.-·
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`•'
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`I
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`
`In re U.S. Patent Application of
`
`TASHIRO
`
`Application Number: 111703,164
`
`Filed: February 7, 2007
`
`For: STORAGE APPARATUS, STORAGE SYSTEM, AND
`DATAREADMETHOD
`
`ATTORNEY DOCKET No. TMIA.0072
`
`Commissioner of Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`Art Unit 2442
`
`Examiner
`John Moore Jain
`Macilwinen
`
`PETITION TO REVIVE UNINTENTIONALLY ABANDONED
`APPLICATION PURSUANT TO 37 C.F.R. §1.137 (b) and (c)
`
`Sir:
`
`Applicant hereby files a Petition to Revive for the above-captioned application, which
`
`had been abandoned by the Applicant filing a Notice of Express Abandonment which was filed
`
`in error on March 22, 2010. The Notice of Abandonment from the U.S. Patent and Trademark
`
`Office was mailed on Aprill, 2010.
`
`The submission of the Notice of Express Abandonment and thus the subsequent
`
`abandonment of the above-referenced application was unintentional. Applicant is hereby
`
`submitting the requisite fee under 37 C.F.R. §1.17(m)
`
`Applicant having fulfilled all of the requirements of37 C.F.R. §1.137(c), respectfully
`
`requests early notification that the application has been revived.
`
`STITES & HARBISON PLLC
`1199 North Fairfax Street, Suite 900
`Alexandria, VA 22314
`Telephone: (703) 739-4900
`Facsimile: (703) 739-9577
`Customer No. 38327
`April 23, 2010
`
`04/~6/&W~ JA.ODOt
`01 r£::1453
`
`080800J7 117~3164
`1629.99 OP
`
`ZTE (USA) 1009, Page 1
`
`

`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`JUAN CARLOS A. MARQUEZ
`C/0 STITES & HARBISON PLLC
`1199 NORTH FAIRFAX STREET
`SUITE 900
`ALEXANDRIA VA 22314-1437
`
`In re Application of
`Tashiro, Naomitsu
`Application No. 11/703,164
`Filed: February 7, 2007
`Attorney Docket No. TMIA.0072
`
`Commissioner for Patents
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`www.uspto.gov
`
`MAILED
`JUL 14 2010
`OFFICE OF PETITIONS
`
`ON PETITION
`
`This is a decision on the petition under 37 CFR 1.137(b), filed April23, 2010, to revive the above(cid:173)
`identified application.
`
`The petition is DISMISSED.
`
`AnY. request for reconsideration of this decision must be submitted within TWO (2) MONTHS from the
`mail date of this decision. Extensions of time under 37 CFR l.l36(a) are permitted. The reconsideration
`request should include a cover letter entitled "Renewed Petition under 3 7 CFR 1.13 7(b ). " This is not a
`final agency decision within the meaning of 5 U .S.C. § 704.
`
`The above-identified application became abandoned in response to the petition under 37 CFR 1.138(c)
`filed March 22, 2010 requesting express abandonment of the above-identified application. The express
`abandonment was recognized on April 1, 2010. Accordingly, the above-identified application became
`abandoned on April 1, 2010.
`
`A grantable petition under 3 7 CFR 1.13 7(b) must be accompanied by: (I) the required reply, unless
`previously filed; (2) the )Jetition fee as set forth in 37 CFR 1.17(m); (3) a statement that d"ie entire delay in
`filing the required reply from the due date for the reply until the filing of a grantable petition pursuant to
`37 CFR 1.137(b) was unintentional; and (4) any terminal disclaimer (and fee as set forth in 37 CFR
`1.20(d)) required by 37 CFR 1.137(d).
`
`Where there is a question as to whether either the abandonment or the delay in filing a petition under
`3 7 CFR 1.13 7 was unintentional, the Commissioner may require additional information. See MPEP
`711.03( c )(III)(C) and (D).
`
`This petition lacks item (3 ). The showing of record raises questions as to whether the abandonment of
`this application was unintentional within the meaning of35 USC 41(a)(7) and 37 CFR 1.137(b).
`
`Petitioner asserts that the Notice of Express Abandonment filed March 22, 20 I 01 was filed in error.
