DETAILED ACTION
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 Feb. 27, 2026 has been entered.
The following is a non-final Office action (“Action”) in reply to the Response with claim amendments submitted Feb. 27, 2026 (“the Feb. Resp.”) in this reissue application filed May 13, 2022 from U.S. Patent No. 10,665,823 (“the ‘823 patent”), which issued from U.S. patent application no. 15/782,490 (“the ‘490 application”). Original patent claims 1-20 are canceled, claim 27 is canceled, and claims 21-26 and 28-39 are pending.
Notice of Pre-AIA or AIA Status
The ‘823 patent has an effective filing date of October 12, 2016, which is on or after March 16, 2013, thus, this application will be examined using the first inventor to file provisions of the AIA . All references to sections 102 and 103 of U.S.C. title 35 in this Action are AIA unless otherwise stated.
This reissue application was filed on or after September 16, 2012, therefore, all reference to 35 U.S.C. 251 and 37 CFR 1.172, 1.75, and 3.73 are to the current provisions enacted under the Leahy-Smith American Invents Act (“AIA ”). See Federal Register, Vol. 77, No. 157, pg. 48820, August 16, 2012.
Response to Arguments and Amendments
Previously Presented Objections to the Specification
The previously presented objection to the specification is withdrawn in light of the specification amendment filed with the Feb. Resp.
Previously Presented Objection and 35 U.S.C. § 251 Rejection Over the Declaration
Applicant does not argue the objection or section 251 rejection of the reissue declaration but rather requests permission to resolve the section 251 recapture issues first, and then update the error statement with newly executed reissue declarations accordingly. See Feb. Resp. 16. The objection and section 251 rejections based on the defective reissue declaration will be maintained, however, until the underlying issues are corrected with newly executed reissue declarations.
Previously Presented 35 U.S.C. § 112(b) Claim Rejections
The previously presented rejections under section 112(b) are withdrawn in light of the claim amendments submitted in the Feb. Resp.
Previously Presented 35 U.S.C. §§ 102, 103 Claim Rejections
All previously presented sections 102 and 103 claim rejections are withdrawn in light of Applicant’s claim amendments and arguments that “Kim [(U.S. Patent Application Publication no. 2016/0357052)] fails to disclose ‘a plurality of holes in the third planar portion and the fourth planar portion’ wherein ‘the third planar portion and the fourth planar portion are planar in a folded state.’” Feb. Resp. 17. Also, that “Kim’s edge portion ED cannot be part of the ‘first planar portion’ and the ‘second planar portion’ because they are not in the folded state.” Id. at 18. And lastly, “Kim’s edge regions ED are not planar in the folded state (see Kim’s FIG. 9B) … Kim’s unfolding regions UFR may be planar in the folded state but do not have any holes.” Id.
Previously Presented 35 U.S.C. § 251 Claim Rejections – Recapture
Applicant argues that independent claims 21, 32, and 33 while broadened, including removal of the surrender generating limitation (“SGL”), recite other narrowing limitations, including those that still narrow relative to the SGL. See Feb. Resp. 13-16. Specifically, Applicant argues the limitations that require the holes to be in the planar portions and are configured such that each of the first and second holes are in zig zag patterns, while not covering “holes not overlapping when folded,” is still narrowing with respect to the SGL. Id. at 15. Additionally, Applicant argues that the amendments to independent claims 21, 32, and 33 are directed to overlooked aspects because the holes are limited to the planar portions where the original claims did not require such a placement, and as a result, avoid recapture. See Remarks 13-16. These arguments are not persuasive for the following reasons.
First, requiring the claimed holes to be in a zig zag pattern is not sufficient to overcome the recapture issue because the holes, even in a zig zag pattern, can still overlap based on the scope of the claim. This was also born out during prosecution when applicant specifically changed “zig zag” to “not overlap” and the allowance subsequently followed. Moreover, while adding additional narrowing limitations, such as limiting the holes to the planar regions, this is not necessarily a limitation directed to the SGL. The placement of the holes in the original claims was not defined. In that regard, this feature is narrower than the original claims, but the placement of the holes is independent of whether or not the holes overlap. For example, the originally patented claims covered a scope in which the holes were in the bending portion and not the planar portion, but were still nonetheless required to be not overlapping. The SGL requires that the holes, regardless of being in the planar portion, bending portion, or both, did not overlap. Limiting the holes to the planar portions, as in the new claims, while narrowing in one respect, does not specify whether or not the holes overlap; in other words, the new claims cover a claim scope in which the holes do overlap and in which the holes do not overlap.
