`
`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
`www.uspto.gov
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`
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`14/065,449
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`10/29/2013
`
`Peter Joseph Schmehl
`
`MBOT—OOSO—POI
`
`3673
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`S TRATEGIC PATENTS P.C.
`PO. BOX 920629
`NEEDHAM, MA 02492
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`SCH «EMAN,BENJAMINA
`
`ART UNIT
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`1742
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`PAPER NUIVIBER
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`NOTIFICATION DATE
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`DELIVERY MODE
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`01/09/2017
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`ELECTRONIC
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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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`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
`following e—mail address(es):
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`patents @ stratpat.c0m
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`PTOL—90A (Rev. 04/07)
`
`

`

`
`
`Commissioner for Patents
`United States Patent and Trademark Office
`PO. Box 1450
`Alexandria, VA 22313-1450
`www.uspto.gov
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`In re ?atent No. 9,475,233
`Schmehl
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`Application No. 14/065,449
`Issue Date: OCtober 25, 2016
`Filed: OCtober 29, 2013
`
`Attorney Docket No.
` MBOT-OO50-POl
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`DfiC S ON ON
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`?%QJ%ST FOR
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`{fiDfiTfiRM NAT ON OF
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`?AT%WT TfiRM ADJUSTMjNT
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`JWDj? 3/ CFR 1./05
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`\\'
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`?equesu jor Reconsideration 0:
`This is in response to the
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`
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`Patent Term Adjustment under 37 CF? 1.705(b)”, ‘i'ed December 5,
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`Patentee requests that
`the determination or pauent
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`
`
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`adjustment be corrected rom "ive hundred and eighteen (518)
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`days to Live hundred and ,hiruy-nine (539) days.
`
`
`This redetermination or paten,
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`2016.
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`term adjustment is NOT the
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`DireCtor's decision on the applicant's reques, jor
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`reconsideration for purposes 0: seeking judicial review under 35
`J.S.C. 154(b)(4).
`
`
`
`
`
`term
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`2016,
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`
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`This application was ‘i'ed on OCtober 29, 2013. On October 25,
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`the application matured into U.S. Patent No. 9,475,233
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`The instant petition
`with a patent term adjustment 0: 518 days.
`under 37 CFR 1.705 was filed on December 5, 2016.
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`Patentees dispute the reduction of 21 days entered a:ter the
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`NOtice o: Al'owance and Issue Fee Due was mailed on June 20,
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`The reduction to the patent term adjustment 0: 21 days
`2016.
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`
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`was entered jor the "iling 0‘ an “Amendment A ,er NOtice o:
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`
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`Allowance under 37 CF? ’.3’2” was filed on July 12, 2016.
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`Pauenuees surmise that the reduction to the pauen,
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`
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`adjustment 0: 21 days was improper because the tiling o: the
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`amendment under 37 CF? ’.3’2 tell under the exception inder 37
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`term
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`CF? 1.704(c)(8) because the paper was expressly requested by the
`examiner.
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`
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`Pauenuee’s argument as to the reduction of the patent term
`
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`adjustment or 21 days has been considered and is not persuasive.
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`A review 0:
`,he application reveals that a reduction of the
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`patent term adjustment 0: 21 days was entered jor the "iling 0'
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`the “Amendment A ,er NOtice O“ Al'owance under 37 CFR 1.312” on
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`

`

`Application/Control Number: 14/065,449
`
`AHLMM:OPET
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`Page2
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`
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`the
`was
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`July 12,2016, after the mai'ing o
`the NOtice of Allowance and
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`Issue Fee Due on June 20, 20l6.
`The reduction to the patent
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`term adjustment is entered pursuant
`to 37 CF? 1.705(c)(10), not
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`37 CFR 1.705(c)(8) as th pap rs w r
`fil d after the mailing
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`the
`Notice of Al'owance and lssue fee Due.
`?atenLee states that
`
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`“Amendment After NOtice O“ Allowance under 37 CFR ’.3’2”
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`
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`the
`filed a he reques __or he O ice.
`_t is noted that
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`
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`1ed as one of
`the
`amendment under 37 CFR 1. 312 is nOt identi:
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`ing 0" which the Director has specifical'y deemed
`papers the "i
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`
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`not
`be a "fai'ure to engage in reasonable efforts" within the
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`meaning 0: 37 CFR 1.704(c)(10)1. ft is also roted that the 37 CFR
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`
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`1It is noted that Changes to Patent Term Adjustment in View of the Federal
`Circuit Decision in Novartis v. Lee, 80 FR 1346 (January 9, 2015 )states,
`pertinent part,
`that:
`
`in
`
`. In view of the changes that have been brought about by the electronic
`filing and processing of patent applications,the Office is clarifying
`what papers may be submitted after a notice of allowance without the
`applicant being considered to hav
`fail d to ngag
`in r asonable efforts
`to conclude processing or examination of the application under §
`1.704(c)(10). Specifically,
`the submission of the following papers after
`
`a notice of allowance will not be considered a failure to engage in
`reasonable efforts to conclude processing of examination of the
`(PTOL—
`apolication under § 1.704(c)(10):
`(1) An Issue Fee(s) Transmittal
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`853);
`(2)
`a power of attorney;
`(3)
`a power to inspect;
`(4)
`a change of
`a
`address;
`(5)
`a change of entity status (micro, small, non—small);
`(6)
`response to the examiner’s reasons for allowance or a request to correct
`an error or omission nithe ”Nomce<fi Ahowamm' or “Notice of
`
`
`
`(9) an
`requests for a refund;
`(8)
`(7) status letters;
`Allowability”;
`inventor’s oath or declaration;
`(10) an information disclos1re statement
`with a statement
`in compliance with § 1.704(d);
`(11)
`the resubmission by
`applicant of unlocatable paper(s) previously filed in the aoplication (§
`1.251);
`(12)
`a request for acknowledgment of an information disclosure
`statement
`in compliance with §§ 1.97 and 1.98, provided that the
`applicant had requested that the examiner acknowledge the information
`disclosure statement prior to the notice of allowance, or the request for
`acknowledgement was applicant’s first opportunity to request that the
`examiner acknowledge the information disclosure statement;
`(13) comments
`on the substance of an interview where the app'icant—initiated interview
`resulted in a notice of allowance; and (14)
`letters related to government
`interests (e.g.,
`those between NASA and the Office). The Office
`previously indicated that three types of these papers (written status
`inquiries,
`requests for refund, an inventor’s oath or declaration) were a
`type of after-allowance submission that would be considered a failure to
`engage in reasonable efforts to conclude processing and examination of
`the application. See Clarification of 37 CFR 1.704(c)(10) b Reduction of
`
`Patent Term Adjustment For Certain Types of Papers After a Notice of
`Allowance has been Mailed, 1247 Off. Gaz. Pat. Office 111 (June 26,
`
`2001); see also MPEP section 2732. The Office no longer considers
`submission of a written (or other type of) status inquiry,
`request for
`refund, or an inventor’s oath or declaration to be
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`

