Elm Exhibit 2118
`Samsung, Micron, SK hynix v. Elm
`IPR2016-00387
`
`

`
`2r'1Bl2CI1E~
`
`Manual of PATENT EXAM INING PROCEDURE
`
`FJFOCBSSBS.
`
`It means that version which was in force before the
`'PreAIA." Where the phrase "pre-AIA” is associated with a law or n.rIe,
`date of the change necessitated by the Leahy-Smith America invents Act (AIA). Public Law 112-29, 125 Stat. 234.
`nhhnn
`
`"Pre-PLT" or pre-PLT {AlA).' Where the phrase 'pre-PLT" or "pre-PLT (A|A}" is associated with a iaw or rule, it means that
`version which was in force before the date of the change necessitated by the Patent Law Treaties Implementation Act of
`2012. Title II (Patent Law Treaty Implementation (PLT)). Pubiic Law 112-211, 126 Stat. 1527 (Dec. 13. 2012). Note that the
`“prs-PLT (AlA)" designation is used when there is also a 'preAIA' version of the law or rule that stiil has applicability in
`limited circumstances.
`Hanan
`
`Five Asterisks. The use of live asterisks in the body of the laws. rules. treaties, and administrative instructions indicates a
`portion of the law. rule, treaty. or administrative instruction which was not reproduced.
`
`unnuu
`
`First Edition
`
`November 1949
`
`Second Edition
`
`November 1953
`
`Third Edition
`
`November 1961
`
`
`
`Fourth Edition
`
`June 1979
`
`Fifth Edition
`
`August 1933
`
`Sixth Edition
`
`January 1995
`
`Seventh Edition
`
`July 1398
`
`Eighth Edition
`
`August 2001
`
`--===-Final Revision
`
`August 2012
`
`Ninth Edition
`
`March 2014
`
`=[R-11.2013]
`
`====Re-vised
`
`October 2015
`
`=[R-01.2015}
`
`
`
`November 2015
`
`=[R-07.20151
`
`
`
`
`This page is owned by Patents.
`
`Lest Modified: 11i'O4!201511:01:42
`
`h'¢D:rMww.uspto.govhlvebIotfioesIpacJmpepimpep-D01D-titie-pagahtrnl
`
`Elm Exhibit 2118, Page 2
`
`

`
`§ 511
`
`MANUAL OF PATENT EXAMINING PROCEDURE
`
`III. USE OF TECHNOLOGY CENTER FACILITIES
`
`In addition to the rules set forth above with regard
`to public conduct on USPTO premises, authorized
`members of the public using the faciiities of the
`Technology Centers (TCS) are required to follow
`the rules set forth below.
`
`(A) TC facilities are defined as those areas in
`Carlyle (Alexandria, VA) where the TCs are located.
`
`(B) The use of the TC facilities is strictly limited
`to the regular business hours of the USPTO, i.e.,
`between the hours of 8:30 a.m. and 5:00 p.m. on
`regular business days (see subsection I above).
`
`(C) Authorized Officials, under these
`regulations, include Supervisory Patent Examiners
`and TC Directors.
`
`(D) Under applicable statutes and regulations,
`including Title 41, Code of Federal Regulations, Part
`10244, Subpart C:
`
`(1) No records, or other documents of the
`USPTO shall be removed from the TC facilities
`
`except by express written authorization by an
`authorized official in the TC where the material
`resides.
`
`(2) The presence or use of equipment such
`as dictation equipment, reproducing machines,
`typewriters, and photographic equipment is
`prohibited without prior permission from an
`authorized official in the TC where the use is
`intended.
`
`(3) A11 packages, briefcases, or other
`personal effects brought into the TC Facilities are
`subject to search by authorized officials upon request
`and must be removed when leaving the TC facilities.
`
`(4) All verbal requests for compliance with
`these regulations or other posted USPTO Notices
`pertaining to activity in the TC facilities, when made
`by authorized officials, must be promptly complied
`with.
`
`(E) Persons violating these regulations may be
`denied the use of the facilities in the TC and Office
`
`public information facilities, and may further be
`subject to prosecution under the Criminal Code.