Moreover, and as explained in the original patent rejection below, nowhere in the specification of the ‘823 patent is there described an invention where the holes are in a zig zag pattern and overlap, which embodiment is covered by the current scope of the claims. Instead, the only invention in the ‘823 patent described with holes in a zig zag pattern is that in which “there is no overlapping area among the plurality of holes.” See ‘823 Pat. 6:20-28, 7:23-28. Thus, while there may be other narrowing limitations relative the original claims prior to surrender, these limitations are narrowing in unrelated aspects to the SGL, thus, they cannot avoid impermissible recapture. See MPEP § 1412.02, subsection II.C.
Second, even if the newly added features of limiting the holes to a planar portion and configured in a zig zag pattern were broader than the SGL but still materially narrow the original claims before surrender (i.e., not the originally patented claims, but those prior to amendment), there is still impermissible recapture because the zig zag pattern features were known in the prior art as previously rejected during prosecution of the ‘823 patent.
Lastly, overlooked aspects are with respect to claims directed to a separate invention/embodiment/species that were not covered by the originally patented claims but described in the patent. In this case, the originally patented claims are broad and make no mention of where the holes are located. That is, the scope of the originally patented claims is such that they can be in the bending portions, planar portions, or both, assuming these embodiments are adequately described in the specification of the ‘823 patent. Thus, the originally patented claims were generic in that sense and covered all three possible placements of the holes. Limiting the holes to just the planar portions now would be acceptable so long as the recapture issue is resolved, but would not be an overlooked aspect since the originally patented claims already covered this embodiment within their scope. That being said, the placement of the holes is unrelated to the SGL. So, regardless of whether the claims specify the placement of the holes in the planar portion or not, the current claims still cover a claim scope not supported by the original patent disclosure, and thus, the corresponding limitations are not overlooked aspects that avoid impermissible recapture.
For these reasons, Applicant’s arguments against the recapture rejections are not persuasive.
Specification
The specification amendment filed in the Feb. Resp. is accepted and entered.
Objections – Reissue Declaration
The reissue declaration filed September 26, 2025 is objected to because: (1) the box “Additional inventors are named on separately numbered sheets attached hereto” is checked but there are no additional sheets attached despite there being additional inventors, and (2) in light of the 35 U.S.C. § 251 rejection based on impermissible recapture, the error statement is directed to an uncorrectable error since it is part of the surrender generating limitation.
According to the error statement, the limitation identified as being removed from claims 21-31 and 33-39, but originally presented in claim 1, is “spaced apart from the folding line at a first distance.” Since the limitation of claim 1 is a surrender generating limitation (see section 251 rejection below) and not present in at least independent claims 21 and 33, the error cannot be based on this feature.
The error statement also states that “new claims 21-39 recite the positional relationship between the display panel and the metal plate with more specificity than the original patent,” which is understood to be a narrowing feature of at least remaining independent claim 32. However, each of independent claims 21, 32, and 33 are still broadened (see section 251 rejection below) because they remove features, including surrender generating limitations, that were present in the original independent claims 1 and 15. If a reissue application includes a broadened claim, despite also including narrowing amendments or even a narrowing independent claim, the broadening controls and the error statement is required to be directed to the broadened claim (see 37 C.F.R. § 1.175(b) and M.P.E.P. § 1414, subsection II, 1414.01; see also Reissue Application Declaration By the Assignee form, page 2, the instructions in the error statement box). As explained above, however, the broadening aspect of the error statement is with respect to a broadened, surrender generating limitation, and thus, the error statement is improper.
A newly executed reissue declaration is required in which the additional inventor sheets are attached and a correctable error is listed (it is understood the error statement is tied to resolution of the section 251 recapture rejection presented below).
Claim Rejections - 35 USC § 251
The following is a quotation of 35 U.S.C. 251 that form the basis for the rejections under this section made in this Office action:
(a) IN GENERAL.—Whenever any patent is, through error, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.
(b) MULTIPLE REISSUED PATENTS.— The Director may issue several reissued patents for distinct and separate parts of the thing patented, upon demand of the applicant, and upon payment of the required fee for a reissue for each of such reissued patents.
