www.uspto.gov
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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`PO. Box 1450
`Alexandria, Virginia 2231371450
`
`15/957,654
`
`04/19/2018
`
`Eric R. James
`
`2602.0190001
`
`7038
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`1100 NEW YORK AVENUE NW
`WASHINGTON, DC 20005
`
`DESAL KAUSHIKKUMAR A
`
`ART UNIT
`
`3735
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`05/16/2019
`
`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):
`bncombs @ sternekessler. com
`e-office @ sternekessler. com
`mforrest @ sternekessler. com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`0/7709 A0170” Summary
`
`Application No.
`15/957,654
`Examiner
`KAUSHIKKU MAR A DESAI
`
`Applicant(s)
`James, Eric R.
`Art Unit
`3735
`
`AIA (FITF) Status
`Yes
`
`- The MAILING DA TE of this communication appears on the cover sheet wit/7 the correspondence address -
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 2 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(a). In no event, however, may a reply be timely filed after SIX (6) MONTHS from the mailing
`date of this communication.
`|f 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).
`
`Status
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`1)[:] Responsive to communication(s) filed on
`[:1 A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2a)D This action is FINAL.
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`2b) D This action is non-final.
`
`3)C] An election was made by the applicant in response to a restriction requirement set forth during the interview on
`; the restriction requirement and election have been incorporated into this action.
`
`4):] 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 Expat/7e Quay/e, 1935 CD. 11, 453 O.G. 213.
`
`Disposition of Claims*
`5)
`Claim(s)
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`1—29 is/are pending in the application.
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`5a) Of the above claim(s)
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`is/are withdrawn from consideration.
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`[:1 Claim(s) _ is/are allowed.
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`[3 Claim(s) _
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`is/are rejected.
`
`C] Claim(s)
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`is/are objected to.
`
`) ) ) )
`
`6 7
`
`8
`
`
`
`Claim(s) 1—29 are subject to restriction and/or election requirement
`9
`* If any claims have been determined aflowabie. you may be eligible to benefit from the Patent Prosecution Highway program at a
`
`participating intellectual property office for the corresponding application. For more information, please see
`
`httpfiwww.”smogovmatentszinit_events[pph[index.'sp or send an inquiry to PPeredhack@g§ptg.ggv.
`
`Application Papers
`
`10):] The specification is objected to by the Examiner.
`
`is/are: a)D accepted or b)D objected to by the Examiner.
`11):] The drawing(s) filed on
`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).
`
`Priority under 35 U.S.C. § 119
`12)[:] Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`
`a)I:J All
`
`b)D Some**
`
`C)D None of the:
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`1E] Certified copies of the priority documents have been received.
`
`2.[:] Certified copies of the priority documents have been received in Application No.
`
`3.0 Copies of the certified copies of the priority documents have been received in this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`
`** See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1) C] Notice of References Cited (PTO-892)
`
`2) D Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date_
`U.S. Patent and Trademark Office
`
`3) C] Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) CI Other-
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`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20190509
`
`

`

`Application/Control Number: 15/957,654
`Art Unit: 3735
`
`DETAILED ACTION
`
`Notice of Pre-AIA or AIA Status
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`Page 2
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`The present application, filed on or after March 16, 2013, is being examined under the
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`first inventor to file provisions of the AIA.
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`A- Restriction
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`Restriction to one of the following inventions is required under 35 U.S.C. 121:
`
`l. Claims 1-13 and 16-29, drawn to cryovial storage system, classified in 220/040.
`
`ll. Claims 14-15, drawn to method of accessing vials, classified in 053/241.
`
`The inventions are independent or distinct, each from the other because:
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`Inventions l and II are related as product and process of use. The inventions can be
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`shown to be distinct if either or both of the following can be shown: (1) the process for using the
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`product as claimed can be practiced with another materially different product or (2) the product
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`as claimed can be used in a materially different process of using that product. See MPEP
`
`§ 806.05(h).
`
`In the instant case, the product as claimed can be used in a materially different
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`process of using that product, such as cooking food.
`
`Restriction for examination purposes as indicated is proper because all the inventions
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`listed in this action are independent or distinct for the reasons given above fl there would be
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`a serious search and/or examination burden if restriction were not required because one or more
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`of the following reasons apply:
`
`(a) The inventions have acquired a separate status in the art in view of their different
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`classification.
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`(b) The inventions have acquired a separate status in the art due to their recognized
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`divergent subject matter.
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`(0) The inventions require a different field of search (for example, searching different
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`classes/subclasses or electronic resources, or employing different search queries).
`
`

