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
`
`14/225, 588
`
`03/26/2014
`
`Rajiv R. Singh
`
`H0003965DIV1E
`
`2687
`
`91970
`
`7590
`
`02/15/2022
`
`HONEYWELL/FisherBroyles
`Intellectual Property Services Group
`855 S. Mint Street
`Charlotte, NC 28202
`
`EXAMINER
`
`HARDEE, JOHN R
`
`ART UNIT
`1761
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`02/15/2022
`
`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):
`
`DL-SM-IP @ Honeywell.com
`Docketing @ fisherbroyles.com
`patentservices-us @ honeywell.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`Commissionerfor Patents
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`www.uspto.gov
`
`In re Patent No. 9,157,017
`Issue Date: 13 Oct 2015
`Application No. 14/225,588
`Filing or 371(c) Date: 26 Mar 2014
`Attorney Docket No. HO003965DIV1E
`
`.
`
`.
`
`DECISION ON PETITION
`
`This is a decision on the PETITION TO ACCEPT UNITENTIONALLY[sic] DELAYED
`CLAIM TO PRIORITY UNDER35 U.S.C. §120 AND 37 C.F.R. 81.78, filed May 5, 2020 and
`supplemented on May 6, 2020. The petition is properly treated under 37 CFR 1.78(c) and (e), for
`benefit of priority to prior-filed applications listed in the Application Data Sheet (“ADS”), filed
`May6, 2020.
`
`The petition under 37 CFR 1.78(c) and (e) is DISMISSED.
`
`Petitioner seeks a certificate of correction to add an alternate benefit chain to changethe earliest
`effective filing date to June 24, 2005, which is later than the 2002 earliest claimedfiling date that
`the examiner used when examining the application.
`
`MPEP1481.03 states:
`
`In situations where a petition under 37 CFR 1.78 is filed with a request for a
`certificate of correction in an issued patent, the petition should not be granted
`where grant of the petition would cause the patent to be subject to a different
`statutory framework,e.g., the addition of a benefit claim to a pre-March 16, 2013
`filing date in a patent that was examined underthefirst inventorto file (FITF)
`provisions of the AIA. In such situations, further examination would be required
`and thus a petition for an unintentionally delayed benefit claim should not be
`granted absentthe filing of a reissue application.
`
`The Office will not grant a petition under 37 CFR 1.78 with a request for a certificate of
`correction in an issued patent where grant ofthe petition would cause the patent to be subject to a
`different statutory framework because further examination would be required. In this case, the
`changein the priority date which would result from the granting of this petition would result in a
`later priority date for the application, which mayresult in additional prior art being
`applicable. As additional examination maybe required to determineif additional prior artis
`applicable, this is not a type of correction for which a certificate of correction is appropriate.
`
`

