DETAILED ACTION
I. This office action is in response to the correspondence filed on July 14, 2025. Claims 1-7 are pending and being examined.
Notice of Pre-AIA or AIA Status
II. The present application is being examined under the pre-AIA first to invent provisions.
Response to Amendment
Continued Examination Under 37 CFR 1.114
III. A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on July 14, 2025 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
IV. Claims 1-7 are rejected under 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites “wherein the first retractor has an axle around which the first flexible screen surrounded by a bezel, retracts” in lines 10-11. This limitation is not described in the specification as filed. The flexible screen being “surrounded by a bezel” is not mentioned anywhere in the specification with the detail needed to reasonably convey to one skilled in the relevant art that the inventor(s), at the time the application was filed, had possession of the claimed invention.
For purposes of examination, the examiner will treat the following quotations from claim 1 “wherein the first retractor has an axle around which the first flexible screen surrounded by a bezel, retracts” as “wherein the first retractor has an axle around which the first flexible screen retracts”.
Claims 2-7 are dependent on independent claim 1 and are rejected under 35 U.S.C. 112, first paragraph for the same reasoning given above.
The following rejections are based on the best possible interpretation of the claim language in light of the above rejections under 35 U.S.C. 112, first paragraph for new matter.
V. Claims 5-7 are rejected under 35 U.S.C. 112(a) as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention
Claim 5 recites “the second flexible screen having a second screen proximal and second screen distal end, each second screen proximal end secured to a second retractor, the second screen distal end being secured to an end unit, the second flexible screens being extensible from and retractable to the second retractor to which its second screen proximal end is secured, each end unit being configured to prevent retraction of the second screen distal end to which it is secured to the second retractor to which the corresponding second screen proximal end is secured” in lines 2-8. The specification as filed does not provide enablement for this limitation.
The specification does describe: a second flexible screen provided, wherein a “sandwich” structure is produced in which casing 12 and wrist grips 24, 26 are disposed between flexible screens 40, 42 (see the specification, paragraph [0038] and Fig. 7); and a “scroll” embodiment wherein the flexible screen is attached at opposite ends to a first and second retractor, and wherein both ends of the flexible screen coil with their respective retractors (see the specification, paragraph [0060] and Figs. 14a-b).
However, the specification does not provide enablement for the second flexible screen having a second screen proximal and second screen distal end, each second screen proximal end secured to a second retractor, the second screen distal end being secured to an end unit, the second flexible screens being extensible from and retractable to the second retractor to which its second screen proximal end is secured, each end unit being configured to prevent retraction of the second screen distal end to which it is secured to the second retractor to which the corresponding second screen proximal end is secured. There is no mention of the above limitations anywhere in the specification and/or drawing figures as filed.
Claims 6-7 are dependent on claim 5 and are rejected under 35 U.S.C. 112, first paragraph for the same reasoning given above.
The following rejections are based on the best possible interpretation of the claim language in light of the above rejections under 35 U.S.C. 112, first paragraph for lack of enablement.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
VI. Claims 5-7 are rejected under second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 5 recites “a second flexible screen in communication with smart phone components, the second flexible screen having a second screen proximal and second screen distal end, each second screen proximal end secured to a second retractor, the second screen distal end being secured to an end unit, the second flexible screens being extensible from and retractable to the second retractor to which its second screen proximal end is secured, each end unit being configured to prevent retraction of the second screen distal end to which it is secured to the second retractor to which the corresponding second screen proximal end is secured”.
The specification describes the second flexible screen as provided in a “sandwich” structure in which casing and wrist grips are disposed between flexible screens 40, 42 (see the specification, paragraph [0038] and Fig. 7). This “sandwich” structure makes no mention of “the second flexible screen having a second screen proximal and second screen distal end, each second screen proximal end secured to a second retractor, the second screen distal end being secured to an end unit, the second flexible screens being extensible from and retractable to the second retractor to which its second screen proximal end is secured, each end unit being configured to prevent retraction of the second screen distal end to which it is secured to the second retractor to which the corresponding second screen proximal end is secured” as claimed.
