`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`www .uspto.gov
`
`APPLICATION NO.
`
`15/380,270
`
`ISSUE DATE
`
`08/01/2017
`
`PATENT NO.
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`9718852
`
`62239-BZA8/JPW/ AC
`
`9765
`
`07/12/2017
`
`23432
`7590
`COOPER & DUNHAM, LLP
`30 Rockefeller Plaza
`20th Floor
`NEW YORK, NY 10112
`
`The projected patent number and issue date are specified above.
`
`ISSUE NOTIFICATION
`
`Determination of Patent Term Adjustment under 35 U.S.C. 154 (b)
`(application filed on or after May 29, 2000)
`
`The Patent Term Adjustment is O day(s). Any patent to issue from the above-identified application will include
`an indication of the adjustment on the front page.
`
`If a Continued Prosecution Application (CPA) was filed in the above-identified application, the filing date that
`determines Patent Term Adjustment is the filing date of the most recent CPA.
`
`Applicant will be able to obtain more detailed information by accessing the Patent Application Information
`Retrieval (PAIR) WEB site (http://pair.uspto.gov).
`
`Any questions regarding the Patent Term Extension or Adjustment determination should be directed to the
`Office of Patent Legal Administration at (571)-272-7702. Questions relating to issue and publication fee
`payments should be directed to the Application Assistance Unit (AAU) of the Office of Data Management
`(ODM) at (571)-272-4200.
`
`APPLICANT(s) (Please see PAIR WEB site http://pair.uspto.gov for additional applicants):
`
`Jingyue Ju, Englewood Cliffs, NJ;
`The Trustees of Columbia University in the City of New York, New York, NY;
`Zengmin Li, Flushing, NY;
`John Robert Edwards, St. Louis, MO;
`Yasuhiro ltagaki, New York, NY;
`
`The United States represents the largest, most dynamic marketplace in the world and is an unparalleled location
`for business investment, innovation, and commercialization of new technologies. The USA offers tremendous
`resources and advantages for those who invest and manufacture goods here. Through SelectUSA, our nation
`works to encourage and facilitate business investment. To learn more about why the USA is the best country in
`the world to develop technology, manufacture products, and grow your business, visit SelectUSA.gov.
`
`IR103 (Rev. 10/09)
`
`Page 1
`
`Page 1
`
`Columbia Ex. 2026
`Illumina, Inc. v. The Trustees
`of Columbia University
`in the City of New York
`IPR2020-01177
`
`
`
`UNITED STA TES p A TENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`www .uspto.gov
`
`APPLICATION NO.
`
`15/380,270
`
`ISSUE DATE
`
`08/01/2017
`
`PATENT NO.
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`9718852
`
`62239-BZA8/JPW/ AC
`
`9765
`
`07/12/2017
`
`23432
`7590
`COOPER & DUNHAM, LLP
`30 Rockefeller Plaza
`20th Floor
`NEW YORK, NY 10112
`
`The projected patent number and issue date are specified above.
`
`ISSUE NOTIFICATION
`
`Determination of Patent Term Adjustment under 35 U.S.C. 154 (b)
`(application filed on or after May 29, 2000)
`
`The Patent Term Adjustment is O day(s). Any patent to issue from the above-identified application will include
`an indication of the adjustment on the front page.
`
`If a Continued Prosecution Application (CPA) was filed in the above-identified application, the filing date that
`determines Patent Term Adjustment is the filing date of the most recent CPA.
`
`Applicant will be able to obtain more detailed information by accessing the Patent Application Information
`Retrieval (PAIR) WEB site (http://pair.uspto.gov).
`
`Any questions regarding the Patent Term Extension or Adjustment determination should be directed to the
`Office of Patent Legal Administration at (571)-272-7702. Questions relating to issue and publication fee
`payments should be directed to the Application Assistance Unit (AAU) of the Office of Data Management
`(ODM) at (571)-272-4200.
