DETAILED ACTION
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 .
This Office Action is made in response to applicant’s amendment filed on 09/26/2025. Claims 1, 3, 4 and 6-20 are currently pending in this application. Claims 8-18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected species as indicated by the applicant in the RESPONSE TO ELECTION REQUIREMENT, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 06/26/2025. Claims 1, 3, 4, 6, 7, 19 and 20 are considered.
Response to Arguments
The objections of claims 4-5 in the previous Office action dated 07/11/2025 have been withdrawn in light of the amendment to claims.
The rejection of claim 19 under 35 U.S.C. 101 in the previous Office action has been withdrawn in light of the amendment to claim.
In response to the rejection of claim 3 under 35 U.S.C. 112(a) in the previous Office action, Applicant has amended claim 3 and provided arguments on pages 9-10 of the amendment, which have been fully considered but they are not persuasive because as follows:
(i) Regarding to the argument on pages 9-10 of the amendment “In response to …satisfying the requirement of clarity,” Examiner respectfully disagrees because the claim itself and the original disclosure of this application does not explicitly provide adequate information regarding to how the motion instruction, which is non-physical coding data and does not have any physical structure such as a processor or a physical circuitry, itself is capable of performing any function/operation. Note that the claim itself does not recite the processor to perform the recited function(s), but instead requires the non-physical instruction performing the recited function(s). Further, note that, in order to satisfy its burden under the written description requirement, a patent application must disclose the full scope of the claim. Univ. of Rochester v. G.D. Searle & Co., 358 F.3d 916, 920 (Fed. Cir. 2004) (The purpose of the written description requirement is to “ensure that the scope of the right to exclude, as set forth in the claims, does not overreach the scope of the inventor’s contribution to the field of art as described in the patent specification.”.)
(ii) Regarding to the argument on page 10 of the amendment “Nevertheless … will not be repeated,” Examiner respectfully disagrees and, in order to best respond, directs the Applicant to the below detail rejection with respect to the newly added limitations.
In response to the rejection of claim 6 under 35 U.S.C. 112(a) in the previous Office action, Applicant has amended claim 6 and provided the interpretation of the newly amended claim 6 on page 10 of the amendment. However, see the new rejection of the newly amended claim 6 made below.
The rejection of claim 20 under 35 U.S.C. 112(a) in the previous Office action has been withdrawn in light of the amendment to claim. However, see the new rejection of the newly amended claim 20 made below.
The rejections under 35 U.S.C. 102 in the previous Office action have been withdrawn in light of the amendment to claims.
Claim Interpretation under 35 USC § 112(f)
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step for”) in a claim with functional language creates a rebuttable presumption that the claim element is to be treated in accordance with 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph). The presumption that 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph) is invoked is rebutted when the function is recited with sufficient structure, material, or acts within the claim itself to entirely perform the recited function.
Absence of the word “means” (or “step for”) in a claim creates a rebuttable presumption that the claim element is not to be treated in accordance with 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph). The presumption that 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph) is not invoked is rebutted when the claim element recites function but fails to recite sufficiently definite structure, material or acts to perform that function.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation is “a motion state control module” of at least claims 1, 3, 19 and 20.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
A review of the specification did not reveal any corresponding structure of “a motion state control module” that perform the claimed functions. The original disclosure, specifically the specification, simply recites the aforementioned “module” in a same way as the claims do.
If applicant wishes to provide an explanation of the corresponding structure, applicant must identify the corresponding structure with reference to the specification by page and line number, and to the drawing, if any, by reference characters in response to this Office action.
If applicant does not intend to have the claim limitation(s) treated under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph, applicant may amend the claim(s) so that it/they will clearly not invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, or present a sufficient showing that the claim recites/recite sufficient structure, material, or acts for performing the claimed function to preclude application of 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
For more information, see MPEP § 2173 et seq. and Supplementary Examination Guidelines for Determining Compliance With 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications, 76 FR 7162, 7167 (Feb. 9, 2011).
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
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.
Claims 1, 3, 4, 6, 7, 19 and 20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 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 pre-AIA the applicant regards as the invention.
As per claims 1, 3, 4, 6, 7, 19 and 20, Applicant’s claims have been interpreted as invoking 35 USC 112 6th paragraph as per above discussion under section 35 USC 112(f). These claims are indefinite under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, because the disclosure does not clearly specify the necessary corresponding structure of “a motion state control module” that perform the claimed functions of these claims.
