UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`Commissioner for Patents
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 223l3-I450
`www.uspto.gov
`
`NOVICK, KIM & LEE, PLLC
`3251 Old Lee Highway, Suite 404
`Fairfax, VA 22030
`
`Inventors: Nader Asghari-=Kamrani et al
`Application No. 12/210,926
`Filing Date: September 15, 2008
`Attorney Docket No. PL2891 174
`
`.
`:
`'
`
`/’3llllLlE'
`
`OFFICE or PETlTlONS
`
`Decision on Petitions
`
`This is a decision on the petition under 37 C.F.R. §§ l.78(c) and 1.78(e) filed February 22, 2016,
`as supplemented on August 8, 2016. This is also a decision on the petition to expedite under
`37 C.F.R. § 1.182 filed on August 8, 2016.
`
`The petition under 37 C.F.R. §§ l.78(c) and l.78(e) is dismissed.
`
`The petition under 37 C.F.R. § 1.182 is granted.
`
`Background
`
`'l‘he instant application was filed on September 15, 2008. The specification includes the
`following three priority claims:
`
`(1)
`(2)
`
`This application is a continuation of Application No. 1 1/23 9,046;
`Application No. 11/239,046 claims the benefit of Application No. 60/615,603;
`and
`
`'
`
`(3)
`
`This application is a continuation of Application No. 09/940,635.
`
`The third priority claim set forth above is improper because this application was filed after the
`date that Application No. 09/940,635 issued as a patent.
`
`The papers filed September 15, 2008, include a paper giving a power of attorney to the
`practitioners associated with Customer No. 63670 (“Law Firm 1”)
`
`The Office issued a filing receipt including the three priority claims on October 1, 2008.
`
`A paper giving a power of attorney to practitioners associated with Customer No. 23504 (“Law
`Firm 2”) was filed on September 8, 2009.
`
`1/5
`
`KAMRANI 2005
`
`1/5
`
`KAMRANI 2005
`
`

`
`Application No. 12/210,926
`
`Page 2
`
`A paper giving a power of attorney to practitioners associated with Customer No. 58293 (“Law
`Firm 3”) was filed on May 14,2010.
`
`This application issued as a patent on September. 11, 2012.
`
`The specification portion of the patent includes all three priority claims in the original
`specification.
`
`The front page of the patent does not include the priority claim in the specification indicating this
`application is a continuation of Application No. 09/940,635. Instead, the front page states
`Application No. 1 1/23 9,046 is a continuation of Application No. 09/940,635.
`
`A paper giving a power of attorney to practitioners associated with Customer No. 105857 (“Law
`Firm 4”) was filed on December 17, 2015.
`
`A petition under 37 C.F.R. § 1.78 was filed on February 22, 2016.
`
`A second petition under 37 C.F.R. § 1.78, a petition to expedite, a request for a certificate of
`correction, and an application data sheet (“ADS”) were filed on August 8, 2016.‘ The second
`petition indicates the petition is intended to replace the first petition.
`
`The ADS includes the following six priority claims:
`
`(1)
`(2)
`(3)
`(4)
`(5)
`(6)
`
`This application is a continuation-in-part (“CIP”) of Application No. 11/239,046;
`Application No. 11/239,046 claims the benefit of Application No. 60/615,603;
`Application No. 11/239,046 is a CIP of Application No. 09/940,635;
`This application is a CIP of Application No. 11/333,400;
`Application No. 11/333,400 is a CIP of Application No. 09/940,635; and
`Application No. 1 1/333,400 claims the benefit of Application No. 60/650,137.
`
`Discussion
`
`A petition under 37 C.F.R. §§ 1.78(c) and 1.78(e) must be accompanied by:
`
`(1)
`
`(2)
`(3)
`
`The reference required by 35 U.S.C. § 119(e) and 37 C.F.R. § l.78(a)(3) to
`the prior filed provisional application(s) and required by 35 U.S.C. § 120 and
`37 C.F.R. § 1.78(d)(2) to the nonprovisional application(s);
`The petition fee set forth in 37 C.F.R. § 1.l7(m); and
`A statement that the entire delay between the date the claim were due under
`37 C.F.R. §§ 1.78(a)(4) and 1.78(d)(3) and the date the claim were filed was
`unintentional?
`
`' The $200 fee for the petition to expedite and the $100 fee for the request for a corrected filing receipt have been
`charged to Deposit Account No. 50-5922.
`2 With respect to the statement of delay, the Office “may require additional information where there is a question
`whether the delay was unintentional." 37 C.F.R. § 1.78(e)(3).
`
`2/5
`
`KAMRANI 2005
`
`2/5
`
`KAMRANI 2005
`
`