`
`APPLICANT(s) (Please see PAIR WEB site http://pair.uspto.gov for additional applicants):
`
`Jingyue Ju, Englewood Cliffs, NJ;
`The Trustees of Columbia University in the City of New York, New York, NY;
`Zengmin Li, Flushing, NY;
`John Robert Edwards, St. Louis, MO;
`Yasuhiro ltagaki, New York, NY;
`
`The United States represents the largest, most dynamic marketplace in the world and is an unparalleled location
`for business investment, innovation, and commercialization of new technologies. The USA offers tremendous
`resources and advantages for those who invest and manufacture goods here. Through SelectUSA, our nation
`works to encourage and facilitate business investment. To learn more about why the USA is the best country in
`the world to develop technology, manufacture products, and grow your business, visit SelectUSA.gov.
`
`IR103 (Rev. 10/09)
`
`Page 1
`
`Page 1
`
`
`
`UNITED STA TES p A TENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria., Virginia 22313-1450
`www .uspto.gov
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`15/380,270
`
`12/15/2016
`
`Jingyue Ju
`
`62239-BZA8/JPW I AC
`
`9765
`
`06/28/2017
`
`23432
`7590
`COOPER & DUNHAM, LLP
`30 Rockefeller Plaza
`20th Floor
`NEW YORK, NY 10112
`
`EXAMINER
`
`BERRY,LAYLAD
`
`ART UNIT
`
`PAPER NUMBER
`
`1673
`
`MAIL DATE
`
`DELIVERY MODE
`
`06/28/2017
`
`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.
`
`PTOL-90A (Rev. 04/07)
`
`Page 2
`
`Page 2
`
`
`
`Notice of Allowability
`
`Application No.
`15/380,270
`Examiner
`LAYLA BERRY
`
`Applicant(s)
`JU ET AL.
`Art Unit
`1673
`
`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)
`All claims being allowable, PROSECUTION ON THE MERITS IS (OR REMAINS) CLOSED in this application. If not included
`herewith (or previously mailed), a Notice of Allowance (PTOL-85) or other appropriate communication will be mailed in due course. THIS
`NOTICE OF ALLOWABILITY IS NOT A GRANT OF PATENT RIGHTS. This application is subject to withdrawal from issue at the initiative
`of the Office or upon petition by the applicant. See 37 CFR 1.313 and MPEP 1308.
`
`1. 1:8] This communication is responsive to Applicant's response submitted Mav 9. 2017.
`DA declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on ___ .
`2. D 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.
`
`3. 1:8] The allowed claim(s) is/are 61. As a result of the allowed claim(s), 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://www.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`4. D Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`*c) D None of the:
`a) D All
`b) D Some
`1. D Certified copies of the priority documents have been received.
`2. D Certified copies of the priority documents have been received in Application No. __ .
`3. D Copies of the certified copies of the priority documents have been received in this national stage application from the
`International Bureau (PCT Rule 17.2(a)).
`* Certified copies not received: __ .
`
`Applicant has THREE MONTHS FROM THE "MAILING DATE" of this communication to file a reply complying with the requirements
`noted below. Failure to timely comply will result in ABANDONMENT of this application.
`THIS THREE-MONTH PERIOD IS NOT EXTENDABLE.
`5. D CORRECTED DRAWINGS ( as "replacement sheets") must be submitted.
`D including changes required by the attached Examiner's Amendment/ Comment or in the Office action of
`Paper No./Mail Date __ .
`Identifying indicia such as the application number {see 37 CFR 1.84{c)) should be written on the drawings in the front {not the back) of
`each sheet. Replacement sheet{s) should be labeled as such in the header according to 37 CFR 1.121{d).
`
`6. (cid:143) DEPOSIT OF and/or INFORMATION about the deposit of BIOLOGICAL MATERIAL must be submitted. Note the
`
`attached Examiner's comment regarding REQUIREMENT FOR THE DEPOSIT OF BIOLOGICAL MATERIAL.
`
`Attachment(s)
`1. D Notice of References Cited (PTO-892)
`2. 1:8] Information Disclosure Statements (PTO/SB/08),
`Paper No./Mail Date __
`3. D Examiner's Comment Regarding Requirement for Deposit
`of Biological Material
`4. D Interview Summary (PTO-413),
`Paper No./Mail Date __ .
`
`5. D Examiner's Amendment/Comment
`6. 1:8] Examiner's Statement of Reasons for Allowance
`
`7. D Other __ .
