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 .
Response to Amendment
The amendment filed on 03/12/2026 has been entered. Claims 1-2 and 4-20 are currently pending. Applicant’s amendments to the claims have overcome the claim objections and 35 USC 112 rejections previously set forth in the Non-Final Office Action mailed 09/08/2025.
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 1-2 and 4-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 11,996,608. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims at issue in the instant application overlap in scope with a claim in a potentially conflicting claim or claims of the reference patent, and one of ordinary skill in the art would, on reading the potentially conflicting patent, “at once envisage” the invention claimed in the instant application. "In construing the claims of the reference patent or application, a determination is made as to whether a portion of the specification, including the drawings and claims, is directed to subject matter that is within the scope of a reference claim." See MPEP § 804 (II)(B)(1). Moreover, "situations where the claim in the application being examined (1) is directed to a species or sub-genus covered by a generic claim in a potentially conflicting patent or application, or (2) overlaps in scope with a claim in a potentially conflicting claim or claims of the patent or application but the potentially conflicting claims cannot be said to anticipate the examined claims … require an obviousness analysis unless one of ordinary skill in the art would, on reading the potentially conflicting patent or application, at once envisage the invention claimed in the examined application. See AbbVie Inc. v. Kennedy Institute of Rheumatology Trust, 764 F.3d 1366, 112 USPQ2d 1001 (Fed. Cir. 2014)." See MPEP § 804 (II)(B)(2). Although the claims at issue are not identical, they are not patentably distinct from each other as shown below.
Current Application
U.S. Patent No. 11,996,608
1. A portable communication device, comprising: a flexible display; a wireless communication circuit; a switching circuit; and a housing including a first housing portion and a second housing portion, the first housing portion accommodating a first display portion of the flexible display, the second housing portion accommodating a second display portion of the flexible display and the switching circuit, a first lateral side of the first housing portion including a first conductive portion and a first non-conductive portion, the first conductive portion being electrically connected with the wireless communication circuit, a second lateral side of the second housing portion including a second conductive portion and a second non-conductive portion, the second conductive portion being configured to be at least partially aligned with the first conductive portion and the second non-conductive portion being configured to be at least partially aligned with the first non-conductive portion, when the housing is folded, and the second conductive portion being configured to be selectively electrically connected with a ground member via the switching circuit.
1. An electronic device comprising: a first housing including a first side facing a first direction, a second side facing a second direction opposite to the first direction, and a first lateral side surrounding at least part of a space between the first side and the second side, wherein the first lateral side includes a first conductive portion and a first non-conductive portion; a second housing including a third side facing a third direction, a fourth side facing a fourth direction opposite to the third direction, a second lateral side surrounding at least part of a space between the third side and the fourth side and a ground member, wherein the second lateral side includes a second conductive portion and a second non-conductive portion; a flexible display disposed in the first housing and the second housing; a connecting member which connects the first housing and the second housing such that the first housing and the second housing are folded to face each other, wherein when the first housing and the second housing are folded, the first non-conductive portion and the second non-conductive portion abut against each other; at least one wireless communication circuit electrically connected to the first conductive portion; and at least one switching circuit disposed in the second housing, wherein the at least one switching circuit is electrically connected between the second conductive portion and the ground member such that the second conductive portion can be selectively connected to the ground member, wherein the first lateral side forms at least a part of an exterior of the electronic device, and wherein, when the first housing and the second housing are folded to face each other, the at least one switching circuit is configured to electrically connect the second conductive portion and the ground member.
Or claim 11
2. The portable communication device of claim 1, wherein the second lateral side further includes a third conductive portion disposed such that the second non-conductive portion is located between the second conductive portion and the third conductive portion, and wherein the third conductive portion is configured to be selectively electrically connected with the ground member via the switching circuit instead of the second conductive portion.