`
`MPEP 711.0 I states:
`
`The applicant (acquiesced in by an assignee of record), or the attorney/agent of record, if any,
`can sign an express abandonment. It is imperative that the attorney or agent of record exercise
`every precaution in ascertaining that the abandonment of the application is in accordance with the
`desires and best interests of the applicant prior to signing a letter of express abandonment of a
`
`ZTE (USA) 1009, Page 2
`
`

`
`Application No. 11/703,164
`
`Page 2
`
`patent application. Moreover, special care should be taken to ensure that the appropriate
`applicatiOn is correctly identified in the letter of abandonment.
`
`A thorough review of USPTO records shows that: ( 1) petitioner filed in the above-identified application,
`on March 22, 201 0, a petition for express abandonment under 3 7 CFR 1.13 8( c) and (2) the Office
`recognized the express abandonment in the above-identified application on April I, 2010.
`
`Petitioner has filed no evidence, which would lead one to reasonably believe that this application was
`unintentionally abandoned. In this regard, petitioner has failed to submit any evidence of the
`circumstances surrounding the abandonment of this application. No specific explanation has been given
`as to how and why a miscommunication regarding thts application occurred.
`
`35 U.S.C. § 41(a)(7) applies to the situation ofthe above-identified application (i.e., to the revival of an
`abandoned applicatiOn), however, it precludes the Director from revivmg the above-identified application.
`This is because § 41 (a)(7) only authorizes the Director to revive an "unintentionally abandoned
`application." The legislative history of Public Law 97-247 reveals that the purpose of35 U.S.C. §
`41(a)(7) is to permit the Office to have more discretion than in 35 U.S.C. §§ 133 or 151 to revive
`abandoned applications in appropriate circumstances, but places a limit on this discretion, stating that
`"[u]nder this section a petition accompanied by either a fee of $500 or a fee of $50 would not be granted
`where the abandonment or the failure to pay the fee for issuing the patent was intentional as opposed to
`being unintentional or unavoidable." [emphasis added]. See H.R. Rep. No. 542, 97th Cong., 2d Sess. 6-7
`(1982), reprinted in 1982 U.S.C.C.A.N. 770-71. The revival of an intentionally abandoned application, as
`this application was, is antithetical to the meaning and intent of the statute and regulation.
`
`35 U.S.C. § 41(a)(7) authorizes the Commissioner to accept a petition "for the revival of an
`unintentionally abandoned application for a P.atent." As amended December 1, 1997,37 CFR 1.137(b)(3)
`provides that a petition under 3 7 CFR 1.13 7(b) must be accompanied by a statement that the delay was
`unintentional, but provides that "[t]he Commissioner may requtre additiOnal information where there is a
`question whether the delay was unmtentional." Where there ts a question whether the delay was
`unintentional, the petitioner must meet the burden of establishing that the delay was unintentional within
`the meaning of35 U.S.C. § 41(a)(7) and 37 CFR 1.137(b). See In reApplicatiOn ofG, 11 USPQ2d 1378,
`1380 (Comm'r Pats. 1989). Here, in view of Express Abandonment of record, there is a question whether
`the entire delay was unintentional.
`
`Further correspondence with respect to this matter should be addressed as follows:
`
`By mail:
`
`By hand:
`
`By fax:
`
`Mail Stop PETITIONS
`Commissioner for Patents
`Post Office Box 1450
`Alexandria, VA 22313-1450
`
`Customer Service Window
`Mail Stop Petitions
`Randolph Building
`401 Dulany Street
`Alexandria, VA 22314
`
`(571) 273-8300
`A 1TN: Office of Petitions
`
`Telephone inquiries concerning this decision should be directed to the undersigned at (571) 272-3206.
`
`((¥?;~~
`\.G~a Walsh
`Petitions Examiner
`Office of Petitions
`
`ZTE (USA) 1009, Page 3
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Iri re U.S. Patent Application of
`
`TASHIRO
`
`Application Number: 111703,164
`
`Filed: February 7, 2007
`
`For: STORAGE APPARATUS, STORAGE SYSTEM, AND
`DATA READ METHOD
`
`Attorney Docket No. TMIA.0072
`
`Commissioner of Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`)
`)
`)
`) Art Unit 2442
`)
`)
`)
`) Examiner:
`)
`John Moore Jain Macilwinen
`)
`)
`)
`
`RENEWED PETITION TO REVIVE UNINTENTIONALLY
`ABANDONED APPLICATION PURSUANT TO 37 C.F.R. §1.137(b)-(c)
`
`Sir:
`
`In response to the Decision on Petition dated July 14, 2010, Applicant is hereby
`
`submitting a Renewed Petition to Revive for the above-captioned application, which had been
`
`abandoned by the Applicant filing a Notice of Express Abandonment which was filed in error on
`
`March 22, 2010. The Notice of Abandonment from the U.S. Patent and Trademark Office was
`
`mailed on April 1, 201 0.
