U NITED STATES P ATE T AND TRADEMARK O FFICE
`
`UNITED STA TES DEPA RTMENT OF OMMERCE
`United Stales Patent and Trademark Office
`Address, OMMI
`IONER FOR J)ATENT
`P.O. Box 1450
`Ak=dria. Virginia 22313-1450
`wu.rw.usplo.gov
`
`APPL! TION NO.
`
`F!LINO DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`ONFrRMATION NO.
`
`13n32,761
`
`01/02/2013
`
`Carles Puente Baliarda
`
`0690.00!6CL2
`
`7683
`
`7 5 90
`I 0124/20 14
`27896
`EDELL, SHAPIRO & FINNAN, LLC
`9801 Washingtonian Blvd.
`Suite 750
`Gaithersburg, MD 20878
`
`EXAM.
`
`PHAN, THO GIA
`
`ART UNIT
`
`PAPER NUM13ER
`
`2S45
`
`NOTIFICATION DA TE
`
`narvERY MODE
`
`10/2412014
`
`ELECJ'RONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for rep]y, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`epatcn1 @usiplaw.com
`
`PTOL-90A (Rev. 04/07)
`
`ZTE v. Fractus
`IPR2018-01461
`
`ZTE
`Exhibit 1010.0001
`
`

`

`Application No.
`13/732,761
`
`Applicant(s)
`PUENTE BALIARDA ET AL.
`
`Examiner
`THOG. PHAN
`
`Art Unit
`2845
`
`Office Action Summary
`
`AIA (First Inventor to File)
`status
`No
`- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address -(cid:173)
`Period tor Reply
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE J. MONTHS FROM THE MAILING DATE OF
`THIS COMMUNICATION.
`Extensions 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 wil l expire SI X (6) MO NTHS from the mailing date of this commun ication.
`Failure to reply within the set or extended period for rep ly wi ll , 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 )[8] Responsive to communication(s) filed on 112/ 13.
`0 A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on_~
`2a)0 This action is FINAL.
`2b)C8] This action is non-final.
`3)0 An election was made by the applicant in response to a restriction requirement set forth during the interview on
`__ ; the restriction requirement and election have been incorporated into this action.
`4)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*
`5)[8] Claim(s) 1-23 is/are pending in the application.
`5a) Of the above claim(s) __ is/are withdrawn from consideration .
`6)0 Claim(s) __ is/are allowed.
`7)[8] Claim(s) 1-23 is/are rejected .
`8)0 Claim(s) __ is/are objected to.
`9)0 Claim(s) __ are subject to restriction and/or election requirement.
`* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http:iNNNJ.usoto.govtpatents/init events/pph/index.isp or send an inquiry to PPHfeedback(@uspto.aov.
`
`Application Papers
`10)0 The specification is objected to by the Examiner.
`11 )[8] The drawing(s) filed on 112/ 13 is/are: a)C8l 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) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12)0 Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f) .
`Certified copies:
`a)O All b)O Some** c)O None of the:
`1.0
`Certified copies of the priority documents have been received.
`Certified copies of the priority documents have been received in Application No. __ .
`2.0
`Copies of the certified copies of the priority documents have been received in this National Stage
`3.0
`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) [8J Notice of References Cited (PT0-892)
`
`2) [8] 1nformation Disclosure Statement(s) (PTO/SB/08a and/or PTO/ SB/08b)
`Paper No(s)/Mail Date 1/25/ 13.1/28/ 13.4!29/ 13. 7110/ 13.
`U.S. Patent and Trademark Office
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`3) 0 Interview Summary (PT0-413)
`4) 0 Other: __ .
`
`Paper No(s)/ Mail Date. __ .
`
`Part of Paper No./Mail Date 20141020
`
`ZTE v. Fractus
`IPR2018-01461
`
`ZTE
`Exhibit 1010.0002
`
`

`

`Application/Control Number: 13/732,761
`Art Unit: 2845
`
`Page 2
`
`The present application is being examined under the pre-AIA first to invent
`
`provisions.
`
`DETAILED ACTION
`
`Double Patenting
`
`1 .
`
`The nonstatutory double patenting rejection is based on a judicially created
`
`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 double
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`patenting rejection is appropriate where the claims at issue 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 Van Ornum,
`
`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 reference 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. A terminal
`
`disclaimer must be signed in compliance with 37 CFR 1.321 (b).
`
`ZTE v. Fractus
`IPR2018-01461
`
`ZTE
`Exhibit 1010.0003
`
`

`

`Application/Control Number: 13/732,761
`Art Unit: 2845
`
`Page 3
`
`The USPTO internet Web site contains terminal disclaimer forms which may be
`
`used. Please visit http://www.uspto.gov/forms/. The filing date of the application will
`
`determine what form should be used. A web-based eTerminal Disclaimer may be filled
`
`out completely online using web-screens. An eTerminal Disclaimer that meets all
`
`requirements is auto-processed and approved immediately upon submission. For more
`
`information about eTerminal Disclaimers, refer to
`
`http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-l .jsp.
`
`2.
`
`Claims 1-23 are provisionally rejected on the ground of nonstatutory double
`
`patenting as being unpatentable over claims 1-23 of copending Application No.
`
`13/732,755. Although the claims at issue are not identical, they are not patentably
`
`distinct from each other because they both claimed similar subject matters.
`
`This is a provisional nonstatutory double patenting rejection because the
`
`patentably indistinct claims have not in fact been patented.
`
`Conclusion
`
`3.
`
`The prior art made of record and not relied upon is considered pertinent to
`
`applicant's disclosure. The patents to Fathy et al., Nalbandian, Chen et al., Rawat et al.
`
`and Jiang et al. are cited as of interested and illustrated a similar structure to an
`
`antenna apparatus.
`
`ZTE v. Fractus
`IPR2018-01461
`
`ZTE
`Exhibit 1010.0004
`
`

`

`Application/Control Number: 13/732,761
`Art Unit: 2845
`
`Page 4
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to Tho G. Phan whose telephone number is 571-272-1826.
`
`The examiner can normally be reached on M-F, 8:30-5:00.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
`
`supervisor, Sue Purvis can be reached on (571) 272-1236. The fax phone number 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
`
`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).
`
`/THO G PHAN/
`Primary Examiner, Art Unit 2845
`
`ZTE v. Fractus
`IPR2018-01461
`
`ZTE
`Exhibit 1010.0005
`
`