`

`Application/Control Number: 15/957,654
`Art Unit: 3735
`
`Page 3
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`(d) The prior art applicable to one invention would not likely be applicable to another
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`invenflon.
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`(e) The inventions are likely to raise different non-prior art issues under 35 U.S.C. 101
`
`and/or 35 U.S.C. 112, first paragraph.
`
`Applicant is advised that the reply to this requirement to be complete must include
`
`(i) an election of a invention to be examined even though the requirement may be traversed
`
`(37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
`
`The election of an invention may be made with or without traverse. To reserve a right to
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`petition, the election must be made with traverse. If the reply does not distinctly and specifically
`
`point out supposed errors in the restriction requirement, the election shall be treated as an
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`election without traverse. Traversal must be presented at the time of election in order to be
`
`considered timely. Failure to timely traverse the requirement will result in the loss of right to
`
`petition under 37 CFR 1.144. lf claims are added after the election, applicant must indicate which
`
`of these claims are readable upon the elected invention.
`
`Should applicant traverse on the ground that the inventions are not patentably distinct,
`
`applicant should submit evidence or identify such evidence now of record showing the inventions
`
`to be obvious variants or clearly admit on the record that this is the case. In either instance, if
`
`the examiner finds one of the inventions unpatentable over the prior art,
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`the evidence or
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`admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the
`
`other invention.
`
`B- Election of species
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`Claim(s) 1-13 and 16-29 is/are generic to the following disclosed patentably distinct
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`species:
`
`Species 1: Figures 4A.
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`Species 2: Figures 48
`
`

`

`Application/Control Number: 15/957,654
`Art Unit: 3735
`
`Species 3: Figures 40.
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`Page 4
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`The species are independent or distinct because as disclosed the different species have
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`mutually exclusive characteristics for each identified species. In addition, these species are not
`
`obvious variants of each other based on the current record.
`
`Applicant is required under 35 U.S.C. 121 to elect a single disclosed species, or a single
`
`grouping of patentably indistinct species, for prosecution on the merits to which the claims shall
`
`be restricted if no generic claim is finally held to be allowable.
`
`There is a search and/or examination burden for the patentably distinct species as set
`
`forth above because at least the following reason(s) apply:
`
`The species are independent or distinct because Applicant has comprehensively defined
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`in disclosure in form of written description and drawings to differentiate uniqueness and specific
`
`component/exclusive element/characteristic of each embodiments. For the sake of brevity, they
`
`are not repeated here. Additionally, as meticulously laid out above each distinct Species is
`
`grouped together by figures for ease of election of a single species. Distinct species always refer
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`to the different embodiments of the invention comprising distinctive structural arrangements and
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`do not structurally exist simultaneously together. Claims to distinct species recite the mutually
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`exclusive characteristics of such species. In addition, these species are not obvious variants of
`
`each other based on the current record.
`
`According to MPEP 806.04(b)
`
`(e)
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`(f), where two or more species are claimed, a
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`requirement for restriction to a single species may be proper if the species are mutually
`
`exclusive. ln instant application different claims recite a specific species claims limited to a single
`
`disclosed embodiment, i.e., the scope of a claim is limited to a single disclosed embodiment (Le,
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`a single species, and thus be designated a specific species claim). Claims to different species
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`are mutually exclusive if one claim recites limitations disclosed for a first species but not a
`
`

`

`Application/Control Number: 15/957,654
`Art Unit: 3735
`
`Page 5
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`second, while a second claim recites limitations disclosed only for the second species and not
`
`the first.
`
`Moreover, due to their exclusive characteristic/element as set forth above there is a
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`search and/or examination burden for the species or groupings of the patentably distinct species
`
`as set forth above because of at least the following reason(s) apply:
`
`-- Due to their recognized divergent subject matter as stipulated above the species or
`
`groupings of patentably indistinct species are compiled in different classification requiring a
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`diverse field of search,
`
`i.e., necessitate multiple different search strategies, burdening with
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`additional/supplementary search applying numerous search queries, terms and/or phrases in
`
`same and/or different class or searching entirely different classes or electronic resources
`
`-- Claims are definitions or descriptions of inventions. Claims themselves are never
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`species, i.e., claims to mutually exclusive species or specific species recite the terms and/or
`
`phrases to claim limitations of distinctive characteristic/element. As a result resultant prior art(s)
`
`and/or combination of prior arts found and applicable to one specific species would not likely be
`
`applicable to another mutually exclusive species. Subsequently requiring an additional search
`
`in same and/or different class/subclasses for other mutually exclusive species elements.
`
`Applicant is required under 35 U.S.C. 121 to elect a single disclosed species, or a single
`
`grouping of patentably indistinct species, for prosecution on the merits to which the claims shall
`
`be restricted if no generic claim is finally held to be allowable.
`
`Applicant is advised that the reply to this requirement to be complete must include
`
`(i) an election of a species or a grouping of patentably indistinct species to be examined
`
`even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the
`
`claims encompassing the elected species or grouping of patentably indistinct species,
`
`including any claims subsequently added. An argument that a claim is allowable or that all claims
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`are generic is considered nonresponsive unless accompanied by an election.
`
`

