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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 19 March 2026 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—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 or joint inventor of carrying out the invention.
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.
Claims 18, 22, 23, 26, and 29 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for OCR having the requisite storage modulus under certain conditions, does not reasonably provide enablement for OCR having the requisite storage modulus under any condition (the current scope when “a storage modulus” is recited). The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make the invention commensurate in scope with these claims.
There are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is "undue." These factors include, but are not limited to:
(A) The breadth of the claims;
(B) The nature of the invention;
(C) The state of the prior art;
(D) The level of one of ordinary skill;
(E) The level of predictability in the art;
(F) The amount of direction provided by the inventor;
(G) The existence of working examples; and
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988) (reversing the PTO's determination that claims directed to methods for detection of hepatitis B surface antigens did not satisfy the enablement requirement). In Wands, the court noted that there was no disagreement as to the facts, but merely a disagreement as to the interpretation of the data and the conclusion to be made from the facts. In re Wands, 858 F.2d at 736-40, 8 USPQ2d at 1403-07. The Court held that the specification was enabling with respect to the claims at issue and found that "there was considerable direction and guidance" in the specification; there was "a high level of skill in the art at the time the application was filed;" and "all of the methods needed to practice the invention were well known." 858 F.2d at 740, 8 USPQ2d at 1406. After considering all the factors related to the enablement issue, the court concluded that "it would not require undue experimentation to obtain antibodies needed to practice the claimed invention." Id., 8 USPQ2d at 1407.
The factors described above have been considered as follows:
(A) The breadth of the claims, (B) The nature of the invention, (C) The state of the prior art, and (E) The level of predictability in the art.
As shown in the previously cited reference Baby and the presently cited U.S. 2022/0411665 A1 (“Beyler”), storage modulus is dependent on measurement conditions, including, inter alia, temperature and frequency. (See Baby ¶¶ 0006-0007 and 0055 and Beyler Table III). In Applicant’s properly executed declaration, Applicant is also aware of the measurement condition-dependency aspect of storage modulus. (See Item 8 of the 1.132 Declaration filed on 19 March 2026, “1.132 Dec.”).
(F) The amount of direction provided by the inventor. And (G) The existence of working examples.
Applicant expressly stated in the 1.132 Dec. that ´actual storage modulus of the adhesive buffer layer” is measured according to a very specific set of parameters. (1.132 Dec. Item 7). There is no indication that other testing conditions (e.g. different temperature and/or frequency) are used. It can only be concluded that testing was carried out under a very specific set of conditions.
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
Due to the measurement condition-dependency aspect of storage modulus to which Applicant has averred on the record, due to this phenomenon being generally well-known, due to the lack of any other testing conditions used, and due to breadth of the claim as a result of using “a” (an unrestricted article) that effectively spans the property measured to that measured under any condition, it is the Examiner’s position that undue experimentation is required to determine how to make the article recited in claim 18 for the entirety of scope for which Applicant seeks.
Accordingly, even though the statute does not use the term “undue experimentation,” it has been interpreted to require that the claimed invention be enabled so that any person skilled in the art can make and use the invention without undue experimentation. In re Wands, 858 F.2d at 737, 8 USPQ2d at 1404 (Fed. Cir. 1988). See also United States v. Telectronics, Inc., 857 F.2d 778, 785, 8 USPQ2d 1217, 1223 (Fed. Cir. 1988) (“The test of enablement is whether one reasonably skilled in the art could make or use the invention from the disclosures in the patent coupled with information known in the art without undue experimentation.”). It is therefore concluded that the scope of the claims is not enabled by Applicant’s disclosure.
As claims 22, 23, 26, and 29 depend on claim 18, and as the respective limitations of the dependent claims do not resolve the aforementioned issue in claim 18, the dependent claims are also held to be rejected.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 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.
Claims 18, 22, 23, and 29 are rejected under 35 U.S.C. 103 as unpatentable over U.S. 2020/0310494 A1 (“Ahn”) in view of WO 2021/159837 A1 (referenced below using its English-language counterpart publication U.S. 2023/0341904 A1, “Liang”), U.S. 2020/0152096 A1 (“Jia”), and either Beyler or U.S. 2017/0174956 A1 (“Ramon-Gimenez”).