`Additionally, the name ofany person violating these
`regulations who is registered to practice before the
`USPTO may be forwarded to the Office of
`
`Enrollment and Discipline for appropriate action
`under 37 CFR Part 11.
`
`If any individual is observed in violation of any of
`the regulations, immediate compliance should be
`courteously requested. If a verbal request
`is not
`complied with, a note should be made of the
`individual’s name and Visitor or User badge number,
`if possible (the badge is required to be prominently
`displayed) and a report of the incident should be
`made
`to
`the Supervisory Patent Examiner,
`Supervisory Applications Examiner,
`or other
`appropriate supervisor who will take further action.
`
`In addition, ifany individual in TC Facilities appears
`to be a stranger and is not wearing a Visitor badge
`or User badge, some identification, such as a Visitor,
`User, or Building badge (issued to Office employees
`and contractors),
`should be requested.
`If the
`individual refuses, notify a supervisor. Consequently,
`all Office employees are expected to carry their
`Building badge with them at all times.
`
`Supervisors, when aware of violations of the posted
`regulations, should prepare a memorandum detailing
`the
`facts of
`the
`incident
`and forward this
`
`memorandum to the Deputy Commissioner for
`Patent Operations via their TC Director. Supervisory
`Patent Examiners and TC Directors are authorized
`
`to demand surrender of a User or Visitor badge
`on-the-spot. If the Supervisory Patent Examiner
`exercises this function, the TC Director should be
`immediately notified, followed up by a memorandum
`as previously set forth.
`
`511 Postal Service Interruptions and
`Emergencies [R—[l7.20l5]
`
`In the event of a postal interruption or emergency,
`an announcement will be placed on the USPTO
`website at www.uspto.ggx and a notice will be
`published in the
`Ofliciaf Gazette. providing
`instructions about the filing of patent applications,
`and other papers related to patent applications and
`patents.
`
`35 U.S.C. 21 Filing date and day for taking action.
`
`(a) The Director may by rule prescribe that any paper or
`fee required to be filed in the Patent and Trademark Officc will
`be considered filed in the Office on the date on which it was
`deposited with the United States Postal Service or would have
`
`Rev. 07.2015, October 201 5
`
`5110-115
`
`Elm Exhibit 2118, Page 3
`
`

`
`RECEIPT AND HANDLING OF MAIL AND PAPERS
`
`§s11
`
`been deposited with the United States Postal Service but for
`postal service interruptions or emergencies designated by the
`Director,
`It It I‘ I‘ I‘
`
`37 CFR 1.10 Filing afcarrespondence by Priority Mail
`.Express®.
`I888‘
`
`(g) Any person who mails correspondence addressed as set
`out in § 1. Ila} to the Office with sufficient postage utilizing the
`Priority Mail Express® Post Office to Addressee service of the
`USPS, but has the correspondence returned by the USPS due
`
`to an interruption or emergency in Priority Mail Express®
`service, may petition the Director to consider such
`correspondence as filed on a particular date in the Office,
`provided that:
`
`(1) The petition is filed promptly after the person
`becomes aware of the return of the correspondence;
`
`(2) The number ofthe Priority Mail Express® mailing
`label was placed on the paperfs) or fee(s) that constitute the
`correspondence prior to the original mailing by Priority Mail
`l:‘.rtpress®;
`(3) The petition includes the original correspondence
`or a copy of the original correspondence showing the number
`of the Priority Mail Express®
`mailing label thereon and a copy
`of the Priority Mail Express® mailing label showing the “date
`accepted”; and
`
`(4) The petition includes a statement which establishes,
`to the satisfaction ofthe Director, the original deposit of the
`correspondence and that the correspondence or copy of the
`correspondence is the original correspondence or a true copy of
`the correspondence originally deposited with the USPS on the
`requested filing date. The Office may require additional evidence
`to determine if the correspondence was returned by the USPS
`
`due to an interruption or emergency in Priority Mail Express®
`service.
