DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Election/Restrictions
Applicant’s election without traverse of Species I, claims 1-9, in the reply filed on 6/11/26 is acknowledged.
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 1-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-22 of U.S. Patent No. 9385172. Although all the claims at issue are not identical, they are not patentably distinct from each other because of the following match between pending claims and those of Patent 9385172 as follows:
Claim 1 is broader than claim 1.
Claim 2 is identical to claim 4.
Claim 5 is identical to claim 6.
Claim 6 is identical to claim 7.
Claim 7 is identical to claim 21.
Claim 8 is identical to claim 22.
Claims 3-4 and 9 are considered obvious in view of claims 2, 3, 8 and 18 given the listed devices as that of organic diode based devices.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of pre-AIA 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
Claims 1-9 are rejected under pre-AIA 35 U.S.C. 102b as being anticipated by Tompkin et al. (US 2008/0035736).
Regarding claim 1, Tompkin discloses a device comprising:
a surface comprising a first region (transparent region of 2, fig. 3 and paragraph 0041) and a second region (opaque region of 2 containing the display element, solar cell, electric circuit, etc, fig. 3 and paragraph 0041),
wherein the device transmits light through the first region (transparent region of 2, fig. 3 and paragraph 0041) and generates electricity or an
electrical response to light from the second region (solar cell 23, fig. 3 and paragraph 0041), wherein the first region is transparent and the
second region is substantially non-transparent (fig. 3 and paragraph 0041), and
wherein the device has an overall transparency of at least 5% (fig. 3, transparent region occupies more than 5% of the area of 2, fig. 3 and paragraph 0041).
Regarding claim 2, Tompkin further discloses wherein the second region has a local transparency of less than 5% (opaque region of 2, fig. 3 and paragraph 0041).
Regarding claim 3, Tompkin further discloses wherein the device comprises an organic solar cell (23, fig. 3 and paragraph 0051).
Regarding claim 4, Tompkin further discloses wherein the device comprises an organic photodetector (23, fig. 3 and paragraph 0051).
Regarding claim 5, Tompkin further discloses wherein the device has an overall
transparency of at least 10% (fig. 3, transparent region occupies more than 5% of the area of 2, fig. 3 and paragraph 0041).
Regarding claim 6, Tompkin further discloses wherein the second region has a local transparency of less than 1% (opaque region of 2, fig. 3 and paragraph 0041) and wherein the device has an overall transparency of at least 10% (fig. 3, transparent region occupies more than 5% of the area of 2, fig. 3 and paragraph 0041).
Regarding claim 7, Tompkin further discloseswherein the device is flexible (Abstract and paragraph 0041).
Regarding claim 8, Tompkin further discloses a single layer barrier
encapsulation layer disposed over the first surface of the device (33, fig. 4a and paragraph 0043).
Regarding claim 9, Tompkin further discloses wherein the device is at least one type selected from the group consisting of: a flat panel display, a computer monitor, a medical monitor, a television, a billboard, a light for interior or exterior illumination and/or signaling, a heads up display, a fully transparent display, a flexible display, a laser printer, a telephone, a cell phone, a personal digital assistant (PDA), a laptop computer, a digital camera, a camcorder, a viewfinder, a micro-display, a vehicle, a large area wall, a theater or stadium screen, or a sign (Abstract and paragraphs 5-10).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US Patent Application Publication 2013/0074904 disclose a device with combined solar cell and display.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DOUGLAS M MENZ whose telephone number is (571)272-1877. The examiner can normally be reached Monday-Friday 8:00am-5:00pm.
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, Jacob Choi can be reached at 469-295-9060. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DOUGLAS M MENZ/Primary Examiner, Art Unit 2897 8/26/26
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