`
`The entire circumstances in the submission of the Notice of Express Abandonment
`
`and thus the subsequent abandonment of the above-referenced application was unintentional.
`
`The unintentional abandonment of the above-referenced application was the result of a
`
`miscommunication with the Applicant. Specifically, the undersigned representative received on
`
`March 19, 2010, instructions to file a request for abandonment immediately (see Exhibit 1).
`
`Thus, in accordance with those instructions, the undersigned representative submitted on March
`
`22, 2010, a Notice of Express Abandonment which was then reported to the Applicant (see
`
`Exhibit 2).
`
`Thereafter, the undersigned representative received via email on March 24, 2010,
`
`further instructions indicating that the abandonment of the application was in error (see Exhibit
`
`ZTE (USA) 1009, Page 4
`
`

`
`3), and that the Notice of Express Abandonment should be withdrawn or canceled. The
`
`undersigned representative contacted the Office to inquire about the procedure to withdraw the
`
`Notice, and was informed that such Notice after being filed cannot be withdrawn. Rather, the
`
`undersigned representative was advised to wait until the Notice of Abandonment was issued, and
`
`then to submit a Petition to Revive under 37 C.P.R. §1.137. After the Notice of Abandonment
`
`was received by mail on April 5, 2010 (see Exhibit 4), the undersigned representative submitted
`
`the Petition to Revive on April23, 2010 (see Exhibit 5).
`
`In view of the above discussion and the attached documents in support of the this
`
`Petition, Applicant will submit that sufficient evidence has been presented to support the
`
`propriety of the Petition to Revive and that all of the requirements of 3 7 'c.F .R. § 1.13 7(b )-(c)
`
`have been fulfilled. Applicant submitted the requisite fee under 37 C.P.R. § 1.17(m) with the
`
`initially-filed Petition to Revive on April23, 2010.
`
`Applicant having fulfilled all the above-noted requirements respectfully requests
`
`early notification that the application has been revived.
`
`Respectfully submitted,
`
`STITES & HARBISON PLLC
`1199 North Fairfax Street, Suite 900
`Alexandria, VA 22314
`Telephone: (703) 739-4900
`Facsimile: (703) 739-9577
`Customer No. 38327
`
`September 3, 2010
`
`2
`
`ZTE (USA) 1009, Page 5
`
`

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`2010 03/19 15:16 FAX 0334363634 .. ·:.
`
`:· • 'y-.
`
`· SUNNEXT INTERNATIONAL
`PATENT OFFICE
`3rd Floor, Shiodome Building,
`1·2·20 Kaigan, Minato-ku, Tokyo
`105·0022 Japan
`
`SUN NEXT
`
`laJ 000110001
`
`Tel:+tH(0)3·6721·8055(Main)
`Fax:+Sl(0)3·3436·3634CMain)
`E-mail: soh~ext.jp
`sunnext@sunnext.jp
`
`VIA FACSIMILE ONLY
`March 19,2010
`Total Pages 1 (including this page)
`
`Stites & Harbison PLLC
`Trans Potomac Plaza
`1199 North Fairfax Street Suite 900
`Alexandria, VA22314
`FAX: +1-703-739-9577
`
`....
`
`Re:
`
`US Patent Application No.ll/703,164
`Applicant: Hitachi, Ltd
`Hitachi Ref: 340600833US01
`Your Ref:TMIA.0072
`Our Ref: HO 165 VPCO-US
`
`(Pl~e acknowledge re~eipt of this letter via return facsimile or email.)
`
`Dear Mr. Marquez:
`
`Thank you for your letter of February 12,2010 regarding a t:esponse to the recent Office
`Action in connection with above referenced application.
`
`According to Hitachi's instruction, we concluded that we do not take any further actions
`to this application and allow to be abandoned.
`Please file the Request for Abandonment of this application immediately.