`
`(h) Any person who attempts to mail correspondence
`addressed as set out in §J_1_[_a_1 to the Office with sufficient
`
`postage utilizing the Priority Mail Express® Post Officc to
`Addrcssee service of the USPS, but has the correspondence
`refused by an employee of the USPS due to an interruption or
`emergency in Priority Mail E:|(pl”I'.‘SS® service, may petition the
`Director to consider such correspondence as filed on a particular
`date in the Ofiice, provided that:
`
`(l) The petition is filed promptly after the person
`becomes aware of the refusal of the correspondence;
`
`(2) The number ofthe Priority Mail Express® mailing
`label was placed on the paper(s) or i‘ee(s) that constitute the
`correspondence prior to the attempted mailing by Priority Mail
`Express®;
`
`(3) The petition includes the original correspondence
`or a copy of the original correspondence showing the number
`®
`of the Priority Mail Express mailing label thereon; and
`
`(4) The petition includes a statement by the person who
`originally attempted to deposit the conespondence with the
`USPS which establishes, to the satisfaction of the Director, the
`original attempt to deposit the correspondence and that the
`correspondence or copy of the correspondence is the original
`correspondence or a true copy of the correspondence originally
`attempted to be deposited with the USPS on the requested filing
`date. The Office may require additional evidence to determine
`if the correspondence was refused by an employee of the USPS
`
`due to an interruption or emergency in Priority Mail Expres5®
`service.
`
`(i) Any person attempting to file correspondence
`under this section that was unable to be deposited with the USPS
`due to an interruption or emergency in Priority Mail Express®
`service which has been so designated by the Director, may
`petition the Director to consider such correspondence as filed
`on a particular date in the Office, provided that:
`
`(1) The petition is filed in a manner designated by the
`Director promptly after the person becomes aware of the
`
`designated interruption or emergency in Priority Mail Expre5s®
`service;
`
`(2) The petition includes the original correspondence
`or a copy of the original correspondence; and
`
`(3) The petition includes a statement which establishes,
`to the satisfaction ofthe Director, that the correspondence would
`have been deposited with the USPS but for the designated
`interruption or emergency in Priority Mail Exprcss® service,
`and that the correspondence or copy of the correspondence is
`the original correspondence or a true copy of the correspondence
`originally attempted to be deposited with the USPS on the
`requested filing date.
`
`[. “EXPRESS MAIL” RENAMED “PRIORITY
`MAIL EXPRESS”
`
`the United States Postal
`Effective July 28, 2013,
`Service (USPS) changed the name of“Express Mail”
`to “Priority Mail Exp:-ess.”All characteristics of the
`“Priority Mail Express” service are the same as those
`of the former “Express Mail” service (although the
`mailing labels differ).
`
`The addresses that should be used for Priority Mail
`Express® sent to the U.S. Patent and Trademark
`Ofiice are set forth in 32 QE 3 |
`I (see ).
`The Office does not have resources for picking up
`any mail. Therefore mail should NOT be sent using
`the “Hold for Pickup" service option (whereby the
`mail is retained at the destination postal facility for
`
`500-11 7
`
`Rev. 07.2015. October 2015
`
`Elm Exhibit 2118, Page 4
`
`

`
`5511
`
`‘MANUAL OF PATENT EXAMINING PROCEDURE
`
`retrieval by the addressee). Mail sent using the “Hold
`for pickup” service will not reach the Office.
`
`See M£EE__§j_]_3 for the use of the Priority Mail
`® Mailing procedure of 3_u;Eig_1_1n.
`
`Express
`
`ll. PETITION DUE TO A POSTAL SERVICE
`INTERRUPTION OR EMERGENCY
`
`32‘ QQER l.]0(i1 provides a procedure under which
`applicant may petition the Director
`to have
`correspondence (papers and fees) which was unable
`to be deposited with the United States Postal Service
`(USPS) because of an interruption or emergency in
`Priority Mail Express® service which is
`so
`designated by the Director considered as having been
`filed on a particular date in the Office. Authority for
`such a practice is found in 35 t1.s.g;. 211a}. In
`addition, the Director has designated certain events
`as a postal service interruption or emergency by rule
`( and ,{l_1_)). MRJJQQ provides
`a procedure under which applicant may petition the
`Director to have correspondence that was returned
`by the USPS due to an interruption or emergency in
`Priority Mail Express® service considered as filed
`on a particular date in the Ofiicc. 37 CPR l,1Qjh1
`provides a procedure under which applicant may
`petition the Director to have correspondence that
`was refused by an employee of the USPS due to an
`
`interruption or emergency in Priority Mail Express®
`service considered as filed on a particular date in the
`Office. For more information on filing a petition
`under 37 CFR i,1Q[gi,[_l_1), or _(_i), see MPEP § 513,
`especially subsections IX—XI.
