UNITED STATES PATENT AND TRADEMARK OFFICE
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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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`F ING DATE
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`FIRST NAMED INVENTOR
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`ATTORNEY DOCKET NO.
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`CONF {MATION NO.
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`11/980,337
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`10/30/2007
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`Michael L. Wach
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`06948105029 CON2
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`6907
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`Michael L. Wach —
`“W”
`"90
`4425 Mariners Ridge
`PETKOVSEK, DANIEL
`ART UNIT
`PAPER NUMBER
`Alpharetta, GA 30005
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`2874
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`MAIL DATE
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`03/ 10/2011
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`DELIVERY MODE
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`PAPER
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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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`Page 1
`PTOL—90A (Rev. 04/07)
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`ILLUMINA, INC. EXHIBIT 1013
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`Page 1
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`Office Action Summary
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`Application No.
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`11/980,337
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`Examiner
`DANIEL PETKOVSEK
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`App|icant(s)
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`WACH ET AL.
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`A“ Unit
`2874
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`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
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`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE § MONTH(S) OR THIRTY (30) DAYS,
`WHICHEVER IS LONGER, 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).
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`Status
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`1)IXl Responsive to communication(s) filed on the pager filed March 1, 2011.
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`2a)I:I This action is FINAL.
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`2b)IXl This action is non—final.
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`3)I:l Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
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`closed in accordance with the practice under Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
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`Disposition of Claims
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`4)IZl Claim(s) 4_7is/are pending in the application.
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`4a) Of the above claim(s)
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`is/are withdrawn from consideration.
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`5 I:l Claim s)
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`is/are allowed.
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`)
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`s)
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`)
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`Application Papers
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`is/are objected to.
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`are subject to restriction and/or election requirement.
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`9)I:l The specification is objected to by the Examiner.
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`10)|Z| The drawing(s) filed on March 1 2011 is/are: a)|XI accepted or b)|:I objected to by the Examiner.
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`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
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`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
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`11)I:I The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PTO-152.
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`Priority under 35 U.S.C. § 119
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`12)I:I Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
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`a)|:| All
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`b)I:l Some * c)|:| None of:
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`1.|:I Certified copies of the priority documents have been received.
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`2.|:| Certified copies of the priority documents have been received in Application No. _.
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`3.I:I Copies of the certified copies of the priority documents have been received in this National Stage
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`application from the International Bureau (PCT Rule 17.2(a)).
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`* See the attached detailed Office action for a list of the certified copies not received.
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`Attachment(s)
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`1) IX] Notice of References Cited (PTO-892)
`2) D Notice of Draftsperson‘s Patent Drawing Review (PTO-948)
`3) |:| Information Disclosure Statement(s) (PTO/SB/08)
`Paper No(s)/Mail Date
`.
`U.S. Patent and Trademark Office
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`4) El Interview Summary (PTO-413)
`Paper N°(5)/Ma" DaTe- E
`5) I:I Notice of informal Patent Application
`6) D Other:
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`PTOL-326 Ptaggs-26)
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`Office Action Summary
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`Part of Paper No./Mail Date 20110308
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`Page 2
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`

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`Application/Control Number: 11/980,337
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`Page 2
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`Art Unit: 2874
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`DETAILED ACTION
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`This office action is in response to the request for reconsideration and arguments
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`presented March 1, 2011. The amendments to the specification are acknowledged.
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`Drawings
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`1.
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`The corrected drawings were received on March 1, 2011. These drawings are
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`acknowledged.
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`Claim Rejections - 35 USC § 103
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`2.
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`The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all
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`obviousness rejections set forth in this Office action:
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`(a) A patent may not be obtained though the invention is not identically disclosed or described as set
`forth in section 102 of this title, if the differences between the subject matter sought to be patented and
`the prior art are such that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said subject matter pertains.
`Patentability shall not be negatived by the manner in which the invention was made.
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`3.
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`Claim 47 is rejected under 35 U.S.C. 103(a) as being unpatentable over Forman
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`U.S.P. No. 5,351,324.
