DETAILED ACTION
Introduction
Claims 1-20 are pending in the application.
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Rejection -35 U.S.C. 185
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 the presently pending claims, claims 1-20, are rejected for failing to satisfy the requirements under 35 U.S.C. 184 in Applicants' petition submitted under 37 CFR 5.25, in seeking a retroactive license for foreign filing.
As noted in the decision mailed by the Office on September 15, 2025, Applicants' petition under 37 CFR 1.181 did not comply with the requirements under 37 CFR 5.25(a)3(iii).
In said decision, the following was stated:
the following was stated:
Petitioner did not provide a sufficient explanation and complete showing by which the Office could determine if the proscribed application was filed abroad though error without first obtaining the required license under 37 CFR 5.11 and pursuant to 35 U.S.C. 184 and 37 CFR 5.25(a)(3)(iii). Rather, the record supports a finding that the petitioner knowingly filed the proscribed foreign application so as to meet a time deadline with the intention of seeking a retroactive foreign filing license after the proscribed filing. This purposeful choice in this case does not suffice as an error for securing a retroactive foreign filing license. As to the proscribed patent application filed in the Singapore Patent Office on April 29, 2024, and pursuant to 37 CFR 5.25, the petition under 37 CFR 1.181 is DENIED. The Technology Center will be apprised of this decision for issuance of a final rejection under the provisions of 35 U.S.C. 185.
(See the decision for more details)
Conclusion
The above noted deficiencies cannot be rectified by filing of a continuation, an RCE (Request for Continued Examination) or other types of continuing applications as Applicants are prevented from obtaining a patent on the invention without first securing a license prior to filing the invention in another country.
Claims 1-20 are rejected. No pending claims are allowed. This action is final.
Inquiries
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NANDINI SUBRAMANI whose telephone number is (571)272-3916. The examiner can normally be reached Monday - Friday 12:00pm - 5:00 pm EST.
Any inquiry concerning the decision of Applicants' petition submitted under 35 U.S.C. 184 should be directed to Christina Tartera Donnell, Attorney Advisor, at (571) 272-3211.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bhavesh M Mehta can be reached at (571)272-7453. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NANDINI SUBRAMANI/Examiner, Art Unit 2656
/BHAVESH M MEHTA/Supervisory Patent Examiner, Art Unit 2656