www.uspto.gov
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address; COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`15/268, 175
`
`09/16/2016
`
`Christopher A. MIKSOVSKY
`
`HMG1P008D1
`
`1040
`
`Beyer Law Group LLP
`P Oo Box 51887
`Palo Alto, CA 94303-1887
`
`PRONE, JASON D
`
`PAPER NUMBER
`
`ART UNIT
`
`3724
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`07/25/2019
`
`ELECTRONIC
`
`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 "Notification Date" to the
`following e-mail address(es):
`
`USPTOmail@ beyerlaw.com
`
`PTOL-90A (Rev. 04/07)
`
`Ex. 2005, Page 1
`Patent Owner Humangear,Inc.
`Industrial Revolution, Inc. v. Humangear, Inc.: IPR2023-01174
`
`Ex. 2005, Page 1
`Patent Owner Humangear, Inc.
`Industrial Revolution, Inc. v. Humangear, Inc.: IPR2023-01174
`
`

`

`.
`Notice ofAbandonment
`
`15/268,175
`Examiner
`
`vesoven
`
`MIKSOVSKYet al.
`Art Unit
`
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address--
`
`JASON D PRONE
`
`3724
`
`This application is abandonedin view of:
`
`1.l¥}Applicant's failure to timely file a proper reply to the Office letter mailed on 19 December 2018.
`(ay 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)YJA proposed reply was received on 15 February 2019, but it does not constitute a proper reply under 37 CFR 1.113 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)if this is utility or plant
`application, a timely filed Request for Continued Examination (RCE) in compliance with 37 CFR 1.114. Note that RCEs are not
`permitted in design applications.)
`(c) CA reply was received on
`but it does not constitute a proper reply, or a bona fide attemptat a proper reply, to the non-final
`rejection. See 37 CFR 1.85(a) and 1.111. (See explanation in box 7 below).
`(d) LJ) No reply has been received.
`
`.
`
`3. CO Applicant's failure to timely file corrected drawings as required by, and within the three-month period set in, the Notice of
`Allowability (PTO-37).
`(a) (J Proposed corrected drawings were received on
`after the expiration of the period for reply.
`(b) ( No corrected drawings have been received.
`
`(with a Certificate of Mailing or Transmission dated
`
`
`
`2. 1) 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).
`(with a Certificate of Mailing or Transmission dated
`(a) J The issue fee and publication fee, if applicable, was received on
`), which is after the expiration of the statutory period for payment of the issue fee (and publication fee) set in the Notice of
`Allowance (PTOL-85).
`is due.
`is insufficient. A balance of $
`(b) J The submitted fee of $
`The issue fee required by 37CFR 1.18 is $
`. The publication fee, if required by 37 CFR 1.18(d), is $
`(c) (J The issue fee and publication fee, if applicable, has not been received.
`
`), which is
`
`4. (1) The letter of express abandonmentwhichis signed by the attorney or agentof record or other party authorized under 37 CFR 1.33
`(b). See 37 CFR 1.138(b).
`
`5. C) The letter of express abandonmentwhichis signed by an attorney or agent (acting in a representative capacity under 37 CFR
`1.34) upon the filing of a continuing application.
`
`6. [J The decision by the Board of Patent Appeals and Interference rendered on
`of the decision has expired and there are no allowed claims.
`
`and becausethe period for seeking court review
`
`7. J The reason(s) below:
`
`/Jason Daniel Prone/
`Primary Examiner, Art Unit 3724
`
`Petitions to revive under 37 CFR 1.137, or requests to withdraw the holding of abandonment under 37 CFR 1.181, should be promptlyfiled to minimize
`any negative effects on patent term.
`U.S. Patent
`and Trad
`k Offi
`PTOL-1432 (Rev.07-14)
`
`Notice of Abandonment
`
`Part of Paper No. 20190719
`
`Humangear, Inc. Ex. 2005, Page 2
`
`Humangear, Inc. Ex. 2005, Page 2
`
`