`Further, please close your file and forward a final invoice ,related to this case.
`
`Should you have any questions or concerns, please do not hesitate to contact us.
`We thank you for your assistance with this matter.
`
`Shinji Ohga
`.
`Patent Attorney
`SUNNEXT INTERNATIONAL PATENT OFFICE
`E-mail: sohga@sunnext.jp
`sunnext@sunnext.jp
`
`SO/at
`
`EXHIBIT 1
`
`pg. 1
`
`ZTE (USA) 1009, Page 6
`
`

`
`.''· ·y .. ·
`(' ...
`
`. Sn·TES&HARBI~vN PLLC
`A T T 0 R N E Y S
`
`March 22, 2010
`
`VIA FACSIMILE AND UPS
`
`Mr. Shinji Ohga
`Patent Attorney
`SunNext International Patent Office
`3rd Floor, Shiodome Building
`1-2-20 Kaigan, Minato-ku, Tokyo 105-0022
`Japan
`
`TransPotomac Plaza
`1199 North Fairfax Street
`Suite 900
`Alexandria, VA 22314·1437
`[703)739-4900
`[703)739·95n Fax
`www.stites.com
`
`Juan Carloo A l'v'L3rqLeZ
`(703) 837-3930
`(imfCII.E@stites.cx:m
`
`Adnitted only in cc em PA
`
`RE: U.S. Patent Application 11/703,164
`STORAGE APPARATUS, STORAGE SYSTEM,
`ANDDATA READ METHOD (Tashiro)
`Your Reference: H0165 VPCO-US/SO- 340600833USOl
`Our Reference: TMIA.0072 (170606.00072)
`
`Dear Mr. Ohga:
`
`Thank you for your facsimile letter of March 19, 2010, informing us that you wish to
`actively withdraw the above-referenced application. We confirm that we have filed a Petition for ·
`Express Abandonment. Enclosed please find a copy of the documents as filed with the Patent
`Office on March 22,2010.
`
`Meanwhile, we have closed out our file, removed this matter from our docketing system,
`and will incur no further expenses in this matter. Should you have any questions or comments,
`please do not hesitate to contact us.
`
`Very truly yours,
`TlJ~j~ON, PLLC
`tz.ey;~----=~-:~----.. -·
`/ 1 n' Carltm· .. AJ.M~;iz ./
`L----
`.l/
`; ' !/
`
`EXHIBIT2
`
`JCM/lmg
`Enclosures
`
`166246: I :ALEXANDRIA
`
`Alexandria, VA
`
`Atlanta, GA
`
`Frankfort, KY
`
`Franklin, TN
`
`Jeffersonville, IN
`
`Lexington, KY
`
`Louisville, KY
`
`Nashville, TN
`
`ZTE (USA) 1009, Page 7
`
`

`
`' ..
`.':; :
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`Page 2 of2
`
`Cc: 'shinji ohga'
`Subject: URGENT REQUEST!!_ Application No. 11/703,164
`Importance: High
`
`Application No. 11/703,164
`Applicant: Hitachi, Ltd
`Hitachi's Ref: 340600833US01
`Your Ref: TMIA.0072 (J70606.00072)
`Our Ref: H0165 VPCO·US
`
`Dear Mf. Marquez:
`
`This is furth.er to our facsimile letter of March 19, 2010 requested to close
`above referenced application.
`
`Please be informed Hitachi incorrectly instructed us to withdraw this application.
`We just received an urgent request from Hitachi NOT to withdraw.
`Please let us know if you already filed a petition of abandonment to USPTO.
`If you already filed a petition of abandonment, please cancel the petition.
`If you have not filed the petition to abandonment yet, please cancel our letter of March
`19,2010.
`
`Your kind attention will be highly appreciated.
`We look forward to hearing from you within today.
`
`Very truly yours,
`
`Shinji Ohga
`Patent Attorney
`SUNNEXT INTERNATIONAL PATENT OFFICE
`· E·mail: sohga@sunnext.iR
`SO/at
`
`EXHIBIT 3
`
`3/24/2010
`
`ZTE (USA) 1009, Page 8
`
`

`
`.. ~
`
`TES PATENT AND TRADEMARK OFFICE
`
`: ~.
