`
`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
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`13/509,873
`
`06/1112012
`
`Duncan P. Bathe
`
`3000-US-0026(IKAOOll-00US
`
`8620
`
`05/23/2013
`
`48394
`7590
`SERVILLA WHITNEY LLC
`33 WOOD A VE SOUTH
`SECOND FLOOR, SUITE 210
`ISELIN, NJ 08830
`
`EXAMINER
`
`TSAI, MICHAEL JASPER
`
`ART UNIT
`
`PAPER NUMBER
`
`3771
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`OS/23/2013
`
`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 addressees):
`docket@dsiplaw.com
`jescobar@dsiplaw.com
`Imurphy@dsiplaw.com
`
`PTOL-90A (Rev. 04/07)
`
`INO THERAPEUTICS EXHIBIT 2004
`Praxair Distribution v. INO Therapeutics
`IPR2015-00891
`
`1 of 4
`
`
`
`Applicant-Initiated Interview Summary
`
`Application No.
`
`13/509,873
`
`Examiner
`
`Michael Tsai
`
`Applicant(s)
`
`BATHE ET AL.
`
`Art Unit
`
`3771
`
`All participants (applicant, applicant's representative, PTO personnel):
`
`(1) Michael Tsai.
`
`(2) Justine Yu.
`
`(3) Rorv Alegria.
`
`(4) Erika Senska.
`
`Date of Interview: 14 Mav2013.
`Type: o Telephonic
`0 Video Conference
`[8J Personal [copy given to: 0 applicant
`
`Exhibit shown or demonstration conducted: 0 Yes
`If Yes, brief description: __ .
`
`o applicant's representative]
`[8J No.
`
`[8JOthers
`[8J103
`[8J102
`[8J112
`Issues Discussed 0101
`(For each of the checked box( es) above, please describe below the issue and detailed description of the discussion)
`
`Claim(s) discussed: 2,4,5.7 and 9.
`
`Identification of prior art discussed: Peters et al. (7,114,510), Zaitsu et al. (200210013551), Fine (201110240019).
`
`Substance of Interview
`(For each issue discussed, provide a detailed description and indicate if agreement was reached. Some topics may include: identification or clarification of a
`reference or a portion thereof, claim interpretation, proposed amendments, arguments of any applied references etc ... )
`
`See Continuation Sheet.
`
`Applicant recordation instructions: The formal written reply to the last Office action must include the substance of the interview. (See MPEP
`section 713.04). If a reply to the last Office action has already been filed, applicant is given a non·extendable period of the longer of one month or
`thirty days from this interview date, or the mailing date of this interview summary form, whichever is later, to file a statement of the substance of the
`interview
`
`Examiner recordation instructions: Examiners must summarize the substance of any interview of record. A complete and proper recordation of
`the substance of an interview should include the items listed in MPEP 713.04 for complete and proper recordation including the identification of the
`general thrust of each argument or issue discussed, a general indication of any other pertinent matters discussed regarding patentability and the
`general results or outcome of the interview, to include an indication as to whether or not agreement was reached on the issues raised.
`
`[8J Attachment
`
`IMichael Tsail
`Examiner, Art Unit 3771
`
`U.S. Patent and Trademark Office
`PTOL·413 (Rev. 8/11/2010)
`
`IJustine R Yul
`Supervisory Patent Examiner, Art Unit 3771
`
`Interview Summary
`
`Paper No. 20130516
`
`2 of 4
`
`
`
`Manual of Patent Examining Procedure (MPEP), Section 713.04, Substance of Interview Must be Made of Record
`A complete written statement as to the substance of any face-to-face, video conference, or telephone interview with regard to an application must be made of record in the
`application whether or not an agreement with the examiner was reached at the interview.
`
`Summary of Record of Interview Requirements
`
`Title 37 Code of Federal Regulations (CFR) § 1.133 Interviews
`Paragraph (b)
`
`In every instance where reconsideration is requested in view of an interview with an examiner, a complete written statement of the reasons presented at the interview as
`warranting favorable action must be filed by the applicant. An interview does not remove the necessity for reply to Office action as specified in §§ 1.111, 1.135. (35 U.S.C. 132)
`
`37 CFR §1.2 Business to be transacted in writing.
`All business with the Patent or Trademark Office should be transacted in writing. The personal attendance of applicants or their attorneys or agents at the Patent and
`Trademark Office is unnecessary. The action of the Patent and Trademark Office will be based exclusively on the written record in the Office. No attention will be paid to
`any alleged oral promise, stipulation, or understanding in relation to which there is disagreement or doubt.
`
`The action of the Patent and Trademark Office cannot be based exclusively on the written record in the Office if that record is itself
`incomplete through the failure to record the substance of interviews.
`It is the responsibility of the applicant or the attorney or agent to make the substance of an interview of record in the application file, unless
`the examiner indicates he or she will do so. It is the examiner's responsibility to see that such a record is made and to correct material inaccuracies
`which bear directly on the question of patentability.
`
`Examiners must complete an Interview Summary Form for each interview held where a matter of substance has been discussed during the
`interview by checking the appropriate boxes and filling in the blanks. Discussions regarding only procedural matters, directed solely to restriction
`requirements for which interview recordation is otherwise provided for in Section 812.01 of the Manual of Patent Examining Procedure, or pointing
`out typographical errors or unreadable script in Office actions or the like, are excluded from the interview recordation procedures below. Where the
`substance of an interview is completely recorded in an Examiners Amendment, no separate Interview Summary Record is required.