(c) APPLICABILITY OF THIS TITLE.— The provisions of this title relating to applications for patent shall be applicable to applications for reissue of a patent, except that application for reissue may be made and sworn to by the assignee of the entire interest if the application does not seek to enlarge the scope of the claims of the original patent or the application for the original patent was filed by the assignee of the entire interest.
(d) REISSUE PATENT ENLARGING SCOPE OF CLAIMS.—No reissued patent shall be granted enlarging the scope of the claims of the original patent unless applied for within two years from the grant of the original patent.
Reissue Declaration
Claims 21-26 and 28-39 are rejected as being based upon a defective reissue declaration under 35 U.S.C. § 251. See 37 C.F.R. § 1.175. The nature of the defects in the declaration is discussed above in this Action.
Recapture
Claims 21-26 and 28-39 are rejected under 35 U.S.C. 251 as being an impermissible recapture of broadened claimed subject matter surrendered in the application for the patent upon which the present reissue filing is based.1
The reissue application contains claims that are broader than the issued patent claims. The record of the ‘490 application for the ‘823 patent shows that the broadening aspect (in the reissue) relates to claimed subject matter that applicant previously surrendered during the prosecution. Accordingly, the narrow scope of the claims in the patent was not an error within the meaning of 35 U.S.C. § 251, and the broader scope of claimed subject matter surrendered in the application for the patent cannot be recaptured by the filing of the present reissue application.
Citing both In re Clement2 and North American Container3, section 1412.02 of the MPEP establishes a three-step test for recapture as follows:
Determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims;
Determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and
Determine whether the reissue claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule.
Step (1)
All of independent claims 21, 32, and 33 are broader than original independent claims 1 and 15 of the ‘823 patent because, while some narrowing limitations have been added, many limitations are not present in new independent claims 21, 32, and 33, thus resulting in a broadening of the claim scope. “A claim of a reissue application enlarges the scope of the claims of the patent if it is broader in at least one respect, even though it may be narrower in other respects.” See MPEP § 1412.03, subsection I.
Original independent claims 1 and 15 required the following features:
the metal plate has a plurality of holes disposed on each side of the folding line to substantially overlap the display panel, and
the plurality of holes comprises:
a first plurality of holes disposed on one side of the folding line and spaced apart from the folding line at a first distance; and
a second plurality of holes disposed on the other side of the folding line and spaced apart from the folding line at the first distance, and
each of the first plurality of holes does not overlap any of the second plurality of holes when folded with respect to the folding line.
All of the limitations noted above have been deleted from new independent claims 21, 32, and 33 as originally written in claims 1 and 15. As a result, independent claims 21, 32, and 33 are broader in scope than the previously patented claims, even if also reciting additional, narrower limitations. Also, since all independent claims are broader in scope than the previously patented claims, so too are all dependent claims 22-26, 27-31, and 34-39. See M.P.E.P. § 1412.03. As a result, claims 21-26 and 28-39 are all considered broadened.
Step (2)
Determining whether subject matter was previously surrendered during prosecution of the original patent requires two sub-steps per section 1412.02, subsection II.B of the MPEP. In the first sub-step, “[i]f an original patent claim limitation now being omitted or broadened in the present reissue application was originally relied upon by applicant in the original application to make the claims allowable over the art, the omitted limitation relates to subject matter previously surrendered by applicant.” In the second sub-step, “[t]he examiner must analyze all of the broadening aspects of the reissue claims to determine if any of the omitted/broadened limitation(s) are directed to limitations relied upon by applicant in the original application to make the claims allowable over the art.” See id.
For sub-step 1, the limitations noted above with respect to claims 1 and 15 were added by amendment during prosecution of the ‘490 application and argued to distinguish over the cited and applied prior art. See ‘490 Application, Response filed Nov. 21, 2019. Specifically, it was argued that since the prior art teaches overlapping holes, the prior art does not teach, at least, that “each of the first plurality of holes does not overlap any of the second plurality of holes when folded with respect to the folding line.” See id. 8. A Notice of Allowance was mailed on Jan. 23, 2020 based on applicant’s claim amendments and argument, and was the next Office action during prosecution of the ‘490 application. The Notice of Allowance explicitly noted the limitations listed above of claims 1 and 15 as distinguishing over the prior art. As a result, the above deleted limitations noted are surrender generating limitations. See M.P.E.P. § 1412.02.