The following is a quotation 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 35 U.S.C. 112 (pre-AIA ), first paragraph:
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 1, 3, 4, 6, 7, 19 and 20 are rejected under 35 U.S.C. 112(a) or 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Note that, in order to satisfy its burden under the written description requirement, a patent application must disclose the full scope of the claim. Univ. of Rochester v. G.D. Searle & Co., 358 F.3d 916, 920 (Fed. Cir. 2004) (The purpose of the written description requirement is to “ensure that the scope of the right to exclude, as set forth in the claims, does not overreach the scope of the inventor’s contribution to the field of art as described in the patent specification.”.)
As per claim 1, this claim recites a limitation, “wherein the electronic device comprises a motion state control module” in line 6, 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(s), at the time the application was filed, had possession of the claimed invention. The original disclosure, specifically Fig. 19 and ¶ 138 of the corresponding publication US 2024/0077962 A1, discloses a control apparatus 1900 comprising a motion state control module 1920 and being different and separate from the electronic device 100, but does not explicitly disclose the electronic device 100 comprising a motion state control module 1920, as required by the above underlined limitation, in such a way as 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. Also, see the above bolded note.
In addition, claim 1 further recites a limitation, “wherein the motion attribute control instruction is configured to instruct the motion state control module to control a motion attribute of the retractable screen in the motion” in lines 12-14, 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(s), at the time the application was filed, had possession of the claimed invention. The original disclosure does not explicitly disclose in detail “the motion attribute control instruction configured to instruct the motion state control module” and specifically the above underlined limitation. Furthermore, the original disclosure does not explicitly discuss in detail how the motion attribute control instruction, which is non-physical coding data, is capable of instructing the motion state control module, in such a way as 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. Also, see the above bolded note.
In addition, claim 1 further recites a limitation, “wherein the uniform-speed motion instruction is configured to instruct the motion state control module to control the retractable screen in the motion to move at a uniform speed at a current speed” in last 3 lines, 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(s), at the time the application was filed, had possession of the claimed invention. The original disclosure does not explicitly disclose in detail “the uniform-speed motion instruction configured to instruct the motion state control module” and specifically the above underlined limitation. Furthermore, the original disclosure does not explicitly discuss in detail how the uniform-speed motion instruction, which is non-physical coding data, is capable of instructing the motion state control module, in such a way as 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. Also, see the above bolded note.
As per claims 3, 4, 6 and 7, these claims are therefore rejected for at least the reason set forth in claim 1 above.
In addition to claims 3, 4, 6 and 7, these claims further recite a limitation, “wherein the motion instruction is configured to instruct the motion state control module to control the retractable screen to perform a motion at a preset initial speed” in lines 4-5 of claim 3, 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(s), at the time the application was filed, had possession of the claimed invention. The original disclosure does not explicitly disclose in detail “the motion instruction configured to instruct the motion state control module” and specifically the above underlined limitation. Furthermore, the original disclosure does not explicitly discuss in detail how the motion instruction, which is non-physical coding data, is capable of instructing the motion state control module, in such a way as 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. Also, see the above bolded note.
In addition to claims 3, 4, 6 and 7, these claims further recite a limitation, “wherein the stop instruction is configured to instruct the motion state control module to control the retractable screen in the motion to stop the motion” in lines 8-9 of claim 3, 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(s), at the time the application was filed, had possession of the claimed invention. The original disclosure does not explicitly disclose in detail “the stop instruction configured to instruct the motion state control module” and specifically the above underlined limitation. Furthermore, the original disclosure does not explicitly discuss in detail how the stop instruction, which is non-physical coding data, is capable of instructing the motion state control module, in such a way as 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. Also, see the above bolded note.
In addition to claims 6-7, these claims further recite limitations, “the touch apparatus is disposed on at least one of a side of the first housing and a side of the second housing away from the retractable screen, or disposed on at least one of a side edge of the first housing and a side edge of the second housing” in claim 6. The above underlined limitations can be construed to include at least features, (i) “the touch apparatus is disposed on both a side of the first housing and a side of the second housing away from the retractable screen” or (ii) “the touch apparatus is disposed on both a side edge of the first housing and a side edge of the second housing,” 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(s), at the time the application was filed, had possession of the claimed invention. Furthermore, there is no drawing to show “the touch apparatus disposed on both a side of the first housing and a side of the second housing away from the retractable screen” and “the touch apparatus disposed on both a side edge of the first housing and a side edge of the second housing away from the retractable screen,”) of the above underlined limitations, in such a way as 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. Also, see the above bolded note.
As per claims 19-20, see the rejection of claim 1 for similar limitations.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jimmy H Nguyen whose telephone number is (571) 272-7675. The examiner can normally be reached on Monday-Friday 8:30AM-6PM.
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, Temesghen Ghebretinsae, can be reached at (571) 272-3017. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Jimmy H Nguyen/
Primary Examiner, Art Unit 2626
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