UNITED STATES PATENT AND TRADEMARK OFFICE
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`UNITED STATES DEPARTMENT OF COMMERCE
`UnUed States Patent and Trademark Offi~e
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alcaandria, Virginia 22313·1450
`www.uspto.gov
`
`I ATTORNEY DOCKET NO. I CONFIRMATION NO.,.
`
`tOn36,938
`
`12116/2003
`
`John Zimmerman
`
`USO I 071.5A
`
`5522
`
`06toJno06
`7590
`24737
`PHILIPS INTELLECTUAL PROPERTY & STANDARDS
`P.O. BOX 3001
`BRIARCLIFF MANOR, NY
`
`I 0510
`
`EXAMINER
`
`CHANG, KENT WU
`
`ART UNIT
`
`2629.
`
`PAPER NUMBER
`
`DATE MAILED: 06/0112006
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`PT0-90C (Rev. 10/03)
`
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`Office Action Summary
`
`Application No.
`
`Appllcant(s)
`
`10n36,93B
`
`Examiner
`
`ZIMMERMAN ET AL.
`
`Art Unit
`
`'2629
`KentChang
`- The MAILING DATE of this communication appears on the cover sheet with the co,rrespondence address -
`..
`Period for Reply
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE~ MONTH(S) OR THIRTY (30) DAYS,
`WHICHEVER IS LONGER, FROM THE MAILING DATE OF THIS COMMUNICATION.
`- . Extensl_ons of time may be available under the provisions of 37 CFR 1.136(a). In no event, however, may a reply be timely filed
`after SIX (6) MONTHS from the mailing date of this communication.
`If NO period for reply Is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from. the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1.704(b).
`Status
`
`1)0 Responsive to communication(s) filed on __ .
`2a)0 This action is FINAL.
`2b)181 This action is non;final.
`3)0 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. 11, 453 O.G. 213 ..
`
`Disposition of Claims
`
`4)181 Claim(s) 1-8 and 10 is/are pending in the application.
`4a) .Of the above claim(s) __ is/are withdrawn from consideration.
`5)0 Claini(s) __ is/are allowed.
`6)181 Claim(s) 1-8 and 10 is/are rejected.
`7)0 Claim(s) __ is/are objected to.
`8)0 Claim(s) -._are subject to restriction and/or election requirement.
`
`Application Papers
`
`9)0 The specification is objected to by the Examiner.
`· · 10)18) The drawing(s) filed on 16 December 2003 is/are: a)I8J accepted or b)O 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) incl.uding the correction is required if the drawing(s) Is objected to. See 37 CFR 1.121(d).
`11 )0 The oath or declaration is obj~cted to by the Examiner. Note the attached Office Action or form PT0-152.
`
`Priority under 35 U.S.C. § 119
`
`12)0 Acknowledgment is made of a claim for fofeign priority under 35 U.S.C. § 119(a)-(d) or-(f).
`a)D All b)O Some • c)O None of: ·
`· ·
`1.0 Certified copies of the priority documents have been received.
`·2.0 Certified copies of the priority documents have been received in Application No. _·_.
`3.0 ~opies of the certified copies of the priority do.cuments 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.
`
`Attachment(s)
`1) 181 Notice of References Cited (PT0-892)
`· 2) 0 Notice of Draftsperson's Patent Drawing Review (PT0-948)
`J) ~ Information Dlsdosure Statement(s) (PT0-1449 or PT0/58108)
`Paper No(s)/Mail Date 12116103 ..
`
`4) D Interview Summary (PT0-413)
`Paper No(s)/Mail Date. __ •
`5) D Notice of Informal Patent Application (PT~152)
`6) D Other: __ •
`
`U.S. Patent and Trademark Office
`PTOL-326 (Rev. 7-05).
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20060528
`
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`Application/Control Number: 10/736,938
`Art Unit: 2629
`
`Page 2 ·
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`DETAILED ACTION
`
`Information Disclosure Statement
`
`1.
`
`· The references listed in the Information Disclosure Statement submitted 12/16/03
`
`have been considered by the examiner (see attached PT0-1449).
`
`Double Patenting
`
`The nonstatutory double patenting rejection is based on a judicially created
`2.
`doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the
`unjustified or improper timewise extension of the "right to exclude" granted by a patent
`and to prevent possible harassment by multiple assignees. A nonstatutory
`obviousness-type double patenting rejection is appropriate where the conflicting claims
`are not identical, but at least one examined application claim is not patentably distinct.
`from the reference claim(s) because the examined application claim is either anticipated
`by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140
`F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re.Goodman, 11 F.3d 1046, 29
`USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887,225 USPQ 645 (Fed. Cir.
`1985); In re VanOrnum, 686 F.2d 937,214 USPQ 761 (CCPA 1982); In re Vogel, 422
`F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163
`.
`USPQ 644 (CCPA 1969).
