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 .
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claim 1 is/are rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 1 of prior U.S. Patent No. 12,052, 902 B2. This is a statutory double patenting rejection.
In regards to claim 1, 12,052,902 B2 (claim 1) discloses “An organic light-emitting diode (“OLED”) display comprising: a substrate; a plurality of thin film transistors disposed on the substrate, at least one of the plurality of thin film transistors comprising an active layer, a gate electrode, a source electrode, and a drain electrode; a plurality of pixels including a plurality of light emitting layers, a plurality of lower electrodes, and an upper electrode disposed on the substrate, the plurality of light emitting layers being disposed between the plurality of lower electrodes and the upper electrode; an encapsulation layer disposed on the plurality of pixels; a pixel defining layer disposed on the substrate, the pixel defining layer having a plurality of openings defined therein for exposing at least part of the plurality lower electrodes; and a touch sensor including a plurality of touch sensor electrodes, and a plurality of touch sensor wirings disposed on the substrate, wherein the source electrode, the drain electrode, and the plurality of touch sensor wirings include same materials, wherein the plurality of touch sensor electrodes are disposed on the pixel defining layer to overlap the pixel defining layer in a plan view, wherein the encapsulation layer includes at least one inorganic layer and at least one organic layer, wherein each of the plurality of touch sensor electrodes is disposed across at least nine pixel areas, wherein a thickness of at least one of the plurality of touch sensor wirings is less than a thickness of the source or the drain electrode, wherein the plurality of touch sensor wirings, the source electrode, and the drain electrode include aluminum and titanium, and wherein each of the plurality of touch sensor wirings is connected to each of the plurality of touch sensor electrodes”.
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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 3, 7, 8, 12, 13, 20, 21 and 22 of U.S. Patent No. 11,594,581 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because:
In regards to claim 1, 11,594,581 B2 (claims 1 plus 2, 3 plus 7, 8 plus 12, 13 plus 20, 21 plus 22) discloses An (A flexible) organic light-emitting diode (“OLED”) display comprising: a substrate; a plurality of thin film transistors disposed on the substrate, at least one of the plurality of thin film transistors comprising an active layer, a gate electrode, a source electrode, and a drain electrode; a plurality of pixels including a plurality of light emitting layers, a plurality of lower electrodes, and an upper electrode disposed on the substrate, the plurality of light emitting layers being disposed between the plurality of lower electrodes and the upper electrode; an encapsulation layer disposed on the plurality of pixels; a pixel defining layer disposed on the substrate, the pixel defining layer having a plurality of openings defined therein for exposing at least part of the plurality lower electrodes; and a touch sensor including a plurality of touch sensor electrodes, and a plurality of touch sensor wirings disposed on the substrate, wherein the source electrode, the drain electrode, and the plurality of touch sensor wirings include same materials, wherein the plurality of touch sensor electrodes are disposed on the pixel defining layer to overlap the pixel defining layer in a plan view, wherein the encapsulation layer includes at least one inorganic layer and at least one organic layer, wherein each of the plurality of touch sensor electrodes is disposed across at least nine pixel areas, wherein a thickness of at least one of the plurality of touch sensor wirings is less than a thickness of the source or the drain electrode, wherein the plurality of touch sensor wirings, the source electrode, and the drain electrode include aluminum and titanium, and wherein each of the plurality of touch sensor wirings is connected to each of the plurality of touch sensor electrodes.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TELLY D GREEN whose telephone number is (571)270-3204. The examiner can normally be reached M-F 8am-5pm.
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TELLY D. GREEN
Examiner
Art Unit 2898
/TELLY D GREEN/Primary Examiner, Art Unit 2898 July 8, 2026
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