`

`To:
`From:
`Ce:
`Subject:
`
`USPTOmail@beyerlaw.com,,
`PAIR_eOfficeAction@uspto.gov
`PAIR_eOfficeAction@uspto.gov
`Private PAIR Correspondence Notification for Customer Number 58766
`
`Jul 25, 2019 03:38:53 AM
`
`Dear PAIR Customer:
`
`Beyer Law Group LLP
`P. O. Box 51887
`Palo Alto, CA 94303-1887
`UNITED STATES
`
`The following USPTO patent application(s) associated with your Customer Number, 58766 , have
`new outgoing correspondence. This correspondenceis now available for viewing in Private PAIR.
`
`The official date of notification of the outgoing correspondencewill be indicated on the form PTOL-90
`accompanying the correspondence.
`
`Disclaimer:
`The list of documents shownbelow is provided as a courtesy and is not part of the official file
`wrapper. The content of the images shownin PAIR is the official record.
`
`Application
`15268175
`
`Document
`ABN
`
`Mailroom Date
`07/25/2019
`
`Attorney Docket No.
`HMG1P008D1
`
`To view your correspondenceonline or update your email addresses, please visit us anytime at
`https ://sportal.uspto.gov/secure/myportal/privatepair.
`
`If you have any questions, please email the Electronic Business Center (EBC) at EBC@uspto.gov
`with 'e-Office Action’ on the subjectline or call 1-866-217-9197 during the following hours:
`
`Monday- Friday 6:00 a.m. to 12:00 a.m.
`
`Thank you for prompt attention to this notice,
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`PATENT APPLICATION INFORMATION RETRIEVAL SYSTEM
`
`Humangear, Inc. Ex. 2005, Page 3
`
`Humangear, Inc. Ex. 2005, Page 3
`
`

`

`www.uspto.gov
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address; COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`15/268, 175
`
`09/16/2016
`
`Christopher A. MIKSOVSKY
`
`HMG1P008D1
`
`1040
`
`Beyer Law Group LLP
`P Oo Box 51887
`Palo Alto, CA 94303-1887
`
`PRONE, JASON D
`
`PAPER NUMBER
`
`ART UNIT
`
`3724
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`03/01/2019
`
`ELECTRONIC
`
`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 "Notification Date" to the
`following e-mail address(es):
`
`USPTOmail@ beyerlaw.com
`
`PTOL-90A (Rev. 04/07)
`
`Humangear, Inc. Ex. 2005, Page 4
`
`Humangear, Inc. Ex. 2005, Page 4
`
`