`A timely filed terminal disclaimer in compliance with 37 CFR 1.321 (c) or 1.321 (d)·
`may be used to overcome an actual or provisional rejection based on a nonstatutory
`double patenting ground provided the conflicting application or patent either is shown to
`be commonly owned with this application, or claims an invention made as a result of
`activities undertaken within the scope of a joint research agreement.
`Effective January 1, 1994, .a registered attorney or agent of record may sign a
`terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with
`37 CFR 3. 73(b ).
`1.
`Claims 1-8 and 10 are rejected on the ground of nonstatutory obviousness-type
`
`double patenting as being unpatentable over claims 1-12 of U.S. Patent No. 6,690,387.
`
`Claims in the current application are a broader version of claims in US Patent No.
`
`6,690,387 with. omission of the use of a keyboa~d coupled to the microprocessor.
`
`Although the conflicting claims are not identical, they are not patentably distinct from
`
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`Application/Control Number: .1 0/736,938 .
`Art Unit: 2629
`
`Page 3
`
`·
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`each other because o~ission of element and its function in combination is obvious
`
`expedient if remaining elements perform same functions as before. In re KARLSON
`
`(CCPA) 136 USPQ 184·(1963).
`
`Con·clusion
`
`2.
`
`The prior art made of record·and not relied upon is.considered pertinent to
`
`I
`
`applicant's disclosure. Yanker (US 5,075;673); Sugimoto et al (US 5,526,023);
`
`',
`
`1
`
`f
`
`Tognazzini (US 5,850,211 ); Haynes (US 5,864,330); Takaike (US 6,384,845).
`.
`
`'
`
`'
`
`CONTACT INFORMATION
`
`Any inquiry concerning this communication or earlier comm~nications fro·m the
`
`examiner should be directed to Kent Chang whose telephone number is 571-272-7667.
`
`The ~xaminer can normally be reached 9~ Monday to Thursday from 9:00 AM to 6:00
`
`PM.
`
`If attempts to reach the examiner by telephone. are·unsuccessful, the examiner's
`
`supervisor, Sumati Lefkowitz, ca!'l be reached at 571-2.72-3638.
`
`Any response to this action should be mailed to:
`
`Commissioner of Patents and Trademarks
`
`Washington, D.C. 20231
`
`or faxed to:
`
`571 ~273-8300
`
`•.·
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`Application/Control Number: 10/736,938
`Art Unit: 2629
`
`Page4
`
`Hand-delivered responses should be brought to the Customer Service Window,
`now located at the Randolph Building, 401 Dulany Street, Alexandria, VA 22314.
`
`Information regarding the status of an application may be obtained from the
`
`Patent Application Information Retrieval (PAIR) system. Status information for
`
`·
`
`published applications may be obtained from either Private PAIR or Public PAIR.
`
`Status information for unpublished applications is available through Private PAIR only.
`
`For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
`
`you have questions on access to the Private PAIR ·system, contact the Electronic
`.
`
`.
`
`Business Center (EBC) at 866-217-9197 (toll-free).
`
`~~c~
`Kent Chang
`Primary Examiner
`Art Unit 2629Division 2629 .
`
`kc
`5/28/06
`
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Examiner: K. CHANG
`
`)
`)
`) Art Unit: 2629
`)
`) Confirmation: 5522
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`·Cleveland, OH 44114
`)
`) August 24, 2006
`
`RESPONSE
`
`In re application ·of
`J. ZIMMERMAN, et al.
`
`Serial No.: 10/736,938
`
`Filed: December 16, 2003
`
`For: TOUCH SCREEN IMAGE
`SCROLLING SYSTEM
`AND METHOD
`
`Date of Last Office Action:
`June 1, 2006
`
`Attorney Docket No.:
`USO 10715 I PK.RX 2 00006
`
`Commissioner For Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Dear.Sir:
`
`This paper is responsive to the Office Action of June 1, 2006.
`
`Claims 1-8 and 10 stand rejected only on the ground of non-statutory
`
`obviousness-type double-patenting. The applicants attach an appropriate Terminal
`
`Disclaimer, terminally disclaiming the portion of this patent which extends beyond
`
`the term of US Patent No. 6,690,387. There being no other outstanding grounds of
`
`rejection or objection, it is submitted that the filing of this Terminal Disclaimer places
`
`the application in condition for allowance.
`
`·CERTIFICATE OF ELECillONIC TRANSMISSION
`I certify that this RESPONSE and accompanying documents in connection with U.S. Serial No. IOn36,938 are being filed on the
`date indicated below by electronic transmission with the United States Patent and Trademark Office via the electronic filing
`system (EFS-Web).
`
`Date
`
`Elissa Deluccy
`
`L:\HMM\DA TA \2006\PKRX200006.RES.DOC
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`-2-
`
`An early allowance of all claims is requested.
`
`Respectfully submitted,
`
`FAY, SHARPE, FAGAN,
`MINNICH & McKEE, LLP
`
`Thomas E. Kocovsk , Jr.