`
`U.S. Patent and Trademark Office
`PTOL-37 (Rev. 08-13)
`20170626
`
`Notice of Allowability
`
`Part of Paper No./Mail Date
`
`Page 3
`
`Page 3
`
`
`
`Application/Control Number: 15/380,270
`Art Unit: 1673
`
`Page 2
`
`The present application is being examined under the pre-AIA first to invent provisions.
`
`DETAILED ACTION
`
`A signed copy of the IDS submitted May 26, 2017 is attached to this corrected notice of
`
`allowance ..
`
`Claim 61 is pending.
`
`The rejection of claim 61 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA), second
`
`paragraph, as being indefinite is withdrawn. The declaration of Jingyue Ju submitted May 9,
`
`2017 is sufficient to explain what is meant by "small." Applicant's argument that the skilled
`
`artisan would understand the definitions of R and Y is persuasive. The rejection of claim 1 under
`
`35 U.S.C., first paragraph is also withdrawn in view of Applicant's arguments. Applicant's
`
`arguments regarding the Stemple reference and the 2-nitrobenzyl group are sufficient to
`
`overcome the rejection of claim 61 under pre-AIA 35 U.S.C. 103(a) as being unpatentable over
`
`Stemple and Tsien in view of Prober and Anazawa.
`
`The terminal disclaimer filed on May 9, 2017 disclaiming the terminal portion of any
`
`patent granted on this application which would extend beyond the expiration date of any patent
`
`granted on pending reference Application Number(s) 15380284, 15380311, 15167917 and prior
`
`patents 7790869 and 7345159 has been reviewed and is accepted. The terminal disclaimer has
`
`been recorded.
`
`Reasons for Allowance
`
`Accordingly, Applicant's response as discussed above is sufficient to remove all
`
`rejections made in the prior office action and to place the application in condition for allowance.
`
`Page 4
`
`Page 4
`
`
`
`Application/Control Number: 15/380,270
`Art Unit: 1673
`
`Page 3
`
`Any comments considered necessary by applicant must be submitted no later than the
`
`payment of the issue fee and, to avoid processing delays, should preferably accompany the issue
`
`fee. Such submissions should be clearly labeled "Comments on Statement of Reasons for
`
`Allowance."
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to LAYLA BERRY whose telephone number is (571)272-9572.
`
`The examiner can normally be reached on Monday - Friday, 10:00 - 6:30 EST.
`
`Examiner interviews are available via telephone, in-person, and video conferencing using
`
`a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is
`
`encouraged to use the USPTO Automated Interview Request (AIR) at
`
`http://www.uspto.gov/interviewpractice.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
`
`supervisor, Anna Jiang can be reached on (571) 272-0627. 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). If you would
`
`like assistance from a USPTO Customer Service Representative or access to the automated
`
`information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
`
`Page 5
`
`Page 5
`
`
`
`Application/Control Number: 15/380,270
`Art Unit: 1673
`
`Page 4
`
`/LAYLA BERRY/
`Primary Examiner, Art Unit 1673
`
`Page 6
`
`Page 6
`
`
`
`UNITED STA TES p A TENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria., Virginia 22313-1450
`www.uspto.gov
`
`NOTICE OF ALLOWANCE AND FEE(S) DUE
`
`23432
`7590
`05/26/2017
`COOPER & DUNHAM, LLP
`30 Rockefeller Plaza
`20th Floor
`NEW YORK, NY 10112
`
`EXAMINER
`
`BERRY,LAYLAD
`
`ART UNIT
`
`PAPER NUMBER
`
`1673
`
`DATE MAILED: 05/26/2017
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`15/380,270
`
`12/15/2016
`
`Jingyue Ju
`
`62239-BZA8/JPW/AC
`
`9765
`
`TITLE OF INVENTION: MASSIVE PARALLEL METHOD FOR DECODING DNA AND RNA
`
`APPLN. TYPE
`
`ENTITY STATUS
`
`ISSUE FEE DUE
`
`PUBLICATION FEE DUE PREV. PAID ISSUE FEE
`
`TOTAL FEE(S) DUE
`
`DATE DUE
`
`nonprovisional
`
`UNDISCOUNTED
`
`$960
`
`$0
`
`$0
`
`$960
`
`08/28/2017
`
`THE APPLICATION IDENTIFIED ABOVE HAS BEEN EXAMINED AND IS ALLOWED FOR ISSUANCE AS A PATENT.