`
`United
`Address:
`
`P.O. Box 1450
`Alexandria, Virginia 22313·1450
`www .uspto.gov
`
`•
`
`1In03.164
`
`02/0712007
`
`Naomitsu Tashiro
`
`TMIA.0072
`
`9330
`
`INVENTOR
`
`04/01/2010
`
`7590
`38327
`Juan Carlos A. Marquez
`c/o Stites & Harbison PLLC
`1199 North Fairfax Street
`Suite 900
`Alexandria, VA 22314-1437
`
`RECE/\IEO
`APR 0 5 2010
`
`STITES & HARBISON, PLLC
`
`r
`
`EXAMINER
`
`MAC1LWINEN, JOHN MOORE JAIN
`
`ART UNIT
`
`PAPER NUMBER
`
`2442
`
`MAIL DATE
`
`04/01/2010
`
`DELIVERY MODE
`
`PAPER
`
`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.
`
`EXHIBIT 4
`
`PTOL-90A (Rev. 04/07)
`
`ZTE (USA) 1009, Page 9
`
`

`
`Application No.
`
`Applicant(s)
`
`11/703,164
`Examiner
`
`TASHIRO; NAOMITSU
`Art Unit
`
`John_ Macilwinen
`2442
`- The MAILING DATE of this communication appears on the cover sheet with the correspondence address-
`
`This application is abandoned in view of:
`
`1. D Applicant's failure to timely file a proper reply to the Office letter mailed on __ .
`.
`(a) D A reply was received on __ (with a Certificate of Mailing or Transmission dated __ ), which is after the expiration of the
`· period for reply (including a total extension of time of __ month(s)) which expired on __ .
`(b) D ·A proposed reply was received on __ , but it does not constitute a proper reply under 37 CFR 1.113 (a) to the final rejection.
`(A proper reply under 37 CFR 1.113 to a final rejection consists only of: ( 1) a timely filed amendment which places the
`application in condition for allowance; (2) a timely filed Notice of Appeal (with appeal fee); or (3) a timely filed Request for
`Continued Examination (RCE) in compliance with 37 CFR 1.114).
`(c) 0 A reply was received on_._ but it does not constitute a proper reply, or a bona fide attempt at a proper reply, to the non(cid:173)
`final rejection. See 37 CFR 1.85(a) and 1.111. (See explanation in box 7 below).
`(d) D No reply has been received.
`
`2. D Applicant's failure to timely pay the required issue fee and publication fee, if applicable, within the statutory period of three months
`from the mailing date of the Notice of Allowance (PTOL-85).
`(a) D The issue fee and publication fee, if applicable, was received on
`__ }, which is after the expiration of the statutory period for payment
`Allowance (PTOL-85).
`(b) 0 The submitted fee of$ __ is insufficient. A balance of$ __ is due.
`The issue fee required by 37 CFR 1.18 is$ __ . The publication fee, if required by 37 CFR 1.18(d), is$~---·
`(c) D The issue fee and publication fee, if applicable, has not been received.
`
`(with a Certificate of Mailing or Transmission dated
`the issue fee (and publication fee) set in the Notice of
`
`3.0 Applicant's failure to timely file corrected drawings as required by, and within the three-month period set in, the Notice of
`Allowability (PT0-37).
`(a) D Proposed corrected drawings were received on __ (with a Certificate of Mailing or Transmission dated __ ), which is
`after the expiration of the period for reply.
`(b) D No corrected drawings have been received.
`
`4. 181 The letter of express abandonment which is signed by the attorney or agent of record, the assignee of the entire interest, or all of
`the applicants.
`
`5. D The letter of express abandonment which is signed by an attorney or agent (acting in a representative capacity under 37 CFR
`1.34(a)) upon the filing of a continuing application.
`
`6. D The decision by the Board of Patent Appeals and Interference rendered on __ and because the period for seeking court review
`of the decision has expired and there are no allowed claims.
`·
`
`7. D The reason(s) below:
`
`/BETTY POWELL/
`ODM
`
`Petitions to revive under 37 CFR 1.137(a) or (b), or requests to withdraw the holding of abandonment under 37·CFR 1.181, should be promptly filed to
`minimize any negative effects on patent term.