`

`Application/Control Number: 15/957,654
`Art Unit: 3735
`
`Page 6
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`The election may be made with or without traverse. To preserve a right to petition, the
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`election must be made with traverse.
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`If the reply does not distinctly and specifically point out
`
`supposed errors in the election of species requirement, the election shall be treated as an
`
`election without traverse. Traversal must be presented at the time of election in order to be
`
`considered timely. Failure to timely traverse the requirement will result in the loss of right to
`
`petition under 37 CFR 1.144. lf claims are added after the election, applicant must indicate which
`
`of these claims are readable on the elected species or grouping of patentably indistinct species.
`
`Should applicant traverse on the ground that the species, or groupings of patentably
`
`indistinct species from which election is required, are not patentably distinct, applicant should
`
`submit evidence or identify such evidence now of record showing the species to be obvious
`
`variants or clearly admit on the record that this is the case. In either instance, if the examiner
`
`finds one of the species unpatentable over the prior art, the evidence or admission may be used
`
`in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other species.
`
`Upon the allowance of a generic claim, applicant will be entitled to consideration of claims
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`to additional species which depend from or otherwise require all the limitations of an allowable
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`generic claim as provided by 37 CFR 1.141.
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`A telephone call was not made to request an oral election to the above restriction
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`requirement, due to complexity of subject matter.
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`The examiner has required restriction between product or apparatus claims and process
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`claims. Where
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`applicant
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`elects
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`claims directed to
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`the product/apparatus,
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`and all
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`product/apparatus claims are subsequently found allowable, withdrawn process claims that
`
`include all the limitations of the allowable product/apparatus claims should be considered for
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`rejoinder. All claims directed to a nonelected process invention must include all the limitations of
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`an allowable product/apparatus claim for that process invention to be rejoined.
`
`

`

`Application/Control Number: 15/957,654
`Art Unit: 3735
`
`Page 7
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`In the event of rejoinder, the requirement for restriction between the product/apparatus
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`claims and the rejoined process claims will be withdrawn, and the rejoined process claims will
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`be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the
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`rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C.
`
`101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an
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`otherwise proper restriction requirement between product/apparatus claims and process claims
`
`may be maintained. Withdrawn process claims that are not commensurate in scope with an
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`allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally,
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`in
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`order for rejoinder to occur, applicant is advised that the process claims should be amended
`
`during prosecution to require the limitations of the product/apparatus claims. Failure to do so
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`may result in no rejoinder. Further, note that the prohibition against double patenting rejections
`
`of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner
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`before the patent issues. See MPEP § 804.01.
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`Any inquiry concerning this communication or earlier communications from the examiner
`
`should be directed to KAUSHIKKUMAR A DESAI whose telephone number is (571)270-7290.
`
`The examiner can normally be reached on MON-THU: 10AM-8PM.
`
`Examiner interviews are available via telephone, in-person, and video conferencing using
`
`a USPTO supplied web-based collaboration tool. To schedule an interview, applicant
`
`is
`
`encouraged
`
`to
`
`use
`
`the
`
`USPTO
`
`Automated
`
`Interview
`
`Request
`
`(AIR)
`
`at
`
`http://www.uspto.gov/interviewpractice.
`
`If attempts to reach the examiner by telephone are unsuccessful,
`
`the examiner’s
`
`supervisor, Anthony Stashick can be reached on 571-2724561. The fax phone number for the
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`organization where this application or proceeding is assigned is 571 -273-8300.
`
`Information regarding the status of an application may be obtained from the Patent
`
`Application Information Retrieval (PAIR) system. Status information for published applications
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`

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`Application/Control Number: 15/957,654
`Art Unit: 3735
`
`Page 8
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`may be obtained from either Private PAIR or Public PAIR. Status information for unpublished
`
`applications is available through Private PAIR only.
`
`For more information about the PAIR
`
`system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private
`
`PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
`
`If you
`
`would like assistance from a USPTO Customer Service Representative or access to the
`
`automated information system, call 800-786-9199 (IN USA OR CANADA) or 571 -272—1 000.
`
`/KAUSHIKKUMAR A DESAI/
`
`Examiner, Art Unit 3735
`
`/Anthony D Stashick/
`Supervisory Patent Examiner, Art Unit 3735
`
`