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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 March 20, 2026 has been entered.
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 .
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. 14/919,173, filed on October 21, 2015.
Reissue Applications
For reissue applications filed before September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the law and rules in effect on September 15, 2012. Where specifically designated, these are “pre-AIA ” provisions.
For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions.
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which Patent No. 10,798,832 is or was involved. These proceedings would include any trial before the Patent Trial and Appeal Board, interferences, reissues, reexaminations, supplemental examinations, 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 material to patentability of the claims under consideration in this reissue application.
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.
The reissue oath/declaration filed with this application is defective because the error which is relied upon to support the reissue application is not an error upon which a reissue can be based. See 37 CFR 1.175and MPEP § 1414.
The error statement in the latest declaration (1/13/2023) states that, “a heat dissipation plate disposed inside a space formed by the display panel, the middle frame and the case” is unduly narrow and need not be claimed for patentability.
During the original prosecution of application 16/777,002 the claims were rejected. In response, applicant amended claim 1 by adding:
“a middle frame configured to support the display panel;
a case configured to form a rear exterior of the display apparatus; and
a heat dissipation plate disposed inside a space formed by the display panel, the middle frame and a case”.
The remarks filed with the amendment stated, Contrary to Park, features currently claimed in claim 1 recite, “a heat dissipation plate disposed inside a space formed by the display panel, the middle frame and the case” and “a case configured to form a rear exterior of the display apparatus. “Neither the heat-dissipation plate 140 nor the bottom plate 151 of Park teach or suggest these features currently in claim 1.
As such the language that patent owner states is not required for patentability was both added to overcome a rejection and argued to be lacking in the prior art. Either of which is sufficient for recapture of surrendered subject matter (see below). As the subject matter the patent owner states can be removed without affecting patentability cannot be removed without improperly recapturing surrendered subject matter, the error statement is not seen as a proper error statement. A new declaration with a suitable error statement is required.
Claims 1-20 are rejected as being based upon a defective reissue declaration under 35 U.S.C. 251 as set forth above. See 37 CFR 1.175.
The nature of the defect(s) in the declaration is set forth in the discussion above in this Office action.
Claim 20 are rejected under 35 U.S.C. 251 as being an improper recapture of broadened claimed subject matter surrendered in the application for the patent upon which the present reissue is based. See 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). A broadening aspect is present in the reissue which was not present in the application for patent. The record of the application for the patent shows that the broadening aspect (in the reissue) relates to claimed subject matter that applicant previously surrendered during the prosecution of the application. 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 claim subject matter surrendered in the application for the patent cannot be recaptured by the filing of the present reissue application.
MPEP 1412.02 establishes a three-step test for recapture. The three-step process is as follows:
(1) first, we determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims;
(2) next, we determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and
(3) finally, we 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.
Claim 20 is broader than claims 1-19. Claim 1 (as amended) does not require the heat dissipation plate to be disposed inside a space formed by the display panel, the middle frame and the case.
Therefore step 1 of the three-step test is met for claim 20.
The step of determining whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution includes two sub-steps. The first sub-step is to determine whether the applicant surrendered any subject matter in the prosecution of the original application. MPEP 1412.02 defines surrendered subject matter as a claim limitation that was originally relied upon by applicant in the original prosecution to make the claims allowable over the art.
MPEP 1412.02(I)(B)(1)(A) states “[w]ith respect to whether applicant surrendered any subject matter, it is to be noted that a patent owner (reissue applicant) is bound by the argument that applicant relied upon to overcome an art rejection in the original application for the patent to be reissued, regardless of whether the Office adopted the argument in allowing the claims. Greenliant Systems, Inc. v. Xicor LLC, 692 F.3d 1261, 1271, 103 USPQ2d 1951, 1958 (Fed. Cir. 2012). As pointed out by the court, ‘[i]t does not matter whether the examiner or the Board adopted a certain argument for allowance; the sole question is whether the argument was made.’ Id.”
As stated above, during the original prosecution of application 16/777,002 the claims were rejected. In response, applicant amended claim 1 by adding:
“a middle frame configured to support the display panel;
a case configured to form a rear exterior of the display apparatus; and
a heat dissipation plate disposed inside a space formed by the display panel, the middle frame and a case”.
The remarks filed with the amendment stated, Contrary to Park, features currently claimed in claim 1 recite, “a heat dissipation plate disposed inside a space formed by the display panel, the middle frame and the case” and “a case configured to form a rear exterior of the display apparatus. “Neither the heat-dissipation plate 140 nor the bottom plate 151 of Park teach or suggest these features currently in claim 1.
Similar changes were made to claim 12 and similar arguments in regard to claim 12 were presented.
Therefore, the Patent Owner amended claims 1-19 to add the limitation of the heat dissipation plate inside a space formed by the middle frame, the display panel and the case. Therefore, the newly presented claims must include the limitations of the heat dissipation plate inside a space formed by the middle frame, the display panel and the case. Claims 1-20 as presented in the June 6, 2022 preliminary amendment fail to disclose the frame forming part of the boundary for containing the heat dissipation plate, which was added to the claims to make them allowable.
Therefore, the display without such a boundary are limitations which are considered surrendered subject matter.
The second sub-step is to determine whether any of the broadening of the reissue claims is in the area of the surrendered subject matter. The 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.
