.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`2a)() This action is FINAL. 2b)¥)This action is non-final.
`3) 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)(2) 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.
`
`

`

`Application/Control Number: 18/197,876
`Art Unit: 2638
`
`Page 2
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`Notice of Pre-AlA or AIA Status
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`1.
`
`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.
`
`DETAILED ACTION
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`2.
`
`This is the initial Office Action based on the application filed 05/16/2023. This
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`application is a Continuation of case 17/948908 (now US 11,696,053 B2, allowed on
`
`07/04/2023), which is a continuation of case 17/119084 (now US 11,483,509 B2, allowed
`
`on 10/25/2022), which is a continuation of case 16/840077 (now US 10,911,707 B2,
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`allowed on 02/02/2021), which is a continuation of application 16/559795 (now US
`
`10,659,716 B2, allowed on 01/02/2020), which is a continuation of application 15/987363
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`(now US 10,432,884 B2, allowed on 10/01/2019), which is a continuation of application
`
`15/313645 (now US 10,021,335 B2, allowed on 07/10/2018) The Examiner acknowledges
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`the following:
`
`3.
`
`4.
`
`5.
`
`Claims 1 — 14 werefile by Applicant.
`
`The drawings filed on 05/16/2023 are accepted by the Examiner.
`
`Currently claims 1
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`-— 14 are pending and they are being considered for
`
`examination.
`
`Information Disclosure Statement
`
`6.
`
`The four IDS documentfiled on 05/16/2023 is acknowledged by the Examiner.
`
`

`

`Application/Control Number: 18/197,876
`Art Unit: 2638
`
`Page 3
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`Priority
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`7.
`
`Foreign priority date is claimed as the earliest 06/02/2014 referring to a PCT
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`application PCT/JP2015/002549 which is based on the Japanese application documents
`
`JP-2014-114143 (with priority date 06/02/2014) and JP-2014-230000, JP-2014-230001
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`and JP-2014-230002 (with priority date 11/12/2014). Certified copies were filed to the
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`office with the great great-grandparent application patent application 15/313645, on
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`11/23/2016.
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`Double Patenting
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`8.
`
`A rejection based on double patenting of the “sarne invention” type fincis its support
`
`in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any
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`new and useful orocess... may obtain a pateni therefor...” (Emphasis added). Thus, the
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`term: “same invention,”
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`in this coniext, means an invention drawn ta identical subject
`
`matter. See Milerv. Eagle Mig. Co., 151 LLS. 166 (1884): In re Yooel, 422 F.2d 438, 164
`
`USPO 619 (GCPA 1970): in re Ockert, 245 F.2d 467, 114 USPQ 330 (COPA 1957}.
`
`A statutory type (35 U.S.C. 101 } double patenting reiection can be overcorne by
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`canceling or amending the claims thal are direcied to the same invention so they are ne
`
`longer coextensive in scope. The filing of a terminal cisclaimer cannot overcome a double
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`patenting refection based upon 35 U.S.C. 101.
`
`9.
`
`Claims 1 — 14 is/are rejected under 35 U.S.C. 101 as claiming the same invention
`
`as that of claims 1 — 14 of parent U.S. patent 11,696,053 B2. This is a statutory double
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`patenting rejection.
`
`

`

`Application/Control Number: 18/197,876
`Art Unit: 2638
`
`Page 4
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`Conclusion
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`10.
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`The prior art made of record and not relied upon is considered pertinent to
`
`applicant's disclosure.
`
`1. A. Niwa et al., US 11,696,053 B2 —- tis corresponds to the parent of the instant
`
`application and it represents the same invention (See the double patent rejection for more
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`details).
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`11.—Anyinquiry concerning this communication or earlier communications from the
`
`Contact
`
`examiner should be directed to MARLY CAMARGO whosetelephone numberis
`
`(571)270-3729. The examiner can normally be reached on 6:00AM - 10PM, M-F, EST.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
`
`supervisor, Lin Ye can be reached on (571)272-7372. The fax phone numberfor the
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`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. For more information
`
`about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on
`
`accessto the Private PAIR system, contact the Electronic Business Center (EBC) at 866-
`
`217-9197 (toll-free).
`
`If you would like assistance from a USPTO Customer Service
`
`

`

`Application/Control Number: 18/197,876
`Art Unit: 2638
`
`Page 5
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`Representative or access to the automated information system, call 800-786-9199 (IN
`
`USA OR CANADA)or 571-272-1000.
`
`/MARLY S CAMARGO/
`Primary Examiner, Art Unit 2638
`
`