The specification also describes a second retractor provided in a “scroll” embodiment wherein the flexible screen is attached at opposite ends to a first and second retractor, and wherein both ends of the flexible screen coil with their respective retractors (see the specification, paragraph [0060] and Figs. 14a-b). This “scroll” embodiment makes no mention of a “second flexible screen having a second screen proximal and second screen distal end, each second screen proximal end secured to a second retractor, the second screen distal end being secured to an end unit, the second flexible screens being extensible from and retractable to the second retractor to which its second screen proximal end is secured, each end unit being configured to prevent retraction of the second screen distal end to which it is secured to the second retractor to which the corresponding second screen proximal end is secured” as claimed.
The above disclosures in the specification make the structure and operation of the second flexible screen is unclear and render the claim indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
For purposes of examination, the examiner will treat the following quotation from claim 5:
“a second flexible screen in communication with smart phone components, the second flexible screen having a second screen proximal and second screen distal end, each second screen proximal end secured to a second retractor, the second screen distal end being secured to an end unit, the second flexible screens being extensible from and retractable to the second retractor to which its second screen proximal end is secured, each end unit being configured to prevent retraction of the second screen distal end to which it is secured to the second retractor to which the corresponding second screen proximal end is secured” as
“a flexible screen in communication with smart phone components, the flexible screen having a screen proximal and screen distal end, each screen proximal end secured to a second retractor, the second screen distal end being secured to an end unit, the flexible screens being extensible from and retractable to the second retractor to which its second screen proximal end is secured, the end unit being configured to prevent retraction of the screen distal end to which it is secured to the retractor to which the corresponding screen proximal end is secured”
Claims 6-7 are dependent on claim 5 and are rejected under 35 U.S.C. 112, second paragraph for the same reasoning given above.
The following rejections are based on the best possible interpretation of the claim language in light of the above rejections under 35 U.S.C. 112, second paragraph for indefiniteness.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
VII. Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of U.S. Patent No. 9,553,963. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the 9,553,963 patent teach similar limitations on a telecommunications device with a casing having a pair of opposed sides.
Claim Mapping:
Claim 1 of the instant application and claim 1 of U.S. Patent 9,553,963 is mapped below.
Instant Application
Patent No. 9,553,963
A telecommunication device comprising:
a) a casing having a pair of opposed sides,
b) a first retractor,
c) smart phone components disposed within the casing,
d) first flexible screen in communication with the smart phone components,
the first flexible screen having proximal and distal ends, the proximal end secured to the first retractor,
the distal end being secured to an end unit, the first flexible screen being extensible from and
retractable to a first retractor to which its proximal end is secured, the end unit being configured to prevent retraction of the distal end to which it is secured to the first retractor to which the corresponding proximal end is secured, wherein the first retractor has an axle around which the first flexible screen surrounded by a bezel, retracts.
A telecommunication device comprising:
a) a casing having a pair of opposed sides,
b) smart phone components disposed within the casing,
c) a flexible screen having
) an interior portion secured to the casing and in communication with the smart phone components, and
ii) opposed extensible distal ends,
each extensible distal end extending away from one of the opposed sides of the casing, and
d) retractors secured to each of the opposed extensible distal ends of the flexible screen, each retractor being configured to retract an extensible distal end of the flexible screen until the retractor contacts a side of the casing away from which the extensible distal end of the flexible screen to which the retractor is secured extends, each retractor being further configured to enable extension of the extensible distal end of the flexible screen to which the retractor is secured; and
e) a connecting device secured to the casing for maintaining the telecommunication on person or on clothing or accessories worn on a person, and
f) a second screen in communication with the smart phone components, wherein the casing has an upper surface and the second screen is disposed on or in the upper surface of the casing, wherein the second screen is a fixed screen.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of pre-AIA 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