`PROSECUTION ON THE MERITS IS CLOSED. THIS NOTICE OF ALLOWANCE IS NOT A GRANT OF PATENT RIGHTS.
`THIS APPLICATION IS SUBJECT TO WITHDRAWAL FROM ISSUE AT THE INITIATIVE OF THE OFFICE OR UPON
`PETITION BY THE APPLICANT. SEE 37 CFR 1.313 AND MPEP 1308.
`
`THE ISSUE FEE AND PUBLICATION FEE (IF REQUIRED) MUST BE PAID WITHIN THREE MONTHS FROM THE
`MAILING DATE OF THIS NOTICE OR THIS APPLICATION SHALL BE REGARDED AS ABANDONED. THIS
`STATUTORY PERIOD CANNOT BE EXTENDED. SEE 35 U.S.C. 151. THE ISSUE FEE DUE INDICATED ABOVE DOES
`NOT REFLECT A CREDIT FOR ANY PREVIOUSLY PAID ISSUE FEE IN THIS APPLICATION.
`IF AN ISSUE FEE HAS
`PREVIOUSLY BEEN PAID IN THIS APPLICATION (AS SHOWN ABOVE), THE RETURN OF PART B OF THIS FORM
`WILL BE CONSIDERED A REQUEST TO REAPPLY THE PREVIOUSLY PAID ISSUE FEE TOWARD THE ISSUE FEE NOW
`DUE.
`
`HOW TO REPLY TO THIS NOTICE:
`
`I. Review the ENTITY STATUS shown above. If the ENTITY STATUS is shown as SMALL or MICRO, verify whether entitlement to that
`entity status still applies.
`If the ENTITY STATUS is the same as shown above, pay the TOTAL FEE(S) DUE shown above.
`If the ENTITY STATUS is changed from that shown above, on PART B - FEE(S) TRANSMITTAL, complete section number 5 titled
`"Change in Entity Status (from status indicated above)".
`For purposes of this notice, small entity fees are 1/2 the amount of undiscounted fees, and micro entity fees are 1/2 the amount of small entity
`fees.
`
`IL PART B - FEE(S) TRANSMITTAL, or its equivalent, must be completed and returned to the United States Patent and Trademark Office
`(USPTO) with your ISSUE FEE and PUBLICATION FEE (if required). If you are charging the fee(s) to your deposit account, section "4b"
`of Part B - Fee(s) Transmittal should be completed and an extra copy of the form should be submitted. If an equivalent of Part B is filed, a
`request to reapply a previously paid issue fee must be clearly made, and delays in processing may occur due to the difficulty in recognizing
`the paper as an equivalent of Part B.
`
`III. All communications regarding this application must give the application number. Please direct all communications prior to issuance to
`Mail Stop ISSUE FEE unless advised to the contrary.
`
`IMPORTANT REMINDER: Utility patents issuing on applications filed on or after Dec. 12, 1980 may require payment of
`maintenance fees. It is patentee's responsibility to ensure timely payment of maintenance fees when due.
`
`PTOL-85 (Rev. 02/11)
`
`Page 1 of 3
`
`Page 7
`
`Page 7
`
`
`
`PART B - FEE(S) TRANSMITTAL
`
`Complete and send this form, together with applicable fee(s), to: Mail Mail Stop ISSUE FEE
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`(571)-273-2885
`
`or Fax
`
`INSTRUCTIONS: This form should be used for transmitting the ISSUE FEE and PUBLICATION FEE (if required). Blocks I through 5 should be completed where
`appropriate. All further correspondence including the Patent, advance orders and notification of maintenance fees will be mailed to the current correspondence address as
`indicated unless corrected below or directed otherwise in Block I, by (a) specifying a new correspondence address; and/or (b) indicating a separate "FEE ADDRESS" for
`maintenance fee notifications.