5. The electronic device of claim 1, wherein the first lateral side includes a third conductive portion, wherein the second lateral side includes a fourth conductive portion, wherein the first non-conductive portion is disposed between the first conductive portion and the third conductive portion, and wherein the second non-conductive portion is disposed between the second conductive portion and the fourth conductive portion.
4. The portable communication device of claim 2, wherein the second conductive portion and the third conductive portion are disposed such that when the housing is folded, the third conductive portion abuts against a conductive portion of the first housing portion.
6. The electronic device of claim 5, wherein, when the first housing and the second housing are folded to face each other, at least a part of the third conductive portion and the fourth conductive portion abut against each other.
5. The portable communication device of claim 1, wherein, when the housing is folded, the first conductive potion faces at least a portion of the second conductive portion and the first non-conductive portion faces at least a portion of the second non-conductive portion.
11. An electronic device comprising: … wherein when the first housing and the second housing are folded, at least a part of the first conductive portion and the second conductive portion abut against each other; ...
6. The portable communication device of claim 1, wherein, when the housing is folded, the second conductive portion is configured to be electrically connected with the ground member via the switching circuit, and wherein, when the housing is unfolded, the second conductive portion is configured to be electrically disconnected with the ground member via the switching circuit.
1. An electronic device comprising: … wherein, when the first housing and the second housing are folded to face each other, the at least one switching circuit is configured to electrically connect the second conductive portion and the ground member.
7. The electronic device of claim 1, wherein, when the first housing and the second housing are unfolded, the at least one switching circuit is configured to electrically disconnect the second conductive portion and the ground member.
7. The portable communication device of claim 1, further comprising: a lumped element including at least one of an inductor, a capacitor, or a resistor electrically connected with the ground member, wherein the second conductive portion is configured to be electrically connected with the ground member via the lumped element when the housing is folded.
8. The electronic device of claim 1, further comprising: at least one lumped element comprising at least one of an inductor, a capacitor or a resister which is electrically connected to the ground member, wherein, when the first housing and the second housing are folded, the at least one switching circuit is configured to electrically connect the second conductive portion and the ground member via the at least one lumped element.
8. The portable communication device of claim 1, wherein the second conductive portion is configured to be electrically connected with the ground member via the switching circuit, while the first conductive portion is configured to transmit wireless signals with the housing folded.
9. The electronic device of claim 1, wherein, when the first housing and the second housing are folded, the first conductive portion operates as an antenna radiator transmitting or receiving signals of a first frequency band and the second conductive portion is electrically connected to the ground member via the at least one switching circuit.
9. The portable communication device of claim 1, wherein the first lateral side includes a third non-conductive portion and the second lateral side includes a fourth non-conductive portion, wherein the first conductive portion is located between the first non-conductive portion and the third non-conductive portion, and wherein the second conductive portion is located between the second non-conductive portion and the fourth non-conductive portion.
2. The electronic device of claim 1, wherein the first lateral side includes a third non-conductive portion, wherein the second lateral side includes a fourth non-conductive portion, wherein the first conductive portion is disposed between the first non-conductive portion and the third non-conductive portion, and wherein the second conductive portion is disposed between the second non-conductive portion and the fourth non-conductive portion.
Or 12
Or 14
10. The portable communication device of claim 9, wherein, when the housing is folded, the third non-conductive portion is configured to be at least partially aligned with the fourth non-conductive potion.
3. The electronic device of claim 2, wherein, when the first housing and the second housing are folded to face each other, the third non-conductive portion of the first lateral side and the fourth non-conductive portion of the second lateral side abut against each other.
Or 13
11. The portable communication device of claim 1, further comprising: a connection member for connecting the first housing portion and the second housing portion such that the first housing portion is configured to be at least partially aligned with the second housing portion, when the housing is folded.
1. An electronic device comprising: … a connecting member which connects the first housing and the second housing such that the first housing and the second housing are folded to face each other,
Or claim 11
12. The portable communication device of claim 1, wherein the first lateral side forms at least a portion of an exterior of the portable communication device.
1. An electronic device comprising: … wherein the first lateral side forms at least a part of an exterior of the electronic device....
