UNITED STATES PATENT AND TRADEMARK OFFICE
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`
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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
`www.uspto.gov
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`16/167,481
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`10/22/2018
`
`Seth Alan Woolley
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`20662-41897/US
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`2960
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`759°
`131639
`Uber/FENWICK
`
`801 California Street
`Mountain View, CA 94041
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`10/07/2019
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`INGRAM THOMAS P
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`ART UNIT
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`3668
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`PAPER NUMBER
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`NOTIFICATION DATE
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`DELIVERY MODE
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`10/07/2019
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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
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`following e—mail address(es):
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`fwuberp atents @ fenwiek.eom
`ptoe @ fenwiek.eom
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`PTOL-90A (Rev. 04/07)
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`

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`0/7709 A0170” Summary
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`Application No.
`16/167,481
`Examiner
`THOMAS P INGRAM
`
`Applicant(s)
`Woolley, Seth Alan
`Art Unit
`AIA (FITF) Status
`3668
`Yes
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`- The MAILING DA TE of this communication appears on the cover sheet wit/7 the correspondence address -
`Period for Reply
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`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE g 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).
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`Status
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`1). Responsive to communication(s) filed on 10/22/2018.
`[: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)
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`This action is non-final.
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`3)[:] 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.
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`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.
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`Disposition of Claims*
`5)
`Claim(s)
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`1—20 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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`E] Claim(s)
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`is/are allowed.
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`Claim(s) 1,9 and 17 is/are rejected.
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`Claim(s) 2—8,10—16 and 18—20 is/are objected to.
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`) ) ) )
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`6 7
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`8
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`
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`are subject to restriction and/or election requirement
`[:1 Claim(s)
`9
`* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway program at a
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`participating intellectual property office for the corresponding application. For more information, please see
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`http://www.uspto.gov/patents/init events/pph/index.'sp or send an inquiry to PPeredback@uspto.gov.
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`Application Papers
`10):] The specification is objected to by the Examiner.
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`11). The drawing(s) filed on 10/22/2018 is/are: a). accepted or b)C] 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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`Priority under 35 U.S.C. § 119
`12)C] Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
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`a)I:] All
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`b)|:] Some**
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`c)C] None of the:
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`1.|:] Certified copies of the priority documents have been received.
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`21:] Certified copies of the priority documents have been received in Application No.
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`3D 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)).
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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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`1)
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`Notice of References Cited (PTO-892)
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`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail DateW.
`U.S. Patent and Trademark Office
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`3) C] Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) CI Other-
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`PTOL-326 (Rev. 11-13)
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`Office Action Summary
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`Part of Paper No./Mai| Date 20191001
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`

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`Application/Control Number: 16/167,481
`Art Unit: 3668
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`Page 2
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`DETAILED ACTION
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`Status of Claims
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`This action is in response to the application No. 16/167481 filed on 10/22/2018. Claims 1-20 are
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`pending for examination.
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`Notice of Pre-AIA or AIA Status
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`1.
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`The present application, filed on or after March 16, 2013, is being examined under the first
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`inventor to file provisions of the AIA.
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`Double Patenting
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`2.
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`The nonstatutory double patenting rejection is based on a judicially created doctrine grounded
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`in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise
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`extension of the ”right to exclude” granted by a patent and to prevent possible harassment by multiple
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`assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not
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`identical, but at least one examined application claim is not patentably distinct from the reference
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`claim(s) because the examined application claim is either anticipated by, or would have been obvious
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`over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re
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`Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed.
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`Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164
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`USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
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`A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to
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`overcome an actual or provisional rejection based on nonstatutory double patenting provided the
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`reference application or patent either is shown to be commonly owned with the examined application,
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`or claims an invention made as a result of activities undertaken within the scope of a joint research
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`

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`Application/Control Number: 16/167,481
`Art Unit: 3668
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`Page 3
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`agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file
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`provisions of the AIA as explained in MPEP § 2159. See MPEP §§ 706.02(I)(1) - 706.02(I)(3) for
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`applications not subject to examination under the first inventor to file provisions of the AIA. A terminal
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`disclaimer must be signed in compliance with 37 CFR 1.321(b).
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`The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit
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`www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed
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`determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA/25, or PTO/AIA/26) should be used. A
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`web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal
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`Disclaimer that meets all requirements is auto-processed and approved immediately upon submission.
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`For more information about eTerminal Disclaimers, refer to
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`www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
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`3.
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`Claims 1, 9, and 17 rejected on the ground of nonstatutory double patenting as being
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`unpatentable over claims 1, 8, and 15, respectively, of U.S. Patent No. 10,012,516. Although the claims
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`at issue are not identical, they are not patentably distinct from each other because the overall invention
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`remains the same between the application and the ’516 patent. The ’516 patent has the minor added
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`details of displaying the selected travel lane and displaying on a device the different lane for the vehicle
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`to travel in whereas the application merely selects them without displaying the results.
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`Conclusion
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`4.
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`Any inquiry concerning this communication or earlier communications from the examiner
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`should be directed to THOMAS P INGRAM whose telephone number is (571)272-7864. The examiner
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`can normally be reached on M-F 10-6 ET.
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`

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`Application/Control Number: 16/167,481
`Art Unit: 3668
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`Page 4
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`Examiner interviews are available via telephone, in-person, and video conferencing using a
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`USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use
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`the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor,
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`Fadey Jabr can be reached on 571-272-151. The fax phone number for the organization where this
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`application or proceeding is assigned is 571-273-8300.
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`Information regarding the status of an application may be obtained from the Patent Application
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`Information Retrieval (PAIR) system. Status information for published applications may be obtained
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`from either Private PAIR or Public PAIR. Status information for unpublished applications is available
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`through Private PAIR only. For more information about the PAIR system, see http://pair-
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`direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic
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`Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer
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`Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR
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`CANADA) or 571-272-1000.
`
`/Thomas Ingram/
`Primary Examiner, Art Unit 3668
`
`