`
`CURRENT CORRESPONDENCE ADDRESS (Note: Use Block I for any change of address)
`
`23432
`7590
`05/26/2017
`COOPER & DUNHAM, LLP
`30 Rockefeller Plaza
`20th Floor
`NEW YORK, NY 10112
`
`Note: A certificate of mailing can only be used for domestic mailings of the
`Fee(s) Transmittal. This certificate cannot be used for any other accompanying
`papers. Each additional paper, such as an assignment or formal drawing, must
`have its own certificate of mailing or transmission.
`
`Certificate of Mailing or Transmission
`I hereby certify that this Fee(s) Transmittal is being deposited with the United
`States Postal Service with sufficient postage for first class mail in an envelope
`addressed to the Mail Stop ISSUE FEE address above, or being facsimile
`transmitted to the USPTO (571) 273-2885, on the date indicated below.
`
`(Depositor's name)
`
`(Signature)
`
`(Date)
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`15/380,270
`
`12/15/2016
`
`Jingyue Ju
`
`62239-BZA8/JPW/ AC
`
`9765
`
`TITLE OF INVENTION: MASSIVE PARALLEL METHOD FOR DECODING DNA AND RNA
`
`APPLN. TYPE
`
`ENTITY STATUS
`
`ISSUE FEE DUE
`
`PUBLICATION FEE DUE PREV. PAID ISSUE FEE
`
`TOTAL FEE(S) DUE
`
`DATE DUE
`
`nonprovisional
`
`UNDISCOUNTED
`
`$960
`
`$0
`
`$0
`
`$960
`
`08/28/2017
`
`EXAMINER
`
`ART UNIT
`
`CLASS-SUBCLASS
`
`BERRY,LAYLAD
`
`1673
`
`536-026100
`
`I. Change of correspondence address or indication of "Fee Address" (37
`CFR 1.363).
`0 Change of correspondence address ( or Change of Correspondence
`Address form PTO/SB/122) attached.
`0 "Fee Address" indication (or "Fee Address" Indication form
`PTO/SB/47; Rev 03-02 or more recent) attached. Use of a Customer
`Number is required.
`
`2. For printing on the patent front page, list
`(I) The names of up to 3 registered patent attorneys
`or agents OR, alternatively,
`(2) The name of a single firm (having as a member a
`registered attorney or agent) and the names of up to
`2 registered patent attorneys or agents. If no name is
`listed, no name will be printed.
`
`2 ______________ _
`
`3 ______________ _
`
`3. ASSIGNEE NAME AND RESIDENCE DATA TO BE PRINTED ON THE PATENT (print or type)
`PLEASE NOTE: Unless an assignee 1s 1dent1f1ed below, no assignee data will appear on the patent. If an assignee is identified below, the document has been filed for
`recordatJon as set forth m 37 CFR 3.11. Completion of this form is NOT a substitute for filing an assignment.
`(B) RESIDENCE: (CITY and STATE OR COUNTRY)
`(A) NAME OF ASSIGNEE
`
`Please check the appropriate assignee category or categories (will not be printed on the patent) : 0 Individual O Corporation or other private group entity O Government
`
`4a. The following fee(s) are submitted:
`0 Issue Fee
`0 Publication Fee (No small entity discount permitted)
`0 Advance Order - # of Copies _________ _
`
`4b. Payment ofFee(s): (Please first reapply any previously paid issue fee shown above)
`0 A check is enclosed.
`0 Payment by credit card. Form PTO-2038 is attached.
`0 The director is hereby authorized to charge the required fee( s ), any deficiency, or credits any
`( enclose an extra copy of this form).
`overpayment, to Deposit Account Number
`
`5. Change in Entity Status (from status indicated above)
`0 Applicant certifying micro entity status. See 37 CFR 1.29
`0 Applicant asserting small entity status. See 37 CFR 1.27
`0 Applicant changing to regular undiscounted fee status.
`
`NOTE: Absent a valid certification of Micro Entity Status (see forms PTO/SB/15A and 15B), issue
`fee payment in the micro entity amount will not be accepted at the risk of application abandonment.
