DETAILED ACTION
The present Office action supersedes the previous Office action.
Withdrawal of Allowance
Applicant is advised that the allowability of the present application, previously determined on November 2, 2022, has been withdrawn in view of the reasons set forth in the present Office action.
Rejection under 35 U.S.C. § 185
Patent barred for filing without a license
The following is a quotation of 35 U.S.C. § 185 that forms the basis for the rejection under this section made in this Office action:
Notwithstanding any other provisions of law any person, and his successors, assigns, or legal representatives shall not receive a United States patent for an invention if that person, or his successors, assigns, or legal representatives shall, without procuring the license prescribed in section 184, have made, or consented to or assisted another's making, application in a foreign country for a patent or for the registration of a utility model, industrial design, or model in respect of the invention. A United States patent issued to such person, his successors, assigns, or legal representatives shall be invalid, unless the failure to procure such license was through error, and the patent does not disclose subject matter within the scope of section 181.
The invention(s) disclosed in the instant application and all of the presently pending claims are rejected for failing to obtain a foreign filing license as required by 35 U.S.C. § 184 prior to filing the foreign application(s) identified in applicant’s petition seeking a retroactive foreign filing license under 37 CFR § 5.25, which was filed July 15, 2024. Applicant’s petition under 37 CFR § 5.25 was not granted for the reasons provided in the Decision mailed by the Office of Petitions on January 7, 2025.
Conclusion
The above noted deficiencies cannot be rectified by filing of a continuation, continued prosecution application (CPA), or other types of continuing applications because a patent on the invention disclosed is barred under 35 U.S.C. § 185 for failing to obtain a license as prescribed in 35 U.S.C. § 184 prior to filing application for patent or registration of a utility model, industrial design, or model in respect of the invention in another country. Likewise, filing a Request for Continued Examination (RCE) under 37 CFR § 1.114 will be ineffective to overcome the bar to patentability pursuant to 35 U.S.C. § 185.
According to USPTO records to date, the following applications are continuing applications with respect to the instant application: 17708907; 18770492; and 18942266.
The Federal Circuit has affirmed the USPTO’s authority to deny a patent on prosecution laches grounds. See Section 2190, I of the Manual of Patent Examining Procedure (MPEP). Abandoning the instant application without overcoming the rejection under 35 U.S.C. § 185 will likely result in a prosecution laches rejection in any continuing application claiming the benefit of the filing date of the instant application. See id; see also MPEP § 201.02 (defining continuing application).
No claims are allowed. This Office action is FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR § 1.136(a). A shorted statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR § 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
An applicant whose claim(s) has/have been twice rejected may appeal to the Patent Trial and Appeal Board by filing a notice of appeal and the required fee set forth in 37 CFR § 41.20(b)(1) within the time period provided under 37 CFR § 1.134 and 1.136. See MPEP § 1204, II (citing Ex Parte Lemoine, 46 USPQ2d 1420, 1423 (Bd. Pat. App. & Inter. 1994)).
Inquiries
Any inquiry concerning this the Office action should be directed to Supervisory Patent Examiner Timothy Collins whose telephone number is (571)272-6886. Supervisory Patent Examiner Timothy Collins can normally be reached Monday-Thursday between 5am to 2pm. Any inquiry concerning the decision of Applicant’s petition submitted under 35 U.S.C. § 184 should be directed to Ramesh Krishnamurthy whose telephone number is 571-272-3225.
Papers related to this application may be submitted to Licensing and Review by facsimile transmission. The fax number for Licensing and Review is 571-270-9959.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Daniel Pihulic/
Primary Examiner
Art Unit 3645