`U.S. Patent and Trademark Office
`PTOL-1432 (Rev. 04-01)
`
`Notice of Abandonment
`
`Part of Paper No. 20100401
`
`ZTE (USA) 1009, Page 10
`
`

`
`,,
`
`TASHIRO
`
`Application Number: 111703,164
`
`Filed: February 7, 2007
`
`Art Unit 2442
`
`Examiner
`John Moore Jain
`Macilwinen
`
`~ .,
`~~r \) J L\l
`1). "~'\\\\. llJ
`. 0
`· ~f IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`~~
`~'fl
`"-.7Vr
`& TRAO n re U.S. Patent Application of
`)
`)
`)
`)
`)
`)
`)
`)
`)
`}
`)
`)
`
`For: STORAGE APPARATUS, STORAGE SYSTEM, AND
`DATA READ METHOD
`
`ATTORNEY DOCKET No. TMIA.0072
`
`Commissioner of Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`PETITION TO REVIVE UNINTENTIONALLY ABANDONED
`APPLICATION PURSUANT TO 37 C.F.R. §1.137 (b) and (c)
`
`Sir:
`
`Applicant hereby files a Petition to Revive for the above-captioned application, which
`
`had been abandoned by the Applicant filing a Notice of Express Abandonment which was filed
`
`in error on March 22, 2010: The Notice of Abandonment from the U.S. Patent and Trademark
`
`Office was mailed on April1, 2010.
`
`The submission of the Notice of Express Abandonment and thus the. subsequent
`
`abandonment of the above-referenced application was unintentional. Applicant is hereby
`
`submitting the requisite fee under 37 C.F.R. § 1.17(m)
`
`Applicant having fulfilled all of the requirements of37 C.F.R. §1.137(c), respectfully
`
`requests early notification that the application has been revived.
`
`STITES & HARBISON PLLC
`1199 North Fairfax Street, Suite 900
`Alexandria, VA 22314
`Telephone: (703) 739-4900
`Facsimile: (703) 739-9577
`Customer No. 38327
`April23, 2010
`
`EXHIBIT 5
`
`ZTE (USA) 1009, Page 11
`
`

`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Commissioner for Patents
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`www.uspto.gov
`
`JUANCARLOSA.MARQUEZ
`C/0 STITES & HARBISON PLLC
`1199 NORTH FAIRFAX STREET
`SUITE 900
`ALEXANDIUA VA 22314-1437
`
`In re Application of
`Tashiro, Naomitsu
`Application No.: 11/703,164
`Filed: February 7, 2007
`Attorney Docket No. TMIA-0072
`
`MAY 11 2011
`OFRC£ OF PETITIONS
`
`ON PETITION
`
`This is a decision on the renewed petition under 37 CFR 1.137(b), filed September 3, 2010, to
`revive the above-identified application.
`
`The petition is DENIED 1
`•
`
`BACKGROUND
`
`A Notice of Express Abandonment was received by the Office on March 22,2010, stating that
`the instant application was being expressly abandoned and that the applicant no longer wished to
`take any further action in the prosecution of this application. Accordingly, this application
`became abandoned on April2, 1010, which a Notice of Abandonment was mailed.
`
`A petition under 37 CFR 1.137(b) was filed April23, 2010 to revive the above-identified
`application. The petition was dismissed in the decision of July 14, 2010.
`
`This decision is in response to the renewed petition of September 3, 2010.
`
`35 U.S.C. § (2)(8)(2) provides, in part, that:
`
`STATUTE AND REGULATION
`
`The Office-- may, establish regulations, not inconsistent with law, which
`
`(A) shall govern for the conduct of proceedings in Office.
`
`This decision may be viewed by petitioner as a final agency action within the meaning of 5USC 704 for
`purposes of seeking judicial review. See MPEP 1002.02
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`ZTE (USA) 1009, Page 12
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`Application No. 11/703,164
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`Page2
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`Public Law 97-247, § 3, 96 Stat. 317 (1982), which revised patent and trademark fees, provides
`for the revival of an "unintentionally" abandoned application without a showing that the delay in
`prosecution or in late payment of an issue fee was "unavoidable." Specifically, 35 U.S.C. §
`41(a)(7) provides that the Commissioner shall charge:
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`On filing each petition for the revival of an unintentionally abandoned
`application for a patent or for the unintentionally delayed payment of the fee for
`issuing each patent, $1500, unless the petition is filed under section 13 3 or 151 of
`this title, in which case the fee shall be $500.
