UNITED STATES PATENT AND TRADEMARK OFFICE
`
`TROUTMAN SANDERS LLP
`600 Peachtree Street
`Suite 5200
`Atlanta GA 30308
`
`In re Application of
`SPICO, LLC
`,
`Application No.: 14/306,412
`Filing Date: June 17, 2014
`Attorney Docket No.: STAT692CON6
`
`Commissioner for Patents
`United States Patent and Trademark Office
`PO. Box 1450
`Alexandria, VA 22313-1450
`www,uspto.gov
`
`MAILED
`
`JAN 2 4 2017
`
`I
`
`N1'ERNA‘I10NAL PATENT LEGAL ADM.
`
`DECISION ON PETITION
`UNDER 37 CFR 1.78(c)
`AND 1.78(e)
`‘
`
`This is a decision on the petition under 37 CFR 1.78(c) and (e), filed June 13, 2016, to accept an
`unintentionally delayed claim under 35 U.S.C. 119(e) and 120 for the benefit of priority to one or
`more prior-filed provisional and nonprovisional/international applications.
`
`unintentionally delayed claim under 35
`Under 37 CFR 1.78(c) and (e), a petition to accept
`U.S.C. 119(6) and 120 for the benefit of a prior-filed application must be accompanied by:
`
`(i)
`
`the reference required by 35 U.S.C. 119(e) and 120 and 37 CFR
`1.78(a)(3) and 1.78(d)(2) to the prior—filed applications, unless
`previously submitted;
`
`(ii)
`
`the petition fee set forth in 37 CFR 1.17(m); and
`
`(iii)
`
`a statement that the entire delay between the date the claim was due
`under 37 CFR 1.78(a)(4) and (d)(3) and the date the claim was filed
`was unintentional. The Director may require additional information
`where there is a question whether the delay was unintentional.
`
`With regard to item (i), A proper reference to the prior-filed applications has not been included
`in an application data sheet as required by 37 CFR 1.78(a)(3) and (d)(2). Specifically, the ADS
`does not provide a relationship between the instant application and 13/222,216.
`
`Furthermore, application 13/855,452 (filed on April 2, 2013) cannot be a continuation of
`application 13/173,499 (issued as a patent on July 3, 2012) as the two applications lack
`continuity.
`
`Petitioner Emerson's Exhibit 1023
`
`Page 1 of 3
`
`Petitioner Emerson's Exhibit 1023
`Page 1 of 3
`
`

`

`Application Number: 14/306,412
`
`-2-
`
`Furthermore, as set forth in MPEP 211.01(b), Section 11., “Benefit Claims to Multiple Prior
`Applications”, “Sometimes a pending application is one of a series of applications wherein the
`pending application is not copending with the first filed application but is copending with an
`intermediate application entitled to the benefit of the filing date of the first application. .
`.
`.
`Appropriate references must be made in each intermediate application in the chain of prior
`applications.” In the instant case, several of the intermediate applications lack proper references
`to parent applications as follows:
`
`Application 09/172,554 lacks a proper reference to application 60/146,817.
`
`Application 09/412,895 lacks a proper reference to application 60/ 146,817 .
`
`Application 09/ 102,178 lacks proper references to its purported parent applications.
`
`Application 09/271,571 lacks proper references to its purported parent applications.
`
`Application 09/43 9,059 lacks proper references to its purported parent applications except for
`application 09/271,517.
`
`Application 10/ 139,492 lacks proper references to its purported parent applications except for
`applications O9/439,059 and 09/27l,517.
`
`Application 11/395,685 lacks proper references to its purported parent applications except for
`applications 10/ 139,492, 09/439,059 and 09/271,517.
`
`Before the petition can be granted, the various intermediate applications must be amended to
`include an appropriate references to their parent applications. This requires the submission of a
`petition under 37 CFR 1.78 in each intermediate application along with the appropriate
`references as required by 37 CFR 1.78.
`
`Furthermore, application 09/ 102,178 (filed on June 22, 1998) cannot be a continuation in part of
`application O9/412,895 (filed on October 5, 1999) since application 09/412,895 is not an earlier
`filed application relative to application 09/ 102,178.
`
`With regard to item (ii), the petition fee set forth in 37 CFR 1.17(m) has been submitted.
`
`With regard to item (iii), the statement of unintentional delay contained in the petition differs
`slightly from the language contained in 37 CFR 1.78(c)(3) and (e)(3) and is hereby construed as
`a statement that the entire delay between the date the claim was due under 1.78(a)(4) and (d)(3)
`and the date the claim was filed was unintentional. If this interpretation is incorrect, applicant is
`required to immediately notify the Office. As construed, the provided statement of unintentional
`delay is acceptable.
`
`For the reasons above, the petition under 37 CFR 1.78(c) and (e) is DISMISSED without
`prejudice.
`
`Petitioner Emerson's Exhibit 1023
`
`Page 2 of 3
`
`Petitioner Emerson's Exhibit 1023
`Page 2 of 3
`
`

`

`1
`
`Application Number: 14/306,412
`
`—3-
`
`Any further correspondence with respect to this matter may be filed electronically via EFS-Web
`selecting the document description "Petition for review and processing by the PCT Legal Office"
`or by mail addressed to Mail Stop PCT, Commissioner for Patents, International Patent Legal
`Administration, P.O. Box 1450, Alexandria, Virginia 22313-1450, with the contents of the letter
`marked to the attention of the International Patent Legal Administration.
`
`/Anish Gupta
`Anish Gupta
`PCT Legal Examiner
`International Patent Legal Administration
`571-272—0965
`
`IBryan Lin/
`Bryan Lin
`PCT Legal Examiner
`International Patent Legal Administration
`
`Petitioner Emerson's Exhibit 1023
`
`Page 3 of 3
`
`Petitioner Emerson's Exhibit 1023
`Page 3 of 3
`
`