Message: Almost 1 year since the Request of the reexam of the patent # 5,491,774,
New patent app....status
After a FINAL rejection….09-09-2010 CTFR e.Digital responds: 09-22-2010 REM REMARKS Reconsideration of this application is respectfully requested. Claims 1-9, 11-24 and 26 were rejected under 35 U.S.C. § 103 as being unpatentable over Chu (US20020016776) in view of Okamoto (US 20060085859) and Wald (US 20070124602). Claims 10 and 25 are rejected under § 103 as being unpatentable over Chu, Okamoto and Wald in view of Yoshino (US 2003/0120611). Thus, all of the claims have been rejected under § 103 over a combination of Okamoto and other references, These rejections are all improper, because Okamoto is not available as prior art against the present application. The present application is a division of U.S. Application No. 10/938,060, filed September 9, 2004. Thus, the effective filing date is September 9, 2004. Okamoto 2006/0085859 was published on April 20, 2006, which is after the effective filing date of this application. Thus, Okamoto is not available as prior art under 35 U.S.C . §§ 102(a)/103 or 102(b)/103. Okamoto 2006/008359 was filed in the U.S. under 35 U.S.C § 371(c) on May 3, 2005, which is after the effective filing date of this application. Thus, the § 371(c) filing date does not qualify Okamoto 2006/008359 as prior art under 102(e)/103 Okamoto 2006/0083859 is the U.S. National Stage application of International Application No. PCT/JP04/0979. PCT/JP04/0979 was published as WO 2004/102395 on November 25, 2004, which is after the effective filing date of the present application. Thus, neither PCT/JP04/0979 nor WO 2004/102395 is available as prior art under 35 U.S.C . §§ 102(a)/103 or 102(b)/103. The criteria for applying a PCT International Application as a reference under 35 U.S.C. § 102(e) is as follows: (e)the invention was described in - (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for the purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language [emphasis added] The same criteria apply for qualifying a reference as prior art under §§ 102(e)/103. A copy of WO 2004/102395 is attached. The international application was published in Japanese, not in English. 102(e)/103, based on the express exclusion of international applications not published in English. The Examiner's attention is further directed to M.P.E.P. § 2136.03(II)(B), which explains: (B)If the international application Thus, M.P.E.P. §2136.03(II)(B) instructs the Examiner that If the international application was not published in English, do not treat the international filing date as a U.S. filing date; do not apply the reference as of its international filing date, its date of completion of the 35 U.S.C. 371(c)(1), (2) and (4) requirements, or any earlier filing date to which such an international application claims benefit or priority. Therefore, Okamoto 2006/0083859 and WO 2004/102395 are not available as prior art under 102(e)/103 as of the International Filing Date. Although the Okamoto patent application family includes several applications in various countries (JP20030139668, WO2004102395, EP1626344, US2006085859, RU2005129075, and KR200500685351), none of these applications was published before the effective filing date of the present application. Thus, none qualifies as prior art under §§ 102(a)/103 or 102(b)/103. Further, with regard to the Japanese, European, Russian and Korean applications, none of those applications would qualify as prior art as of its filing date under § 102(e)/103 either. M.P.E.P. 2136.03 explains: 35 U.S.C. 102(e) is explicitly limited to certain references "filed in the United States before the invention thereof by the applicant" (emphasis added). Foreign applications' filing dates that are claimed (via 35 U.S.C. 119(a) - (d), (f) or 365(a)) in applications, which have been published as U.S. or WIPO application publications or patented in the U.S., may not be used as 35 U.S.C. 102(e) dates for prior art purposes. This includes international filing dates claimed as foreign priority dates under 35 U.S.C. 365(a).Therefore, the foreign priority date of the reference under 35 U.S.C. 119(a)-(d) (f), and 365(a) cannot be used to antedate the application filing date. In summary, Okamoto is not available as prior art under any provision of the statutes. Nor does any other member of the Okamoto application family in any foreign country qualify as prior art against this application. Therefore, all of the claim rejections should be withdrawn. In view of the foregoing amendments and remarks, Applicant submits that this publication is in condition for allowance. Early notification to that effect is respectfully requested. 10-01-2010 CTAV Examiners response to the above: 11. "® The request for reconsideration has been considered but does NOT place the application in condition for allowance because: Further consideration needs to be given to the newly presented arguments regarding the previously applied reference Okamoto (20060085859). It is further unclear why these arguments were not presented earlier." e.Digital follow through: 10-07-2010 RCEX Current standing: Status: Docketed New Case - Ready for Examination Application Type: Utility Status Date: 10-09-2010 Today’s date 10-19-11.……one year and 10 days now 20070011602 20060051061 doni
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