`Reg. No. 28,383
`1100 Superior Av nue
`Seventh Floor
`Cleveland, OH 44114-2579
`(216) 861-5582
`
`Mail All Correspondence to:
`Yan Glickberg, Reg. No. 51,742
`US PHILIPS CORPORATION
`P.O. Box 3001
`BriarcliffManor, NY 10510-8001
`(914) 333-9618 (tel)
`(914) 332-0615 (fax)
`
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`TERMINAL DISCLAIMER TO OBVIATE A DOUBLE PATENTING
`REJECTION OVER A PRIOR PATENT
`
`In reApplication of: J. Zimmerman et al
`Application No. 101736,938
`
`Filed: December 16, 2003
`
`For: TOUCH SCREEN IMAGE SCSROLUNG SYSTEM AND METHOD
`
`Docket Num.ber .(Optional)
`US010715A
`
`Customer No. 24 737
`
`The owner, Koninklijke Philips Electronics N.V. of the entire interest in the instant application
`hereby disclaims, except as provided below, the terminal part of the statutory term of any patent granted on the instant
`application, which would extend beyond the expiration date of the full statutory term defined in 35 U.S.C. 154 to 156
`and 173, as presently shortened by any terminal disclaimer, of prior Patent No. 6,690,38782. The owner hereby
`agrees that any patent so granted on the instant application shall be enforceable only for and during such period that it
`and the prior patent are commonly owned. This agreement runs with any patent granted on the instant application and
`is binding upon the grantee, its successors or assigns.
`
`In making the above disclaimer, the owner does not disclaim the terminal part of any patent granted on the
`instant application that would extend to the expiration date of the full statutory term as defined in 35 U.S.C. 154 to 156
`and 173 of the prior patent, as presently shortened by any terminal disclaimer, in the event that it later: expires for
`failure to pay a maintenance fee, is held unenforceable, is found invalid by a court of competent jurisdiction, is
`statutorily disclaimed in whole or terminally disclaimed under 37 CFR 1.321, has all· claims cancelled by a
`reexamination certificate, is reissued, or is in any manner terminated prior to the expiration of its full statutory term as·
`presently shortened by any terminal disclaimer.
`
`Please charge Deposit Account 14-1270, the terminal disclaimer fee under 37 CFR 1.20{d).
`
`The undersigned is an attorney of record.
`
`/ · s;;atu
`
`Van Glickberg, Reg. 51,742
`
`~-dlS-o~
`Date
`
`See Comments to form
`
`\\Moria\IPS_Data\UserPublic\YG\US\USOI\USOI0715\USOJ0715 Tenninal Disclaimer- Prior Patent. DOC
`
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`TERMINAL DISCLAIMER TO OBVIATE A DOUBLE PATENTING
`REJECTION OVER A PRIOR PATENT
`
`In reApplication of: J. Zimmerman at al
`Application No. 10fl36,938
`Filed: December 16, 2003
`For: TOUCH SCREEN IMAGE SCSROLUNG SYSTEM AND METHOD
`
`Docket Number (Optional)
`US01071SA
`
`Cuslomet No. 24737
`
`The owner, Konlnklijke Philip& Electronic& N.V. of the andre Interest In the Instant application
`hereby disclaims, except as provided below, the terminal part of the statutory term of any patent granted on the Instant
`application, which would extend beyond the expiration date of the fuU statutory term defined in 35 U.S.C. 154 to 156
`and 173, as p~esently shortened by any terminal dlsclaimer, of prior Patent No. 6.690,38782. The ·owner h91'9by
`agrees that any patent so granted on the Instant application shall be enforceable only for and during such period that it
`and the prior patent are commonly owned. This agreement runs with any patent granted on the Instant appBcatlon and
`Is binding upon the grantae, its successors or assigns.
`
`In making the above disclaimer, the owner does not dlsctalm the terminal part of any patent granted on the
`Instant applicatiOn that would extend to the expiration date of the full statutory term as defined in 35 U.S.C. 154 to 156
`and 173 of the pr\or patent, as presently shOrtened by any terminal disclaimer, In the event that It later. expires for
`failure to pay a maintenance fee, Is held unenforceable, is found invalid by a court of competent jurisdiction, is
`statutorily disclaimed in whole or terminally disdalmed under 37 CFR 1.321. has all claims cancelled by a
`reexamination certificate, Is reissued, or Is In any manner tennlnated prior to the expiration of its full statutory term as
`presently shortened by any terminal disclaimer.
`
`Please charge Deposit Account 14-1270, the terminal dlscfaimer fee under 37 CFR 1.20(d).
`
`The undersigned is an attorney of. record.
`
`Van Gllekberg, Reg. 51.742
`
`See Comments to form
`
`\\Moria\IPS_Data\UserPublic\YGIUS\l.ISOI \US01071 S\USOI 0713 TemrinaJ Disclaimer • Prior Patent. DOC
`
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