VIII. Claims 1-4 are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by Naksen et al. (US 7,558,057 B1).
Regarding claim 1 Naksen teaches a telecommunication device (col. 9, lines 30-32 and Fig. 1) comprising: a) a casing have a pair of opposed sides (see col. 9, lines 30-39 and Fig. 2 & Fig. 3, The hand-held digital device includes a handset body 100 with two sides. This reads on a) a casing have a pair of opposed sides), b) a first retractor (see col. 9, lines 57-62 and Figs. 2 – Figs. 4, The screen 10 returns to the closed mode automatically by a means of a pullback winding mechanism (152, fig. 4). This reads on a first retractor), c) smart phone components disposed within the casing (see col. 9, lines 38-48 & 63-67, The hand held digital device has means for wireless communication and processing and this reads on smart phone components disposed within the casing), d) first flexible screen in communication with the smart phone components (see col. 3, lines 45-50 and col. 10, lines 42-49 & 52-55, The variable stiffness screen’s functional flexibility allows for creating a desirable visual interface that provides viewing high quality graphics and images. The casing comprises an embedded electrical circuitry and a pullback winding mechanism to connect the screen to the body electrically and mechanically. This reads on first flexible screen in communication with the smart phone components), the first flexible screen having proximal an distal ends, the proximal end secured to the first retractor, the distal end being secured to an end unit (see col. 9, lines 56-62 & col. 10, lines 58-61 and Figs. 2-4 & Figs. 9-11, The screen 10 is pulled out of the sleeve for a full display. The screen returns to the closed mode automatically by means of a pullback winding mechanism (152, Fig. 4). When the screen 10 is pulled out, the proximal end refers to the part of the screen closest to the digital device and connected to pullback winding mechanism (see Figs. 3-4. When the screen 10 is pulled out, the distal end refers to the part of the screen furthest from the digital device and attached to end piece (see Fig. 3). This reads on the first flexible screen having proximal an distal ends, the proximal end secured to the first retractor, the distal end being secured to an end unit), the first flexible screen being extensible from and retractable to a first retractor to which its proximal end is secured, the end unit being configured to prevent retraction of the distal end to which it is secured to the first retractor to which the corresponding proximal end is secured (see col. 9, lines 56-62 & col. 10, lines 58-61 and Figs. 2-4 & Figs. 9-11, The screen 10 is pulled out of the sleeve for a full display. The screen returns to the closed mode automatically by means of a pullback winding mechanism (152, Fig. 4). The casing element comprises a pullback winding mechanism to connect the screen to the body electrically and mechanically. A recessed area allows for a longitudinal sliding movement of the one part of the display with respect to the other. The screen has an end portion that is fitted to the case when the screen is retracted back to the case by means of the pullback winding mechanism (see Figs. 3-4). This reads on the first flexible screen being extensible from and retractable to a first retractor to which its proximal end is secured, the end unit being configured to prevent retraction of the distal end to which it is secured to the first retractor to which the corresponding proximal end is secured), wherein the first retractor has an axle around which the first flexible screen retracts (see col. 9, lines 57-61 & col. 10, lines 52-58 and Figs. 3-4 & 46, The pullback winding mechanism 152 allows for the screen 10 to be extended by longitudinal sliding movement of one part of the screen with respect to the other. The screen returns to a closed state by means of the pullback winding mechanism. The winding mechanism is the axle around which the screen 10 retracts (see Fig. 4). This reads on wherein the first retractor has an axle around which the first flexible screen retracts.).
Regarding claim 2 Naksen teaches wherein the casing is a flexible casing (see col. 12, lines 23-24 & col. 18, lines 20-25 and Fig. 26, The housing structure with soft flexible materials reads on wherein the casing is a flexible casing).
Regarding claim 3 Naksen teaches wherein the first flexible screen is secured into the first retractor (see col. 9, lines 57-63 and Figs. 2-4, The screen 10 returns to the closed mode by the pullback winding mechanism. (see Fig. 2). This reads on wherein the first flexible screen is secured into the first retractor).
Regarding claim 4 Naksen teaches wherein a portion of the first flexible screen is visible when retracted around the first retractor (see col. 9, lines 57-63 & col. 10, lines 52-57 and Figs. 2-4, A portion of screen 10 is visable when fully retracted (see 10, fig. 2). This reads on wherein a portion of the first flexible screen is visible when retracted around the first retractor).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained through the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
IX. Claims 5-7 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Naksen et al. (US 7,558,057 B1) in view of Grant et al. (US 2008/0303782 A1).