Or claim 11
13. The portable communication device of claim 1, wherein the switching circuit is configured to be switched based on a state of the housing.
1. An electronic device comprising: … wherein, when the first housing and the second housing are folded to face each other, the at least one switching circuit is configured to electrically connect the second conductive portion and the ground member.
7. The electronic device of claim 1, wherein, when the first housing and the second housing are unfolded, the at least one switching circuit is configured to electrically disconnect the second conductive portion and the ground member.
Or 10. The electronic device of claim 1, wherein the at least one switching circuit is switched based on a folding state of the first housing and the second housing.
14. The portable communication device of claim 13, wherein the state of the housing includes a folded state in which the first display portion and the second display portion face each other, and an unfolded state in which both the first display portion and the second display portion face a first direction.
1. An electronic device comprising: … wherein, when the first housing and the second housing are folded to face each other, the at least one switching circuit is configured to electrically connect the second conductive portion and the ground member.
7. The electronic device of claim 1, wherein, when the first housing and the second housing are unfolded, the at least one switching circuit is configured to electrically disconnect the second conductive portion and the ground member.
15. The portable communication device of claim 13, wherein, when the housing is folded, the switching circuit is switched such that the second conductive portion is configured to be electrically connected with the ground member, and wherein, when the housing is unfolded, the switching circuit is switched such that the second conductive portion is configured to be electrically disconnected with the ground member.
1. An electronic device comprising: … wherein, when the first housing and the second housing are folded to face each other, the at least one switching circuit is configured to electrically connect the second conductive portion and the ground member.
7. The electronic device of claim 1, wherein, when the first housing and the second housing are unfolded, the at least one switching circuit is configured to electrically disconnect the second conductive portion and the ground member.
16. The portable communication device of claim 1, wherein the flexible display is configured to span continuously across the first housing portion and the second housing portion when the housing is unfolded.
1. An electronic device comprising: … a flexible display disposed in the first housing and the second housing…
Or claim 11
17. The portable communication device of claim 1, wherein the housing is folded with respect to a first axis, and wherein the first conductive portion includes a first conductive part parallel to the first axis, and the second conductive portion includes a second conductive part parallel to the first axis.
4. The electronic device of claim 1, wherein the first conductive portion includes: a first conductive part parallel to a first axis, and a second conductive part extending from the first conductive part and perpendicular to the first axis, and wherein the first housing and the second housing are folded with respect to the first axis.
18. The portable communication device of claim 1, wherein the housing is folded with respect to a first axis, and wherein the first conductive portion includes a first conductive part perpendicular to the first axis, and the second conductive portion includes a second conductive part perpendicular to the first axis.
4. The electronic device of claim 1, wherein the first conductive portion includes: a first conductive part parallel to a first axis, and a second conductive part extending from the first conductive part and perpendicular to the first axis, and wherein the first housing and the second housing are folded with respect to the first axis.
19. The portable communication device of claim 1, wherein when the housing is folded, the first conductive portion operates as an antenna radiator transmitting or receiving signals of a first frequency band, and the second conductive portion is configured to be electrically connected to the ground member via the switching circuit.
9. The electronic device of claim 1, wherein, when the first housing and the second housing are folded, the first conductive portion operates as an antenna radiator transmitting or receiving signals of a first frequency band and the second conductive portion is electrically connected to the ground member via the at least one switching circuit.
20. A portable communication device comprising: a flexible display; a wireless communication circuit; a switching circuit; and a housing including a first housing portion and a second housing portion, the first housing portion accommodating a first display portion of the flexible display, the second housing portion accommodating a second display portion of the flexible display and the switching circuit, a first lateral side of the first housing portion including a first conductive portion and a first non-conductive portion, the first conductive portion being electrically connected with the wireless communication circuit, a second lateral side of the second housing portion including a second conductive portion and a second non-conductive portion, the second conductive portion being configured to at least partially overlap with the first conductive portion and the second non-conductive portion being configured to at least partially overlap with the first non-conductive portion, when the housing is folded, and the second conductive portion being configured to be selectively electrically connected with a ground member via the switching circuit.
