UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONERFORPATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`www.uspto.gov
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`14/225,588
`
`03/26/2014
`
`Rajiv R. Singh
`
`H0003965DIV1E
`
`2687
`
`08/25/2022
`
`7590
`91970
`HONEYWELL/Fisher Broyles
`Intellectual Property Services Group
`855 S. Mint Street
`Charlotte, NC 28202
`
`EXAMINER
`
`HARDEE, JOHN R
`
`ART UNIT
`
`PAPER NUMBER
`
`1761
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`08/25/2022
`
`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)
`
`

`

`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Commissioner for Patents
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`www.uspto.gov
`
`DECISION ON PETITION
`
`In re Patent No. 9,157,017
`Issue Date: 13 Oct 2015
`Application No. 14/225,588
`Filing or 37l(c) Date: 26 Mar 2014
`Attorney Docket No. H0003965DIV1E
`
`This is a decision on the renewed petition under 37 CFR 1.78(c) and (e), filed July 2, 2022,
`requesting the Office accept the unintentionally delayed claims under 35 U.S.C. 119(e) and 35
`U.S.C. 120 for the benefit of prior-filed provisional and nonprovisional applications listed in the
`Application Data Sheet ("ADS"), filed May 6, 2020 and issue a certificate of correction.
`
`The petition under 37 CFR 1.78(c) and (e) is DISMISSED.
`
`Application No. 14/225,588, filed March 26, 2015, issued on October 13, 2015 as U.S. Patent
`No. 9,157,017. The only properly claimed benefit information is:
`
`Application No. 14/225,588, filed March 26, 2015, ,now U.S. Patent 9,157,017 is a
`divisional of Application No. 13/844,206, filed March 15, 2013, now U.S. Patent
`9,695,363, which is a divisional of Application No. 11/847,192, filed August 29, 2007,
`now U.S. Patent 9,518,225, which is a divisional of Application No. 10/837,525, filed
`April 29, 2004, now U.S. Patent 7,279,451, which is a continuation in part of
`Application No. 10/694,272, filed October 27, 2004, now U.S. Patent 7,230,146. 1
`
`Petitioner wishes to claim late benefit of the following applications: Application No. 10/694,272,
`filed October 27, 2003, Application No. 10/694,273, filed October 27, 2003, Application No.
`60/421,263, filed October 25, 2002, Application No. 60/421,435, filed October 25, 2002,
`Application No. 11/850,025, filed September 4, 2007, Application No. 11/475,605, filed June 26,
`2006, and Application No. 60/693,853, filed June 24, 2005.
`
`Application No. 11/850,025, filed September 4, 2007, Application No. 11/475,605, filed June 26,
`2006, and Application No. 60/693,853, filed June 24, 2005, are an additional/alternate priority
`chain.
`
`1 Applicant did not properly claim benefit of Application No. 10/694,272, filed October 27, 2003, Application No.
`10/694,273, filed October 27, 2003, Application No. 60/421,263, filed October 25, 2002, and Application No.
`60/421,435, filed October 25, 2002 in the original ADS, filed March 26, 2014.
`
`

`

`Application No. 14/225,588
`
`Page 2
`
`Where a benefit claim based upon 35 U.S.C. 120 to a national application is to be asserted or
`corrected in a patent via a certificate of correction, the following conditions must be satisfied:
`
`(A) all requirements set forth in 37 CFR l.78(d)(l) must have been met in the
`application which became the patent to be corrected;
`(B) it must be clear from the record of the patent and the parent application(s) that
`priority is appropriate (see MPEP § 211 et seq.); and
`(C) a grantable petition to accept an unintentionally delayed claim under 37 CFR
`l.78(e) must be filed, including the petition fee as set forth in 37 CFR l.17(m).
`
`A petition for acceptance of a claim for late priority under 37 CFR l.78(c) and l.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 l.78(a)(4) and l.78(d)(3). In addition, the petition under 37 CFR
`l.78(c) and l.78(e) must be accompanied by:
`
`(1)
`
`(2)
`(3)
`
`the reference required by 35 U.S.C. 120 and 119(e) and 37 CFR l.78(d)(2)
`and l.78(a)(3) of the prior-filed application;
`the petition fee set forth in§ l.17(m); and
`a statement that the entire delay between the date the claim was due under
`37 CFR l.78(d)(3) and l.78(a)(4) and the date the claim was filed was
`unintentional. The Director may require additional where there is a
`question whether the delay was unintentional.
`
`The USPTO required additional information concerning whether a delay in seeking acceptance
`of a delayed benefit claim was unintentional because the initial petition to accept the benefit
`claim was filed 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).
`
`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 states that it was believed that the pending claims were valid and fully in compliance
`with 35 U.S.C. 112. This belief was consistent with the position taken during the original
`prosecution by the examiner, who never rejected Honeywell's claims under 35 U.S.C. 112.
`Second Renewed Petition p. 4. The fact that applicant did not believe that applicant needed to
`claim the alternate benefit chain is not dispositive to the analysis at hand. If applicant made a
`choice not to claim the alternate priority chain, even if it was based on a reasonable, but mistaken
`belief, then the delay is not unintentional.
`
`The salient issues are (1) when was applicant aware that applicant could claim benefit of the
`alternate chain and (2) when was applicant aware that applicant had not claimed benefit of the
`alternate chain. Did applicant delay in requesting the Office accept the alternate benefit chain?
`
`