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`37 CFR 1.2 states:
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`All business with the Patent and 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.
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`37 CFR 1.137(b) provides:
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`Unintentional. Where the delay in reply was unintentional, a petition may be
`filed to revive an abandoned application or a lapsed patent pursuant to this
`paragraph. A grantable petition pursuant to this paragraph must be accompanied
`by:
`(1) The required reply, unless previously filed. In a nonprovisional application
`abandoned for failure to prosecute, the required reply may be met by the filing of a
`continuing application. In an application or patent, abandoned or lapsed for
`failure to pay the issue fee or any portion thereof, the required reply must be the
`payment of the issue fee or any outstanding balance thereof;
`(2) The petition fee as set forth in § 1.17(m);
`(3) A statement that the entire delay in filing the required reply from the due date
`for the reply until the filing of a grantable petition pursuant to this paragraph was
`unintentional. The Commissioner may require additional information where there
`is a question whether the delay was unintentional; and
`(4) Any terminal disclaimer (and fee as set forth in§ 1.20(d)) required pursuant to
`paragraph (c) of this section.
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`OPINION
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`Petitioner asserts the delay and entire circumstanc;es of the abandonment was unintentional.
`Specifically, petitioner states, "the undersigned received on March 19, 2010, instructions to file a
`request for abandonment immediately." Further, "the undersigned representative received via
`email on March 24, 2010 further instructions indicating the abandonment of the application was
`in error, and that the Notice of Express Abandonment should be withdrawn or cancelled."
`Finally, petitioner states, "the undersigned representative contacted the Office to inquire about
`the procedure to withdraw the Notice, and was informed that such Notice after being filed cannot
`be withdrawn. Rather, the undersigned representative was advised to wait until the Notice of
`Abandonment was issued, and then submit a Petition to Revive under 37 CFR 1.137."
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`A grantable petition to revive an abandoned application under 37 CFR 1.137(b) must be
`accompanied by: (1) the required reply (unless previously filed), which maybe met by the filing
`of a continuing application in a nonprovisional application abandoned for failure to prosecute,
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`ZTE (USA) 1009, Page 13
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`Application No. 11/703,164
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`Page 3
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`but must include the payment of the issue fee or any outstanding balance thereof in an application
`or patent, abandoned or lapsed for failure to pay the issue fee or any portion thereof; (2) the
`petition fee required by 37 CFR 1.17(m); (3) an adequate statement that the entire delay in filing
`the required reply from the due date for the reply until the filing of a grantable petition pursuant
`to.37 CFR 1.137(b) was unintentional; and (4) in some instances, a terminal disclaimer (and fee
`as set forth in 37 CFR 1.20(d)). This petition lacks item (3) above.
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`Petitioner has not shown to the satisfaction of the Director that the entire delay herein was
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`unintentional within the meaning of 35 U.S.C. § 41(a)(7) and 37 CFR 1.137(b).
`35 U.S.C. § 41(a)(7) applies to the situation of the above-identified application (i.e., to the
`revival of an abandoned application), however, it precludes the Director from reviving the above(cid:173)
`identified application. The patent statute at 35 U.S.C. § 41(a)(7) authorizes the Director to revive
`an "unintentionally abandoned application." The legislative history of Public Law 97-247 reveals
`that the purpose of35 U.S.C. § 41(a)(7) is to permit the Office to have more discretion than in 35
`U.S.C. §§ 133 or 151 to revive abandoned applications in appropriate circumstances, but places a
`limit on this discretion, stating that " [ u ]nder this section a petition accompanied by either a fee of
`$500 or a fee of $50 would not be·granted where the abandonment or the failure to pay the
`fee for issuing the patent was intentional as opposed to being unintentional or
`unavoidable." [emphasis added]. See H.R. Rep. No. 542, 97th Cong., 2d Sess. 6-7 (1982),
`reprinted in 1982 U.S.C.C.A.N. 770-71. The revival of an intentiona1ly abandoned application is
`antithetical to the meaning and intent of the statute and regulation.
