`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATIENTS
`P.O. Box I450
`Alexandria. Virginia 223 | 3-1450
`www,usplo.gov
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`[1/
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`APPLICATION NO.
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`FILING DATE
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`FIRST NAMED INVENTOR
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`ATTORNEY DOCKET NO.
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`CONFIRMATION N0.
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`11/388,723
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`03/24/2006
`
`Timothy M. Kemp
`
`30696—712201
`
`9311
`
`09/25/2007
`7590
`2l97l
`WILSONSONSINIGOODRICMROSATI
`650 PAGE MILL ROAD
`PALO ALTO, CA 94304-1050
`
`SINES. BRIAN]
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`PAPER NUMBER
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`DELIVERY MODE
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`PAPER
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`ART UNIT
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`1743
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`MAIL DATE
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`09/25/2007
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`Please find below and/or attached an Office communication concerning this application or proceeding.
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`The time period for reply, if any, is set in the attached communication.
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`PTOL-9OA (Rev. 04/07)
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`
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`Office Aetion Summary
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`Application No.
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`11/388,723
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`Examiner
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`Applicant(s)
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`KEMP ET AL.
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`Art Unit
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`1743 -
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`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
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`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 1 MONTH(S) OR THIRTY (30) DAYS,
`WHICHEVER IS LONGER, FROM THE MAILING DATE OF THIS COMMUNICATION
`Extensions of time may be available under the provisions of 37 CFR 1.136(3).
`In no event. however. may a reply be timelyifiled
`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 will expire SIX (6) MONTHS from the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, 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).
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`Status
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`HIE Responsive to communication(s) filed on 05 July 2007.
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`2a)[:| This action is FINAL.
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`2b)IXI This action is non-final.
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`3)|:] 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 Quay/e, 1935 CD. 11. 453 O.G. 213.
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`Disposition of Claims
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`ME CIaim(s)1_-2_0 is/are pending in the application.
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`4a) Of the above claim(s) 1_7-_2__Q is/are withdrawn from consideration.
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`5)|:] Claim(s) _ is/are allowed.
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`6)E] Claim(s) __ is/are rejected.
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`7)El CIaim(s) _ is/are objected to.
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`8)X CIaim(s) jii are subject to restriction and/or election requirement.
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`Application Papers
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`9)|:l The specification is objected to by the Examiner.
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`10)D The drawing(s) filed on _ is/are: a)[:l accepted or b)EI objected to by the Examiner.
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`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).
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`11)|:] The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PTO-152.
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`Priority under 35 U.S.C. § 119
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`12):] Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
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`b)C] Some * c)I:I None of:
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`Certified copies of the priority documents have been received.
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`Certified copies of the priority documents have been received in Application No.
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`Copies of the certified copies of the priority documents have been received in this National Stage
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`application from the International Bureau (PCT Rule 17.2(a)).
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`* See the attached detailed Office action for a list of the certified copies not received.
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`Attachment(s)
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`
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`1) [:l Notice of References Cited (PTO-892)
`2) [:I Notice of Draftsperson's Patent Drawing Review (PTO-948)
`3) E] Information Disclosure Statement(s) (PTO/SB/OB)
`Paper No(s)/Mail Date
`.
`US. Patent and Trademark Office
`PTOL-326 (Rev. 08-06)
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`4) [:1 Interview Summary (PTO-413)
`Paper No(s)/Mai| Date.
`5) I: NOIICB Of Informal Patent Application
`6) D Other:
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`Office Action Summary
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`Part of Paper No./Mail Date 20070820
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`
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`:3
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`Application/Control Number: 11/388,723
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`Art Unit: 1743
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`Page 2
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`DETAILED ACTION
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`Election/Restrictions
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`Restriction to one of the following inventions is required under 35 U.S.C. 121:
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`I.
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`Claims 1 — 11, drawn to a detection device, classified in class 422,
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`subclass 82.05.
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`11.
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`Claims 12 — 16, drawn to a detection device, classified in class 422,
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`subclass 68.1.
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`The inventions are distinct, each from the other because of the following reasons:
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`Inventions I and II are directed to related detection devices. The related
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`inventions are distinct if the (1) the inventions as claimed are either not capable of use
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`together or can have a materially different design, mode of operation, function, or effect;
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`(2) the inventions do not overlap in scope, i.e., are mutually exclusive; and (3) the
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`inventions as claimed are not obvious variants. See MPEP § 806.050). In the instant
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`case, the inventions as claimed have different designs. For example, the detection device
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`of invention 1, as recited in claim 1, comprises an optical barrier. Furthermore, the
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`inventions as claimed are not obvious variants.
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`Because these inventions are independent or distinct for the reasons given above
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`and there would be a serious burden on the examiner if restriction is not required because
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`the inventions require a different field of search (see MPEP § 808.02), restriction for
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`examination purposes as indicated is proper.
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`Applicant is advised that the reply to this requirement to be complete must
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`include (i) an election of a species or invention to be examined even though the
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`
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`Application/Control Number: 11/388,723
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`Art Unit: 1743
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`Page 3
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`requirement be traversed (37 CFR 1.143) and (ii) identification of the claims
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`encompassing the elected invention.
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`The election of an invention or species may be made with or without traverse. To
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`reserve a right to petition, the election must be made with traverse. If the reply does not
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`distinctly and specifically point out supposed errors in the restriction requirement, the
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`election shall be treated as an election without traverse.
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`Should applicant traverse on the ground that the inventions or species are not
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`patentably distinct, applicant should submit evidence or identify such evidence now of
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`record showing the inventions or species to be obvious variants or clearly admit on the
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`record that this is the case. In either instance, if the examiner finds one of the inventions
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`unpatentable over the prior art, the evidence or admission may be used in a rejection
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`under 35 U.S.C.103(a) of the other invention.
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`Applicant is reminded that upon the cancellation of claims to a non-elected
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`invention, the inventorship must be amended in compliance with 37 CFR 1.48(b) if one
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`or more of the currently named inventors is no longer an inventor of at least one claim
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`remaining in the application. Any amendment of inventorship must be accompanied by a
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`request under 37 CFR 1.48(b) and by the fee required under 37 CFR l.l7(i).
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to Brian J. Sines whose telephone number is (571) 272-
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`1263. The examiner can normally be reached on Monday - Friday (11 AM - 8 PM EST).
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, Jill A. Warden can be reached on (571) 272-1267. The fax phone number for
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`the organization where this application or proceeding is assigned is 571-273-8300.
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`
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`Application/Control Number: 11/388,723
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`Art Unit: 1743
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`Page 4
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`Information regarding the status of an application may be obtained from the
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`Patent Application Information Retrieval (PAIR) system. Status information for
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`published applications may be obtained from either Private PAIR or Public PAIR. Status
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`information for unpublished applications is available through Private PAIR only. For
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`more information about the PAIR system, see http://pair-direct.uspto. gov. Should you
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`have questions on access to the Private PAIR system, contact the Electronic Business
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`Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO
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`Customer Service Representative or access to the automated information system, call
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`800-786-9199 (IN USA OR CANADA) or 571-272-1000.
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`Brian J. Sines
`
`Primary Examiner
`Art Unit 1743
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`we
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