1. An electronic device comprising: a first housing including a first side facing a first direction, a second side facing a second direction opposite to the first direction, and a first lateral side surrounding at least part of a space between the first side and the second side, wherein the first lateral side includes a first conductive portion and a first non-conductive portion; a second housing including a third side facing a third direction, a fourth side facing a fourth direction opposite to the third direction, a second lateral side surrounding at least part of a space between the third side and the fourth side and a ground member, wherein the second lateral side includes a second conductive portion and a second non-conductive portion; a flexible display disposed in the first housing and the second housing; a connecting member which connects the first housing and the second housing such that the first housing and the second housing are folded to face each other, wherein when the first housing and the second housing are folded, the first non-conductive portion and the second non-conductive portion abut against each other; at least one wireless communication circuit electrically connected to the first conductive portion; and at least one switching circuit disposed in the second housing, wherein the at least one switching circuit is electrically connected between the second conductive portion and the ground member such that the second conductive portion can be selectively connected to the ground member, wherein the first lateral side forms at least a part of an exterior of the electronic device, and wherein, when the first housing and the second housing are folded to face each other, the at least one switching circuit is configured to electrically connect the second conductive portion and the ground member.
Or claim 11
Claims 1-2, 4-11, 13-16, and 19-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-5, 7-8, and 13 of U.S. Patent No. 11,658,394. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims at issue in the instant application overlap in scope with a claim in a potentially conflicting claim or claims of the reference patent, and one of ordinary skill in the art would, on reading the potentially conflicting patent, “at once envisage” the invention claimed in the instant application. "In construing the claims of the reference patent or application, a determination is made as to whether a portion of the specification, including the drawings and claims, is directed to subject matter that is within the scope of a reference claim." See MPEP § 804 (II)(B)(1). Moreover, "situations where the claim in the application being examined (1) is directed to a species or sub-genus covered by a generic claim in a potentially conflicting patent or application, or (2) overlaps in scope with a claim in a potentially conflicting claim or claims of the patent or application but the potentially conflicting claims cannot be said to anticipate the examined claims … require an obviousness analysis unless one of ordinary skill in the art would, on reading the potentially conflicting patent or application, at once envisage the invention claimed in the examined application. See AbbVie Inc. v. Kennedy Institute of Rheumatology Trust, 764 F.3d 1366, 112 USPQ2d 1001 (Fed. Cir. 2014)." See MPEP § 804 (II)(B)(2). Although the claims at issue are not identical, they are not patentably distinct from each other as shown below.
Current Application
U.S. Patent No. 11,658,394
Claim 1
Claim 1
Claim 2
Claim 1 + Claim 3 + Claim 5
Claim 4
Claim 1
Claim 5
Claim 1 + Claim 12 + Claim 13
Claim 6
Claim 8
Claim 7
Claim 7
Claim 8
Claim 1
Claim 9
Claim 13
Claim 10
Claim 13
Claim 11
Claim 1
Claim 13
Claims 1 + 3 + 4
Claim 14
Claims 1 + 3 + 4
Claim 15
Claims 1 + 3 + 4
Claim 16
Claim 1
Claim 19
Claim 1
Claim 20
Claim 1
Claims 1-2, 4-11, 13-16, and 19-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-4, 6-8, 12, 14-15 of U.S. Patent No. 10,879,589. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims at issue in the instant application overlap in scope with a claim in a potentially conflicting claim or claims of the reference patent, and one of ordinary skill in the art would, on reading the potentially conflicting patent, “at once envisage” the invention claimed in the instant application. "In construing the claims of the reference patent or application, a determination is made as to whether a portion of the specification, including the drawings and claims, is directed to subject matter that is within the scope of a reference claim." See MPEP § 804 (II)(B)(1). Moreover, "situations where the claim in the application being examined (1) is directed to a species or sub-genus covered by a generic claim in a potentially conflicting patent or application, or (2) overlaps in scope with a claim in a potentially conflicting claim or claims of the patent or application but the potentially conflicting claims cannot be said to anticipate the examined claims … require an obviousness analysis unless one of ordinary skill in the art would, on reading the potentially conflicting patent or application, at once envisage the invention claimed in the examined application. See AbbVie Inc. v. Kennedy Institute of Rheumatology Trust, 764 F.3d 1366, 112 USPQ2d 1001 (Fed. Cir. 2014)." See MPEP § 804 (II)(B)(2). Although the claims at issue are not identical, they are not patentably distinct from each other as shown below.