For sub-step 2, as explained above, all of limitations noted above as written in claims 1 and 15 are deleted from claims 21, 32, and 33. These limitations were added to make the claims allowable during examination of the ‘490 application. Thus, the claims are broadened by deleting “limitations relied upon by applicant in the original application to make the claims allowable over the art” and these deleted limitations are surrendered subject matter. See M.P.E.P. § 1412.02.
Step (3)
A rejection for impermissible recapture may be avoided if “the claims [have been] materially narrowed relative to the surrendered subject matter such that the surrendered subject matter is not entirely or substantially recaptured.” See MPEP § 1412.02, subsection II.C (citing In re Mostafazadeh, 643 F.3d 1353, 1361, 98 U.S.P.Q. 2d 1639, 1644 (Fed. Cir. 2011)).
There is no indication that there is any material narrowing in claims 21-26 and 28-39 to avoid recapture. See M.P.E.P. § 1412.02 II.C. None of the new claims requires at least that “each of the first plurality of holes does not overlap any of the second plurality of holes when folded with respect to the folding line” or anything of a similar scope. To the contrary, despite adding new features and limiting the holes to “zig zag” patterns, this still does not relate to whether or not the holes overlap when the planar portions are in a folded state. Thus, the narrower limitations added in the Feb. Resp. are not related to the SGL and do not avoid impermissible recapture.
It is noted that in the Nov. 2019 amendment of the ‘490 application, the limitation “a first plurality of holes disposed on one side of the folding line and spaced apart from the folding line at a first distance, and a second plurality of holes disposed on the other side of the folding line and spaced apart from the folding line at the first distance” was added to the claims and is part of the surrender generating limitations. However, this feature is substantially present in current claim 32 even through not recited in exactly the same words. Even so, claim 32 is still missing the other surrender generating limitations, and thus, this is not a sufficient material narrowing to avoid recapture.
The examiner also recognizes there is some overlap in claim 35, but it is rejected as it is claiming something different. That is, the surrendered material concerns holes not overlapping when the device is folded, holes that are on opposing sides of the folding line. Claim 35 concerns holes not overlapping, but the holes in claim 35 are on the same side as the folding line, the third and fourth plurality of holes that are part of the first plurality that are at the first boundary. Thus, while both involve overlapping, they are not claiming the same thing, therefore claim 35 does not include the surrender generating limitation.
For at least the reasons above, claims 21-26 and 28-39 attempt to impermissibly recapture surrendered subject matter. Therefore, all of claims 21-26 and 28-39 are rejected under section 251 for impermissible recapture.
Original Patent
Claims 21-26 and 28-39 are also rejected under 35 U.S.C. 251 for not claiming subject matter directed to the invention disclosed in the original patent. Section 1412.01 of the MPEP explains that “[t]he reissue claims must be for the same invention as that disclosed as being the invention of the original patent.” This section of the MPEP further provides guidelines for determining whether the reissue claims are “for the invention disclosed in the original patent” as:
the claims presented in the reissue application are described in the original patent specification and enabled by the original patent specification such that 35 U.S.C. 112, first paragraph is satisfied;
nothing in the original patent specification indicates an intent not to claim the subject matter of the claims presented in the reissue application; and
the newly claimed invention is clearly and unequivocally disclosed in the specification as a separate invention with the claimed combination of features.
“The presence of some disclosure in the original patent should evidence that applicant intended to claim or that applicant considered the material now claimed to be his or her invention.” Id. That being said, the MPEP makes clear that “[t]he ‘original patent’ standard and the written description requirement are not the same … [w]here the written description requirement is based on what the skilled artisan would have understood was within the possession of the inventor, … Federal Circuit case law indicates that the original patent requirement under § 251 requires something more.” MPEP § 1412.01, subsection I.
The Federal Circuit addressed the “original patent” requirement of 35 U.S.C. 251 in Antares Pharma, Inc. v. Medac Pharma Inc. and Medac GMBH, 771 F.3d 1354, 112 U.S.P.Q.2d 1865 (Fed. Cir. 2014). Discussing “same invention,” the Federal Circuit adopted the Supreme Court's explanation from U.S.S. Industrial Chemicals, Inc. v. Carbide & Carbon Chemicals Corp.4 that “a reissue claim is for the ‘same invention’ if the original patent specification fully describes the claimed inventions, but not if the broader claims ‘are [] merely suggested or indicated in the original specification.’ [U.S.S. Industrial Chemicals, 315 U.S.] at 676. ‘[I]t is not enough that an invention might have been claimed in the original patent because it was suggested or indicated in the specification.’ Id.” Antares at 1359; see also id. at 1362. The Federal Circuit further stated that although wording in section 251 was changed from “same invention” to “original patent” no change in substance was intended. Id. at 1360.
