`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMIVHSSIONER FOR PATENTS
`PO. Box 1450
`Alexandria1 Virginia 22313-1450
`wwwusptogov
`
`
`
`
`
`12/605,276
`
`10/23/2009
`
`Peter Sazani
`
`AVN—009RCE
`
`1379
`
`123147
`
`7590
`.
`.
`Nelson Mulhns Rlley & Scarborough LLP/Sarepta
`One Post Office Square
`Boston, MA 02109
`
`09/22/2015
`
`EXAM NER
`
`
`MCDONALD, JENN «ER SUE PITRAK
`
`ART UNIT
`
`1674
`
`PAPER NUIVIBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`09/22/2015
`
`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):
`
`ipboston.docketing @ nelsonmullinscom
`chris. schlauch @ nelsonmullinscom
`
`ipqualityassuranceboston @ nelsonmullinscom
`
`PTOL—90A (Rev. 04/07)
`
`

`

`
`
`In re ?atent No. 8,871,918
`Sazani et a1.
`
`
`
`
`
`
`
`Lssue Date: OCtober 28, 2014
`
`
`
`Commissioner for Patents
`United States Patent and Trademark Office
`PO. Box 1450
`Alexandria, VA 22313-1450
`www.uspto.gov
`
`
`.
`
`
`
`
`
`
`
`: D R4CTOR’S 34C S ON ON
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`
`
`?AT%NT TfiRM ADJUSTMENT
`
`:
`
`°
`
`
`
`Appiication No. 12/605,276
`Filed: OCtober 23, 2009
`
` L-lJ
`
`Attorney Docket W0. AVN-OO9RC
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`
`
`
`Titie: MUPT Pflfi
`fiXOW SK PP NG
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`
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`COMPOS T ONS FOR DMD
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`
`
`This is a response to the “Request for Qeconsideration of Patent
`
`Term Adjustment” filed pursuant
`to 37 CFR 1.705(b) on May 28,
`
`
`
`
`the O""ice adjust the PTA from 151 days to
`
`
`
`2015 requesting that
`152 days.
`
`
`
`
`The redetermination of patent term adjustment is DENIED with
`
`respect to making any change in the patent term adjustment
`determination under 35 U.S.C.
`
`§ 154(b) of 151 days.
`
`
`
`THERE WILL BE NO FURTHER CONSIDERATION OF THIS MATTER BY THE
`
`OFFICE.
`
`
`This decision is the Director’s decision on the applicant’s
`
`
`
`request for reconsideration for purposes 0: seeking judicial
`review under 35 U.S.C.
`§ 154(b)(4).
`
`Relevant Procedural History
`
`this patent issued with a patent term
`On OCtober 28, 2014,
`
`
`
`
`adjustment determination of 151 days.
`On May 28, 2015, patentee
`
`
`
`
`filed this request jor redetermination o: patent
`
`
`
`with a five month extension 0:
`time, requesting that patentee be
`
`
`granted a patent
`term adjustment or 152 days.
`
`
`
`term adjustment
`
`
`
`
`
`
`
`
`
`
`
`Decision
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`
`
`
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`
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`Patentee agrees with the O "ice’s calculation of A delay of 408
`
`
`
`
`
`days, 3 deiay O"
`11 days, C delay 0:
`0 day and 0 days 0:
`
`