Current Application
U.S. Patent No. 10,879,589
Claim 1
Claim 1
Claim 2
Claim 1
Claim 4
Claim 1 + Claim 14 + Claim 15
Claim 5
Claim 1 + Claim 14 + Claim 15
Claim 6
Claim 4
Claim 7
Claim 6 or 7 or 8 or 12
Claim 8
Claim 1
Claim 9
Claim 15
Claim 10
Claim 15
Claim 11
Claim 1
Claim 13
Claims 1 + 3 + 4
Claim 14
Claims 1 + 3 + 4
Claim 15
Claims 1 + 3 + 4
Claim 16
Claim 1
Claim 19
Claim 1
Claim 20
Claim 1
Claims 1-2, 4-6, 8-10, 13-16, and 19-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 4-5, and 9-10 of U.S. Patent No. 12,327,911. Although the claims at issue are not identical, they are not patentably distinct from each other as shown below:
Current Application
U.S. Patent No. 12,327,911
Claim 1
Claim 1 + Claim 2
Claim 2
Claim 1 + Claim 2
Claim 4
Claim 1 + Claim 2
Claim 5
Claim 1 + Claim 2
Claim 6
Claim 1 + Claim 4 (or Claim 5)
Claim 8
Claim 1 + Claim 4 (or Claim 5)
Claim 9
Claim 1 + Claim 9 + Claim 10
Claim 10
Claim 1 + Claim 9 + Claim 10
Claim 13
Claim 1 + Claim 2
Claim 14
Claim 1 + Claim 2
Claim 15
Claim 1 + Claim 2
Claim 16
Claim 1
Claim 19
Claim 1 + Claim 2
Claim 20
Claim 1 + Claim 2
Allowable Subject Matter
Claims 1-2 and 4-20 are allowable except for the double patenting above.
The following is an examiner’s statement of reasons for allowance:
In response to the amendments made, and upon conclusion of a comprehensive search of the pertinent prior art, the Office indicates that the claims are allowable.
Chun et al. (US 2014/0240178), Zhang (US 2020/0287274), Shi et al. (US 2019/0103656), Seo et al. (US 2013/0321340), Ha et al. (US 2018/0261921), Kim et al. (US 2017/0346164), Lee (US 2017/0245377), Bettner et al. (US 2005/0146475), and some of the other cited references teach some elements of the claimed invention including a portable communication device that can be folded that includes a flexible display, a wireless communication circuit, a switching circuit, a housing, a first lateral side surface, a first conductive portion, a first non-conductive portion, a second lateral side surface, a second conductive portion, a second non-conductive portion, and a ground member. While Chun does teach a similar structure, its conductive and non-conductive portions are not part of a lateral side surface of the housing, which differs from what is being claimed.
However, the prior art, when taken alone, or, in combination, cannot be construed as reasonably teaching or suggesting all of the elements of the claimed invention as arranged, disposed, or provided in the manner as claimed by the Applicant.
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 AB SALAM ALKASSIM JR whose telephone number is (571)270-0449. The examiner can normally be reached Monday-Thursday.
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, Dameon Levi can be reached at (571) 272-2105. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AB SALAM ALKASSIM JR/Primary Examiner, Art Unit 2845
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