`

`Applicant(s)
`Application No.
`MIKSOVSKYetal.
`15/268,175
`Advisory Action
`
`
`Before the Filing ofan Appeal Brief|Examiner Art Unit AIA Status
`JASON D PRONE
`3724
`Yes
`
`--The MAILING DATEof this communication appears on the cover sheet with the correspondence address --
`THE REPLYFILED 15 February 2019 FAILS TO PLACE THIS APPLICATION IN CONDITION FOR ALLOWANCE.
`NO NOTICE
`OF APPEAL FILED
`
`1.
`
`The reply wasfiled after a final rejection. No Notice of Appeal has been filed. To avoid abandonmentofthis application, applicant musttimely file
`one ofthe following replies: (1) an amendment, affidavit, or other evidence, which places the application in condition for allowance;
`(2) a Notice of Appeal (with appeal fee) in compliance with 37 CFR 41.31; or (3) a Request for Continued Examination (RCE) in compliance with
`37 CFR 1.114 if this is a utility or plant application. Note that RCEs are not permitted in design applications. The reply must befiled within one of
`the following time periods:
`The period for reply expires 3 months from the mailing date ofthe final rejection.
`a)
`b) C) The period for reply expires on: (1) the mailing date of this Advisory Action; or (2) the date set forth in the final rejection, whicheveris later.
`In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of the final rejection.
`c) Cla prior Advisory Action was mailed more than 3 monthsafter the mailing date of the final rejection in responsetoafirst after-final reply filed
`within 2 months of the mailing date of the final rejection. The current period for reply expires
`months from the mailing date of
`the priorAdvisory Action or SIX MONTHS from the mailing date of the final rejection, whichever is earlier.
`Examiner Note: \f box 1
`is checked, check either box (a), (b) or (c). ONLY CHECK BOX (b) WHEN THIS ADVISORY ACTION IS THE
`FIRST RESPONSE TO APPLICANTS FIRST AFTER-FINAL REPLY WHICH WAS FILED WITHIN TWO MONTHS OF THE FINAL
`REJECTION. ONLY CHECK BOX(c) IN THE LIMITED SITUATION SET FORTH UNDER BOX(c). See MPEP 706.07(f).
`Extensionsof time may be obtained under 37 CFR 1.136(a). The date on whichthe petition under 37 CFR 1.136(a) and the appropriate
`extension fee have beenfiled is the date for purposes of determining the period of extension and the corresponding amountof the fee. The
`appropriate extension fee under 37 CFR 1.17(a) is calculated from: (1) the expiration date of the shortened statutory period for reply originally
`setin the final Office action; or (2) as setforth in (b) or (c) above, if checked. Any reply received by the Office later than three months after the
`mailing date of the final rejection, even if timely filed, may reduce any earned patent term adjustment. See 37 CFR 1.704(b).
`NOTICE OF APPEAL
`. A brief in compliance with 37 CFR 41.37 must befiled within two monthsofthe date offiling the Notice
`2. () The Notice of Appeal wasfiled on
`of Appeal (37 CFR 41.37(a)), or any extension thereof (37 CFR 41.37(e)), to avoid dismissal of the appeal. Since a Notice of
`Appeal has beenfiled, any reply mustbefiled within the time period set forth in 37CFR 41.37(a).
`AMENDMENTS
`3. (J The proposed amendmentsfiled after a final rejection, but prior to the date offiling a brief, will not be entered because
`a) Ch They raise new issues that would require further consideration and/or search (see NOTEbelow);
`b) OG They raise the issue of new matter (see NOTEbelow);
`Cc) CO They are not deemedto place the application in better form for appeal by materially reducing or simplifying the issues for
`appeal; and/or
`d) (| They present additional claims without canceling a corresponding numberoffinally rejected claims.
`NOTE:
`(See 37CFR 1.116 and 41.33(a)).
`4. [] The amendments are notin compliance with 37CFR 1.121. See attached Notice of Non-Compliant Amendment (PTOL-324).
`5.
`Applicants reply has overcome thefollowing rejection(s): 112 rejections to claims 8 and 14
`6.0 Newly proposed or amended claim(s)
`would be allowable if submitted in a separate, timely filed amendment canceling the non-allowable
`claim(s).
`For purposesof appeal, the proposed amendment(s):(a) L_] will not be entered, or (b) ¥) will be entered, and an explanation of how the
`new or amended claims would be rejected is provided below or appended.
`AFFIDAVIT OR OTHER EVIDENCE
`8.LIA declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`9. (] Theaffidavit or other evidencefiled afterfinal action, but before or on the date offiling a Notice of Appealwill not be entered because applicant
`failed to provide a showing of good and sufficient reasons whythe affidavit or other evidence is necessary and wasnot earlier presented. See 37
`CFR 1.116(e).
`10. CJ The affidavit or other evidencefiled after the date of filing the Notice of Appeal, but prior to the date offiling a brief, will not be entered because
`the affidavit or other evidencefailed to overcome all rejections under appeal and/or appellant fails to provide a showing of good and sufficient
`reasons why it is necessary and wasnot earlier presented. See 37 CFR 41.33(d)(1).
`11. (] 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
`
`7.
`
`
`
`12.
`
`The request for reconsideration has been considered but does NOTplace the application in condition for allowance because:
`See Continuation Sheet.
`13. CJ Note the attached Information Disclosure Statemeris). (PTO/SB/08) Paper No(s).
`14. CJ Other:
`;
`STATUS OF CLAIMS
`
`15. The status of the claim(s) is (or will be) as follows:
`Claim(s) allowed:
`.
`Claim(s) objected to:
`Claim(s) rejected:8-9,11-16 and 25-33.
`Claim(s) withdrawn from consideration:
`
`U.S. Patent and Trademark Office
`PTOL-303 (Rev. 08-2013)
`
`/Jason Daniel Prone/
`Primary Examiner, Art Unit 3724
`
`Advisory Action Before the Filing of an Appeal Brief
`
`Paper No. 20190227
`
`Humangear, Inc. Ex. 2005, Page 5
`
`Humangear, Inc. Ex. 2005, Page 5
`
`