As explained above, the current scope of at least independent claims 21, 32, and 33, while having been narrowed to require the holes to be in a “zig zag” pattern, do not specify whether or not the holes in a “zig zag” pattern overlap or not. In other words, the scope of claims 21, 32, and 33 cover holes in a “zig zag” pattern that both overlap and do not overlap. However, the specification of the ‘823 patent never describes holes in a “zig zag” pattern that overlap. See e.g., ‘823 Pat. 6:20-28, 7:23-28. Thus, since the ‘823 patent nowhere describes “zig zag” patterned holes that overlap, the current scope of at least independent claims 21, 32, and 33 cover an invention that was not originally disclosed. As a result, and because none of dependent claims 22-26, 28-31, and 34-39 require the “zig zag” patterned holes to not overlap, claims 21-26 and 28-39 are rejected under section 251 for not claiming subject matter directed to the invention disclosed in the original patent.
Amendments in Reissue Applications
Amendments made during examination of a reissue application are different than amendments made during examination of a standard utility application. See 37 CFR § 1.173; see also MPEP § 1453.
A few notable, but by no means the only, differences are:
Throughout examination of a reissue application, amendments are always with respect to the original patent regardless of any amendments that have already been filed. See 37 CFR § 1.173(g).
Deleted limitations must be shown in single brackets while newly added limitations and the entirety of newly added claims are underlined, including number and status identifier. See 37 CFR § 1.173(d).
Changes to the specification must mention where in the issued patent (i.e., column and lines numbers) the changes are to be made and the entirety of an amended paragraph must be presented, unless canceling the paragraph. See 37 CFR § 1.173(b)(1)(i); see also MPEP § 1453, subsection V.A., Example (1).
Status identifiers, after the first amendment, must indicate how many times an original patent claim has been amended during examination of the reissue application (e.g., “Twice Amended”, etc.). See 37 CFR § 1.173(b)(2).
When claims are amended, “there must also be supplied, on pages separate from the pages containing the changes, the status (i.e., pending or canceled), as of the date of the amendment, of all patent claims and of all added claims, and an explanation of the support in the disclosure of the patent for the changes made to the claims.” 37 CFR § 1.173(c).
Applicant Obligations
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceed-ing in which Patent No. 10,665,823 is or was involved. These proceedings would include interferences, reissues, reexaminations, post-grant proceedings before the Patent Trial and Appeal Board, and litigation.
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is mate-rial to patentability of the claims under consideration in this reissue appli-cation.
These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSHUA KADING whose telephone number is (571)270-3413. The examiner can normally be reached Monday-Friday, 8:00 AM to 5:00 PM Eastern Time.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eileen Lillis can be reached at 571-272-6928. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSHUA KADING/ Reexamination Specialist, Art Unit 3993
Conferees:
/Laura Davison/ Reexamination Specialist, Art Unit 3993
/EILEEN D LILLIS/SPRS, Art Unit 3993
1 See In re McDonald, 43 F.4th 1340, 1345, 2022 USPQ2d 745 (Fed. Cir. 2022); Greenliant Systems, Inc. et al v. Xicor LLC, 692 F.3d 1261, 103 USPQ2d 1951 (Fed. Cir. 2012); In re Shahram Mostafazadeh and Joseph O. Smith, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011); North American Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 75 USPQ2d 1545 (Fed. Cir. 2005); Pannu v. Storz Instruments Inc., 258 F.3d 1366, 59 USPQ2d 1597 (Fed. Cir. 2001); Hester Industries, Inc. v. Stein, Inc., 142 F.3d 1472, 46 USPQ2d 1641 (Fed. Cir. 1998); In re Clement, 131 F.3d 1464, 45 USPQ2d 1161 (Fed. Cir. 1997); Ball Corp. v. United States, 729 F.2d 1429, 1436, 221 USPQ 289, 295 (Fed. Cir. 1984).
2 131 F.3d 1464, 45 U.S.P.Q. 2d 1161 (Fed. Cir. 1997).
3 415 F.3d 1335, 75 U.S.P.Q. 2d 1545 (Fed. Cir. 2005).
4 315 U.S. 668 (1942).
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