`
`Application No. 12/210,926
`
`Page 3
`
`The Reference Submitted with the Petition under 37 C.F.R. § 1.78 is Unacceptable.
`
`This application was filed prior to September 16, 2012. As a result, the required reference can be
`submitted as part of an ADS and/or as part of amendment to the beginning of the specification.
`
`The petition filed February 22, 2016, is not accompanied by an ADS or an amendment.
`
`The papers filed August 8, 2016, include an ADS. The papers do not include an amendment.
`
`The reference in the ADS is unacceptable because the ADS is improper.
`
`37 C.F.R. § 1.76(c)(2) states,
`
`An application data sheet providing corrected or updated information must identify the
`information that is being changed, with underlining for insertions, and strike-through or
`brackets for text removed.
`
`The ADS fails to properly identify the changes made to the priority information of record.
`Therefore, the ADS is improper.
`
`A renewed petition may be filed. The renewed petition must include an amendment adding the
`required reference to the beginning of the specification and/or a new ADS.
`
`As a courtesy, the Office notes an ADS taking the following form would be acceptable:
`
`(1)
`
`(2)
`(3)
`
`The ADS lists the original three priority claims followed by the six priority claims
`in the ADS filed on August 8, 2016;
`The information for the first thrcc priority claims is stricken-through; and
`The information for the remaining six priority claims is underlined.
`
`The Information in the Reguested Certificate of Correction is Inconsistent with the Priority
`lnforrnation in the ADS.
`
`The requested certificate of correction seeks to make corrections to the beginning of the
`specification. The changes to the specification in the requested certificate of correction are
`inconsistent with the priority information in the ADS. Specifically, the changes to the
`specification set forth in the requested certificate of correction fail to include the third priority
`claim in the ADS. The third priority claim in the ADS consists of language indicating
`Application 11/239,046 is a CIP of Application No. 09/940,635.
`
`Any renewed petition filed in response to this decision should include a request for a certificate
`of correction including priority information consistent with the reference submitted with the
`renewed petition.
`
`3/5
`
`KAMRANI 2005
`
`3/5
`
`KAMRANI 2005
`
`

`
`Application No. 12/210,926
`
`Page 4
`
`Although not required, the Office recommends the phrase “with a priority of” in the specification
`be replaced with the phrase “claims the benefit of’ in order to clarify the relationship between
`Application No. 11/239,046 and Application No. 60/615,603 in the specification
`
`An Additional Problem in the Reguested Certificate of Correction.
`
`Paragraph (63) on the front page of the issue patent includes priority information involving
`priority claims under 35 U.S.C. § 120.
`
`Paragraph (64) on the front page of the issue patent includes priority information involving a
`priority claim under 35 U.S.C. § ll9(e) to Application No. 60/615,603.
`
`The requested certificate of correction seeks to make several changes to paragraph (63), which
`include the addition of information pertaining to a priority claim to Application No. 60/650,137.
`
`The requested certificate of correction does not seek to make any changes to paragraph (64).
`
`The additional priority information pertaining to Application No. 60/650,137 should be included
`in paragraph (64), not paragraph (63), of the front page of the patent.
`
`Statement of Unintentional Delay
`
`The petition seeks to add priority claims under 35 U.S.C. § 1 19(e) and § 120. Therefore, the
`petition is being treated as a petition under 37 C.F.R. §§ l.78(c) and 1.78(e).
`
`A petition under 37 C.F.R. §§ l.78(c) and 1.78(e) must include a statement that the entire delay
`between the date each of the claims was due under 37 C.F.R. §§ l.78(a)(4) or l.78(d)(3) and the
`date each of the claims was filed was unintentional.
`
`The petition states, “the entire delay between the date the benefit claim was due under pre-AIA
`37 C.F.R. 1.78(a)(2)(ii) and the benefit claims [was] filed was unintentional.”3 As a result of the
`format of the petition and other facts, the extent to which the statement of delay is intended to
`apply to the third priority claim in the ADS is unclear.
`
`The petition does not include a statement of delay addressing the delay in the submission of the
`priority claim under 35 U.S.C. § 119(6).
`
`Any renewed petition filed in response to this decision should state, “The entire delay between
`the date each of the claims was due under 37 C.F.R. §§ l.78(a)(4) or l.78(d)(3) and the date each
`of the claims was filed was unintentional.”
`
`The Office notes the entire delay in the submission of the fourth, fifth, and sixth priority claims
`in the ADS was not unintentional if Law Firm 1, Law Firm 2, or Law Firm 3 made the choice not
`to file any of the claims at any point when handling prosecution of the application. At least one
`
`3 The time period set forth in 37 C.F.R. § l.78(d)(3) is the same as the time period formerly set forth in 37 C.F.R.
`§ l.78(a)(2)(ii).
`
`4/5
`
`KAMRANI 2005
`
`4/5
`
`KAMRANI 2005
`
`

`
`Application No. 12/210,926
`
`Page 5
`
`of the prior law firms was aware of the existence of both the instant application and Application
`No. 11/333,400. Specifically, a power of attorney to Law Firm 3 was filed on the same date in
`the instant application and in Application No. l l/333,400.
`
`In view of the prior discussion, the petition is dismissed.
`
`Conclusion
`
`Further correspondence with respect to this matter may be submitted as follows:
`
`By Internet: A request for reconsideration may be filed electronically using EFS Web.“
`Document Code “PET.OP” should be used if the request is filed electronically.
`
`By mail:
`
`Mail Stop Petition
`Commissioner for Patents
`
`P.O. Box 1450
`
`Alexandria, VA 22313-1450
`
`By facsimile:
`
`(571) 273-8300
`Attn: Office of Petitions
`
`By hand:
`
`U.S. Patent and Trademark Office
`Customer Service Window
`
`Randolph Building
`401 Dulany Street
`Alexandria, VA 22314
`
`Telephone inquiries regarding this communication should be directed to Attorney Advisor
`Steven Brantley at (571) 272-3203.
`
`%fl%
`
`Charles Steven Brantley
`Attorney Advisor
`Office of Petitions
`
`“ General Information concerning EFS Web can be found at http://www.uspto.gov/patents/process/file/efs/index.jsp.
`
`5/5
`
`‘
`
`KAMRANI 2005
`
`5/5
`
`KAMRANI 2005