`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`COMMISSIONER FDR PATENTS
`UNITED STATES PATENT AND TRADEMARK OFFICE
`BOX 1450
`P.D.
`ALEXANDRIA, VA 22313-1450
`www.mpto.gov
`
`PFIZER INC
`
`Steve T. Zelson
`150 EAST 42ND STREET
`5TH FLOOR - STOP 49
`NEW YORK NY 10017—5612
`
`'In re Patent No. 7,265,119
`Issued: September 4, 2007
`Application No. 11/069,724
`Filed: February 28, 2005
`Dkt. NO.: PC11872B
`
`COPY MAILED
`
`JAN 0 3 2008
`
`:
`OFHCEOFPEHHONS
`:
`: PATENT TERM ADJUSTMENT
`
`This is a decision on the “Petition for Reconsideration of the
`
`Indicated in the Issue Notification
`(PTA)
`Patent Term Adjustment
`under 37 C.F.R.
`§ 1.705(d),” filed November 2, 2007. This matter
`
`is being treated as an application for patent term adjustment
`pursuant to 37 CFR 1.705(d).
`
`(“PTA”) under 37 CFR
`The application for patent term adjustment
`is GRANTED TO THE EXTENT INDICATED HEREIN.
`1.705(d)
`
`The above-identified application matured into U.S. Patent No.
`7,265,119 on September 4, 2007. The instant request for
`reconsideration was timely filed in accordance with 37 C.F.R.
`1.705(d). The patent issued with a PTA of 105 days. Patentees
`argue that the adjustment of 188 days was improperly reduced 83
`days in connection with a Fee Address Transmittal submitted June
`14, 2007. Patentees further argue that the application should
`not be subject to reduction in connection with the supplemental
`application datasheet
`(ADS) filed May 29, 2007.
`
`§
`
`The adjustment of 188 days under 37 CFR 1.702(a)(1)
`undisputed by patentee.
`
`is
`
`A Fee Address Transmittal was submitted June 14, 2007. A fee
`
`address transmittal is not deemed a failure to engage in
`reasonable efforts to conclude prosecution within the meaning of
`37 CFR 1.704(c)(10). Accordingly,
`the reduction of 83 days is
`hereby restored.
`
`The Office failed to reduce the patent term adjustment in
`connection with the supplemental ADS submitted May 29, 2007.
`Patentees argue that the submission was the result of an
`
`
`
`Patent No. 7,265,119
`
`examiner request. However,
`
`review of the record reveals that the
`
`submission was necessitated due to applicants’ errors during the
`
`course of prosecution. Specifically, on February 28, 2005,
`applicants filed an ADS which was inconsistent with the
`preliminary amendment also submitted February 28, 2005. The
`preliminary amendment made reference to a 35 USC 120 claim and
`the ADS did not. Further, on May 23, 2005, applicants filed a
`supplemental ADS which did not have a claim for priority to U.S.
`App. No. 10/139,730. See 37 CFR 1.76(d)(1).
`' As a result of
`these inconsistencies, at the time of allowance,
`there was no
`
`priority claim to U.S. App. No. 10/139,730. Accordingly,
`applicants filed a supplemental ADS on May 29, 2007 to correct
`errors made during the course of prosecution. As a result,
`submission of the supplemental ADS on May 29, 2007 is deemed a
`failure to engage in reasonable efforts to conclude prosecution
`within the meaning of 37 CFR 1.704(c)(10).
`
`The reduction under 37 CFR 1.705(c)(10)
`
`totaling 99 days
`
`the date that the supplemental ADS was
`commenced May 29, 2007,
`filed, and ended September 4, 2007,
`the date that the patent
`issued.
`
`the application was
`Accordingly, at the time of issuance,
`entitled to a patent term adjustment of 89 days.
`
`Receipt is acknowledged of the required PTA application fee of
`$200.00.
`'
`
`This application file will be forwarded to the Certificate of
`Corrections branch for issuance of a certificate of correction to
`indicate that the term of this patent is extended or adjusted under
`35 U S.C. 154(b) by 89 days.
`
`Telephone inquiries specific to this matter may be directed to
`Petitions Attorney Alesia M. Brown at
`(571) 272—3205.
`
`.‘/
`i r?—
`J
`ies
`Kery
`Senior Patent Attorney
`Office of Patent Legal Administration
`Office of Deputy Commissioner
`for Patent Examination Policy
`
`Enclosure: Draft Certificate of Correction
`
`
`
`INVENTOR(S) :
`
`Bogle, et al.
`
`It is certified that error appears in the above-identified patent and that said Letters Patent is hereby
`corrected as shown below:
`
`On the cover page,
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`CERTIFICATE OF CORRECTION
`
`PATENT
`
`DATED
`
`:
`
`:
`
`7,265,119 82
`
`September 4, 2007
`
`[*1 Notice: Subject to any disclaimer, the term of this patent is extended or adjusted under 35 USC 154(b)
`by 105 days
`
`Delete the phrase “by 105 days" and insert — by 89 days--
`
`
`
`PTA/PTE Calculations for Application EXPO-PTA/PTE V1.02
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`PALM INTRANET
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`PTA Calculations for A [Icatlon 11/069724
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`File Contents History
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`01/02/2008—|:l-|::J
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`08/07/2007 DISPATCH TO FDC
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`ISSUE
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`05/04/2007—EE|:
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`——DD:
`--000000000
`DEC
`NOTICE OF ALLOWANCE DATA VERIFICATION
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`BED
`APPIDAVIT(S) (RULE 131 OR 132) OR EXHIBIT(S)
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`DEC
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`AFFIDAVIT(S) (RULE 131 OR 132) OR EXHIBIT(S)
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`AFFIDAVIT(S) (RULE 131 OR 132) OR EXHIBIT(S)
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`PTA/PTE Calculations for Application EXPO-PTA/PTE V1.02
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`02/02/2007 RECEIVED
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`2/12/200 DATE FORWARDED TO EXAMINER
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`2/02/200 RESPONSE AFTER NON-FINAL ACTION
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`p—l
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`1/02/200 MAIL NON-FINAL REJECTION
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`0/30/200 NON-FINAL REJECTION
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`INFORMATION DISCLOSURE STATEMENT
`02/28/2005 CONSIDERED
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`02/28/2005 REFERENCE CAPTURE ON IDS
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`02/28/2005 EE§§MATION DISCLOSURE STATEMENT (IDS)
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`02/28/2005 PRELIMINARY AMENDMENT
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`IFW TSS PROCESSING BY TECH CENTER
`.
`04/01/2005 COMPLETE
`4/01/200m
`UIUI
`305/200M
`305/200M
`LII
`305000W
`ML)!
`3/25/200M
`305/200M
`U}
`U)
`/25/200 APPLICATION DISPATCHED FROM OIPE
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`OO
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`11
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`/25/200 APPLICATION IS NOW COMPLETE
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`3/ 18/200 CLEARED BY OIPE CSR
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`(Infill
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`3/ 15/200 IFW SCAN & PACR AUTO SECURITY REVIEW
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`O
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`LII
`2/28/200 INITIAL EXAM TEAM NN
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