UNITED STATES PATENT AND TRADEMARK OFFICE
`
`OF COMMERCE
`UNITED STATES DEPARTMENT
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. B- 1450
`Al-dria, Virgiiiia
`www.uspto.g~
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`22313-1450
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`APPLICATION NO.
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`I
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`I
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`FILING DATE
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`I
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`FIRST NAMED INVENTOR
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`:::::[:ATTORNEY DOCKET NO.
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`I
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`CONFIRMATIO
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`12/553,107
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`09/03/2009
`
`Brian Ault
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`POZN.PO026US
`
`5949
`
`10/09/2015
`
`108197
`7590
`Parker Highlander PLLC
`1120 South Capital of Texas Highway
`Bldg. 1, Suite 200
`Austin, TX 78746
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`I
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`I
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`I
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`EXAMINER
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`YUSTICE, GINA CHIEUN YU
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`ART UNIT
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`1617
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`PAPER NUNMER
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`I
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`I
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`I
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`NOTIFICATION El~:J
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`DELIVERY MODE
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`10/09/2015
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`ELECTRONIC
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`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.
`
`Notice of the Office communication was sent electronically on above-indicated
`following e-mail address(es):
`
`"Notification Date"
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`to the
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`docket@phiplaw.com
`
`PTOL-90A (Rev. 04/07)
`
`Patent Owner Ex. 2005
`DRL v. Horizon
`IPR2018-01341
`
`Page 1 of 4
`
`

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`Application/Control Number: 12/553,107
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`Art Unit: 1617
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`Page 2
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`The present application is being examined under the pre-AIA first
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`to invent
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`provisions.
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`Continuation of No. 5:
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`Applicant's reply has overcome the following rejections:
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`1) Rejection made under 35 U.S.C. § 103 (a) over Hassan-Alin et al.
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`(Gastroenterology,
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`124 (4), 2003) in view of Plachetka (US 6926907 132), which was
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`indicated in the previous Office action dated March 26, 2015;
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`2) Obviousness double patenting rejection made in view of claims 1-55 of US
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`Pat. No. 6926907 B2 in view of Hassan-Alin; and
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`3) Obviousness double patenting rejection made in view of claims 57-75 of
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`Application No. 14/045156
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`(now US Pat. No. 8852636).
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`Continuation of No. 12:
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`Claims 19, 29, 33, 34, 40, 42 and 45 remain rejected on the ground of
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`nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent
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`No. 8945621 B2 (previously cited as Application No. 12/822612).
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`The rejection is
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`deemed proper and maintained for the reasons of record. Although applicant
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`indicated
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`disagreement with the rejection, no specific reasons or explanation was given.
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to GINA YU JUSTICE whose telephone number
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`is
`
`Patent Owner Ex. 2005
`DRL v. Horizon
`IPR2018-01341
`
`Page 2 of 4
`
`

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`Application/Control Number: 12/553,107
`
`Art Unit: 1617
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`Page 3
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`(571)272-8605.
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`The examiner can normally be reached on Monday through Friday,
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`from 9:OOAM until 5:00 PM.
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`If attempts to reach the examiner by telephone are unsuccessful,
`
`the examiner's
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`supervisor, Johann Richter can be reached on 571-272-0646.
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`The fax phone number
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`for the organization where this application or proceeding is assigned is 571-273-8300.
`
`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
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`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).
`
`If you would like assistance from a
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`USPTO Customer Service Representative or access to the automated information
`
`system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
`
`/GINA YU JUSTICE/
`Primary Examiner, Art Unit 1617
`
`Patent Owner Ex. 2005
`DRL v. Horizon
`IPR2018-01341
`
`Page 3 of 4
`
`