Considering claims 18, 20, 21, 24, and 27, in various embodiments, Ahn discloses a display device having a first window 4030, a second adhesive 4040, and a second window 4050, wherein the first window 4030 can be (and is in specific examples) an ultra-thin glass (UTG). (Ahn ¶¶ 0108-0130, 0234-0252; and Fig. 13B, reproduced infra). In particular examples, Ahn discloses that its first window 4030 is UTG and that its second 4050 window is made of polyimide. (Id. ¶ 0191). Ahn further discloses that its second window 4050 serves to protect the underlying first window. (Id. ¶ 0116). Ahn is analogous art, for it is directed to the same field of endeavor as that of the instant application (protective cover plate for display device).
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In the configurations of Fig. 13B of the reference, Ahn discloses that the second adhesive, which is in the form of an optically clear resin (OCR), covers both an entire upper surface and side surfaces of the first window, as to enclose all but the bottom surface of the first window. (Id. ¶¶ 0119 and 0234-0252; and Figs. 13B). Such a configuration has the same structural relationship as shown in Fig. 2 of the Instant Application. As such, layer 4030, 4040, and 4050 respectively map onto the glass substrate, the OCR layer, and the TPI layer.
As broadly shown throughout the reference, the first window 4030 has a reduced thickness central portion corresponding to a folding region of the display device and two abutting normal thickness portions abutting respective ends of the reduced thickness portion. (Id. Figs. 8-11 and 15).
Ahn differs from the claimed invention, as it is silent re: 1) thicknesses of its first and second windows, 2) different degree of curing for respective portions of the polyimide material located in different regions of the display device, and 3) storage modulus of the OCR layer.
Re: deficiency 1), in the art of transparent display covers, Liang teaches a protective screen cover having a main layer 153 covered by two protective layers 151 and 152, wherein the main layer 153 can be either a UTG having thickness of 30 to 100 µm or a clear polyimide having thickness of 20 to 80 µm. (Liang ¶¶ 0049-0050). Furthermore, either of the protective layers can be polyimide having thickness of 20 to 80 µm, including thickness from 20 to 50 µm. (Id. ¶¶ 0051 and 0052). As such, it is readily apparent that the functions of the second window 4050 of Ahn, which protects the underlying layers is substantially similar to either of the polyimide protective layers in Liang. Given the substantial similarities between the references (including the usage of a lower window made of UTG and an upper protective layer made of polyimide), person of ordinary skill in the art has reasonable expectation of success that teachings re: thickness of the respective layers (lower UTG and upper polyimide) can be applied to layers of similar configurations in Ahn. It would have been obvious, to a person of ordinary skill at the time of the claimed invention, to have utilized a UTG having thickness of 30 to 100 µm for first window 4030 and clear polyimide having thickness of 20 to 50 µm for the second window 4050, as Liang shows that usage of such materials is known in the art of protective transparent coverings. This rationale for supporting a finding of obviousness, where one reference demonstrates that a particular material is suitable for a particular intended use, is considered appropriate under the guidelines set forth in MPEP 2144.07. Furthermore, as Ahn does not otherwise specify respective thicknesses of the window layers, and as Liang shows that the selection of the thickness is suitable for conferring sufficient protection, it would have been obvious, to a person of ordinary skill at the time of the claimed invention, to have selected these ranges as they are considered suitable for the purpose of the windows in Ahn.
For the configuration shown in Fig. 13B of Ahn, it is readily apparent that the first window in the central folding region has a thickness less than that of each of the abutting normal thickness portions. From the general teachings of 30 to 100 µm for ultra-thin glass used (from Liang), it would have been straightforward to select a higher value (e.g. 80 to 100 µm) for the normal thickness portions and a lower value (e.g. 30 to 70 µm) for the reduced thickness folding region. It would have been obvious to one of ordinary skill in the art to have selected the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness. (See In re Wertheim, 191 USPQ 90, In re Woodruff, 16 USPQ2d 1934, and In re Peterson, 65 USPQ2d 1379; MPEP § 2144.05).
Re: deficiency 2), in the art of protection films used for foldable displays, it is known to use a polyimide film having regions of respective different degree of curing, wherein a region intended to be located in a folding region of the display is cured to a less extent (either in curing time and/or areas exposed to radiation effecting curing) as compared to regions located in the abutting non-folding regions. (Jia ¶¶ 0041, 0045, 0048-0050, and 0067-0073; and Figs. 2, 3, and 5). Jia is analogous art, for it is directed to the same field of endeavor as that of the instant application (foldable displays). Jia expressly teaches that due to the reduced level of curing, the resulting protection film in the folding region has greater flexibility but reduced strength as compared to each of the abutting non-folding regions of the protection film, which exhibit higher hardness and strength. (Id. ¶ 0050 and 0056). As such, it is readily apparent that Jia teaches both the claimed relative extent of curing and the resulting difference in strength. It would have been obvious, to a person of ordinary skill at the time of the claimed invention, to have applied differential curing to the polyimide first window film of Ahn, for the benefits taught in Jia.