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`35 U.S.C. § 41 (a)(7) authorizes the Commissioner to accept a petition "for the revival of an
`unintentionally abandoned application for a patent." As amended December 1, 1997, 37 CFR
`1.137(b)(3) provides that a petition under 37 CFR 1.137(b) must be accompanied by a statement
`that the delay was unintentional, but provides that "[t]he Commissioner may require additional
`information where there is a question whether the delay was unintentional." Where there is a
`question whether the delay was unintentional, the petitioner must meet the burden of establishing
`that the delay was unintentional within the meaning of35 U.S.C. § 41(a)(7) and 37 CFR
`1.137(b ). See In reApplication of G, 11 USPQ2d 1378, 1380 (Comm'r Pats. 1989). Here, the
`showing is that applicant intentionally discontinued prosecution and permitted the application to
`become abandoned, due to its own filing of the Notice of Express Abandonment.
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`The showing is further that applicant made no effort to seek revival until after the application
`became abandoned as petitioner was notified of the error 8 days prior to the Notice of
`Abandonment being issued. The language of both 35 USC 41(a)(7) and 37 CFR 1.137(b}are
`clear and unambiguous, and furthermore, without qualification. That is, the delay in filing a
`request to withdraw the Notice of Express Abandonment, and in filing the petition seeking
`revival, must have been, without qualification, "unintentional" for the reply to now be accepted
`on petition. The Office requires that the entire delay be at least unintentional as a prerequisite to
`revival of an abandoned application to prevent abuse and injury to the public. See H.R. Rep. No.
`542, 97th Cong., 2d Sess. 7 (1982), reprinted in 1982 U.S.C.C.A.N. 771 ("[i]n order to prevent
`abuse and injury to the public the Commissioner ... could require applicants to act promptly
`after becoming aware of the abandonment"). The December 1997 change to 3 7 CFR 1.13 7 did
`not create any new right to overcome an intentional delay in seeking revival, or in renewing an
`attempt at seeking revival, of an abandoned application. See Changes to Patent Practice and
`Procedure; Final Rule Notice, 62 Fed. Reg. 53131,53160 (October 10, 1997), 1203 Off. Gaz.
`Pat. Office 63, 87 (October 21, 1997).
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`However, the delay herein in filing a request or the petition after abandonment is inconsistent
`with a finding that the entire delay herein was unintentional, such that revival is proper. Simply
`put, a course of conduct resulting in a delay that is, as here, purposefully chosen does not qualify
`as unintentional delay.
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`Application No. 11/703,164
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`It is further noted that 35 U.S.C. § 4l(a)(7) does not require an affirmative finding that the delay
`was intentional, but only an explanation as to why the petitioner has failed to carry his or her
`burden to establish that the delay was unintentional. Cf. Commissariat A. L'Energie Atomique v.
`Watson, 274 F.2d 594, 597, 124 USPQ 126, 128 (D.C. Cir. 1960)(35 U.S.C. § 133 does not
`require the Commissioner to affirmatively find that the delay was avoidable, but only to explain
`why the applicant's petition was unavailing); see also In reApplication of G, supra (petition
`under 37 CFR 1.137(b) denied because the applicant failed to carry the burden of proof to
`establish that the delay was unintentional).
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`While the entire record has been carefully reviewed, the showing of record is inconsistent with a
`finding that the entire delay herein was unintentional:
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`Where the applicant deliberately permits an application to become abandoned (e.g., due
`to a conclusion that the claims are unpatentable, that a rejection in an Office action cannot
`be overcome, filing of an express abandonment or that the invention lacks sufficient
`commercial value to justify continued prosecution), the abandonment of such application
`is considered to be a deliberately chosen course of action, and the resulting delay cannot
`be considered as "unintentional" within the meaning of 37 CFR 1.137(b). Likewise,
`where the applicant deliberately chooses not to seek or persist in seeking the revival of an
`abandoned application, or where the applicant deliberately chooses to delay seeking the
`revival of an abandoned application, the resulting delay in seeking revival of the
`abandoned application cannot be considered as "unintentional" within the meaning of 3 7
`CFR 1.13 7(b ). An intentional delay resulting from a deliberate course of action chosen
`by the applicant is not affected by: (1) the correctness of the applicant's (or applicant's
`representative's) decision to abandon the application or not to seek or persist in seeking
`revival of the application; (2) the correctness or propriety of a rejection, or other
`objection, requirement, or decision by the Office; or (3) the discovery of new information
`or evidence, or other change in circumstances subsequent to the abandonment or decision
`not to seek or persist in seeking revival. Obviously, delaying the revival of an abandoned
`application, by a deliberately chosen cours