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`Advisory Action
`Before the Filing of an Appeal Brief
`
`Application No.
`121553,107
`
`Examiner
`GINA YU JUSTICE
`
`Applicant(s)
`AULT ET AL.
`
`Art Unit
`1617
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`AIA (First
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`Inventor to File) Status
`
`No
`
`--The MAILING DATE of this communication appears on the cover sheet with the correspondence
`THE REPLY FILED 25 September 2015 FAILS TO PLACE THIS APPLICATION IN CONDITION FOR ALLOWANCE.
`NO NOTICE OF APPEAL FILED
`1. Z The reply was filed after a final
`this application, applicant must timely file
`To avoid abandonment
`rejection. No Notice of Appeal has been filed.
`of
`affidavit, or other evidence, which places the application in condition for allowance;
`one of the following replies: (1) an amendment,
`fee) in compliance with 37 CFR 41.31; or (3) a Request
`for Continued Examination (RCE)
`in compliance with
`(2) a Notice of Appeal
`(with appeal
`INS is a utility or plant application. Note that RCEs are not permitted in design applications.
`ot CrR 1.
`The reply must be filed within one of
`the following time periods:
`a) Z The period for reply expires 6 months from the mailing date of
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`1
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`1 1+
`
`11
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`the final rejection.
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`address --
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`b)
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`c)
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`r_1
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`is later.
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`is earlier.
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`(1 ) the mailing date of this Advisory Action; or (2) the date set forth in the final rejection, whichever
`r_1 The period for reply expires on:
`the statutory period for reply expire later than SIX MONTHS from the mailing date of the final rejection.
`In no event, however, will
`A prior Advisory Action was mailed more than 3 months after the mailing date of the final rejection in response to a first after-final
`reply filed
`within 2 months of
`The current period for reply expires
`months from the mailing date of
`the mailing date of the final rejection.
`the prior Advisory Action or SIX MONTHS from the mailing date of the final rejection, whichever
`(b) or (c). ONLY CHECK BOX (b) WHEN THIS ADVISORY ACTION IS THE
`Examiner Note:
`is checked, check either box (a),
`If box 1
`FIRST AFTER-FINAL REPLY WHICH WAS FILED WITHIN TWO MONTHS OF THE FINAL
`FIRST RESPONSE TO APPLICANT'S
`REJECTION. ONLY CHECK BOX (c)
`IN THE LIMITED SITUATION SET FORTH UNDER BOX (c). See MPEP 706.07(f).
`Extensions of time may be obtained under 37 CFR 1.1 36(a). The date on which the petition under 37 CFR 1.1 36(a) and the appropriate
`the fee. The
`extension fee have been filed is the date for purposes of determining the period of extension and the corresponding amount of
`appropriate extension fee under 37 CFR 1. 1 7(a) is calculated
`from: (1) the expiration date of the shortened statutory period for reply originally
`Any reply received
`set in the final Office action; or (2) as set forth in (b) or (c) above,
`if checked.
`by the Office later than three months after the
`term adjustment. See 37 CFR 1.704(b).
`mailing date of the final rejection, even if timely filed, may reduce any earned patent
`NOTICE OF APPEAL
`2. Z The Notice of Appeal was filed on 25 September2015.
`A brief in compliance with 37 CFR 41.37 must be filed within two months of the
`(37 CFR 41.37(e)), to avoid dismissal of
`(37 CFR 41.37(a)), or any extension thereof
`the appeal. Since
`date of filing the Notice of Appeal
`a Notice of Appeal has been filed, any reply must be filed within the time period set forth in 37 CFR 41.37(a).
`AMENDMENTS
`
`a)
`
`b)
`
`c)
`
`d)
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`or simplifying the issues for
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`rejected claims.
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`3. r_J The proposed amendments filed after a final
`filing a brief, will not be entered because
`rejection, but prior to the date of
`r_1 They raise new issues that would require further consideration and/or search (see NOTE below);
`r_1 They raise the issue of new matter (see NOTE below);
`r_1 They are not deemed to place the application
`in better form for appeal by materially reducing
`appeal; and/or
`a corresponding number of finally
`r_1 They present additional claims without canceling
`. (See 37 CFR 1.116 and 41.33(a)).
`NOTE:
`in compliance with 37 CFR 1.121. See attached Notice of Non-Compliant Amendment
`4. F~ The amendments are not
`5. Z Applicant's reply has overcome the following rejection(s): See continuation sheet.
`
`(PTOL-324).
`
`6. E] Newly proposed or amended claim(s)_ would be allowable if submitted in a separate, timely filed amendment canceling
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`allowable claim(s).
`(a) El will not be entered, or (b) El will be entered, and an explanation of how the
`7. r-1 For purposes of appeal,
`the proposed amendment(s):
`new or amended claims would be rejected is provided below or appended.
`AFFIDAVIT OR OTHER EVIDENCE
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`the non-
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`8.
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`A declaration (s)/affidavit(s) under 37 CIFIR 1.130(b) was/were
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`filed on
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`9.
`
`applicant
`
`The affidavit or other evidence
`filed after final action, but before or on the date of filing a Notice of Appeal will not be entered because
`is necessary and was not earlier
`failed to provide a showing of good and sufficient reasons why the affidavit or other evidence
`presented. See 37 CFR 1.1 16(e).
`10. M The affidavit or other evidence
`filed after the date of filing the Notice of Appeal, but prior to the date of filing a brief, will not be entered
`because the affidavit or other evidence
`failed to overcome all rejections under appeal and/or appellant fails to provide
`a showing of good
`is necessary and was not earlier presented. See 37 CFR 41.33(d)(1).
`and sufficient reasons why it
`11. M The affidavit or other evidence
`is entered. An explanation of the status of
`the claims after entry is below or attached.
`REQUEST FOR RECONSIDERATION/OTHER
`The request for reconsideration has been considered but does NOT place the application in condition
`See continuation sheet.
`
`12.
`
`for allowance
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`because:
`
`13.
`
`Note the attached
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`Information Disclosure Statement(s).
`
`(PTO/SB/08)
`
`Paper No(s).
`
`14.
`Other:
`STATUS OF CLAIMS
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`15. The status of the claim(s) is (or will be) as follows:
`
`Claim(s) allowed:
`
`Claim(s) objected to:
`19, 29, 33, 34, 40, 42 and 45.
`Claim(s) rejected:
`Claim(s) withdrawn from consideration:
`
`U.S. Patent and Trademark Office
`PTOL-303 (Rev. 08-2013)
`
`Advisory Action Before the Filing of an Appeal Brief
`
`Part of Paper No. 20151006
`
`/GINA YU JUSTICE/
`Primary Examiner, Art Unit 1617
`
`Patent Owner Ex. 2005
`DRL v. Horizon
`IPR2018-01341
`
`Page 4 of 4
`
`