`
`the provisions of
`Applicants are cautioned that
` md§ZCER Lfltgitoliionlyapply
`to postal
`interniptions and emergencies. The
`provisions offifi U.S.§§. 2 (a: and $2 QEE
`|1![g[
`to (i) do not provide for granting of a filing date to
`correspondence as of the date on which it would
`have been filed but for other exigencies, such as the
`unavailability of a computer or word processing
`equipment, or the inaccessibility of an office or
`building other than a USPS facility. 35 U,S.Q, 2lta[
`requires, in part, that “any paper or fee required to
`be filed in the Patent and Trademark Office. . would
`have been deposited with the United States Postal
`Service but
`for postal service interruptions or
`
`emergencies designated by the Director.” The statute
`requires that the correspondence was complete and
`ready to be deposited with the USPS on the filing
`date requested (e.g., complete application papers
`have been prepared and printed) and that
`the
`correspondence could not have been deposited with
`the USPS on the requested filing date for the sole
`reason that the postal service was not available due
`to the interruption or emergency designated by the
`Office.
`
`III. ALTERNATIVES TO FILING
`CORRESPONDENCE VIA PRIORITY MAIL
`
`EXPRESS®
`
`The Office strongly recommends that applicants file
`new applications by Priority Mail Express® in
`accordance with $2 CER 1,111 (if such applications
`are not
`filed
`via EFS~Web) because
`such
`correspondence will be accorded the date of deposit
`in Priority Mail Express® with the usrs as the
`filing date. See 37 §§FR iota} and MEEP § 513.
`Applications that are not filed by Priority Mail
`Express® can only be accorded the date of receipt
`in the Office as the filing date (unless there is a
`postal interruption or emergency designated by the
`Office and applicants are instructed to fiic their
`applications in a manner other than by Priority Mail
`Exprcss®),
`thus
`any applicant who files
`an
`application by first class mail bears the risk of any
`delay in the delivery of the application to the Office,
`even if the delay is unusually significant due to some
`unforeseen event.
`
`In general, applicants should consider filing new
`patent applications
`(as well
`as patent~rclated
`correspondence) via the Office electronic filing
`system (EFS—Web) whenever permitted. See the
`Legal Framework for EFS-Web posted on the
`USPTO
`website
`(www.uspm,gcvJpatg;t;s-
`
`‘information
` ) for
`pertaining to the types of patent applications and
`documents
`that are permitted to be filed via
`EFS-Web. See
`also MEEP §
`$02.05. New
`applications cannot be transmitted by facsimile and
`are not entitled to the benefit of a Certificate of
`
`Transmission under 32 QFR 1.3. A request for a
`
`RGV. 07.2015, Octn ber 2015
`
`500-1 13
`
`Elm Exhibit 2118, Page 5
`
`

`
`RECEIPT AND HANDLING OF ‘MAIL AND PAPERS
`
`§ 512
`
`continued prosecution application (CPA) filed under
`32 QER ],53{d1
`(available only for design
`applications) may be transmitted to the Ofiice by
`facsimile (32 CEB.
`I §ldI13l); however,
`it
`is not
`entitled to the benefit of
`a Certificate of
`
`Transmission (see 32 QEB, ].§lal§2lji HA1). See 12
`EZER l.6|d1 and MEEE § 5£]2.fll. New patent
`applications may also be hand-delivered to the
`Office. See MEEE§ 59].
`
`Correspondence in a patent application can be filed
`via the USPS, hand—de1ivery, or, when permitted,
`via EFS-Web or facsimile. Applicants should file
`correspondence with a Certificate of Mailing or a
`Certificate of Transmission under _3 Z §;FR 1.3 when
`permitted. See MEEE §§ 592,91 and 112. Even if
`the post office is closed due to an emergency,
`applicants should ordinarily be able to deposit
`correspondence in a mailbox for first class mail.