`

`Continuation Sheet (PTOL-303)
`
`Application No. 15/268,175
`
`Continuation of REQUEST FOR RECONSIDERATION/OTHER 12. The request for reconsideration has
`been considered but does NOTplacethe application in condition for allowance because: The chamfer
`surface of LMFS extends from both the convex surface and the concave surface. The surfaces make up
`different parts of the same structure and if an item extends awayfrom one, it extends awayfrom the other.
`Curved cutting edges and serrated cutting edges are art known equivalents and it would have been
`obvious to have replaced one with the other especially if a desired intended use would be moreefficiently
`completed with the other. As currently written, the claims would be rejected in the same manner asin the
`previous Office action.
`
`Humangear, Inc. Ex. 2005, Page 6
`
`Humangear, Inc. Ex. 2005, Page 6
`
`

`

`Receipt date: 02/15/2019
`
`15/268,175 ~- GAO: 3724
`
`OK TO ENTER:
`
`/dpP/
`
`IN THE UNITED STATES PATENT AND TRADEMARKOFFICE
`
`
`
`
`
`"Inreapplicationof:MIKSOVSKYetal.DocketNo.:HMG1PO08D1_—~—«Attorney
`
`
`
`
`
`
`
`Application No.: 15/268,175
`
`Examiner: PRONE, JASON D.
`
`Filed: September 16, 2016
`
`Group: 3724
`
`Title: EATING UTENSIL SYSTEM
`
`Confirmation No.: 1040
`
`
`CERTIFICATE OF EFS-WEB TRANSMISSION
`Therebycertify that this correspondenceis being transmitted electronically
`through EFS-WEBto the Commissioner for Patents, P.O. Box 1450 Alexandria,
`VA 22313-1450 on February 15, 2019.
`
`Signed:
`
`/Cara Hedin/
`Cara Hedin
`
`AMENDMENT E ACCOMPANYING AFCP2.0 REQUEST
`
`Mail Stop AF
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Dear Commissioner:
`
`In response to the Final Office Action dated December 19, 2018, please amend the
`
`above-identified patent application as follows:
`
`Amendments to the Claimsare reflected in the listing of claims which begin on page 2
`
`of this paper.
`
`Remarks/Arguments begin on page 6 of this paper.
`
`HMG1P008D1
`
`1
`
`Humangear, Inc. Ex. 2005, Page 7
`
`Humangear, Inc. Ex. 2005, Page 7
`
`

`

`To:
`From:
`Ce:
`Subject:
`
`USPTOmail@beyerlaw.com,,
`PAIR_eOfficeAction@uspto.gov
`PAIR_eOfficeAction@uspto.gov
`Private PAIR Correspondence Notification for Customer Number 58766
`
`Mar 01, 2019 04:33:22 AM
`
`Dear PAIR Customer:
`
`Beyer Law Group LLP
`P. O. Box 51887
`Palo Alto, CA 94303-1887
`UNITED STATES
`
`The following USPTO patent application(s) associated with your Customer Number, 58766 , have
`new outgoing correspondence. This correspondenceis now available for viewing in Private PAIR.
`
`The official date of notification of the outgoing correspondencewill be indicated on the form PTOL-90
`accompanying the correspondence.
`
`Disclaimer:
`The list of documents shownbelow is provided as a courtesy and is not part of the official file
`wrapper. The content of the images shownin PAIR is the official record.
`
`Application
`15268175
`
`Document
`CTAV
`
`Mailroom Date
`03/01/2019
`
`Attorney Docket No.
`HMG1P008D1
`
`To view your correspondenceonline or update your email addresses, please visit us anytime at
`https ://sportal.uspto.gov/secure/myportal/privatepair.
`
`If you have any questions, please email the Electronic Business Center (EBC) at EBC@uspto.gov
`with 'e-Office Action’ on the subjectline or call 1-866-217-9197 during the following hours:
`
`Monday- Friday 6:00 a.m. to 12:00 a.m.
`
`Thank you for prompt attention to this notice,
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`PATENT APPLICATION INFORMATION RETRIEVAL SYSTEM
`
`Humangear, Inc. Ex. 2005, Page 8
`
`Humangear, Inc. Ex. 2005, Page 8
`
`