Claim 20 is being broadened to omit the surrendered subject matter.
Therefore step 2 of the three-part test is met.
MPEP 1412.02(I)(B)(1)(B) states “[w]ith respect to the “second step” in the recapture analysis, it is to be noted that if the reissue claim(s), are broadened with respect to the previously surrendered subject matter, then recapture will be present regardless of other unrelated narrowing limitations. In the decision of In re Mostafazadeh, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011), the Federal Circuit stated:
[T]he recapture rule is violated when a limitation added during prosecution is eliminated entirely, even if other narrowing limitations are added to the claim. If the added limitation is modified but not eliminated, the claims must be materially narrowed relative to the surrendered subject matter such that the surrendered subject matter is not entirely or substantially recaptured. Id. at 1361.”
No new limitation materially narrows the surrender generating limitation, so the third step is not sufficient to overcome recapture. The middle frame was always claimed between the display panel and the case. The remarks submitted with the March 20, 2026 amendment seem to indicate that the current claim 20 is directed to the embodiment of figure 10 not the embodiment shown in figure 2, which the original patent claims were directed to. The discussion of figure 10 in the specification does not discuss a frame. Beginning on line 26 of column 8, the specification states, “A heat dissipating sheet 12A may be installed on the rear surface of the display panel 11A to quickly disperse and dissipate heat generated from the display panel 11A.” While this would be between the display panel and the case, claim 20 also claims “wherein the heat dissipation plate comprises a plurality of layers that include: a first metallic layer, a plastic layer disposed behind the first metallic layer, and a second metallic layer disposed behind the plastic layer.” Bottom chassis 40A may also be disposed between the rear surface of the display panel 11A and the case 2A. The chassis may include a plastic core 42A interposed between planar materials 43A, which may be metal. The heat dissipation plate 12A is not disclosed to have these claimed layers. Is the chassis 40A the claimed frame? If so the heat dissipation layer lacks the claimed layers. As such current claim 20 is seen as claiming the embodiment of figure 2, merely eliminating the surrender generating limitation of the heat dissipation layer being in a space formed by the display panel, the middle frame and the case. Because of this Claim 20 is still seen to improperly recapture surrendered subject matter.
Therefore, claim 20 improperly recaptures surrendered subject matter.
Claim 20 is rejected under 35 U.S.C. 251 as being an improper recapture of broadened claimed subject matter surrendered in the application for the patent upon which the present reissue is based.
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.
Claims 1-4,7-10 and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of U.S. Patent No. 10,349,534. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of the ‘534 patent claims a display apparatus with a case and a bottom chassis forming a rear side of the display panel inside the case. The bottom chassis is claimed to be formed from a stacked panel with a plastic core and a film on both sides of the plastic. Claim 4 claims that the material on the sides of the plastic includes aluminum, steel or a metal. While it is not claimed that this forms a heat dissipation plate, the claimed structure of current claim 1 and claim 4 of the prior patent claim the same structure and one on ordinary skill in the art at the time of applicant’s invention would have recognized that the metal on opposite surfaces of the plastic would promote heat dissipation due to metal’s high heat transfer coefficient. The ‘534 patent further claims adhesive on opposite sides of the plastic to fasten the metal and specific plastics
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 10,582,624. Although the claims at issue are not identical, they are not patentably distinct from each other because both claim a display apparatus comprising a display panel, a back panel behind the display panel and a plurality of layers behind the back panel including a plastic layer with a metal layer disposed on opposite surfaces thereof. The current claims are broader in scope than the earlier claims and would dominate them if allowed. Without a terminal disclaimer to prevent the licensing of the patents to different parties, a license could be granted to the ‘624 patent which could not be performed without infringing the ‘832 patent. The current dependent claims and the dependent of the ‘624 patent claim the same features, the relative size of the back panel, the specific metals or plastics used and the planar or curved shape. Claim 12 of both patents claim the OLED panel.
Response to Arguments
Applicant's arguments filed March 20, 2026 have been fully considered but they are not persuasive. In regard to the recapture, PO states that the “The present application includes various embodiments with respect to arrangement of the heat dissipation plate.” This argument is not persuasive. Claim 20 is identical to claim 1 (which has been amended closer to its patented form which has overcome the recapture pertaining to claim 1) with the exception of the frame forming one of the boundaries for the heat dissipation plate. As there is no structure claimed in claim 20 that is different from claim 1, the claim is not seen as a different embodiment, but merely a broader recitation of the embodiment of claim 1 (which was amended to define the heat dissipation plate between the display panel, the middle frame and the case to make the claim allowable). As noted in the rejection the layered heat dissipate which is claimed in claim 20, is not found in the embodiment of figure 10 in combination with a frame. The bottom chassis is disclosed to possess the claimed layers, but the heat dissipation sheet is not disclosed to have the claimed layers. If the bottom chassis is being taken as the heat dissipation layer, the embodiment lacks the claimed frame.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM C DOERRLER whose telephone number is (571)272-4807. The examiner can normally be reached M-F, 7-5.
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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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/WILLIAM C DOERRLER/Reexamination Specialist, Art Unit 3993
Conferees: /WILLIAM E DONDERO/ Reexamination Specialist, Art Unit 3993
/EILEEN D LILLIS/SPRS, Art Unit 3993
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