•
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`UNITED STATES PATENT AND 'IRADEMARK OFFlGE
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`• UNITED STATE'J DEI'ART!IIENT OF COMl\IERCE
`
`Unitud. SUU-eti P•t.ent tt.nd •fratdt!.Dl.Mrk Officu
`Aihtr.•.: COMMISSIONER OF PATENTS AND TR.;I.DE:MARKS
`Waahi~n. D.C. llO~l
`W'111.-w.n11pt.n cnv
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`APPLICATION NO.
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`FILING DATE
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`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
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`CONFIRMATION NO.
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`08/485,507
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`06/07/1995
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`JOHN C. HARVEY
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`5634.304
`
`5691
`
`06118/2002
`21967
`1590
`HUNTON & WILLIAMS
`INTELLECTUAL PROPERTY DEPARTMENT
`1900 K STREET, N.W.
`SUITE 1200
`WASHINGTON, DC 20006-1109
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`EXAMINER
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`MEHTA, BHAVESH M
`
`2611
`
`DATE MAILED: 06/18/2002
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`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The request for deferral/suspension of action under 3 7 CFR 1.103 has been approved.
`
`PT0.90C (Rev. 07-01)
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`APPLE EX. 1034
`Page 1
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`-II
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`UNITED STATES DJ~i\RTMENT OF COMMERCE
`Patent and Trade~ Office
`Address: ASSISTANTcx:>IVI1vtiSSIONER FOR PAlENTS
`WastUrgton, D.C. 2a231
`
`APPLICATION NOJ
`CONTROL NO.
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`FILING DATE
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`FIRST NAMED INVENTOR I
`PATENT IN REEXAMINATION
`
`ATTORNEY DOCKET NO.
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`ART UNIT
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`PAPER
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`31
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`DATE MAILED:
`
`Please find below and/or attached an Office communication concerning this application or
`proceeding.
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`Commissioner of Patents and Trademarks
`
`This communication is responsive to the Request for Reconsideration under 37 C.F.R. § 1.111 filed August 21, 2001. The Request for
`Reconsideration requests withdrawal of the determination, in the Office communication mailed March 21, 2001, that certain of
`applicants' replies were not fully responsive to the prior Office action for failure to comply with the Administrative Requirement
`imposed by the Office.
`In order to resolve conflicts between applicants' applications, the Administrative Requirement was imposed in this application and in
`certain of applicants' co-pending applications. Under the Administrative Requirement, applicants are required to:
`(1)
`file terminal disclaimers in each of the related co-pending applications terminally disclaiming each of the other co-pending
`applications;
`(2)
`provide an affidavit attesting to the fact that all claims in the co-pending applications have been reviewed by applicant and
`that no conflicting claims exists between the applications; or
`(3)
`resolve all conflicts between claims in the identified co-pending applications by identifYing how all the claims in the instant
`application are distinct and separate inventions from all the claims in the identified co-pending applications.
`In application Serial No. 08/470,571, applicants filed a petition under 37 C.F.R. § 1.181 requesting, inter alia, that the Commissioner
`order that the Administrative Requirement be withdrawn. However, as agreed upon in a telephonic interview conducted with
`applicants' representative on February 8, 2002, applicants have withdrawn the petition under 37 C.F.R § 1.181 in application Serial
`No. 08/4 70,571. Further, applicants have agreed to comply with the Administrative Requirement at such time that written notification
`is provided that this application is otherwise in condition for allowance.
`The Office recognizes that applicants have consistently asserted the Administrative Requirement to be improper and have not
`conceded its propriety. After a review of applicants' responses to the Administrative Requirement, the Office deems them to be a
`bona fide attempt to advance the application to final action. However, the issue of the propriety of the Administrative Requirement is
`now rendered moot by applicants' agreement to comply with the Administrative Requirement at such time that written notification is
`provided that this application is otherwise in condition for allowance.
`In view of applicants' agreement to comply with the Administrative Requirement and applicants' timely filed Request for
`Reconsideration, this application remains pending. No further response to the communication mailed March 21, 2001, is required by
`applicants in order to avoid the abandonment of this application. An action on the merits of this application will follow this
`communication in due course.
`
`Additionally, as per the consolidated agreement between the applicants and the PTO, the prosecution on merits of the instant B
`application is suspended and held in abeyance pending the outcome of the corresponding "A" application. Ex parte prosecution is
`
`PT0-90C (Rev.3-98)
`
`APPLE EX. 1034
`Page 2
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`SUSPENDED FOR A PERIOD OF SIX MONTHS from the date of this letter. Upon expiration of the period of suspension, applicant
`should make an inquiry as to the status of the application ..
`
`Bhavesh M Mehta
`Primary Examiner
`Art Unit: 2611
`
`PT0-90C (Rev.3-98)
`
`APPLE EX. 1034
`Page 3