`
`512 Certificate of Mailing or Transmission
`[R-07.2015]
`
`37 CFR 1.8 Certificate of mailing or transmission.
`
`(a) Except in the situations enumerated in paragraph (a)(2)
`of this section or as otherwise expressly excluded in this chapter,
`correspondence required to be filed in the U.S. Patent and
`Trademark Oflice within a set period of time will be considered
`as being timely filed if the procedure described in this section
`is followed. The actual date of receipt wilt be used for all other
`purposes.
`
`(1) Correspondence will be considered as being timely
`
`filed ifi
`
`(i) The correspondence is mailed or transmitted
`prior to expiration of the set period of time by being:
`
`(A) Addressed as set out in § ] Ital and
`deposited with the U.S. Postal Service with sufficient postage
`as first class mail; or
`
`(B) Transmitted by facsimile to the Patent and
`Trademark Office in accordance with § Lfifdl; or
`
`(C) Transmitted via the Office electronic filing
`system in accordance with § Lfiisltfit; and
`
`(ii) The correspondence includes a certificate for
`each piece of correspondence stating the date of deposit or
`transmission. The person signing the certificate should have
`reasonable basis to expect that the correspondence would be
`mailed or transmitted on or before the date indicated.
`
`(2) The procedure described in paragraph (a)(l) of this
`section does not apply to, and no benefit will be given to a
`Certificate oflvlailing or Transmission on. the following:
`
`(i) Refative to Patents and Patent Applications—
`
`(A) The filing of a national patent application
`specification and drawing or other correspondence for the
`purpose of obtaining an application filing date, including a
`request for a continued prosecution application under § 1,5 itd 1;
`
`(B) Papers filed in trials before the Patent Trial
`and Appeal Board, which are governed by §&2..§[b} ofthis title;
`(C) Papers filed in contested cases before the
`Patent Trial and Appeal Board, which are governed by
`§A_]__1_{]_6_(fl of this title;
`
`(D) The filing of an international application
`
`for patent;
`
`(E) The filing of correspondence in an
`international application before the U.S. Receiving Office, the
`U.S. lntemational Searching Authority, or the U.S. International
`Preliminary Examining Authority;
`
`(F) The filing of a copy of the international
`application and the basic national fee necessary to enter the
`national stage, as specified in ,
`
`(G) The filing of a written declaration of
`abandonment under §
`53;
`
`(H) The filing ofa submission under § [.21 Z
`for publication of a redacted copy of an application;
`
`§_L29_0;
`
`(I) The filing of a thl.rd—party submission under
`
`(J) The calculation of any period of
`adjustment, as specified in § 1
`j2Q3,(f1;
`
`(K) The filing of an international design
`
`application.
`
`(ii)
`
`[Reserved]
`
`(iii) Relative to Disciplinarjz Proceedings—~
`
`(A) Correspondence filed in connection with
`a disciplinary proceeding under part I l of this chapter.
`
`(13) [Reserved]
`
`(b) In the event that correspondence is considered timely
`filed by being mailed or transmitted in accordance with
`paragraph (a) of this section, but not received in the U.S. Patent
`and Trademark Office after a reasonable amount oftime has
`
`elapsed from the time of mailing or transmitting of the
`correspondence, or after the application is held to be abandoned,
`or after the proceeding is dismissed or decided with prejudice,
`or the prosecution of a reexamination proceeding is terminated
`pursuant to § 1 5511151) or § 1,25 2|],-:1 or limited pursuant to §
`_L,9_5_7_(c), or a requester paper is refused consideration pursuant
`to §
`25 Z[a:, the correspondence will be considered timely if
`the party who forwarded such correspondence:
`
`(1) Informs the Ofiice ofthe previous mailing or
`transmission of the correspondence promptly after becoming
`aware that the Ofiice has no evidence of receipt of the
`correspondence;
`
`500-1 1 9
`
`Rev. 07.201 5. October 2015
`
`Elm Exhibit 2118, Page 6