`

`Application No. 14/225,588
`
`Page 2
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`Thefiling of a reissue application may be appropriate to pursue the desired correction of the
`patent regarding the benefit claim.
`
`Per MPEP 1402 IV. ERROR IN BENEFIT CLAIM TO DOMESTIC APPLICATION:
`
`Correction of failure to adequately claim a benefit under 35 U.S.C. 120 in an
`earlier-filed copending U.S. patent application was held to be a proper ground for
`reissue. Sampson v. Comm r Pat., 195 USPQ 136, 137 (D.D.C. 1976). Similarly,
`correction of the failure to adequately claim a benefit under 35 U.S.C. 119(e) in
`an earlier-filed copending U.S. patent application is considered a proper ground
`for reissue. If adding a new benefit claim in a reissue application, the reissue
`applicant mustfile a petition for an unintentionally delayed priority claim under
`37 CFR 1.78(c) (for claiming the benefit under 35 U.S.C. 119(e)) or under 37
`CFR 1.78(e) (for claiming the benefit under 35 U.S.C. 120, 121, 365(c) or
`386(c)). See MPEP § 211.04.
`
`Asstated above, the reissue application should be filed with a petition under 37 CFR 1.78(c) and
`(e).
`
`A petition for acceptance of a claim for late priority under 37 CFR 1.78(c) and 1.78(e) is only
`applicable to those applications in which a proper benefit claim is filed after the expiration of the
`period specified in 37 CFR 1.78(a)(4) and 1.78(d)(3). In addition, the petition under 37 CFR
`1.78(c) and 1.78(e) must be accompaniedby:
`
`(1)
`
`(2)
`(3)
`
`the reference required by 35 U.S.C. 120 and 119(e) and 37 CFR 1.78(d)(2)
`and 1.78(a)(3) of the prior-filed application;
`the petition fee set forth in § 1.17(m); and
`a statementthat the entire delay between the date the claim was due under
`37 CFR 1.78(d)(3) and 1.78(a)(4) and the date the claim wasfiled was
`unintentional. The Director may require additional where there is a
`question whether the delay was unintentional.
`
`The USPTO will require additional information concerning whether a delay in seeking
`acceptance of a delayed benefit claim was unintentional where the petition to accept such benefit
`claim wasfiled more than two years after the date the benefit claim was due. See Clarification of
`the Practice for Requiring Additional Information in Petitions Filed in Patent Applications and
`Patents Based on Unintentional Delay, 85 FR 12222 (March 2, 2020). Therefore, additional
`information that provides an explanation of the circumstances surrounding the delay that
`establishes the entire delay was unintentional is required.
`
`Petitioner is reminded the burden of proof to establish that the delay from the due date for the
`domestic benefit claim until the filing of a grantable petition was unintentional within the
`meaning of 35 U.S.C. 119 and 120 and 37 CFR 1.78 rests with the petitioner.
`
`Petitioner must explain the delay between when the benefit claim was due and whenthe benefit
`claim wasfiled. Petitioner must explain the delay in attempting to correct the benefit
`
`

`

`Application No. 14/225,588
`
`Page 3
`
`information. Petitioner may wish to consider the following questions when explaining the delay:
`Whydidn’t the additional priority chain come up during prosecution of Application No.
`14/225,588? What kind of protocol does petitioner have when an application is allowed to ensure
`the benefit information is correct? Is the patent reviewed for accuracy upon receipt? On what
`date and under what circumstances did petitioner become awarethat there was an issue with the
`benefit information? Whendid the petitioner begin the process to correct the benefit information
`once it was discovered there was an issue?
`
`Whenaddressing the delay, petitioner is reminded that an intentional course of action is not
`rendered unintentional when, upon reconsideration, the petitioner changes his or her mind as to
`the course of action that should have been taken. See In re Maldague, 10 USPQ2d 1477, 1478
`(Comm’r Pat. 1988). Petitioner’s failure to carry the burden of proof to establish that the “entire”
`delay was “unintentional” may lead to the denial of a petition under 37 CFR 1.78, regardless of
`the circumstancesthat originally resulted in the failure to timely submit the domestic benefit
`claim.
`
`Petitioner should note that the party whose delayis relevant is the party having the right or
`authority to file the domestic benefit claim in the above-identified application. When the
`applicant assigns the entire right, title, and interest in an invention to a third party (and thus does
`not retain any legal or equitable interest in the invention), the applicant’s delay is irrelevant in
`evaluating whether the delay was unintentional. See Kim v. Quigg, 718 F. Supp. 1280, 1284, 12
`USPQ2d 1604, 1607-08 (E.D. Va. 1989). See MPEP 711.03(c)(D(C)-(P) for additional guidance
`on the information required to establish that the entire delay was unintentional.
`
`Further correspondence with respect to this matter should be delivered through one of the
`following mediums:
`
`By mail:
`
`By hand:
`
`Mail Stop PETITIONS
`Commissionerfor Patents
`Post Office Box 1450
`Alexandria, VA 22313-1450
`
`Customer Service Window
`Mail Stop Petitions
`Randolph Building
`401 Dulany Street
`Alexandria, VA 22314
`
`By fax:
`
`(571) 273-8300
`ATTN: Office of Petitions
`
`By internet:
`
`EFS-Web
`
`

`

`Application No. 14/225,588
`
`Page 4
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`Any questions concerning this matter may be directed to the undersigned at (571) 272-3230.
`
`/SHIRENE W BRANTLEY/
`Attorney Advisor, OPET
`
`