`

`Doc Code: A.NE.AFCP
`
`DocumentDescription: After Final Consideration Pilot Program Request
`
`CERTIFICATION AND REQUEST FOR CONSIDERATION UNDER THE
`AFTER FINAL CONSIDERATION PILOT PROGRAM 2.0
`
`Practitioner Docket No.:
`HMG1P008D1
`First Named Inventor:
`
`Application No.:
`15/268,175
`
`Filing Date:
`September 16, 2016
`
`PTO/SB/434 (05-13)
`
`Christopher A. MIKSOVSKY|EATING UTENSIL SYSTEM
`
`APPLICANT HEREBY CERTIFIES THE FOLLOWING AND REQUESTS CONSIDERATION UNDER THE AFTER FINAL CONSIDERATION PILOT
`PROGRAM2.0 (AFCP 2.0) OF THE ACCOMPANYING RESPONSE UNDER 37 CFR 1.116.
`
`1.
`
`The above-identified application is (i) an original utility, plant, or design nonprovisional application filed under
`35 U.S.C. 111{a) [a continuing application (e.g., a continuation or divisional application) is filed under 35 U.S.C. 111(a) and is
`eligible under (i)], or (ii) an international application that has entered the national stage in compliance with 35 U.S.C. 371(c).
`
`The above-identified application contains an outstanding final rejection.
`
`Submitted herewith is a response under 37 CFR 1.116 to the outstandingfinal rejection. The response includes an
`amendment to at least one independent claim, and the amendment doesnot broaden the scope of the independent claim in
`any aspect.
`
`This certification and request for consideration under AFCP 2.0 is the only AFCP 2.0 certification and requestfiled in
`responseto the outstandingfinal rejection.
`
`Applicantis willing and available to participate in any interview requested by the examiner concerning the present response.
`
`This certification and request is being filed electronically using the Office’s electronic filing system (EFS-Web).
`
`Any fees that would be necessary consistent with current practice concerning responsesafter final rejection under 37 CFR
`1.116, e.g., extension of time fees, are being concurrently filed herewith. [There is no additional fee required to request
`consideration under AFCP 2.0.]
`
`Byfiling this certification and request, applicant acknowledgesthe following:
`
`forms if more than one signature is required, see below*. [v|* Total of 1
`
`Reissue applications and reexamination proceedingsare noteligible to participate in AFCP 2.0.
`The examiner will verify that the AFCP 2.0 submission is compliant, /.e., that the requirements of the program have been met
`(see items 1 to 7 above). For compliant submissions:
`o
`The examiner will review the response under 37 CFR 1.116 to determine if additional search and/or consideration
`(i) is necessitated by the amendmentand (ii) could be completed within the time allotted under AFCP 2.0. If
`additional search and/or consideration is required but cannot be completed within the allotted time, the examiner
`will process the submission consistent with current practice concerning responsesafter final rejection under
`37 CFR 1.116, e.g., by mailing an advisory action.
`If the examiner determines that the amendment doesnot necessitate additional search and/or consideration, or if
`the examiner determinesthat additional search and/or consideration is required and could be completed within
`the allotted time, then the examiner will consider whether the amendmentplaces the application in condition for
`allowance(after completing the additional search and/or consideration, if required). If the examiner determines
`that the amendment does not place the application in condition for allowance, then the examiner will contact the
`applicant and request an interview.
`.
`The interview will be conducted by the examiner, and if the examiner does not have negotiation
`authority, a primary examiner and/or supervisory patent examiner will also participate.
`If the applicant declines the interview, or if the interview cannot be scheduled within ten (10) calendar
`days from the date that the examiner first contacts the applicant, then the examiner will proceed
`consistent with current practice concerning responsesafter final rejection under 37 CFR 1.116.
`
`Signature
`/Tina Chen/
`Name
`(Print/Typed)
`
`Date
`February 15, 2019
`Practitioner
`Registration No.
`
`44,606
`Tina Chen
`Note: This form must be signed in accordance with 37 CFR 1.33. See 37 CFR 1.4(d) for signature requirements and certifications. Submit multiple
`
`forms are submitted.
`
`Humangear, Inc. Ex. 2005, Page 9
`
`Humangear, Inc. Ex. 2005, Page 9
`
`