`NOTE: If the application was previously under micro entity status, checking this box will be taken
`to be a notification of loss of entitlement to micro entity status.
`NOTE: Checking this box will be taken to be a notification of loss of entitlement to small or micro
`entity status, as applicable.
`
`NOTE: This form must be signed in accordance with 37 CFR 1.31 and 1.33. See 37 CFR 1.4 for signature requirements and certifications.
`
`Authorized Signature _______________________ _
`
`Date ____________________ _
`
`Typed or printed name ______________________ _
`
`Registration No. ________________ _
`
`PTOL-85 Part B (10-13) Approved for use through 10/31/2013.
`
`0MB 0651-0033
`
`U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
`
`Page 2 of3
`
`Page 8
`
`Page 8
`
`
`
`UNITED STA TES p A TENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria., Virginia 22313-1450
`www.uspto.gov
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`15/380,270
`
`12/15/2016
`
`Jingyue Ju
`
`62239-BZA8/JPW/AC
`
`9765
`
`23432
`7590
`05/26/2017
`COOPER & DUNHAM, LLP
`30 Rockefeller Plaza
`20th Floor
`NEW YORK, NY 10112
`
`EXAMINER
`
`BERRY,LAYLAD
`
`ART UNIT
`
`PAPER NUMBER
`
`1673
`
`DATE MAILED: 05/26/2017
`
`Determination of Patent Term Adjustment under 35 U.S.C. 154 (b)
`(Applications filed on or after May 29, 2000)
`
`The Office has discontinued providing a Patent Term Adjustment (PTA) calculation with the Notice of Allowance.
`
`Section l(h)(2) of the AIA Technical Corrections Act amended 35 U.S.C. 154(b)(3)(B)(i) to eliminate the
`requirement that the Office provide a patent term adjustment determination with the notice of allowance. See
`Revisions to Patent Term Adjustment, 78 Fed. Reg. 19416, 19417 (Apr. 1, 2013). Therefore, the Office is no longer
`providing an initial patent term adjustment determination with the notice of allowance. The Office will continue to
`provide a patent term adjustment determination with the Issue Notification Letter that is mailed to applicant
`approximately three weeks prior to the issue date of the patent, and will include the patent term adjustment on the
`patent. Any request for reconsideration of the patent term adjustment determination ( or reinstatement of patent term
`adjustment) should follow the process outlined in 37 CPR 1.705.
`
`Any questions regarding the Patent Term Extension or Adjustment determination should be directed to the Office of
`Patent Legal Administration at (571)-272-7702. Questions relating to issue and publication fee payments should be
`directed to the Customer Service Center of the Office of Patent Publication at 1-(888)-786-0101 or (571 )-272-4200.
`
`PTOL-85 (Rev. 02/11)
`
`Page 3 of 3
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`Page 9
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`Page 9
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`0MB Clearance and PRA Burden Statement for PTOL-85 Part B
`
`The Paperwork Reduction Act (PRA) of 1995 requires Federal agencies to obtain Office of Management and
`Budget approval before requesting most types of information from the public. When 0MB approves an agency
`request to collect information from the public, 0MB (i) provides a valid 0MB Control Number and expiration
`date for the agency to display on the instrument that will be used to collect the information and (ii) requires the
`agency to inform the public about the 0MB Control Number's legal significance in accordance with 5 CFR
`1320.5(b).