Regarding claim 5 Naksen teaches the telecommunications device of claim 1 including a flexible screen in communication with smart phone components (see col. 3, lines 45-50 and col. 10, lines 42-49 & 52-55, The variable stiffness screen’s functional flexibility allows for creating a desirable visual interface that provides viewing high quality graphics and images. The casing comprises an embedded electrical circuitry and a pullback winding mechanism to connect the screen to the body electrically and mechanically. This reads on first flexible screen in communication with the smart phone components), the flexible screen having a screen proximal and screen distal end, the screen proximal end secured to a first retractor (see col. 9, lines 56-62 & col. 10, lines 58-61 and Figs. 2-4 & Figs. 9-11, The screen 10 is pulled out of the sleeve for a full display. The screen returns to the closed mode automatically by means of a pullback winding mechanism (152, Fig. 4). When the screen 10 is pulled out, the proximal end refers to the part of the screen closest to the digital device and connected to pullback winding mechanism (see Figs. 3-4. When the screen 10 is pulled out, the distal end refers to the part of the screen furthest from the digital device and attached to end piece (see Fig. 3). This reads on the flexible screen having a screen proximal and screen distal end, each screen proximal end secured to a first retractor) and except for
the screen proximal end secured to a second retractor, the second screen distal end being secured to an end unit, the flexible screens being extensible from and retractable to the second retractor to which its second screen proximal end is secured, the end unit being configured to prevent retraction of the screen distal end to which it is secured to the retractor to which the corresponding screen proximal end is secured.
Grant teaches the screen proximal end secured to a second retractor, the second screen distal end being secured to an end unit, the flexible screens being extensible from and retractable to the second retractor to which its second screen proximal end is secured, the end unit being configured to prevent retraction of the screen distal end to which it is secured to the retractor to which the corresponding screen proximal end is secured (see paragraphs [0048] & [0050] and Fig. 1D, A flexible touch sensitive display is a rollable display that can be stored between first and second handles when not in use. The size of the flexible display can change depending on whether the flexible display is fully extended or half-way extended. The flexible display 166 being a rollable display stored between first and second handles when stored indicates retractors in the first and second handles which allow for the rollable flexible to be stored and extended (see Fig. 1D). The flexible display has proximal end closest to a first handle and a distal end closest to a second handle. The first and second ends prevent retraction of the flexible screen when extended. This reads on the screen proximal end secured to a second retractor, the second screen distal end being secured to an end unit, the flexible screens being extensible from and retractable to the second retractor to which its second screen proximal end is secured, the end unit being configured to prevent retraction of the screen distal end to which it is secured to the retractor to which the corresponding screen proximal end is secured).
It would have been obvious to one of ordinary skill in the art at the time the invention was made to make the flexible screen in Naksen adapt to include the screen proximal end secured to a second retractor, the second screen distal end being secured to an end unit, the flexible screens being extensible from and retractable to the second retractor to which its second screen proximal end is secured, the end unit being configured to prevent retraction of the screen distal end to which it is secured to the retractor to which the corresponding screen proximal end is secured because it can provide a more versatile and user friendly flexible display device operable in a variety of configurations (see Grant, Figs. 1A – 1D).
Regarding clam 6 Grant teaches a protective layer applied to at least a portion of the flexible screen (see paragraph [0048] and Fig. 1D, A flexible touch sensitive surface is deposited over a flexible display. The flexible touch sensitive surface reads on a protective layer applied to at least a portion of the flexible screen).
Regarding claim 7 Naksen teaches wherein casing is secured with two opposed flexible wrist grips that have distal ends, and wherein a clasp secures the two distal ends (see col. 13, lines 42-49 and Fig. 33, A sliding wrist-worn device comprises a body. The body includes a front and rear part. The front and rear parts are hingeably connected to a top part to provide mounting of the device on a user wrist. The front and rear parts connect at the ends to secure mounting on the user wrist (see Fig. 33). This inherently includes a securing structure and reads on wherein casing is secured with two opposed flexible wrist grips that have distal ends, and wherein a clasp secures the two distal ends).
Response to Arguments
X. Applicant’s arguments with respect to claims 1-7 have been considered but are moot in view of the new ground of rejection.
Conclusion
XI. Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRANDON J MILLER whose telephone number is (571)272-7869. The examiner can normally be reached M-F.
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/BRANDON J MILLER/ Primary Examiner, Art Unit 2647
October 30, 2025