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`Application/Control Number: 14/065,449
`
`AHLMM:OPET
`
`Pages
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`l.704(c)(lO)
`makes no distinction relative to the purpose
`37 CFR 1.704(c)(10)
`Rather,
`which papers were filed.
`
`
`the
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`states tha t
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`i
`ing 0'
` lter
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`a
`ther paper,
`the reduc
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`esult in
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`is noted tha
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`H-Ho
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`
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`simply
`OI
`an amendment under 37 CFR 1.312,
`
`: a NOtice or
`Allowance will
`the mailing 0:
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`tion
`to the patent
`term adjustment.
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`
`rule
`further states that:
`the "inal
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`for
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`Further,
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`The O
`: other
`”ice reminds applicants that the submission 0:
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`0'
`' a
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`’
`'1owance has been
`types or papers after a notice
`\\_
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` :ai
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`given or mailed constitutes a
`'ure to engage in reasonable
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` e
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`”orts to conclude processing or examination 0" an application"
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`
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`'.7
`in which case
`03 shall
`”orth in §
`the period or adjustment se
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`The number 0:
`’ a
`the lesser or:
`(
`1)
`be reduced by
`days, i:
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`te
`on the da
`'.3
`the amendment under §
`
`beginning
`‘2 or Other paper
`ac
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`was
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` "ice
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`the O
`tion or
`filed and ending on the mailing date of
`to
`other
`notice in
`the amendment under §
`response
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`four months.
`(2)
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`'.3’
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`2 or s JCh
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`
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`ny,
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`eneli
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`
`
`equeSt
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`paper; or
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`(6.9-,
`correc
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`for a
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`(3)
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`in compliance with §
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`1.704(d
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`).
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`See § 1.703(c)(l0).
`An exemplary
`An amendment
`Jnder
`(1)
`such papers includes:
`listing 0:
`{2)
`or b
`
`taining a claim for priority
`a paper con
`§ 1.312;
`
`
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`in
`”ormation
`or rques
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`t to correct priority or bene i
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`ta shee
`i'ed to
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`a new or supplemental application da
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` "it
`a I
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`tic bene
`in”orma
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`tion);
`joreign or domes
`corrected
`a certi
`(4)
`filing receipt;
`Lied copy or a
`
`
`a letter rel
`(5)
`(6)
`priority document;
`drawings;
`ting to
`(7)
`a request to change or correct
`biologic deposits;
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`statement not
`and
`an information disclosure
`(8)
`inventorship;
`accompanied by a statement
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`l2, 2016,
`i
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`ce responded
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`was
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`treated as an amendment under
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`the amendmen'
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`t under 37 CFR
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` 20l6,
`tO
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` with a “Response to Rule 312
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`1!
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`
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`term adjus
`The reduction to pa
`ten
`is warranted.
`to 37 CFR l.704(c)(lO)
`
`
`
`tment ol
`
`21
`
`
`The paper
`filed July
`
`
`
`37 CFR 1.312.
`The O"
`1.312 on Augus'
`Communication”.
`
`days pursuant
`
`
`In view thereo:,
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`the determination of
`the time o:
`
`the issuance o:
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`the patent is 518 days.
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`patent term adjustment at
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`Patentee has two (2) months from the date of the Office’s
`
`redetermination of patent term adjustment to request
`
`reconsideration of the patent term adjustment if patentee
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`continues to disagree with this determination (no petition fee).
`
`.ude processing and
`a failure to engage in reasonable efforts to concl
`examination of the application under § 1.704(c)(10)due to the changes
`that have been brought about by the electronic fi:
`patent applications.
`
` _ing and processing of
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`

`

`Application/Control Number: 14/065,449
`
`AHUmtOPET
`
`Page 4
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`This two month period is extendable under 37 CFR 1.136(a). The
`new/renewed request for reconsideration may be filed without any
`additional fee. However, patentee who responds more than two
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`months after the mail date of the redetermination is required to
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`pay the extension of time fee.
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`Telephone inquiries specific to this matter should be directed
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`to the undersigned, at
`
`(571) 272—3222.
`
`/Kenya A. McLaughlin/
`
`
`Kenya A. McLaughlin
`
`Attorney Advisor
`
`
`0""ice 0" Petitions
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`
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`