DETAILED ACTION
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 26, 28, 31, 32, 46, 47, and 49 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 10,658,624 and claims 51-53 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 20 of U.S. Patent No. 12,022,688. Although the claims at issue are not identical, they are not patentably distinct from each other for the reasoning stated below.
Instant claims
‘624 claims
reasoning
26
1
Claim 1 has all the limitations of claim 26 except for the limitation of the heat spreading device “distributing at least a portion of the heat to at least a portion of the OLED”. However, claim 1 does state that the heat spreading device is “immediately adjacent to the OLED”, which heavily implies that heat is distributed to at least a portion of the OLED.
28
1
anticipated
31
1
anticipated
32
1
Obvious. if it’s immediately adjacent, then it’s most likely directly contacting.
46
1
Same reasoning as claim 26 above
47
1
anticipated
49
1
anticipated
Instant claims
‘688 claims
reasoning
51
20
anticipated
52
20
anticipated
53
20
anticipated
Allowable Subject Matter
Claims 26-36 and 46-54 are subject to a double patenting (DP) rejection, but would be allowable if the outstanding DP rejection is overcome. The following is a statement of reasons for the indication of allowable subject matter: The prior art taken either singularly or in combination fails to anticipate or fairly suggest the limitations of the claims listed above in such a manner that a rejection under 35 U.S.C. 102 or 103 would be proper.
The prior art fails to teach a combination of all of the features in the claims. In particular, Shin (US 2015/0340646) teaches an electronic device (100, fig. 3), comprising: an organic light emitting display (OLED); a heat generating device for producing heat ([0084] – [0085], the OLED and the system board); and a heat spreading device (131a and 131b) disposed between the OLED and the heat generating device ([0084] – [0085], 131a removes heat generated in the OLED and 131b removes heat generated from the system board mounted on the back surface of the back cover).
Shin fails to teach the heat spreading device distributes at least a portion of the heat to at least a portion of the OLED. 131a and 131b both redirect heat to the outside of the device, not to the OLED.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
Any response to this Office Action should be faxed to (571) 273-8300 or mailed to:
Commissioner for Patents
P.O. Box 1450
Alexandria, VA 22313-1450
Hand-Delivered responses should be brought to:
Customer Service Window
Randolph Building
401 Dulany Street
Alexandria, VA 22313
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KAREN M KUSUMAKAR whose telephone number is (571)270-3520. The examiner can normally be reached on Monday – Friday from 7:30a – 4:30p EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Fernando Toledo can be reached on 571-272-1867. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/KAREN KUSUMAKAR/
Primary Examiner, Art Unit 2897
4/2/26
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