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`Forman U.S.P. No. 5,351,324 teaches (ABS; Figure 1; column 2, lines 13-62;
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`Claims) teaches a method comprising: providing a segment of optical fiber 14
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`comprising a first end face (left face in Fig. 1), a second end face (right face in Fig. 1),
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`and a cylindrical surface (body of fiber) that extends from the first end face to the
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`second end face; forming refractive index disruptions 16/18/22 within a volume defined
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`by the first end face, the second end face, and the cylindrical surface in response to
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`illuminating the segment of optical fiber with actinic radiation (e.g. ultraviolet (UV) light
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`Page 3
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`Page 3
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`

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`Application/Control Number: 11/980,337
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`Page 3
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`Art Unit: 2874
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`exposure); generating (inputting) a laser interference pattern (by using light source 24
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`and lens 28 to impinge upon the fiber/grating(s)) from the formed refractive index
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`disruptions; reading the laser interference pattern through the cylindrical surface by use
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`of a detector 32; and inherently determining a code that is based upon the read laser
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`interference pattern (detection/sending/control of element 32 to recognized code).
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`Regarding independent claim 47, Forman ‘324 does not explicitly teach that the
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`detector to read the interference pattern is a camera. However, one having ordinary
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`skill in the art at the time the invention was made would have recognized using any
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`number of optical detectors/sensors to detect optical signals in such a device.
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`In the
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`optical communications art, many well-known detecting elements are commonly used,
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`such as interferometers, photodetectors, sensors (such as cameras), probes, image
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`recognizers, etc. The use of one well-known optical detector (such as a camera in
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`claim 47) does not serve to patentably distinguish claim 47 from the prior art of Forman
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`‘324. One having ordinary skill in the art would have used logic and common sense to
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`substitute a camera for the detector element 32 of Forman. The motivation or purpose
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`of using a camera would be to optically read and record the data for storage (and further
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`controlling use). See KSR v. Te/ef/ex, 127 S.Ct. 1727 (2007). Claim 47 does not
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`patentably distinguish from the prior art of record.
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`Response to Arguments
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`4.
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`Applicant’s arguments, see request for reconsideration (pages 5-9), filed March
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`1, 2011, with respect to the new matter rejection of claim 47 (see office action mailed
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`Page 4
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`Page 4
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`Application/Control Number: 11/980,337
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`Page 4
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`Art Unit: 2874
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`August 25, 2010) have been fully considered and are persuasive. Based on the
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`arguments presented, the new matter rejections (35 U.S.C. 112, first paragraph) have
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`been withdrawn. The date of June 24, 2000 is tentatively being used as the effective
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`filing date for currently pending independent claim 47.
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`5.
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`However, based on a further search and consideration of the prior art, a new
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`rejection of claim 47 is made to Forman '324 under 35 U.S.C. 103(a). This action is
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`made NON-FINAL. The normal statutory periods apply.
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`In ventorship
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`6.
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`This application currently names joint inventors.
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`In considering patentability of
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`the claims under 35 U.S.C. 103(a), the examiner presumes that the subject matter of
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`the various claims was commonly owned at the time any inventions covered therein
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`were made absent any evidence to the contrary. Applicant is advised of the obligation
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`under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was
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`not commonly owned at the time a later invention was made in order for the examiner to
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`consider the applicability of 35 U.S.C. 103(c) and potential 35 U.S.C. 102(e), (f) or (g)
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`prior art under 35 U.S.C. 103(a).
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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: PTO-892 form references A and B.
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`8.
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`Since a new grounds of rejection are presented herein under 35 U.S.C. 103(a)
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`(see above), this office action is made non-final.
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`Application/Control Number: 11/980,337
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`Page 5
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`Art Unit: 2874
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`9.
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to DANIEL PETKOVSEK whose telephone number is
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`(571) 272-4174. The examiner can normally be reached on M-F 8:30-5PM.
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, Uyen Chau Le can be reached on (571) 272-2397. The fax phone number
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`for 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
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`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
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`system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
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`/Daniel Petkovsek/
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`Primary Examiner, Art Unit 2874
`March 9, 2011
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