`
`The Interview Summary Form shall be given an appropriate Paper No., placed in the right hand portion of the file, and listed on the
`"Contents" section of the file wrapper. In a personal interview, a duplicate of the Form is given to the applicant (or attorney or agent) at the
`conclusion of the interview. In the case of a telephone or video-conference interview, the copy is mailed to the applicant's correspondence address
`either with or prior to the next official communication. If additional correspondence from the examiner is not likely before an allowance or if other
`circumstances dictate, the Form should be mailed promptly after the interview rather than with the next official communication.
`
`The Form provides for recordation of the following information:
`-Application Number (Series Code and Serial Number)
`- Name of applicant
`- Name of examiner
`- Date of interview
`- Type of interview (telephonic, video-conference, or personal)
`- Name of participant(s) (applicant, attorney or agent, examiner, other PTO personnel, etc.)
`-An indication whether or not an exhibit was shown or a demonstration conducted
`- An identification of the specific prior art discussed
`An indication whether an agreement was reached and if so, a description of the general nature of the agreement (may be by
`attachment of a copy of amendments or claims agreed as being allowable). Note: Agreement as to allowability is tentative and does
`not restrict further action by the examiner to the contrary.
`- The signature of the examiner who conducted the interview (if Form is not an attachment to a signed Office action)
`
`It is desirable that the examiner orally remind the applicant of his or her obligation to record the substance of the interview of each case. It
`should be noted, however, that the Interview Summary Form will not normally be considered a complete and proper recordation of the interview
`unless it includes, or is supplemented by the applicant or the examiner to include, all of the applicable items required below concerning the
`substance of the interview.
`A complete and proper recordation of the substance of any interview should include at least the following applicable items:
`1) A brief description of the nature of any exhibit shown or any demonstration conducted,
`2) an identification of the claims discussed,
`3) an identification of the specific prior art discussed,
`4) an identification of the principal proposed amendments of a substantive nature discussed, unless these are already described on the
`Interview Summary Form completed by the Examiner,
`5) a brief identification of the general thrust of the principal arguments presented to the examiner,
`(The identification of arguments need not be lengthy or elaborate. A verbatim or highly detailed description of the arguments is not
`required. The identification of the arguments is sufficient if the general nature or thrust of the principal arguments made to the
`examiner can be understood in the context of the application file. Of course, the applicant may desire to emphasize and fully
`describe those arguments which he or she feels were or might be persuasive to the examiner.)
`6) a general indication of any other pertinent matters discussed, and
`7) if appropriate, the general results or outcome of the interview unless already described in the Interview Summary Form completed by
`the examiner.
`Examiners are expected to carefully review the applicant's record of the substance of an interview. If the record is not complete and
`accurate, the examiner will give the applicant an extendable one month time period to correct the record.
`
`Examiner to Check for Accuracy
`
`If the claims are allowable for other reasons of record, the examiner should send a letter setting forth the examiner's version of the
`statement attributed to him or her. If the record is complete and accurate, the examiner should place the indication, "Interview Record OK" on the
`paper recording the substance of the interview along with the date and the examiner's initials.
`
`3 of 4
`
`
`
`Continuation Sheet (PTOL-413)
`
`Application No. 13/509,873
`
`Continuation of Substance of Interview including description of the general nature of what was agreed to if an
`agreement was reached, or any other comments: Applicant provided an explained that the communication of the valve
`and the control module is meant to act as a safety mechanism to ensure that the proper gas is being delivered to a
`patient. Applicant further explained that the device claimed is able to communicate with each other frequently to ensure
`the proper gas and concentrations are being distributed by the control module. Applicant argued that the Peters
`reference disclosed a valve that communicated billing information and tracked patient treatment and provided no safety
`feature. Applicant further argued that the valve of Peters did not communicate with a control module that directly
`provided gas to a patient. However, Examiner noted that the Peters reference was able to track the treatment and send
`information to a main computer which in turn allows for the development of treatment protocols and that ventilators are
`known to have computers. Additionally, Examiner noted that the Peters reference disclosed the gas data stored and
`transmitted by the memory included gas identification (coI.5, lines 45-55). No agreement was reached regarding
`whether or not Peters disclosed the communication of gas data to a control module. However, Examiner proposed to
`Applicants to amend the claims to specifically recite the functional language of the control module and the valve to
`have two way communication for automatically detecting whether or not the correct gas is being distributed to the
`patient in order to further define the claimed invention over the applied art. Applicant agreed to make amendments to
`the claims to include the functional language of the two way communication of the valve and the control module.
`Applicant proposed to amend the second instances of "a control module" in claim 7 and 9 to overcome the 112, second
`paragraph rejection stated in the office action mailed 3/15/2013. Examiner agreed that such an amendment would
`overcome the 112, second paragraph rejection. Additionally, Applicant agreed to file a terminal disclaimer for the
`present application in order to overcome the double patenting rejection as stated in the office action mailed 3/15/2013.
`Applicant further provided a proposed replacement sheet (see attachement) in order to overcome the drawing
`objections to FIG. 1. Examiner noted that the labeling of the boxes as shown on the proposed replacement sheet for
`FIG 1 would overcome the drawing objections, but there was an additional box within the control module that appeared
`to be unlabeled. Applicant took note of the additional unlabeled box and agreed to further amend FIG. 1.
`
`4 of 4