`

`Privacy Act Statement
`
`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
`requirements of the Act, please be advised that: (1) the general authority for the collection of this information is
`35 U.S.C. 2(b)(2); (2) furnishing of the information solicited is voluntary; and (3) the principal purpose for which
`the information is used by the U.S. Patent and Trademark Office is to process and/or examine your submission
`related to a patent application or patent.
`If you do not furnish the requested information, the U.S. Patent and
`Trademark Office may not be able to process and/or examine your submission, which mayresult in termination
`of proceedings or abandonmentof the application or expiration of the patent.
`
`The information provided by you in this form will be subject to the following routine uses:
`
`1. The information on this form will be treated confidentially to the extent allowed under the Freedom of
`Information Act (5 U.S.C. 552) and the Privacy Act (5 U.S.C 552a). Records from this system of
`records may be disclosed to the Department of Justice to determine whether disclosure of these
`records is required by the Freedom ofInformation Act.
`A record from this system of records may be disclosed, as a routine use, in the course of presenting
`evidence to a court, magistrate, or administrative tribunal, including disclosures to opposing counsel in
`the course of settlement negotiations.
`A record in this system of records may be disclosed, as a routine use, to a Member of Congress
`submitting a request involving an individual, to whom the record pertains, when the individual has
`requested assistance from the Member with respect to the subject matter of the record.
`A record in this system of records may be disclosed, as a routine use, to a contractor of the Agency
`having need for the information in order to perform a contract. Recipients of information shall be
`required to comply with the requirements of the Privacy Act of 1974, as amended, pursuant to 5 U.S.C.
`552a(m).
`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 Organization, pursuant to the Patent Cooperation Treaty.
`A record in this system of records may be disclosed, as a routine use, to another federal agency for
`purposes of National Security review (85 U.S.C. 181) and for review pursuant to the Atomic Energy Act
`(42 U.S.C. 218(c)).
`A record from this system of records may be disclosed, as a routine use, to the Administrator, General
`Services, or his/her designee, during an inspection of records conducted by GSA as part of that
`agency’s responsibility to recommend improvements in records managementpractices and programs,
`under authority of 44 U.S.C. 2904 and 2906. Such disclosure shall be made in accordance with the
`GSA regulations governing inspection of records for this purpose, and any other relevant (i.e., GSA or
`Commerce) directive. Such disclosure shall not be used to make determinations aboutindividuals.
`A record from this system of records may be disclosed, as a routine use, to the public after either
`publication of the application pursuant to 35 U.S.C. 122(b) or issuance of a patent pursuant to 35
`U.S.C. 151. Further, a record may be disclosed, subject to the limitations of 37 CFR 1.14, as a routine
`use, to the public if the record wasfiled in an application which became abandonedor in which the
`proceedings were terminated and which application is referenced by either a published application, an
`application open to public inspection or an issued patent.
`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.
`
`Humangear, Inc. Ex. 2005, Page 10
`
`Humangear, Inc. Ex. 2005, Page 10
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARKOFFICE
`
`In re application of: MIKSOVSKYetal.
`
`Attorney Docket No.: HMG1P008D1
`
`Application No.: 15/268,175
`
`Examiner: PRONE, JASOND.
`
`Filed: September 16, 2016
`
`Group: 3724
`
`Title: EATING UTENSIL SYSTEM
`
`Confirmation No.: 1040
`
`CERTIFICATE OF EFS-WEB TRANSMISSION
`Therebycertify that this correspondenceis being transmitted electronically
`through EFS-WEBto the Commissioner for Patents, P.O. Box 1450 Alexandria,
`VA 22313-1450 on February 15, 2019.
`
`Signed:
`
`/Cara Hedin/
`Cara Hedin
`
`AMENDMENTE TRANSMITTAL
`
`Mail Stop AF
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Commissioner:
`Transmitted herewith is an Amendmentin the above-identified application.
`
`
`
`
`
`
`
`
`
`
`
`Total Claims|24 MINUS 24 00 x40 =$0.00
`
`
`
` 03
`
`
`
` 00
`
`
`
`The fee has been calculated as shown below.
`
`
`Claims Highest
`se previously|pent|Salitiy|Faesy
`
`
`Amendment
`Paid For
`
`
`x 80 = $0.00
`Independent
`
`MINUS
`03
`x 210 = $0.00
`x 420 = $0.00
`Claims
`
`
`Multiple Dependent Claim Present and Fee Not Previously Paid
`
`Applicant(s) believe that no (additional) Extension of Timeis required; however, if it is determined
`that such an extension is required, Applicant(s) hereby petition that such an extension be granted
`and authorize the Commissioner to charge the required fees for an Extension of Time under 37 CFR
`1.136 to Deposit Account No. 50-4481.
`
`Please charge the required fees, or any additional fees required to facilitate filing the
`enclosed response, to Deposit Account No. 50-4481 (Order No. HMG1P008D1).
`
`Respectfully submitted,
`BEYER LAW GROUP LLP
`
`/Tina Chen/
`Tina Chen
`Reg. No. 44,606
`
`P. O. Box 51887
`Palo Alto, CA 94303-1887
`
`Humangear, Inc. Ex. 2005, Page 11
`
`Humangear, Inc. Ex. 2005, Page 11
`
`