`
`The information collected by PTOL-85 Part B is required by 37 CFR 1.311. The information is required to obtain
`or retain a benefit by the public which is to file (and by the USPTO to process) an application. Confidentiality is
`governed by 35 U.S.C. 122 and 37 CFR 1.14. This collection is estimated to take 12 minutes to complete,
`including gathering, preparing, and submitting the completed application form to the USPTO. Time will vary
`depending upon the individual case. Any comments on the amount of time you require to complete this form
`and/or suggestions for reducing this burden, should be sent to the Chief Information Officer, U.S. Patent and
`Trademark Office, U.S. Department of Commerce, P.O. Box 1450, Alexandria, Virginia 22313-1450. DO NOT
`SEND FEES OR COMPLETED FORMS TO THIS ADDRESS. SEND TO: Commissioner for Patents, P.O. Box
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`Privacy Act Statement
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`The Privacy Act of 1974 (P.L. 93-579) requires that you be given certain information in connection with your
`submission of the attached form related to a patent application or patent. Accordingly, pursuant to the
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`The information provided by you in this form will be subject to the following routine uses:
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`2. A record from this system of records may be disclosed, as a routine use, in the course of presenting evidence
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`3. A record in this system of records may be disclosed, as a routine use, to a Member of Congress submitting a
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`5. A record related to an International Application filed under the Patent Cooperation Treaty in this system of
`records may be disclosed, as a routine use, to the International Bureau of the World Intellectual Property
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`6. A record in this system of records may be disclosed, as a routine use, to another federal agency for purposes
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`8. A record from this system of records may be disclosed, as a routine use, to the public after either publication
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`record was filed in an application which became abandoned or in which the proceedings were terminated
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`9. A record from this system of records may be disclosed, as a routine use, to a Federal, State, or local law
`enforcement agency, if the USPTO becomes aware of a violation or potential violation of law or regulation.
`
`Page 10
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`Page 10
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`
`
`Notice of Allowability
`
`Application No.
`15/380,270
`Examiner
`LAYLA BERRY
`
`Applicant(s)
`JU ET AL.
`Art Unit
`1673
`
`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)
`All claims being allowable, PROSECUTION ON THE MERITS IS (OR REMAINS) CLOSED in this application. If not included
`herewith (or previously mailed), a Notice of Allowance (PTOL-85) or other appropriate communication will be mailed in due course. THIS
`NOTICE OF ALLOWABILITY IS NOT A GRANT OF PATENT RIGHTS. This application is subject to withdrawal from issue at the initiative
`of the Office or upon petition by the applicant. See 37 CFR 1.313 and MPEP 1308.
`
`1. 1:8] This communication is responsive to Applicant's response submitted Mav 9. 2017.
`DA declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on ___ .
`2. D 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.
`
`3. 1:8] The allowed claim(s) is/are 61. As a result of the allowed claim(s), 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://www.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`4. D Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`*c) D None of the:
`a) D All
`b) D Some
`1. D Certified copies of the priority documents have been received.
`2. D Certified copies of the priority documents have been received in Application No. __ .
`3. D Copies of the certified copies of the priority documents have been received in this national stage application from the
`International Bureau (PCT Rule 17.2(a)).
`* Certified copies not received: __ .
`
`Applicant has THREE MONTHS FROM THE "MAILING DATE" of this communication to file a reply complying with the requirements
`noted below. Failure to timely comply will result in ABANDONMENT of this application.
`THIS THREE-MONTH PERIOD IS NOT EXTENDABLE.
`5. D CORRECTED DRAWINGS ( as "replacement sheets") must be submitted.
`D including changes required by the attached Examiner's Amendment/ Comment or in the Office action of
`Paper No./Mail Date __ .
`Identifying indicia such as the application number {see 37 CFR 1.84{c)) should be written on the drawings in the front {not the back) of
`each sheet. Replacement sheet{s) should be labeled as such in the header according to 37 CFR 1.121{d).
`
`6. (cid:143) DEPOSIT OF and/or INFORMATION about the deposit of BIOLOGICAL MATERIAL must be submitted. Note the
`
`attached Examiner's comment regarding REQUIREMENT FOR THE DEPOSIT OF BIOLOGICAL MATERIAL.
`
`Attachment(s)
`1. D Notice of References Cited (PTO-892)
`2. 1:8] Information Disclosure Statements (PTO/SB/08),
`Paper No./Mail Date __
`3. D Examiner's Comment Regarding Requirement for Deposit
`of Biological Material
`4. D Interview Summary (PTO-413),
`Paper No./Mail Date __ .
`
`5. D Examiner's Amendment/Comment
`6. 1:8] Examiner's Statement of Reasons for Allowance
`
`7. D Other __ .
`
`U.S. Patent and Trademark Office
`PTOL-37 (Rev. 08-13)
`20170519
`
`Notice of Allowability
`
`Part of Paper No./Mail Date
`
`Page 11
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`Page 11
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`
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`Application/Contr