I. ACKNOWLEDGEMENTS
This Office Action addresses U.S. Application No. 18/738437 (“’437 Application” or “instant application”). Based upon a review of the instant application, the actual filing date of the instant application is June 10, 2024. 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.
The instant application is a reissue application of US Patent 10,615,240 (“’240 Patent”). The ‘240 Patent was filed as US application 14/928991 (‘991 application) on October 15, 2015, entitled “ORGANIC LIGHT-EMITTING DIODE DISPLAY.”
Based upon Applicant’s statements as set forth in the instant application and after the
Examiner’s independent review of the ‘240 Patent itself and its prosecution history, the Examiner finds that he cannot locate any ongoing proceeding before the Office or current ongoing litigation involving the ‘240 Patent. Also based upon the Examiner’s independent review of the ‘240 Patent itself and the prosecution history, the Examiner cannot locate any previous reexaminations or supplemental examinations.
II. STATUS OF CLAIMS
The ‘240 Patent issued with claims 1-19 (“Patented Claims”). The Preliminary Amendment filed with this application cancels claims 1-19 and adds claims adds claims 20-48. Therefore, as of the date of this Office Action, the status of the claims is:
a. Claims 20-28 (“Pending Claims”).
b. Claims 20-48 are examined (“Examined Claims”)
III. PRELIMINARY AMENDMENT OF 6/10/2024
The amendment to the specification and claims of 6/10/2024 has been entered and considered. The Examiner notes that the claims are of improper reissue format, as all new claims relative to the patent must be underlined in their entirety. Therefore, the claims should be underlined. In addition, if this is truly a reissue of a reissue, applicant should use the formatting discussed in MPEP 1411 and 1453 VI A.
Claims 20-48 are objected to as being of improper reissue format.
IV. PRIORITY AND CONTINUING DATA
The ‘437 application is a continuing reissue application of US application 17/713314 (the ‘314 application), filed April 5, 2022. The ‘314 application is a reissue of the ‘240 patent and the‘240 patent claims foreign priority under 35 USC 119(a) to KR application, 10-2015-00059994, filed April 28, 2015. Because the earliest possible effective filing date is after March 16, 2013, the first to file provision of the AIA , apply to this proceeding.
In accordance with MPEP §609.02 A. 2 and MPEP §2001.06(b) (last paragraph), the Examiner has reviewed and considered the prior art cited in the prior applications. Also, in accordance with MPEP §2001.06(b) (last paragraph), all documents cited or considered ‘of record in the prior applications are now considered cited or ‘of record’ in this application. Additionally, Applicant(s) are reminded that a listing of the information cited or ‘of record’ in the prior applications need not be resubmitted in this application unless Applicant(s) desire the information to be printed on a patent issuing from this application. See MPEP §609.02 A. 2. Finally, Applicant(s) are reminded that the prosecution histories of the prior applications are relevant in this application.
V. REISSUE DECLARATION
The reissue oath/declaration filed 11/2/2023 with this application is defective (see 37 CFR 1.175 and MPEP § 1414) because of the following: The declaration states that the current application is a reissue of RE50012. The error statement is also directed to RE50012. This would imply that the current case is a reissue of RE50012. However, the specification and the ADS state that the current case is a continuation of the ‘314 application, which is a reissue of the ‘240 patent. This implies that the current application is a reissue of the ‘240 patent. Therefore, the declaration, specification and ADS are inconsistent. It appears that applicant intends the current application to be a reissue of the former reissue application.
Further, the only error presented in the declaration is recapture. Removal of surrendered subject matter cannot form the basis of a reissue. Hence, the declaration does not present a valid error.
Applicant should clarify.
Claims 20-48 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.
VI. SPECIFICATION OBJECTION
The specification is objected to in that the cross-reference to related applications does not include a line that the current case is a reissue of either RE50012 or the ‘240 patent.
VII. ADS
The ADS is objected to in that the continuing data is incomplete. The ADS needs a separate line stating the current application is a reissue of either the ‘314 application or the ‘240 patent, which is proper.
VIII. RECAPTURE
Claims 20-48 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.
The "recapture rule," prevents a patentee from regaining, through a reissue patent, subject matter that the patentee surrendered in an effort to obtain allowance of claims in the patent sought to be reissued. In re Clement, 131 F.3d 1464, 1468, 45 USPQ2d 1161, 1164 (Fed. Cir. 1997). The "surrendered subject matter" that may not be recaptured through reissue should be presumed to include subject matter broader than the patent claims in a manner directly related to
(1) limitations added to the claims by amendment (either by amending an existing claim or canceling a claim and replacing it with a new claim with that limitation) to overcome a patentability rejection and
(2) limitations argued to overcome a patentability rejection without amendment of a claim.
The recapture rule is avoided if the reissue claim was materially narrowed in other respects compared to its broadening surrendered aspect. A reissue claim is materially narrowed and thus avoids the recapture rule when limited to aspects of the invention:
(1) which had not been claimed and thus were overlooked during prosecution of the original patent application; and
(2) which patentably distinguish over the prior art.
The first step of the recapture analysis is to determine whether the claims have been broadened.
Claims 20 and 32 remove the following limitation:
Surrender Generating Limitation #1: wherein the compensation transistor has a first end electrically connected to a gate electrode of the driving transistor and a first end of the storage capacitor, and a second end electrically connected to a first end of the driving transistor.
As such, it is clear that claims 20 and 32 have been broadened, noting that the first electrode extension has been changed to a same layer of the electrode.
The second step is to determine whether the broadening relates to surrendered subject matter.
As to the limitation #1, the limitation was in original claim 3 and was incorporated into claim 1 after a first action rejection. The amendment is presumed to be for patentability and
limitation 1 amounts to surrendered subject matter.
The third step of the recapture test is whether the claims were materially narrowed in other respects, and hence avoid the recapture rule.
For limitation #1, the limitation has been removed entirely. As such, recapture is present.
IX. 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 20-48 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 20-49 of U.S. Patent No. RE50012.
The current claims are broadened versions of the patented claim, and, as such, are covered by the patented claims.
X. ALLOWABLE SUBJECT MATTER
Claims 20-48 would be allowable if the double patenting rejection(s) and the rejection under 35 USC 251 were overcome.
Claims 20-36 define over the art in that none of the art teaches the limitation: wherein the portion of the first electrode of a first one of the pixels overlaps the compensation transistor of a second other one of the pixels adjacent the first pixel.
Claims 37-48 define over the art in that none of the art teaches the limitation: wherein the portion of the first electrode of a first one of the pixels overlaps the initialization transistor of a second other one of the pixels adjacent the first pixel.
XI. CONCLUSION
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT L NASSER whose telephone number is (571)272-4731. The examiner can normally be reached M-F 8-6.
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, Alexander Kosowski can be reached on (571) 272-3744. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ROBERT L NASSER/ Primary Examiner, Art Unit 3992
Conferees:
/JOSHUA D CAMPBELL/Primary Examiner, Art Unit 3992
/ALEXANDER J KOSOWSKI/Supervisory Patent Examiner, Art Unit 3992
Prosecution Insights