`

`REMARKS
`
`On January 30, 2019, a telephone interview was held between Examiner Jason Prone and
`
`Applicant’s representative, Tina Chen. The differences between the claimed invention and the
`
`Light My Fire Spork (LMFS), which was first brought
`
`to the Examiner’s attention by
`
`Applicant’s Representative in a voice mail on December 13, 2018, were discussed. Applicant’s
`
`Representative noted that the LMFS “chamfer” is on the underside of the fork tine, whereas in
`
`the claimed invention, the chamfered edge is on the top or front (or food-receiving) surface.
`
`Applicant’s Representative also noted that the LMFS “chamfer” is along a straight edge that is
`
`serrated, and that the serrations and the straight edge help with “sawing” food. The claimed
`
`invention has a curved chamfered edge, which is intended for “splitting” (not “sawing”) food by
`
`using a “rocking action.” The Examiner suggested filing a response under AFCP 2.0 and
`
`Applicant’s Representative agreed to do so.
`
`Rejections Under 35 U.S.C. §112
`
`Claims 8-16 and 25-33 are rejected under 35 U.S.C. §112 (pre-AIA), second paragraph,
`
`as being indefinite for failing to particularly point out and distinctly claim the subject matter
`
`which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
`
`Independent Claims 8 and 14 are amended to overcome the Section 112 rejections. These
`
`amendments have been discussed with the Examiner.
`
`Rejections Under 35 U.S.C. §103
`
`Claims 8, 9, and 11-13 are rejected under 35 U.S.C. §103 as being unpatentalbe over
`
`Light My Fire Spork (LMFS) in view of Cox, U.S. Patent No. 88,370, and Geckler, U.S. Patent
`
`No. 3,014,277. Independent Claims 8 and 14 are amended to recite that
`
`the curved outer
`
`chamfered surface extends obliquely from the concave surface. These amendmentsare fully
`
`supported by the specification and claims, as originally filed, by, for example, Figs. 7A-7C.
`
`The LMFS does not disclose or suggest a curved outer chamfered surface that extends
`
`obliquely from a concave surface. The LMFS “chamfered surface” extends obliquely from a
`
`convex surface, as the LMFS “chamfered surface” is on the “underside” or convex side of the
`
`fork bowl.
`
`Furthermore, the LMFS “chamfered surface” is along a substantially straight edge, not a
`
`curved edge. The Examiner cites Cox for disclosing a curved outer edge. As mentioned above,
`
`the LMFS “chamfered surface” is along a straight edge that is serrated. Serrated edges are
`
`HMG1P008D1
`
`6
`
`Humangear, Inc. Ex. 2005, Page 12
`
`Humangear, Inc. Ex. 2005, Page 12
`
`