`

`Application No. 14/225,588
`
`Page 3
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`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?
`
`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 circumstances that originally
`resulted in the failure to timely submit the domestic benefit claim.
`
`See MPEP 711.03( c )(Il)(C)-(F) for additional guidance on the information required to establish
`that the entire delay was unintentional.
`
`Even if applicant carried the burden of showing that the entire delay in filing the alternate benefit
`chain and a grantable petition under 37 CFR 1.78(c) and (e) was unintentional, issuance of a
`certificate of correction is not appropriate.
`
`MPEP 1481.03 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 under the first inventor to 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 absent the 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 of the petition would cause the patent to be subject to a
`different statutory framework because further examination would be required. In this case, the
`change in the priority date which would result from the granting of this petition would result in a
`later priority date for the application, which may result in additional prior art being
`applicable. As additional examination may be required to determine if additional prior art is
`applicable, this is not a type of correction for which a certificate of correction is appropriate.
`
`On September 2, 2016, the PTAB found the effective filing date of the '017 patent was March
`26, 2014, which is the filing date of Application No. 14/225,588, because claims 1-20 of U.S.
`Patent No. 9,157,017 are not supported or enabled by any prior application in the current benefit
`chain.
`
`Entering the proposed alternate chain would result in a priority date of June 24, 2005, which is
`later than October 25, 2002, the date applicant relied upon during prosecution, although applicant
`did not properly claim benefit of either Application No. 60/421,263, filed October 25, 2002, or
`Application No. 60/421,435, filed October 25, 2002. Additional examination would be required
`to consider the additional years of prior art not considered during prosecution.
`
`

`

`Application No. 14/225,588
`
`Page 4
`
`The filing of a reissue application may be appropriate to pursue the desired correction of the
`patent regarding the alternate 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 must file 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.
`
`As stated above, the reissue application should be filed with a petition under 37 CFR 1.78(c) and
`( e) to add the alternate benefit chain. The explanation of the unintentional nature of the entire
`delay in filing the benefit claim would have to be submitted, as well.
`
`Petitioner could add a benefit claim for prior-filed Application No. 10/694,272, filed October 27,
`2003, Application No. 10/694,273, filed October 27, 2003, Application No. 60/421,263, filed
`October 25, 2002, and Application No. 60/421,435, filed October 25, 2002 via a granted renewed
`petition under 37 CFR 1.78(c) and (e) and certificate of correction.
`
`The renewed petition under 37 CFR 1.78(c) and (e) would have to be filed with an ADS in
`compliance with 37 CFR 1.76(c)(2) claiming benefit of only Application No. 10/694,272, filed
`October 27, 2003, Application No. 10/694,273, filed October 27, 2003, Application No.
`60/421,263, filed October 25, 2002, and Application No. 60/421,435, filed October 25, 2002.
`The Domestic Priority Information in the May 6, 2020 ADS is not acceptable because the
`information pertaining to the aforementioned provisional applications is not underlined in
`compliance with 37 CFR 1.76(c), and, as discussed above, the Office will not enter the alternate
`benefit chain without a reissue. Petitioner would also need to explain the lengthy delay in
`claiming benefit of Application No. 10/694,272, filed October 27, 2003, Application No.
`10/694,273, filed October 27, 2003, Application No. 60/421,263, filed October 25, 2002, and
`Application No. 60/421,435, filed October 25, 2002.
`
`However, it is noted the PTAB determined the '017 patent is not supported or enabled by an any
`prior application in the current benefit chain.
`
`

`

`Application No. 14/225,588
`
`Page 5
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`Further correspondence with respect to this matter should be delivered through one of the
`following mediums:
`
`By mail:
`
`By hand:
`
`By fax:
`
`Mail Stop PETITIONS
`Commissioner for Patents
`Post Office Box 1450
`Alexandria, VA 22313-1450
`
`Customer Service Window
`Mail Stop Petitions
`Randolph Building
`401 Dulany Street
`Alexandria, VA 22314
`
`(571) 273-8300
`ATTN: Office of Petitions
`
`Registered users may file via EFS-Web.
`
`Any questions concerning this matter may be directed to the undersigned at (571) 272-3230.
`
`/SHIRENE W BRANTLEY/
`Attorney Advisor, OPET
`
`