UNIfieD STATES PATENT AND TRADEMARK OFi:;ICE
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`APPLR:ATION
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`No.
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`111849,609 09R~q/2007 ,lang-Hc~,~n Yoo
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`,~,;.l~o D+,’~
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`I’
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`~"IR~’~’~A~,.’.~:> ~NvI~,~
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`North Star Intellectual P~’operty Law, PC
`P.O. Box 34688
`Washington, DC 2~3
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`A’r’IOR:N~Y ~)oc~’r ~o° l CONI’mMAT~ON NO,!
`6003
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`t 101.0308CC~1
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`EXAMIN~i~i
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`EDUN, MOHAMMAD N
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`ART UNIT
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`I PAPER NUMBE~R
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`2627
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`NOTWtCATION DATE
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`D~I’VERY MODE
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`o2~7~_,o~ J
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`1
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`r.:U~CTRON~C
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`Please lind 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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`Notice of the Office communication was ,sent electronically on above-indicated
`following e-mail address(es):
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`"Notification ,Date" to the
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`info@ nsiplaw.com
`uspto@nsiplawxom
`nsiplaw@gmaiLcom
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`PTOL-90A (Rev. 04107)
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`LG Electronics, Inc. et al.
`EXHIBIT 1018
`IPR Petition for
`U.S. Patent No. RE43,106
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`Office Action Summary
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`Application No,
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`11/849,609
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`Examiner
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`Applicant(s)
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`YOO ET AL,
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`Art Unit
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`2627
`MUHAMMAD N. EDUN
`The MAILING DATE 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 _3 MONTH(S) OR THtRTY (30) DAYS,
`WHICHEVER IS LONGER, FROM THE MA1LING DATE OF THIS COMMUNICATION.
`Extensions of time may be available under "{he previsions of 37 CFR 1.136(a). In no even"{, however, may a reply be timely filed
`after SiX (8) MONTHS from the ma~ling date of this c~mmunication.
`if NO period for rep~y is specified above, the ma×imvm sfatulory period wili a,pp~y and ~ii expire SiX (6) MONTHS from the mailing date o~ this communication,
`Failure to reply within the set ot- extended period for reply will, by statute, cause the application "to become ABANDONED (3,5 U,S,C, § 133).
`Any reply received by the Office Eater than three mon"{hs after the mailing d~e of this communication, even if timely filed~ may reduce ar~y
`emned patent term ~djustmenL See 37 CFR "L704(b),
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`Status
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`1 )1~ Responsive to communication(s) filed on 0,7 November 2008 and 04 September 2007.
`2a)~ This action is FINAL. 2b)~ This action is non-finaL
`3)1--1 Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Ex parte Quayle, 1935 C.D. 1 I, 453 e.G. 213.
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`Disposition of Claims
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`4)1~ Claim(s) t;67 is!are pending in the application.
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`4a) Of the above claim(s) ~ is/are withdrawn from consideration.
`Claim(s) ~ is/are allowed.
`Claim(s) 1-67 is/are rejected.
`Claim(s) ~ is/are objected to,
`Claim(s) ~ are subject to restriction and!or election requirement.
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`5)[]
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`7)D
`8)1-3
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`Application Papers
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`9)[-] The specification is objected to by the Examiner.
`10)1"7 The drawing(s) filed on ~ is/are: a)[-t accepted or b)[-I objected to by the Examiner,
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to, See 37 CFR 1.12t (d).
`11 )D 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)!~ Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
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`a)l~ All b)D Some * c)[] None of:
`1 .~ Certified copies of the priority documents have been received.
`2.1--1 Certified copies of the priority documents have been received in Application No.
`3,1-] Copies of the certified copies of the priority documents have been received in this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`"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 ) [] Notice of References Cited (PTO-892)
`2) [] Notice of Draftsperson’s Patent Drawing Review (PTO-948)
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`3) [] Information Disclosure Statement(s) (PTO/SB/08)
`Paper No(s)/Mail Date __
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`4) [] interview Summary (PTO-413)
`Paper No(s)iMail Date.
`5) [] Notice of Informal Patent Applic,~tion
`6) [] Other:
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`U,$. Pater~t and Trademark Office
`PTOL-326 (Rev. 08-06)
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`Office Action Summary
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`Part of Paper No.fMail Da~ 201102t3
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`Application/Control Number: 11/849,609
`Art Unit: 2627
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`P~e2
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`DETAILED ACTION
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`Reissue Applications
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`The reissue oath/declaration filed with this application is defective (see 37 CFR
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`t .175 and MPEP § 1414) because of the following:
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`The oath/declaration filed on 09/04/2007 does not include or cover the
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`amendment filed on 11/07/2008.
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`Claims 1-67 are rejected as being based upon a defective reissue
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`oath/declaration under 35 U.S.C. 251 as set forth above. See 37 CFR 1.175.
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`The nature of the defect(s) in the oath/declaration is set forth in the discussion
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`above in this Office action.
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`In accordance with 37 CFR 1.175(b)(1), a supplemental reissue
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`oath/declaration under 37 CFR 1.175(b)(1) must be received before this reissue
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`application can be allowed.