`

`typically provided to aid in a sawing action by providing many small splits in the surface of the
`
`material that is being sawed. The substantially straight serrated edge (as opposed to a curved
`
`edge) of the LMFS allows the teeth of the serrated edge to cut through food using a “sawing
`
`action.”
`
`In contrast, the claimed invention has a curved outer chamfered surface. The curved outer
`
`chamfered surface of the claimed invention is better suited for “splitting” foods using a back and
`
`forth rocking motion. If the LMFSserrated edge were curved, it would be muchless effective as
`
`there would be a much smaller length of the edge “sawing” the food at any given time. The
`
`other cited references do not supply the deficiencies of LMFS and Cox discussed above.
`
`Thus, for at least the reasons discussed above, amended Claims 8 and 14 are not obvious
`
`in view of the cited references, either alone or in combination. Claims 9-13, 15, 16, and 25-33,
`
`which depend from and include all of the limitations of amended Claim 8 or 14, are also
`
`patentable over the cited references.
`
`Furthermore, each of the dependent claims recites
`
`additional features of advantage andutility.
`
`Conclusion
`
`Should the Examiner believe that a telephone conference would expedite the prosecution
`
`of this application, the undersigned can be reached at the telephone numberset out below.
`
`Respectfully submitted,
`BEYER LAW GROUP LLP
`
`/Tina Chen/
`Tina Chen
`Reg. No. 44,606
`
`P. O. Box 51887
`Palo Alto, CA 94303-1887
`650-842-1300
`
`HMG1P008D1
`
`7
`
`Humangear, Inc. Ex. 2005, Page 13
`
`Humangear, Inc. Ex. 2005, Page 13
`
`

`

`Thelisting of claims will replace all prior versions, andlistings, of claims in the application:
`
`Listing of Claims:
`
`1.
`
`(Withdrawn) Aneating utensil, comprising:
`
`a fork having a handle connected to a head portion including plurality of tines; and
`
`a spoon having a substantially five-sided bowl portion the spoon having a handle with a
`
`proximal end connected to a proximal end of the handle of the fork.
`
`2.
`
`(Withdrawn) The eating utensil as recited in claim 1, wherein the fork and spoon are
`
`integrally formed.
`
`3.
`
`(Withdrawn) The eating utensil as recited in claim 1, wherein the chamfered edge tapers
`
`to a point where the handle of the fork is connected to the head portion of the fork.
`
`4,
`
`(Withdrawn) The eating utensil as recited in claim 1, wherein the handle of the spoon
`
`has a chamfered outer edge.
`
`5.
`
`(Withdrawn) The eating utensil as recited in claim 1, wherein the eating utensil is formed
`
`of a glass reinforced thermoplastic material.
`
`6.
`
`(Withdrawn) The eating utensil as recited in claim 1, the head portion of the fork has at
`
`least one tine on a curved outer edge.
`
`7.
`
`(Withdrawn) The eating utensil as recited in claim 6, wherein the at least one tine has a
`
`chamfered outer edge along substantially its entire length.
`
`HMG1P008D1
`
`2
`
`Humangear, Inc. Ex. 2005, Page 14
`
`Humangear, Inc. Ex. 2005, Page 14
`
`

`

`8.
`
`(Currently Amended) An eating utensil, comprising:
`
`first and second head portions;
`
`a handle portion extending between the [[a]] first and second head pertiern portions
`
`
`
`
`
`anc-asecondhead-pertien, wherein:
`
`the first head portion comprises a plurality of tines, wherein the first head portion
`
`including atteast-one—of the plurality of tines defines a concave surface, a first one of the
`
`plurality of tines having a distal tip, and wherein the first head portion including the first
`
`one of the plurality of tines defines has a curved outer edge-having-a chamfered surface,the
`
`curved outer chamfered surface extending from the between-a distal tip of the first one of
`
`the plurality of tines and tapering to tine-and a point adjacent wherethe-curyved_outer_edge
`
`meets the handle portion, the chamfered surface extending obliquely from the concave
`
`surface; and
`
`
`
`the second head portion comprises a spoon bow] with ef-a-