www.uspto.gov
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`16/235,996
`
`12/28/2018
`
`John F. Regan
`
`QLI367DIVCON
`
`2522
`
`152796
`
`7590
`
`12/06/2022
`
`Kolisch Hartwell, P.C.
`Bio-Rad Laboratories, Inc.
`520 SW YAMHILL STREET, SUITE 300
`Portland, OR 97204
`
`EXAMINER
`
`WHISENANT, ETHAN C
`
`ART UNIT
`1634
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`12/06/2022
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`Thetime 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):
`
`abney @khpatent.com
`docketing @khpatent.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`Commissioner for Patents
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`www.uspto.gov
`
`In re Application of
`Bio-Rad Laboratories, Inc.
`Application No. 16/235,996
`Filed: 28 Dec 2018
`
`For: ANALYSIS OF NUCLEIC ACIDS
`Patent No. 11,499,181
`Issued: 15 Nov 2022
`
`:
`:
`:
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`DECISION ON PETITION
`
`This is a decision on the “RENEWED PETITION UNDER37 CFR 1.78(C) TO ACCEPT AN
`UNINTENTIONALLY DELAYED PRIORITY CLAIM”, filed October 31, 2022, to accept an
`unintentionally delayed claim under 35 U.S.C. § 119(e) for the benefit of priority to the prior-
`filed provisional applications as set forth in the contemporaneously filed Application Data Sheet
`(ADS).
`
`The petition is DISMISSED.
`
`A petition under 37 CFR § 1.78(c) must be accompaniedby:
`
`(1)
`
`(2)
`(3)
`
`the reference required by 35 U.S.C. § 119(e) and 37 CFR § 1.78(a)(3) of the prior-filed
`application, which mustbe filed in an Application Data Sheet, unless previously
`submitted;
`the petition fee set forth in § 1.17(m); and
`a statementthat the entire delay between the date the claim was due under 37 CFR §
`1.78(a)(4) and the date the claim wasfiled was unintentional. The Director may require
`additional where there is a question whether the delay was unintentional.
`
`The instant renewed petition has not met requirement(3) above.
`
`Applicant previously filed a petition under 37 CFR 1.78(c) on August 18, 2022. However, the
`petition was dismissed in a decision mailed on October 19, 2022. The decision explained that
`the reference to add the prior-filed provisional applications was not acceptable because the
`previously filed ADSs (for example, those filed April 29, 2019, July 22, 2019 and February 12,
`2021) did not comply with 37 CFR 1.76(c)(2) insofar as they were not properly marked up with
`underlining. In addition, the decision noted that the petition to accept the unintentionally delayed
`benefit claim was filed more than two years after the date the benefit claim was due, and as such,
`required that Applicant accountfor the delay in filing the petition.
`
`

`

`Application No. 16/235,996
`
`Page 2
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`Lastly, the decision explained that as the issue fee had been paid, on renewedpetition, a petition
`to withdraw from issue and an RCE must befiled. Alternatively, the decision explained that
`Applicant mayfile a renewed petition after the patent issues, together with a request for a
`Certificate of Correction and the Certificate of Correction fee.
`
`Applicantfiled the instant renewed petition on October 31, 2022, prior to issuance ofthe patent,
`without a petition to withdraw from issue or an RCE. The application issued into Patent No.
`11,499,181 on November 15, 2022. Accordingly, on renewedpetition, Petitioner mustfile a
`request for a Certificate of Correction and the Certificate of Correction fee. No additional
`petition fee is due on renewedpetition.
`
`With respect to requirement(3) above, petitioner has not provided an adequate explanation that
`the entire delay, from the date the benefit claim was due until the date a grantable petition to
`accept the delayed benefit claim was filed, was unintentional.
`
`The USPTO requires additional information concerning whether a delay in seeking acceptance of
`a delayed benefit claim was unintentional where the petition to accept such benefit claim was
`filed more than two years after the date the benefit claim was due. See Clarification of the
`Practice for Requiring Additional Information in Petitions Filed in Patent Applications and
`Patents Based on Unintentional Delay, 85 FR 12222 (March 2, 2020).
`
`In this instance, a petition under 37 CFR 1.78 wasfiled more than two years after the date the
`benefit claim was due. Therefore, petitioner must provide sufficient information of the facts and
`circumstances surrounding the entire delay to support a conclusionthat the entire delay was
`unintentional. /d. at 12223. Details regarding the cause of petitioner’s failure to timely file the
`benefit claim, when the failure to timely file the benefit claim was discovered, and the delay
`between discovery of the failure to timely file the benefit claim and filing of the petition under
`37 CFR 1.78 are of particular relevance. Petitioner should provide relevant dates and identify
`responsible parties where appropriate.
`
`In this regard, there are three (3) periods of delay that are relevant in determining whether the
`entire delay was unintentional: (1) the period whichled to the initial delay in timely filing the
`benefit claim; (2) the delay between whenapplicant learned that the benefit claim had not been
`timely filed and thefiling of an initial petition to accept the delayed benefit claim, and (3) any
`delay in filing a grantable petition to accept the delayed benefit claim.
`
`In this regard, petitioner has not provided an adequate explanation with regard to period (2).
`Specifically, applicantfirst attempted to correct the benefit claim by filing a Requestfor a
`Corrected Filing Receipt on April 29, 2019. On May 2, 2019, the Office mailed a Response to
`Request for Corrected Filing Receipt, stating the request could not be accepted. On July 22,
`2019, applicant filed a renewed Request for Corrected Filing Receipt. On July 25, 2019, a
`Corrected Filing Receipt was mailed in response. On February 12, 2021, over 1 % yearslater, an
`additional Request for Corrected Filing Receipt was filed. On February 17, 2021, the Office
`mailed a Response to Request for Corrected Filing Receipt, stating the request could not be
`accepted. On February 18, 2021, an additional Request for Corrected Filing Receipt wasfiled.
`On February 23, 2021, the Office mailed a Response to Request for Corrected Filing Receipt,
`
`

`

`Application No. 16/235,996
`
`Page 3
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`stating the request could not be accepted. On August 18, 2022, nearly 1 % yearslater, the initial
`petition under 37 CFR 1.78 wasfiled.
`
`Petitioner states “[t]here has not been any delay, just the inevitable passage of time that
`accompanies so many back-and forth communications.” However, petitioner’s argumentis not
`persuasive in view of the significant periods of time which passed between (1) the mailing of the
`Filing Receipt mailed July 25, 2019 andthefiling of the Request for Corrected Filing Receipt
`mailed February 12, 2021, and (ii) the mailing of the Response to Request for Corrected Filing
`Receipt mailed February 23, 2021 and thefiling of the initial petition on August 18, 2022.
`Petitioner must provide an adequate explanation that the entire period of delay was unintentional.
`
`See MPEP § 711.03(c)(I)(C)-(H)for additional guidance on the information required to
`establish that the entire delay was unintentional.
`
`Further correspondence with respect to this matter should be delivered through one of the
`following mediums:
`
`By mail:
`
`Mail Stop PETITIONS
`Commissioner for Patents
`Post Office Box 1450
`Alexandria, VA 22313-1450
`
`By fax:
`
`(571) 273-8300
`ATTN: Office of Petitions
`
`By internet:
`
`EFS-Web orPatent Center
`
`Any questions concerning this matter may be directed to Attorney Advisor Cliff Congo at (571)
`272-3207. All other inquiries concerning either the examination procedures orstatus of the
`application should be directed to the Technology Center.
`
`/DOUGLAS I WOOD/
`Attorney Advisor, OPET
`
`