`

`Application/Control Number: 12/605,276
`
`Art Unit: OPET
`
`Page2
`
`overlap. Patentee
`calculated as 268
`
`
`disputes the period 0: applicant delay
`days.
`
`
`Pa
`
`tentee disputes
`
`response filed on
`determined that Pa
`
`
`
`April 18,
`
`the
`
`
`
`
`
`
`Final ACtion on April 18,
`
`Delay.
`Federal
`
`{oliday within the
`21, 2014,
`
`
`
`the 87 day reduction jor he submission 0:
`
`
`
`2014. ?atentee argues the ?TO
`
`tentee's submission 0: a Response a__,er Non—
`20
`
`District 0 Columbia (i.e., USPTO
`
`
`
`
`14 constitutes an 87 day applicant
`
`Since the three month response date technical'y ‘ell on a
`
`
`patentee maintains the e
`
`
`
`ective
`
`closing), January
`three month
`
`
`
`deadline was Wednesday, January 22, 2014. As such
`
`patentee cortends the PTO incorrectly assessed ?atentee's
`
`2014 as an 87 day applicant Delay
`
`submission on April 18,
`
`instead 0: an 86 day app__
`
`Patentee’s argument has been considered but is not persuasive. A
`
`review 0: tre record con
`firms that the 87 day reduction, not an
`
`
`for the submission 0:
`
`86 day reduction
`
`2014 is reqtired.
`
`
`
`icant delay.
`
`the response on April 18,
`
`provides:
`
`an applicant
`
`35 USC 154(b)(2)(C)(ii)
`
`
`mus jile a response within three months or
`
`
`shall be deemed to have :ailed to engage in
`
`
`
`an applicant
`
`
`
`
`reasonable e
`
`I)
`
`
`orts to conclude processing or examination or
`
`
`
`an app'ication or
`the cumulative total or any periods 0:?
`
`3 months that are taken to respond to a
`
`
`
`ice making any rejection, objection,
`Other request, measuring such 3-month period
`
`
`the notice was given or mailed to the
`
`time in excess 0::
`notice jrom the 0
`
`argument, or
`from the date
`
`
`
`applicant.
`
`35
`
`.S.C. 21(b) provides:
`
`
`When the day,
`for taking any action or
`or the last day,
`
`the United States Patent and Trademark
`paying any fee in
`
`
` 0 ice "alls
`
`
`on Saturday, Sunday, or a Federal holiday
`strict o
`within the Di
`
`or fee paid,
`day.
`
`Columbia,
`
`the action may be taken,
`
`on the next succeeding secular or business
`
`Pursuant
`
`
`) (2)(c)(ii) and 35 USC §2;(b)
`to 35 U.S.C. §54(b
`the 87
`
`
`
`
`
`culated. A non—"inal 0 ice action
`day reduc
`tion is properly ca
` 3. The shortened three month reply
`was mailed on October 18, 201
`
`

`

`Application/Control Number: 12/605,276
`
`Art Unit: OPET
`
`Page 3
`
`
`period falls on January ’8, 2014 which is a Saturday. Since
`
`Monday January 20, 20’4 ‘alls on a Federal Holiday, applicant
`
`business day So" owing the weekend and
`
`could respond on the nex:
`
`the Federal Holiday.
`
`In other words
`
`,he e""ective reply period
`
`in this instance was Tuesday, January 21, 2014, not Wednesday
`
`January 22, 2014 as calculated by Patentee. Consequently,
`
`the 87
`
`
`
`
`
`
`
`
`
`
`
`
`days are calculated beginning on Wednesday January 22, 2014 and
`
`ending on Apri' 18, 20’4.
`
`Overall PTA Calculation
`
`Formula:
`
`
`“A” delay + “3” delay + “C” delay — Overlap - applicant delay =
`X
`
`USPTO’s Calculation:
`
`408 + 11 + 0 - 0 - 268 = 151
`
`Patentee’s Calculation
`
`408 + 11 + 0
`
`-
`
`0 — 267 = 152
`
`Conclusion
`
`
`
`
`
`
`Patentee remains entitled to PTA of one hundred
`i"ty-one (151)
`
`
`days. Using the ‘ormu'a “A” delay + “8” de'ay + “C” delay -
`
`
`= X,
`the amount 0: PTA is calculated
`268 = 151 days.
`
`overlap - applicant delay
`
`as follows:
`408
`11
`0
`
`
`
`
`0
`
`
`Telephone inquiries speci:
`
`fic to this matter should be direc:ed
`
`to Attorney Advisor Charlema Grant at
`
`(571) 272—3215.
`
`/John Co:tingham/
`
`John Cottingham
`Director
`
`
`0""ice o" Peoitions/
`
`
`
`
`?e:itions 0""icer
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`
`
`