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`Application/Control Number: 11/849,609
`Art Unit: 2627
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`Page 3
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`Claim Reiections - 35 USC § 102
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`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that
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`form the basis for the rejections under this section made in this Office action:
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`A person shall be entitled to a patent unless -
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`(e) the invention was described in (1) an application for patent, published under section 122(b), by
`another filed in the United States before the invention by the applicant for patent or (2) a patent
`granted on an application for patent by another filed in the United States before the invention by the
`applicant for patent, except that an international application filed under the treaty defined in section
`351 (a) shall have the effects for purposes of this subsection of an application filed in the United States
`only if the international application designated the United States and was published under Article 21 (2)
`of such treaty in the English language.
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`Claims 38, 39, 42, 45-47, 50, 51, 56, 57, 62, 63, 65 and 66 are rejected under
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`35 U.S.C. 102(e) as being anticipated by Lee et al. (US 5,665,957).
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`The applied reference has a common inventors and assignee with the instant
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`application. Based upon the earlier effective U.S. filing date of the reference, it
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`constitutes prior art under 35 U.S.C. 102(e). This rejection under 35 U.S.C. i02(e)
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`might be overcome either by a showing under 37 CFR 1.132 that any invention
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`disclosed but not claimed in the reference was derived from the inventor of this
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`application and is thus not the invention "by another," or by an appropriate showing
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`under 37 CFR 1.131.
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`

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`Application/Control Number: 11/849,609
`Art Unit: 2627
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`Page 4
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`Lee et al. discloses the invention as claimed. Fig. 7A-15K shows the
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`objective lens (200) for an optical pickup (see for example Fig. 7A) for selectively
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`diffracting at least one of plurality of light beams (see Fig. 10B), the lens comprising a
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`first surface (inner portion of lens between area 102, see for example Fig. 10B) which
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`focuses the plurality of light beams; and a second surface (102 and 102’) adjacent to
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`the first surface and having a diffractive pattern to diffract at least one of the plurality of
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`light beams, as set forth in the claims.
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`The reference further teaches: the diffractive patterns corrects spherical
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`aberration (taken to be inherent to the diffractive pattern structure, and since such result
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`is desired by Lee et al., see for example column 8, line 61-column 9, line 3), as set forth
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`in claims 42, 45 and 46; the first surface includes an inner portion of the lens, the
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`second surface is on a periphery of the first surface, and the first surface does not
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`include diffractive patterns (see Fig. 10B), as set forth in claims 39, 50, 56, 62 and 65;
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`the diffractive patterns is configured to selectively diffract one of the plurality of light
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`beams (see Fig. 10B), as set forth in claims 5!, 57, 63 and 66; and the ability of
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`manufacturing the objective !ens (see column 10, lines 40-coulumn 12), as set forth in
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`claim 47. See also the description of the apparatus and figures for further details
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`relating to the limitations as set forth in the claims.
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`Application/Control Number: 11/849,609
`Art Unit: 2627
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`P~e5
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`Allowable Subiect Matter
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`Claims 1-37, 40, 41, 43, 44, 53-55 and 59-61 are allowed over the prior art of
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`record.
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`Claims 48, 49, 52, 58, 64 and 67 are objected to as being dependent upon a
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`rejected base claim, but would be allowable if rewritten in independent form
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`including all of the limitations of the base claim and any intervening claims.
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`The following is a statement of reasons for the indication of allowable subject
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`matter:
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`Re claims 1-37
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`The reason for allowance for claims t-37 are based on the same reasons as
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`provided in the history of prosecution of application 09/930,964, and incorporated
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`herein.
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`Re claims 40~ 41 and 53-55
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`The prior art of record alone or in combination does not teach or suggest the
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`objective lens having the specific structure with their recited functions, along with a
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`Application/Control Number: 11/849,609
`Art Unit: 2627
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`Page 6
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`second surface adjacent to the first surface and having a diffractive pattern at a location
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`where a numerical aperture of the objective lens is higher than a predetermined
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`numerical aperture value so as to diffract at least one of the plurality of light beams, as
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`set forth in clams 40, 41 and 53-55.
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`Re claims 43, 44, 59 and 60
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`The prior art of record alone or in combination does not teach or suggest the
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`objective lens having the specific structure with their recited functions, along with a
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`spherical aberration correction pattern formed below the apex so as to correct the
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`spherical aberration of the one light beam, as set forth in claims 43, 44, 59 and 60.
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`Re claims 48~ 49~ 52~ 58, 64 and 67
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`The prior art of record alone or in combination does not teach or suggest the
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`objective lens as recited in claims 38, 42, 45, 46 and 47, having the further limitations as
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`set forth in claims 48, 49, 52, 58, 64 and 67.
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to MUHAMMAD N. EDUN whose telephone number is
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`571-272-76t7. The examiner can normally be reached on FLEXITIME.
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`Application/Control Number: 11/849,609
`Art Unit: 2627
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`Page 7
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, Hoa Nguyen can be reached on 571-272-7579. The fax phone number for
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`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 httpJ/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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`!MUHAMMAD N EDUN/
`Primary Examiner, Art Unit 2627