Although hardness levels are not disclosed, given the sufficiently similar layer configurations, sufficiently similar materials used for each layer, and the general desirability for a high hardness material as taught in Jia for polyimide in non-folding regions, the claimed hardness value either naturally flows from the references or is alternatively obvious at least for the non-folding region.
Re: deficiency 3), Beyler and Ramon-Gimenez teach respective liquid optically clear adhesive (viz. an OCR) having storage modulus in the claimed range. (Beyler Table 3 and Ramon-Gimenez Table 7). It would have been obvious, to a person of ordinary skill at the time of the claimed invention, to have used the liquid optically transparent adhesive taught in either reference for the mechanical benefits conferred, with the adhesive of the former exhibiting superior optical properties and the adhesive of the latter exhibiting sufficient adhesion after repeated bending. (Beyler ¶ 0391 and Ramon-Gimenez ¶¶ 0172 and 0206).
Ahn in view of Liang, Jia, and either Beyler or Ramon-Gimenez renders obvious claims 18.
Furthermore, as claim 18 does not require the flat portion and the folding portion of the glass substrate to have different respective thicknesses, the configuration of Fig. 12B of Ahn (which has a thin glass window layer 4030 having constant thickness) in combination with Liang, Jia, and either Beyler or Ramon-Gimenez also reads on claims 18.
Considering claims 22, 23, and 29, Ahn discloses that various other layers may be located on the second window 4050, including shatterproof coating 4060, hard coating 6010, and an anti-fingerprint coating. (Ahn ¶¶ 0240-0245).
Claim 26 is rejected under 35 U.S.C. 103 as unpatentable over Ahn in view of WO 2021/159837 A1 (referenced below using its English-language counterpart publication U.S. 2023/0341904 A1, “Liang”), Jia, and either Beyler or Ramon-Gimenez, as applied to claim 18 above, and further in view of U.S. 2017/0152348 A1 (“Fang”).
Considering claim 26, none of the references cited above uses a polyimide having the requisite cut-off wavelength. However, usage of such a polyimide film is known in the art of optical displays. (Fang ¶¶ 0028 and 0029). It would have been obvious, to a person of ordinary skill at the time of the claimed invention, to have used the polyimide taught in Fang for the high optical transmission and neutral color exhibited by the polyimide. (Id. ¶ 0029).
Double Patenting Rejection
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 18, 22, 23, 26, and 29 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 9, and 10 of U.S. 12,520,443 (issued from Application 18/107,413) in view of Jia. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘443 Patent otherwise recite all features in claims 18, 22, 23, 26, and 29 except that re: different degree of curing. However, as discussed above, these features are obvious in view of Jia.
Claims 18, 20, 22-24, 26, 27, and 29 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-31 of Application 18/492,466 in view of Jia. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘466 Application otherwise recite all features in claims 18, 20, 22-24, 26, 27, and 29 except that re: different degree of curing. However, as discussed above, these features are obvious in view of Jia.
Responses to Arguments and Declaration under Rule 1.132
Applicant’s argument against the 35 U.S.C. 112(b) rejection of claim 26 is persuasive, and this rejection has been withdrawn.
In view of amendments to the claims, the objection of claim 26 has been withdrawn.
In view of amendments to the claims, the previously instated prior art rejections have been withdrawn. New rejections are instated above, with the reference Beylor or Ramon-Gimenez addressing the claimed storage modulus value.
As for the applicability of the 1.132 Dec., it is noted that the points Applicant made is simply not commensurate with the scope of the pending claims, nowhere in the claims does Applicant recite the specific conditions used to determine the storage modulus of the claimed OCR material. Absent such specific conditions, the prior art still reads on the limitation of “a” storage modulus.
It is noted that should Applicant wish to recite these parameters in a subsequent response, Applicant may potentially run afoul of the written description requirement.
Concluding Remarks
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Zheren Jim Yang whose telephone number is (571)272-6604. The examiner can normally be reached M-F 10:30 - 7:30 ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Frank Vineis can be reached on (571)270-1547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Z. Jim Yang/Primary Examiner, Art Unit 1781
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